Ethyl Petroleum Additives Ltd v Exxon Chemical Company

[1995] APO 24

official notice

decision of a delegate of the commissioner of patents

Application        :    No. 650025 in the name of ETHYL PETROLEUM ADDITIVES LTD.

Title:    Oil-soluble dispersant composition comprising aliphatic succinimides.

Action:    An application by EXXON CHEMICAL COMPANY for an extension of time to serve a statement of grounds and particulars, and an objection thereto by ETHYL PETROLEUM ADDITIVES LTD.

Decision:    Issued            .

Abstract: Error established as the reason for the failure to serve the statement of grounds and particulars by the due date. Discretionary power conferred under section 223(2)(a) exercised in favour of the grant of the extension of time.

patents act 1990

decision of a delegate of the commissioner of patents

Re:Patent Application No. 650025 by ETHYL PETROLEUM ADDITIVES LTD., opposition thereto by EXXON CHEMICAL COMPANY, an application under section 223(2) of the Patents Act 1990 for an extension of time to serve the statement of grounds and particulars, and an objection thereto.

background

Patent Application Number 81639/91 was filed on 6 August 1991 by Ethyl Petroleum Additives Ltd.("Ethyl"). Acceptance of the application and complete specification was advertised on 9 June 1994, the accepted application then being allocated serial number 650025. A notice of opposition to the grant of a patent was filed on 8 September 1994 by Exxon Chemical Company ("Exxon").

The final due date for serving a copy of a statement of grounds and particulars ("the Statement") on the applicant was 8 December 1994, but that document was not received by the agent for the applicant until 12 December 1994.

On 21 December 1994, Exxon applied under the provisions of section 223(2) for an extension of time from 8 December 1994 until 12 December 1994 to serve the copy of the Statement.

By letter dated 19 January 1995, Ethyl objected to the granting of the application for an extension of time.

The matter was heard in Melbourne on 15 March 1995. Ethyl was represented by Debbie Beadle, patent attorney of Davies Collison Cave, Melbourne. Exxon was represented by Lynn Stafford, patent attorney of Watermark, Melbourne.

DECLARATIONS

Material provided in declaratory form in support of the request for extension of time is:

a statutory declaration, dated 21 December 1994, by Darryl B Mischlewski, patent attorney of Watermark, Melbourne; and

a statutory declaration, dated 17 February 1995, by James Anthonisz, mailclerk of Watermark, Melbourne.

Mr Mischlewski declares as follows:

"1. I am responsible for the carriage of the opposition by Exxon Chemical Company to the grant of Patent 650025 by Ethyl Petroleum Additives Ltd.

2. The Statement of Grounds and Particulars required under Reg.5.4 was prepared and dispatched on December 7, 1994. The original was sent to the agents for the applicant and a copy was sent to the Patent Office.

3. I expected that both documents would be received by December 8, 1994 which was the deadline for service. The Patent Office copy was dispatched by courier to the Melbourne Sub Office and the original was delivered to the Hawthorn Post Office. As far as I can ascertain both documents were dispatched in this manner on December 7, 1994.

4. Australian Post guarantee next day delivery for all mail posted in the Melbourne Metropolitan area for delivery within that area. I therefore expected that the agents for the applicant would receive the Statement under Reg. 5.4 by December 8, 1994.

5. I was informed by phone by the Patent Office Opposition Clerk on December 20, 1994 that the agent for the applicant had not received the Statement until December 12, 1994. I can only assume that the delay was due to Australia Post.

6. As it was always the opponents intention to serve the Statement within the required deadline, I immediately took steps to obtain an extension of time for service of the Statement."

Mr Anthonisz declares as follows:

"1. I am employed by Watermark Patent & Trademark Attorneys and responsible for all outgoing mail from Watermark. I have been with Watermark for 6 years and have held this position for all the time I have been with Watermark.

2. On 7 December, 1994 Darryl Mischlewski left in my care prior to 3.45 p.m., correspondence dated 7 December, 1994 to the attention of Ms Debbie Beadle of Davies Collison Cave. A copy of this correspondence is currently before me and marked Exhibit JA1.

3. Outgoing mail left in my care in the mailing section up to 3.45 p.m. can be guaranteed to be franked and mailed out on that day. There were no known hold-ups on Wednesday, December 7, 1994 and mail left in the mailing section prior to 3.45 p.m. was franked and picked up from our premises by the Australia Post courier and delivered to the Hawthorn Post Office that day.

4. As a result of my experience and position with Watermark I am aware that under the normal course of events one would expect the letter to arrive at Davies Collison Cave in Melbourne city the day after it was posted in Hawthorn. Currently before me and marked Exhibit JA2 is a photograph of the post box outside the Hawthorn Post Office on Burwood Road, Hawthorn, Victoria, which clearly indicates that a letter posted before 6.00 p.m. will be delivered the next working day in the Melbourne metropolitan area.

5. I am aware that the correspondence did not reach the intended address until 12 December, 1994 and can only assume that the delay was due to Australia Post."

Material provided in declaratory form in support of the objection to the grant of the request for the extension of time is a statutory declaration, dated 24 February 1995, by Debbie Beadle, who declares as follows:

"1. I am a member of the firm of Davies Collison Cave who are the Patent Attorneys responsible for these proceedings on behalf of Ethyl Petroleum Additives Ltd.

2. I was advised by telephone on 10 January, 1994 by Mr Don Twomey who is a Postal Manager at Hawthorn Post Office that Australia Post do not "guarantee" next day delivery for mail posted in the Melbourne metropolitan area for delivery within that area. Mr Twomey advised that Australia Post merely state that the "scheduled" delivery of mail is the next working day in the Melbourne metropolitan area if it is posted in that area on the previous working day before 6.00 p.m. In support of this, I refer to photographs of an Australia Post letter box which are produced to me and marked "Exhibit DAB-1".

3. Mr Twomey also advised that the only delivery service under which Australia Post "guarantees" next day delivery is via their Express Post service. In support of this, I refer to photographs of an Express Post letter-box which are now produced to me and marked "Exhibit DAB-2". Mr Twomey advised that when the Express Post delivery service is used, the customer must pay for a special envelope and receives a docket so that they can identify their mail if it is misplaced or does not arrive on time."

SUBMISSIONS

In summary, Ms Stafford's submissions in support of the request for extension of time were as follows:

- The reason for the failure to serve the Statement by the final due date was either because of:

(i)  circumstances beyond the control of Exxon's agent, i.e. inordinate delay in the delivery of the mail, or

(ii) an error made by Exxon's agent, i.e. the responsible attorney Darryl B Mischlewski made an error of judgement in arranging for the Statement to be served by inappropriate means (the ordinary mail service) rather than by a guaranteed next day or same day form of delivery such as Express Post, Courier or facsimile. Ms Stafford referred me to Kimberly-Clark Ltd v Commissioner and Minnesota Mining and Manufacturing Ltd 13 IPR 569.

- Whilst it is normal practice to send ordinary correspondence via mail, it is not common practice by Darryl B Mischlewski or other members of the firm of Watermark to serve documents by mail. As a matter of practice, documents such as evidence and statements of grounds and particulars are generally couriered or more recently served by facsimile to the relevant agents. It is also normal practice that documentation from Watermark to be filed with the Patent Office is delivered daily by courier to the Melbourne Sub Office.

- A serious opposition is foreshadowed as is evidenced by the statement of grounds and particulars, there was no undue delay in filing the request for an extension of time, and the patent applicant would not be unduly prejudiced since the agents for the applicant were in possession of the Statement only four days after the due date.

In summary, Ms Beadle's submissions in support of the objection to the grant of the extension of time were as follows:

- The request for an extension of time is deficient in that it does not specify whether the extension is sought under section 223(2)(a) or section 223(2)(b).

- Mr Mischlewski's declaration contains a false statement in that Australia Post does not guarantee next day delivery within the Melbourne metropolitan area by its ordinary postal service.

- The difficulty experienced in timely serving the Statement was not because of circumstances beyond the control of Exxon's agent but rather was of that agent's own making.

- Mr Mischlewski displays an ignorance of the law in relation to regulation 5.4 when declaring that he arranged for a copy of the Statement to be filed (by courier) at the Melbourne Sub Office and for the original to be served (by post) on the patent applicant. It appears that because of his ignorance of the law Mr Mischlewski took steps to ensure that the document was "timely" filed with the Patent Office rather than served upon the patent applicant within the period of time provided under regulation 5.4. Ms Beadle referred me to Lands Patent 27 RPC 481 as being relevant in relation to an action being taken as a result of ignorance of the law.

- A proper case justifying the extension of time sought has not been made out. Thus there is no full and frank disclosure in Mr Mischlewski's declaration of the nature of any error or omission made by him which led to the failure to serve the Statement by the due date or of the chain of causation. Ms Beadle referred me to Kimberly-Clark (supra), and Henkel v Fina Research (1993) AIPC 90-999.

DECISION

Regulation 5.4(1) provides that:

"An opponent must:
(a) within 3 months of filing the notice of opposition serve on the applicant a copy of a statement that sets out:
(i)  the grounds of the opposition; and
(ii) the particulars relating to each ground; and
(b) as soon as practicable after the copy of the statement has been served on the applicant, file the statement."

Section 223(2) provides that:

"Where, because of:
(a) an error or omission by the person concerned or by his or her agent or attorney; or
(b) circumstances beyond the control of the person concerned;
a relevant act that is required to be done within a certain time is not, or cannot be, done within that time, the Commissioner may, on application made by the person concerned in accordance with the regulations, extend the time for doing the act."

In accordance with regulation 22.11(3)(a) the step under regulation 5.4(1)(a) is not a prescribed action to which section 223 does not apply. The period specified under regulation 5.4(1)(a) therefore relates to the doing of a relevant act and is thus extendable at the discretion of the Commissioner under section 223(2).

In the present case before considering whether to exercise my discretion under section 223(2) in favour of granting the extension of time sought, I must be satisfied that the reason for the failure to serve the Statement by the due date was because of "circumstances beyond control" or "error or omission".

I think that Ms Stafford is correct in her submission that the form in which the request for an extension of time has been made allows me to consider paragraphs (a) and (b) of section 223(2) in the alternative.

I shall first consider section 223(2)(b).

In Atomic Skifabric v Registrar of Trade Marks, 7 IPR 551 at 558, the Federal Court (Jenkinson J.) said:

"In the context in which it is found, the expression "circumstances beyond the control of the person concerned" does in my opinion designate - and designates only - occurrences which neither the person concerned nor any person acting on his behalf to do the act or take the step could prevent."

In the present matter, there is nothing before me to suggest that it was not within Mr Mischlewski's control to make a suitable arrangement to ensure that the Statement was timely served. Thus, it has not been established that there were any surrounding circumstances which prevented him from arranging for the Statement to be despatched by a suitable and readily available guaranteed next day delivery service (such as Express Post or courier) rather than by the unsuitable scheduled but not guaranteed next day delivery service ( ordinary post) which he chose to arrange. Accordingly I am not satisfied that grounds for an extension of time based on section 223(2)(b) have been established.

I shall now consider section 223(2)(a).

I agree with Ms Beadle's submission that it appears from Mr Mischlewski's declaration that he was unaware that regulation 5.4(1) provides that it is the copy of the Statement that has to be served upon the patent applicant and that it is the original which has to be filed with the Patent Office. However, Mr Mischlewski did arrange for the document to be despatched to the agent for the patent applicant on the day before the due date for service and he has declared that he expected that it would be received on the due date. I therefore think that it has not been established that Mr Mischlewski was unaware that the Statement had to be served within the time period specified in regulation 5.4(1).

At the hearing Ms Stafford elaborated upon the circumstances in which various modes of document delivery are utilised as standard practice at Watermark. She said inter alia that it was normal procedure at Watermark for documents to be served by courier or facsimile and that this procedure was normally followed by Mr Mischlewski. Although this information was presented orally, rather than in the declaratory form in which it should have been presented, I accept it as evidence on the basis of its inherent probability.

In Kimberly-Clark (supra), Jenkinson J said that:

"The term "error" should not be limited to accidents or inadvertences, but to include errors of judgement."

In the present matter, I am satisfied, on the basis of the declarations by Messrs Mischlewski and Anthonisz and the information provided by Ms Stafford at the hearing, that it was an error of judgement and an aberration on Mr Mischlewski's part that he arranged for the Statement to be despatched to the patent applicant's agent by an inappropriate mode of delivery. I am also satisfied that it was that error which led to the failure to serve the Statement by the due date. I am therefore satisfied that grounds for an extension of time based on section 223(2)(a) have justifiably been established.

I now turn to consider whether I should exercise my discretionary powers in favour of granting the extension. Considerations which may need to be taken into account in relation to the exercise of the power of extension have been identified in numerous reported decisions, such as Vangedal-Nielsen v Commissioner of Patents & Gelphen Nominees 34 ALR 144, Kimberly-Clark (supra), and Ferocem Pty Ltd v Commissioner of Patents (1994) AIPC 91-057.

Considerations which I think are relevant in the present matter are:

- There was no undue delay in filing the request for an extension of time.

- Because the agents for the patent applicant received the Statement only 4 days after the due date for service, the patent applicant would not be unduly prejudiced if the extension were to be granted.

- From a cursory inspection of the Statement I consider that a serious opposition appears to be foreshadowed. The public interest that invalid patents should not be granted would then be best satisfied if the service of the Statement were to be validated thus enabling the opposition to proceed.

In my view the balance of the private interests of the parties and of the public interest lies in favour of granting the extension.

I therefore grant the extension of time sought under the provisions of section 223(2)(a) and thereby validate the service of the statement of grounds and particulars.

DIRECTIONS

I direct that the period of one month specified in regulation 5.5(1) within which the patent applicant may request dismissal of the opposition shall commence from the date of this decision.

I also direct that the timing for serving evidence in support shall start from the date of this decision.

COSTS

The power of the Commissioner to award costs is based on section 210 and regulation 22.8. The power to award costs is discretionary, so I must take into account all relevant considerations (see American National Can Company v W.R. Grace & Co.-Conn (1994) AIPC 91-063).

Although I have found the present request for an extension of time justified, I believe that that would not have been the case in the absence of the information provided by Ms Stafford at the hearing. Because that information was not provided earlier in declaratory form, the patent applicant was not afforded an appropriate opportunity to reconsider whether or not it should maintain its position in objecting to the extension of time. In these circumstances, I award costs against Exxon.

Alan Moore
Delegate of the Commissioner of Patents

Patent attorneys for the applicant  :  Davies Collison Cave, Melbourne

Patent attorneys for the opponent   :  Watermark, Melbourne