Firebelt Pty Limited v Macdonald Johnston Engineering Comply Pty Ltd

[1995] APO 71

official notice

decision of a delegate of the commissioner of patents

Application  :          No. 651031 in the name of FIREBELT PTY LIMITED

Title:          A Side Loading Refuse Vehicle

Action: An opposition under s.59 of the Patents Act 1990 by MACDONALD JOHNSTON ENGINEERING COMPANY PTY LTD and an objection to an application for an Extension of Time under r.5.10(2).

Decision:          Issued            .

Abstract:          Two applications for extensions of time under regulation 5.10(2), one of which was made after the time for service of evidence in answer had expired, were not justified and the extensions refused.  Applicant was allowed a small extension of time to file available evidence at hand.

patents act 1990

decision of a delegate of the commissioner of patents

Re:Patent Application No. 651031 in the name of FIREBELT PTY LIMITED and an opposition under s.59 of the Patents Act 1990 by MACDONALD JOHNSTON ENGINEERING COMPANY PTY LTD and an objection to an application for an extension of time under r.5.10(2).

background

Patent application 34856/93 was filed on 10 February 1993 by Firebelt Pty Limited (Firebelt) as PCT/AU93/00052.  The application claimed priority from a number of Australian Provisional applications, the earliest of which was filed on 10 February 1992.  Application number 34856/93 was advertised accepted on 7 July 1994 and assigned the number 651031.

A notice of opposition to the grant of a patent was filed by MacDonald Johnston Engineering Company Pty Ltd on 6 October 1994.

Evidence in support was served on 5 May 1995.  On 17 August 1995 Firebelt applied for an extension of time to serve evidence in answer.  MacDonald lodged an objection to “all of the extensions sought” on 5 September 1995.  Firebelt applied for a further extension on 3 November 1995.

The application for an Extension of Time filed on 17 August 1995 gave the circumstances and grounds upon which the application was made as:

“An error by the applicants Attorney resulted in the present application being made after 5 August 1995.

Two oppositions have been lodged in respect of application No. 651031.  The opponent in the other opposition Manco Engineering and Equipment company Ltd has been granted an extension of time until 28 August in which to serve Evidence in Support.  The applicant has reviewed the Evidence-in-Support served to date but can not complete Evidence-in-Answer to either opposition until all evidence is served bearing in mind that the Statement of Grounds and Particulars for each opposition overlap.  The extension of time is required to consider the evidence to be served by the other opponent in relation to the applicants defence to the opposition, finalise and serve the Evidence in Answer.”

The application for an Extension of Time filed on 3 November 1995 gave the circumstances and grounds upon which the application was made as:

“A draft Declaration has been prepared and is expected to be served in the next two to three weeks.  Evidence has been sought from Dr Duncan Gilmore a Mechanical Engineer concerning the operation of the machine depicted in Exhibit AB-2 of the opponent’s evidence as the combination of the machine depicted in this exhibit with teachings of the publications referred to in the evidence is pivotal to the Opponent’s case.  The photographs supplied by the Opponent are unsuitable for the Engineer to make assessment of the operation of the machine.  The applicant has written to the Opponent seeking original photographs for the purpose of the Engineer’s consideration or alternatively to inspect the machine here in Brisbane.  According to the Opponent’s evidence, this particular loader is common general knowledge in Australia and presumably a loader is in operation here in Brisbane that can be examined.  Further time is required to enable the Engineer to examine the original photographs and/or for the inspection and a Declaration be prepared and served on the Opponent.”

The matter was set down for hearing in Canberra on 22 November 1995.  Firebelt was represented by Mr Trevor Dredge of Intellpro, Brisbane and MacDonald by Mr Laurence Dyson of Watermark, Sydney.  Both parties appeared by telephone.

The specification describes a side loading refuse vehicle for collection and separate storage of garbage and/or recyclable wastes.

Submissions

Details of the submissions by both parties are quoted where relevant in the decision.

Decision

Burchett J. in Ferocem Pty Limited v Commissioner of Patents (1994) AIPC 91-057, in discussing the considerations for determining an application for an extension of time under reg 5.10(2), inter alia referred to the observations of Bowen C.J. in Vangedal-Nielsen v. Smith (1980) 33 ALR 144, noting "he ... set out some of the considerations involved upon an application for an extension of time."

From these judgements these considerations can be stated generally as follows:

a)The Commissioner, before allowing an extension, must be satisfied that the person seeking the extension has made out a proper case justifying the extension;

b)The Commissioner must consider not only the private interests of applicants for patents and opponents, but also the public interest, by ensuring that invalid patents are not granted, and that proceedings are not unreasonably protracted.

The Commissioner should also be mindful of the procedural framework in which oppositions under the Patent Regulations 1991 are conducted.

Subregulation 5.10(2) enables the Commissioner to grant an extension of time to file evidence in an opposition.

Subregulation 5.10(5) sets out the conditions precedent for the Commissioner to grant an extension of time under regulation 5.10(2).

I note that, before I can grant an extension of time in this matter, I must be reasonably satisfied that the extension of time is appropriate in all the circumstances.  If I am not so satisfied, I cannot grant an extension of time.

In the present case Firebelt has sought to justify “special circumstances” (referred to in the Australian Patent Office Manual of Practice and Procedure, Volume 3, paragraph 8.5.1)for filing the extension application after the due date:

1. by providing a statutory declaration dated 17 August 1995 by Trevor James Dredge stating that the application for an extension of time was late because it was overlooked due to an entry relating to an extension of time application not being made in a bring-up diary.

1. by providing, in submissions, a photocopy copy of a previous statutory declaration by Trevor James Dredge, patent attorney for Firebelt, describing his relationship to companies associated with Firebelt and relating to his prosecution of other patent applications.  The details of Mr Dredge’s previous declaration are complicated, but, in essence it describes a patent application assignment between Firebelt and a company called Jayrich Engineering Pty Ltd (Jayrich).  The declaration also describes Mr Dredge’s receipt of an instruction from Jayrich, on the letterhead of another company (Solo Waste), to automatically pay renewal fees without sending reminder notices to the companies. Mr Dredge also refers to errors in dates recorded on cards due to a miscalculation of renewal dates.

Firebelt relies on Genentech v The Welcome Foundation Limited (1988) AIPC 90-493.

In his submissions, Mr Dredge appears to be alleging that the arrangement for him to “automatically” process renewal fees for Jayrich has extended to “automatically” processing extension of time applications for serving evidence in support by Firebelt.  I do not have any evidence to establish that this is the case. 

MacDonald in its submissions says that

“it is stated in the submission that the attorneys for the applicant wrote to his client on 6 July 1995, advising the deadline within which to file evidence in answer in connection with the MACDONALD JOHNSTON opposition and requesting instructions in regard to the extension of time. 

The statement clearly states that the client was aware of the 5 August 1995 deadline. 

It appears that the applicant company did not provide instructions to the attorneys to ensure that the deadline for filing evidence in answer...

It is noted that it is established precedent before the Patent Office, that an incorrect or omitted diary entry on behalf of the Patent Attorney does provide such special circumstances, however, if this is the case, the applicant company was aware of the deadline and was reminded of this less that one month before it was due and there has not been any evidence put forward to show special circumstances which led to the company not following up on the need for action by the deadline of 5 August...

We also note that this is the second incident in the last 24 months in which the attorneys for this applicant have missed diary entries in relation to matters affecting our clients.”

Regulation 82 of the Patents Act 1952 provided that an application that an application for an extension of time under these regulations shall be lodged at the Patent Office (a) before the expiration of the time sought to be extended, or (b) if the Commissioner is satisfied that special circumstances existed which prevented the application being made before that time within such time as the commissioner allows. I note that there is no equivalent precondition in the regulations of the Patents Act 1990 and that an application for extension of time may be made under reg 5.10(2) before or after the time sought to be extended has elapsed.

Nevertheless I am of the view that delay in making a request for extension of time is a relevant consideration in relation to the interests of the other party and the public interest and hence material to the exercise of discretion.  The rationale for this view is that under the current structure of the regulations:

• the other party may be disadvantaged or unnecessarily inconvenienced; and

• the proceedings may be unnecessarily delayed,

if evidence or notice of a request for an extension of time is not served/filed before the time for completion of evidence has expired.

This stems from the comments of Burchett J in Ferocem (supra)

The determination of an application for an extension of time under reg 5. 10(2) involves a balancing exercise, in which competing considerations must be taken into account. There are the interests of the persons directly concerned in the application and opposition in question. There are also public interests, which are not all necessarily ranged on the same side. They include the expeditious disposal of matters in the Patents Office, and questions of cost, of efficiency, and of insistence upon proper professional standards being maintained by those who deal with the Office. But they also include, as Kitto J pointed out in Kaiser Aluminium & Chemical Corporation v The Reynolds Metal Company (1969) 120 CLR 136 at 143, "the public interest that a serious opposition by a person in fact entitled to oppose the grant of a patent should be dealt with on the merits, rather than it be shut out in consequence of a failure in procedure, lamentable though that failure may be".

The time for service of evidence in answer expired on 5 August 1995.  Firebelt did not apply for an extension of time until 17 August 1995.

Mr Dredge declared that it was his error that resulted in the deadline being missed, but he has not provided anything, apart from a statutory declaration, to establish the facts.  MacDonald submits that Firebelt was also in error in assuming that the deadline was met.

In Genentech v The Welcome Foundation Limited (supra) the hearing officer (at page 38288), in referring to what would be necessary to establish the facts in circumstances where errors are alleged to have been made in diaries, said "it would be necessary to exhibit copies of the relevant portions of his personal diary and that of the records department of his firm to establish the facts set out in these paragraphs". Neither Firebelt nor Mr Dredge have done this and I am not in a position to determine whether the facts justify the delay.

What I have before me suggests that this error is simply another in a number of errors to do with dates.  This is certainly not in the interests of either MacDonald or the public and may have unnecessarily inconvenienced MacDonald.  It has resulted in an unnecessary delay.

Consequently, I find that Firebelt has not justified its delay in filing the extension application.

In relation to the justification for the extension Firebelt rely on what was stated in their two applications for extensions of time.  That is, to coordinate evidence in answer for this and the other opposition and to provide time for the inspection of another machine exhibited in evidence and for the preparation of evidence in answer.

They also rely principally on the comments of Burchett J in Ferocem (supra) to justify the extension.  Firebelt submits that they are seriously pursuing the matter and that it should therefore be allowed to continue.

MacDonald make the following submission relating to the extension of time:

“In connection with the need to co-ordinate both oppositions, we note that attorney for the applicant wrote to Cullen & Co (the third party opponent) on 29 June 1995 in regard to his desire to co-ordinate the oppositions, but the attorney for the applicants did not advise us of this desire...

There is little evidence to justify the conclusion that the co-ordination of both oppositions will benefit any party...

We note that the applicant company has been aware of the Notice of opposition since 6 October 1994, and that the Statement of grounds in support were served on 6 January 1995, clearly setting out in specific terms, the nature of the Evidence relied upon by the opponent.”

Firebelt has provided me with nothing to suggest that they were in any way unclear about the case they have to defend in this opposition or to justify coordination of the preparation of evidence in support for both oppositions.  They state briefly, in the reasons for their first application for an extension, that the Statements of Grounds and Particulars for each opposition overlap and that “the extension of time is required to consider the evidence to be served by the other opponent in relation to the applicants defence to the opposition, finalise and serve the Evidence in Answer”. As both oppositions are proceeding separately, I do not see this as sufficient justification for an extension.

I can find no justification for Dr Duncan Gilmore not making his assessment of the machine referred to in the second application for an extension within the normal time allowed for the service of evidence in answer.

Consequently, I find that Firebelt has not justified the extension of time sought.

It is, however, in the public interest that the opposition “should be dealt with on the merits, rather than it be shut out in consequence of a failure in procedure, lamentable though that failure may be”, to quote Burchett J in Ferocem (supra).

Burchett J also made the following comment in Ferocem (supra)

Indeed, even where an application for a particular period, such as the two months sought here, is regarded as unjustified, it seems to me a decision maker, having a discretion of the kind conferred by Regulation 5.10, should always consider whether some short period ought to be allowed, so that an applicant who may have assumed some extension would be granted will not be shut out entirely from presenting evidence that may be immediately available.

Therefore, I allow a small extension of time, until the close of business on 29 December 1995 to make allowance for the Christmas break, for Firebelt to serve the evidence in answer referred to in its application for an extension dated 3 November 1995 and what other evidence may be at hand.

Conclusion

I believe an appropriate case for an extension of time has not been made out and I refuse to grant the extension sought.  However, I will allow a small extension of time, which because of the Christmas break will be until close of business on 29 December 1995, for Firebelt to serve the evidence in answer referred to in its application for an extension dated 3 November 1995 and whatever other evidence may be at hand.

Costs

Normally in actions of this nature costs follow the event.  I see no reason to vary this practice and consequently, I award costs against Firebelt.

R J Sawyer
Delegate of the Commissioner of Patents

Patent attorneys for the applicant   :  Intellpro, Brisbane

Patent attorneys for the opponent   :  Watermark, Sydney