Energie Froide International S.A. v Lightning Protection International Pty Ltd

[1992] APO 73

official notice

decision of a delegate of the commissioner of patents

Application        :    No. 591357 in the name of ENERGIE FROIDE INTERNATIONAL S.A.

Title             :    Carrier System of Lightning Protection

Action:    Opposition by LIGHTNING PROTECTION INTERNATIONAL PTY LTD under Sec 59 and an application for special leave to adduce further evidence under Reg 59 by the applicant

Decision:    Issued            .  Opponent's objection invalid; Application for special leave refused.

patents act 1990

decision of a delegate of the commissioner of patents

Re:Patent Application No. 591357 by ENERGIE FROIDE INTERNATIONAL S.A., opposition by LIGHTNING PROTECTION INTERNATIONAL PTY LTD under section 59, and an application for special leave to adduce further evidence under regulation 59 by the applicant.

background

Patent application 591357 by ENERGIE FROIDE INTERNATIONAL S.A. was advertised accepted on 30 November 1989. On 16 February 1990 LIGHTNING PROTECTION INTERNATIONAL PTY LTD filed a notice of opposition to the application under sec 59(1) of the Patents Act 1952.

Evidence in support was served by the opponent on 11 May 1990 and evidence in answer was served by the applicant on 22 November 1990. Evidence in reply was served on 11 January 1991.  On 3 July 1991, the applicant served further evidence.  The opponent consented to this and served evidence in reply to the further evidence on 23 October 1991.

On 27 February 1991 the applicant again sought to adduce further evidence, but in a letter date 12 June 1992 the opponent indicated that it would not consent.  Consequently on 17 August 1992 the applicant filed an application for special leave to adduce further evidence.  The opponent gave the Commissioner notice of its intention to oppose this application in a letter filed on 21 August 1992 and a copy of this letter was served on the applicant on 14 September 1992.

The matter of special leave was set down for hearing on 23 November 1992 but the applicant through its Patent Attorneys, Watermark Patent & Trademark Attorneys, and the opponent, through its Patent Attorneys, Carter Smith & Beadle, advised that they would not be represented at the hearing but would rely instead on written submissions.

APPLICATION FOR SPECIAL LEAVE

The declaration by Mr Dyson of Watermark indicates the grounds on which the application is made and the nature of the further evidence sought to be adduced in these terms:

"2.The applicant by our letter of 25 February 1992 and a statutory declaration by Cesare Guilio Invernizzi dated 13 February 1992 (hereinafter referred to as "the further evidence") sought the leave of the opponent to adduce the further evidence.

3.Leave from the opponent was not granted and the applicant now makes an application for special leave to lodge the further evidence.

4.The applicant by its invention claimed in application 591357 has made an inventive improvement over the prior art. The opponent has by its evidence already on file has attempted to show that no improvement has actually resulted.

5.Due to communication difficulties between myself and the applicant, we did not obtain the information contained in the further evidence until 7 November 1991 even though it was asked for on 24 August 1990. I believe our request on 24 August 1990 was not understood by the applicant at that time.

6.The further evidence came to light only after other evidence was sought to be adduced by our letter of 3 July 1991. The opponent in reply to this other evidence submitted a further declaration dated 16 October 1991 by John Richard Gumley.

7.At this point we advised our client to consider the 16 October 1991 declaration with a view that the issues raised in the declaration of 16 October 1991 will be orally addressed by me at the hearing.

8.By the applicant's fax of 7 November 1991, it came to our attention that the invention claimed in 591357 was invented in response to technical difficulties and failures which had occurred at installations. These failures have since been curtailed by the improved cabling the subject of patent application 591357. I believed that it was essential to place the further evidence on the record and have it considered prior to the hearing by the hearing officer.

9.The evidence is relevant in that it highlights the inventiveness in solving the problems of the prior art and the marked advantages which result from the solution."

SUBMISSIONS

The written submission on behalf of the applicant included the following points:

1. As the notice of the opponents objection to the application for special leave was received by the applicant's Attorney only on 14 September it appears that Regulation 59(5) has not been complied with.

1. There have been communication difficulties with the applicant company presumably brought about by language difficulties and perhaps by the fact that Dr Invernizzi is not legally trained and is not familiar with Australian patent law.  Consequently some information relating to the evidence-in-answer that the attorney should have been aware of was not transmitted until late 1991 as outlined in the Statutory Declaration.

1. The application for special leave is not a delaying tactic.  The matter was raised with the Patent Office and the attorneys for the opponent on 25 February 1992 and was in response to the declaration by Mr Gumley dated 16 October 1991 in his reply to the first lot of special evidence.  Allowing for the Christmas vacation this was not a serious delay. However from the delay in receiving the Notice of Objection to the further evidence it is clear that the opponent did not give the matter any priority.  Furthermore, it has been open to the opponent to have opposition set down for hearing since completion of the evidence-in-reply in January 1991 though this opportunity is not being taken up.

The submission on behalf of the opponent can be summarised as follows:

1. Regulation 59(5) provides that the person intending to oppose a special leave application shall give notice to the Commissioner and the person making the application within fourteen days after being served with the application and declaration.  Due to an oversight, formal notice was not provided to the applicant until 14 September 1992, some fourteen days after the date operating under Regulation 59(5).

It is contended that such a minor oversight should not disqualify a person from being able to prosecute an objection particularly in view of the fact that the Commissioner was notified in good time, the applicant was notified well in advance of a hearing and that the applicant was well aware of the opponent's intention to resist the adducement of further evidence.

1. The opponent objects firstly because of the long delay in lodging the application for special leave.  The mutually agreed adducement of new evidence from both parties was completed as long ago as 22 October 1991 and there is no basis for allowing adducement of "further further" evidence, particularly given the passing of five months from 22 October 1991 to 25 February 1992 before an approach regarding additional further evidence was made.  In this regard the "communication difficulties" and the fact that Mr Invernizzi is not fluent in English and is "not legally trained and is not familiar with Australian patent law" are the applicant's problem and do not justify delays.

There has been no explanation of why, having after fourteen months finally received some information, there was a delay of a further three months before the opponent was approached for consent to adduce the "new" further evidence.  The system of adducing further evidence cannot be used by the applicant to regularly introduce "further evidence" after reading the opponent's most recent evidence.

Finally there is nothing in Mr Invernizzi's declaration of 13 February 1992 which could not have been included in the applicants evidence in answer, or in its first further evidence.

1. The second ground on which the application for special leave is opposed is that the "evidence" is not "further evidence".  In particular:

• Paragraph 3 of the evidence introduces Exhibit CGI1 which is a copy of a telex dated 28 October 1986 from Energie Froide Australasia (EFA) to Energie Froide International (EFI). There seems no reason why this 1986 telex could not have been incorporated into earlier evidence from the applicant.  In any event the telex merely demonstrates that at that time a number of EFI terminals had exploded.

• Paragraph 4 of the evidence introduces Exhibit CGI2, a copy of an earlier telex, dated 24 May 1985 from EFA to EFI.  The telex clearly relates to mechanical failure of the terminals, and reference to the cables is peripheral, and consequential upon the terminal failures.  Thus this "further evidence" does not relate to the cable or down conductor.

• Paragraph 5 of the evidence introduces Exhibit CGI3, a copy of a further telex, dated 4 November 1986 and a copy of a photograph.  There is nothing in paragraph 5 or Exhibit CGI3 which addresses this opposition in the sense of "further evidence".

• Paragraph 6 of the evidence does not constitute "further evidence" and the remarks made by Mr Invernizzi are purely "commercial puffery" and do not add anything to the opposition.

DECISION

Looking first at the issue of the opponent's compliance with Regulation 59(5) of the Patents Act 1952, it is clear that the applicant was not notified of the opponent's objection within the 14 days stipulated. The opponent has argued that such a minor oversight is not one which should disqualify it from entering and prosecuting an objection to the application for special leave, however, taking all factors into account, I do not consider that the opponent has made out a valid objection. I recognise that the Commissioner was notified by the opponent well within the time allowed and that the applicant was already aware of the opponents refusal to consent to the further evidence. Regulation 59(5) is however drafted in mandatory terms and I do not believe that I have the power to excuse the opponent from its obligation to inform the applicant of its objection within the period specified.

Having found that the opponent's objection is invalid I must nevertheless decide whether the applicant has made out a case justifying allowance of the application for special leave.
It is apparent that there are four matters to be considered in deciding whether leave should be granted to adduce further evidence.  These are:

(1)Is the evidence which is proposed to adduce, based on the nature thereof and the grounds as set out in the declaration, relevant to the action, in the sense that it would contribute to a more correct, just, or expeditious result?

(2)If the application for special leave was allowed, would this cause unnecessary protraction of the opposition?

(3)Would there be any injustice done to the other party, if the application were to be allowed?

(4)Has the party seeking to adduce the further evidence been diligent in prosecuting the opposition action.

[Sue & Anor. v. Carpenter (1991) AIPC 90-750]

Mr Dyson stated in his declaration that the further evidence sought to be adduced was relevant in that it, "highlights the inventiveness in solving the problems of the prior art and the marked advantages which result from the solution".  The evidence itself is a statutory declaration by Cesare Guilio Invernizzi and relates largely to three telexes, two of which (CGI1 & CGI2), dated 28.10.86 and 24.05.85 respectively, contain reports of terminal and/or cable failures and a third (CGI3) dated 4.11.86 that appears to contain a suggested solution to alleviate terminal failure.  In paragraph 6 of the declaration Mr Invernizzi identifies the failed equipment as that manufactured by the applicant under Australian Patent 465821 and states that "For the 4-5 years since lightning protection equipment sold by our company has been manufactured in accordance with Australian Patent Application 591357 and has been installed in a very great number of the most lightning prone countries of the world, we have not had one single claim concerning failure of the new equipment".

It is true that the opponent's evidence to date has attempted to show that the claimed invention is not an improvement over the prior art, particularly as disclosed in Australian patent 465821.  I cannot see however that the evidence of equipment failure now presented will have a significant impact on the outcome of the opposition as it adds nothing new except to document equipment failures, some of which may relate to down conductors.  The issue of equipment failure related to the prior art was in fact first raised in the evidence-in-support through the declarations by Stephen Gumley and Raymond Biggs who both refer to the failure at Channel 7 Brisbane in 1987.  Mr Invernizzi states in the evidence-in-answer that this is "one of the reasons for which we realised the improvements of the present patent application" and in the first lot of further evidence that "It is under the extreme effects of the lightning energy that the advantages of this invention comes into existence.  The cable made to the present invention is in use to replace the old down conductor in those areas which are appropriate.  The new down conductors according to the present invention have not failed whereas the old conductor would in fact have already failed by this time." and later "The main reason for this is the advantages that the new conductor offers, and in fact there has been no known failures of the new down conductors.".  These statement are essentially equivalent to that in paragraph 6 of the evidence now sought to be adduced.  What is new in the evidence is the particulars of other instances of failure of the prior art apparatus but I do not believe that this information in itself would in any way "contribute to a more correct, just, or expeditious result".

As to whether allowance of the present application would cause unnecessary protraction of the opposition, it should be noted that the evidence has already been prepared and the opponent is acquainted with its content.  The hearing date for the opposition will not be before the next Melbourne session in mid-February 1993 and therefore the period allowed by Regulation 60(2) of the 1952 Act for evidence in reply will expire prior to the hearing date.  Accordingly I do not consider that the allowance of the special leave application will cause unnecessary protraction of the opposition.

I must also consider whether any injustice would be done to the opponent if the application was allowed.  I have concluded above that the evidence sought to be adduced is of marginal significance to the determination of the opposition.  However, it also does not address matters that are completely new and of which the opponent is not aware and therefore, I do not consider that the opponent would suffer any great injustice if the special leave application was allowed.  On the other hand the opponent would conceivably be put to further expense and effort in responding to evidence that I do not consider would contribute to the granting of a valid patent.

Finally I need to consider whether the applicant has been diligent in prosecuting the opposition.  The evidence contains information relating to a period well before the filing date of the patent application and, according to paragraph 5 of the declaration accompanying the application for special leave, it is information that was sought from the applicant in August 1990. Given that the issue addressed by the evidence was raised in an early stage in the opposition there appears to be no justification for the delay in presenting this evidence regardless of the alleged communication difficulties between the applicant and its attorneys. In this respect I also note that the information contained in the further evidence became available to the applicant's attorneys on 7 November 1991 but leave to adduce the evidence was only sought in mid-February 1992.  The applicant for its part has argued that the opponent has also contributed to delays in the prosecution of the opposition and while I agree to some extent I do not think that this absolves the applicant.  I must in light of the circumstances conclude that the applicant has been less than diligent in the prosecution of the opposition.

Having considered all the above circumstances I find that allowance of the application for special leave is not justified.

CONCLUSION

I have found that the opponent has not complied with Regulation 59(5) of the 1952 Act and that its objection to the application for special leave is therefore not valid.  I have also found that the evidence sought to be adduced would not contribute to a more "correct, just or expeditious result" and that the applicant has been less than diligent in the prosecution of the opposition action.  While the opponent would not suffer serious injustice if the application for special leave was allowed and the finalisation of the opposition would not be delayed, I do not consider that this is sufficient and find that the applicant has not made out a case justifying the allowance of the application.  Accordingly I refuse the application for special leave.

COSTS

In an action of this nature costs normally follow the event, however in this case I have found that the opponent's objection is not valid.  I have also found that there is no basis for allowing the application for special leave and therefore I make no award of costs.

(P. M. Spann)
Delegate of the Commissioner of Patents

Patent attorneys for the applicant  :  Watermark Patent & Trademark Attorneys, Melbourne

Patent attorneys for the opponent   :  Carter Smith & Beadle, Camberwell