Firmaframe Nominees Pty. Ltd. v Automatic Roller Doors Australia Pty. Ltd

[1984] APO 16

In the Matter of the Patents Act 1952

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In the Matter of Patent Application No. 532820 in the Name of FIRMAFRAME NOMINEES PTY. LTD.

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In the Matter of Opposition thereto by

AUTOMATIC ROLLER DOORS AUSTRALIA PTY. LTD.

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In the Matter of an Application for Extension of time under Section 160(2)(a)

DECISION OF DEPUTY COMMISSIONER OF PATENTS:
        This matter is an application for an extension of time for lodging a notice of opposition under sub‑sec. 59(1) to the sealing of a standard patent on Application No. 532820 in the name of Firmaframe Nominees Pty. Ltd.  Acceptance of the application was advertised in the Australian Official Journal of Patents on 13 October 1983.  The period of three months allowed under sub‑sec. 59(1) for lodgement of a notice of opposition, or an application for an extension of time for lodging such notice, therefore expired on 13 January 1984.  On 7 February, 1984 Automatic Roller Doors Australia Pty. Ltd. (Automatic Roller Doors) lodged an application under sub‑sec. 160(2) for an extension of time for lodging notice of opposition to the patent application.  Concurrently with that application, Automatic Roller Doors also lodged a notice of opposition under sub‑sec. 59(1).

The extension of time sought under sub‑sec. 160(2) does not exceed 3
months. Accordingly, the requirement to advertise the application and the entitlement to oppose (sub‑secs. 160(4) and (5)) does not arise. However, a decision of the Commissioner under sec. 160 is subject to review by the Administrative Appeals Tribunal (sec. 151) irrespective of the length of extension sought. By virtue of sec. 27 of the Administrative Appeals Tribunal Act 1975, any person whose interests are affected by a decision subject to review, may make an application for review. The applicant for the patent application involved is clearly one such person. Accordingly, it is appropriate that the applicant for the patent be given the opportunity to express its view on matters which affect its interests arising in the exercise of the Commissioner's discretion under sub‑sec. 160(2). I believe that approach is consistent with the conclusion expressed by the Federal Court in Scaniainventor v Commissioner of Patents (36 ALR 101) that the discretion in sub‑sec. 160(2) "should permit of due account being taken of the interests of anyone likely to be adversely affected by an extension sought." The applicant for the patent availed itself of this opportunity and both parties were heard in the matter.
        The extension of time sought is governed by sub‑sec. 160(2) which provides that ‑

"(2)where by reason of ‑

(a) an error or omission on the part of the person concerned or of his agent or attorney; or

(b)circumstances beyond the control of the person concerned, an act or step in relation to an application for a patent or in proceedings under this Act (not being proceedings in a court) required to be done or taken within a certain time has not been so done or taken, the Commissioner may, upon application by the person concerned, but subject to this section, extend the time for doing the act or taking the step."

By virtue of sub‑sec. 160(3), the time may be extended notwithstanding that it has expired.
The power of the Commissioner to extend times under sub‑sec. 160(2) is a general power applicable to extend the times prescribed in the Act for doing an act or taking a step in relation to an application for a patent or proceedings under the Act except where specifically excluded (Lehtovaara v Acting Deputy Commissioner of Patents 39 ALR 103). As such, it is applicable to extend the time specified in sub‑sec. 59(1) for lodging a notice of opposition to the grant of a patent on an application for a standard patent.
        However, the entitlement to an extension of time under sub‑sec. 160(2) is conditional, in the first place, on the failure to do the act or take the step within the prescribed time being the result either of an error or omission on the part of the person concerned or of his agent or attorney or of circumstances beyond the control of the person concerned.  In order to determine this question, I turn to the declarations on behalf of the applicant for extension setting out the grounds upon which the application is made and, which, by virtue of reg. 47, are required to accompany an application under sub‑sec. 160(2).
        In the present case, two declarations have been lodged, one by Mr W.J. Lumbers, Director of Automatic Roller Doors Australia Pty. Ltd. and one by Mr R.S. Catt, on behalf of R.K. Maddern & Associates, the firm of patent attorneys acting for the applicant for extension.  Mr Lumbers' declaration explains that some years ago he arranged with Mr Catt for his company to be notified of the advertisement of acceptance of any patent application in the field pertaining to roller doors and roller door operating equipment, that being the field in which his company is engaged in manufacture.  On 25 January 1984, he received a letter from R.K. Maddern and Associates advising of the acceptance of patent application No. 532820 and enclosing a copy of an abridgement of the accepted application.  Together with his company's electrical engineer, he examined the abridgement and both concluded that the roller door operating unit which his company was currently manufacturing and marketing was close to the arrangement claimed in the abridgement.  He immediately instructed Mr Catt, if possible, to take all necessary steps to apply for an extension of time to lodge a notice of opposition to the grant of a patent on the application.
        In his declaration, Mr Catt acknowledges that it had been his custom, on behalf of Mr Lumbers, as Director of Gliderol Roller Doors Pty. Ltd., an associated company of Automatic Roller Doors, to police the acceptance of patent applications advertised in the Official Journal of Patents, Trade Marks and Designs for inventions in the field of roller doors and roller door operating equipment and to notify him of any such acceptances so that Mr Lumbers could be kept informed of developments taking place in the roller door field as well as be given the opportunity to institute opposition proceedings should the situation so require.  He also acknowledges that, by letter dated 24 January 1984, his firm informed Mr Lumbers of the advertisement of acceptance of patent application No. 532820.
        As stated above, advertisement of acceptance of that application appeared in the Official Journal published on 13 October 1983.  Mr Catt explains the circumstances for the notification to Mr Lumbers not being dated until 24 January 1984, as follows ‑

.In his firm it is normal practice for the Patent Abridgement Supplement of the Official Journal to be examined, firstly, by himself and, secondly, by his partner, Mr R.K. Maddern, and a client's name entered, as appropriate, against any patent abridgement which either he or his partner considers should be drawn to the attention of that client.

.After that examination the Supplement is then passed to one of their office staff who is responsible for carefully searching through each of the Journals and forwarding an appropriate letter to any client whose name is entered against an application advising of acceptance of the application and enclosing a copy of the relevant abridgement.

. He recalls going through the Supplement of 13 October 1983, in which the advertisement of acceptance of patent application No. 532820 appeared, in early December 1983 and that he passed on that Supplement for perusal by his partner in accordance with the normal procedure of their office.

. His partner inadvertently omitted to go through that Supplement until after the expiration of the three months opposition period and did not become aware of the oversight that had been made until 24 January 1984.

. Immediately the attention of Mr Lumbers was drawn to the advertisement of acceptance of patent application No. 532820, R.K. Maddern & Associates were issued with instructions to lodge an application for extension of time within which to lodge a notice of opposition to the grant of a patent on the application.

In consequence of those circumstances Mr Catt alleges that the failure of Automatic Roller Doors to lodge a notice of opposition within the time prescribed by sub‑sec. 59(1) was due to an error or omission on the part of R.K. Maddern & Associates.
        In support of his assertions, Mr Catt attaches a copy of a letter dated 24 January and addressed to Gliderol Roller Doors Pty. Ltd. enclosing a copy of the page of the Official Journal containing advertisement of acceptance of patent application No. 532820 with the name "GLIDEROL" beside the abridgement.  In my view, nothing turns on the fact that Automatic Roller Doors and not Gliderol Roller Doors is the applicant for extension of time since the party with which R.K. Maddern was dealing was Mr Lumbers as is clear from Mr Catt's letter.  However, which of the two roller door companies Mr. Lumbers chose to involve in the proceedings seems to me to be immaterial.
        Both Mr Lumbers and Mr Catt's declarations establish that Mr Lumbers and R.K. Maddern & Associates maintained at the relevant time a mutually recognised  relationship in which the latter firm undertook to notify the former of the acceptance of patent applications in the roller door field which the partners of that firm considered should be brought to the notice of Mr Lumbers for the two purposes of keeping him informed of developments taking place in the roller door field as well as giving him the opportunity of instituting patent opposition proceedings as considered necessary.  While the declaration of Mr Catt does not, in my view, unquestionably establish that the failure of his firm to notify Mr Lumbers of patent application No. 532820 within the 3 months period prescribed for lodging a notice of opposition was an error on the part of that firm it was, in my view, a clear omission by the firm in relation to the undertaking given to Mr Lumbers to notify that firm of acceptances of patents relating to developments taking place in the roller door field for the purpose of providing him with the opportunity of instituting patent proceedings should the need arise.  Accordingly, I consider the reason for the failure to lodge the notice of opposition within the time prescribed was due to an omission on the part of R.K. Maddern & Associates acting as agent for the applicant for Automatic Roller Doors.  The application for extension therefore falls within the ambit of sub‑sec. 160(2).
        However, notwithstanding that the application for extension falls within the reasons specified in sub‑sec. 160(2), the grant of an extension under that sub‑section still remains a matter for the discretion of the Commissioner.
        The considerations applicable to the grant of an extension of time under sec. 160 were explained by Aicken J. in the Board of Control of Michigan University's Application (AOJP Vol. 52 p. 1998) as considerations which ‑

"involve matters of public interest generally as appears from the requirements for an advertisement, from the provision for opposition by persons likely to be affected and from the provision in sub‑sec. (6) for the protection of persons who might suffer prejudice by reason of steps taken out of time.  Delay or undue delay in making such an application is not expressly referred to in s. 160, but would plainly be material to the consideration of the application in so far as it might affect third parties."

I believe that the consideration of public interest generally applies irrespective of whether the extension sought is not sufficiently long to require advertisement and thus permit of opposition.  By virtue of sec. 151, a decision of the Commissioner is subject to review by the Administrative Appeals Tribunal irrespective of the length of extension sought.  The scope of such review includes all the considerations applicable in the exercise of the discretion and is unaffected by the length of the extension sought.
        Aicken J. did not spell out the matters constituting the public interest generally except to identify undue delay in making an application under sec. 160 as being one such matter.  Undue delay, i.e. delay which is "unreasonable in all the circumstances", in my view, does not arise here.  The delay involved is three weeks, i.e. the period commencing on the expiry of the time for lodging notice of opposition (14 January 1984), since that was the date when the entitlement to lodge an application under sub‑sec. 160(2) for an extension of that time arose, and terminating on the date upon which the application was lodged (2 February 1984).  In the present case, all the circumstances material to that delay include not only circumstances consequential on the failure to lodge the notice of opposition within the prescribed time but circumstances responsible for that failure.  Moreover, in assessing the circumstances, delays attributed to R.K. Maddern & Associates cannot be ignored in view of their role as agent for the applicant through Mr Lumbers.
        However, in the event, the extent of delay attributable to the failure to lodge notice of opposition in time through omissions in the office of R.K. Maddern & Associates in not notifying Mr Lumbers until 25 January 1984 is a mere two weeks while the delay in lodging the application for extension consequential on that omission is a mere week.  Accordingly, on the basis of the short period involved, I do not consider that I can conclude that that period constitutes undue delay in the circumstances involved.
        However, the generality of public interest in determining whether or not to grant an extension of time under sec. 160 obviously includes the specific public interest inherent in both the purpose and scope of the particular provision in which the time specified is sought to be extended, as well as any conditions expressly governing the grant of such extensions (see judgements of Gibbs C.J. and Aicken J., Board of Control of Michigan Technological University v Deputy Commissioner of Patents, supra).
The specific public interest inherent in the particular purpose and scope of sec. 59(1) was analysed in Vangedal‑Nielsen v Commissioner of Patents (33 ALR 144). In that case Bowen C.J. stated ‑

"The right to lodge a notice of opposition within three months is clearly given mainly in the interests of the person wishing to oppose a patent on any one or more of the grounds stated in s.59(1). No doubt there is also a public interest involved in ensuring that worthless patents are not granted because insufficient opportunity has been afforded of raising those grounds (Kaiser Aluminium and Chemical Corporation v Reynolds Metals Company (1969) 120 CLR 136). Three months has been considered by Parliament to be an appropriate period to allow for this. But it has been recognised that cases may occur where for one reason or another three months may prove insufficient. Accordingly, it has been provided that further time may be allowed not exceeding a further three months. The Commissioner is interposed as the Arbiter whether such an extension should be allowed and how long it should be. Clearly, the Commissioner will have to consider the interests of the prospective opponent who, for some good reason, has not been able to mount his opposition within the initial period of three months. The Commissioner will further have to have in mind, where a serious opposition is foreshadowed, the public interest which has been mentioned, but he will have to require to be satisfied by an applicant for an extension that a proper case has been made out justifying an extension."

Although Bowen C.J. was considering an extension of the time prescribed in sub‑sec. 59(1) under the specific provisions for extension in that sub‑section, the same considerations of public interest are involved in the grant of an extension of a particular prescribed time, as stated above, notwithstanding that different statutory mechanisms are available for seeking such extension.
        Bowen C.J. thus identified two specific and independent considerations of public interest in the grant of an extension of the time.  Firstly, the interest of a prospective opponent who, for some good reason, was not able to mount his opposition within the initial period of three months.  Secondly, where a serious opposition is foreshadowed by a prospective opponent, the interest of the public in ensuring that worthless patents are not granted because insufficient time has been afforded in raising the grounds of opposition specified in sub‑sec. 59(1).  In the first case, favourable exercise of the discretion to extend the time for lodging a notice of opposition is subject to the applicant for the extension establishing a good reason for the failure to lodge the notice in the prescribed time.  In the second case, favourable exercise of the discretion is subject to the applicant establishing that a serious opposition is involved.
        Turning to the consideration of whether the failure of Automatic Roller Doors to lodge a notice of opposition within the time prescribed involves a "good reason".  In my view this question resolves into the issue of whether the failure to lodge the notice of opposition within the period prescribed (3 months) involves undue delay.  As I understand it, this issue is distinct from the question of whether there was undue delay in the lodgement of the application under sub‑sec. 160(2) since the time within which such notice could be lodged ‑ whether with or without an extension of time ‑ commenced on the date on which application No. 532820 was advertised as accepted in the Official Journal.  The fact that, if the notice was lodged within three months, the question of delay would not be material to the entitlement to lodge the notice is irrelevant in determining the commencement of the delay when such delay has become a factor in determining that entitlement.
        Advertisement of acceptance of an application for a standard patent is advertised in the Official Journal of Patents, Trade Marks & Designs and is "notice to the world at large" that an interested party may oppose the application (Board of Control of Michigan Technological University v Deputy Commissioner of Patents A.O.J.P. Vol. 52 p. 1992).  Irrespective of the responsibility for awareness of such notice in general, in the present instance, R.K. Maddern & Associates were specifically charged by Mr Lumbers with, and accepted responsibility for, maintaining awareness of advertisement of accepted patent applications in the roller door field and notifying that company of such acceptances in sufficient time to enable the lodgement of a notice of opposition if that was considered to be required.  Accordingly, the advertisement of acceptance of patent application in the Official Journal of 13 October 1983 was notice to the applicant that, if notice of opposition to that application were to be lodged, it had to be lodged before 13 January 1984.
        The circumstances for the failure to lodge a notice of opposition within the prescribed time, as explained by Mr Catt, are that the Patent Abridgements Supplement of the Official Journal advertising acceptance of patent application No. 532820 was considered by him in early December 1983.   It was then passed to his partner who, according to Mr Catt, inadvertently omitted to go through it until after the expiry of the opposition period.  On his own admission, Mr Catt did not consider the Journal until 7 weeks after advertisement of acceptance of patent application No. 532820.  He does not state when he passed the Journal on to his partner, Mr Maddern and I am therefore unable to determine whether Mr Maddern had sufficient time ‑ in the light of the time taken by Mr Catt ‑ to consider the Journal himself and to have Mr Lumbers advised of that acceptance before expiry of the period of opposition.  Moreover, there is no evidence by Mr Maddern to explain his circumstances and to establish whether inadvertence was or was not a factor.  In these circumstances, I am unable to conclude that no undue delay was involved. 

        However, final determination of this matter must also take into account whether a serious opposition is foreshadowed by the prospective opponent.  On this point, Mr Lumbers states in his declaration that he is aware of prior art material, some of which is approximately ten years old, which, in his opinion anticipates at least some of the claims of the accepted application.  He also states that he has already begun to obtain specific details of prior art evidence.  However, no such evidence was tendered at the hearing.  The applicant subsequently filed matter disclosing evidence of prior art which it considers material as prospective evidence‑in‑support.  I do not think I am entitled at this stage to take this matter into account and have not done so.
        However, the consideration is the foreshadowing of a serious opposition rather than the lodgement of a serious opposition.  If the latter were the case, then evidence of the substance of the opposition would be a requirement for determination and the merit of that substance would be a necessary basis for such determination.  In so far as the foreshadowing of a serious opposition is concerned, it appears to me that the circumstances involved in seeking to lodge notice of opposition are equally material to the  determination of the former consideration.  In the present case, the circumstances involved are distinguished from those in Vangedal‑Nielsen v Commissioner of Patents (supra).  In that case, all the circumstances suggested that no potentially serious opposition was involved.  In the present case, the retention of a patent attorney to advise of accepted applications for the purpose of lodging notice of opposition where appropriate, the seeking of extension of time for lodging such notice where advice on relevant material now received too late to lodge such notice, and the communication of concern at the failure to provide relevant material in time and the ultimate lodgement of notice of opposition in my view, collectively establish that a serious opposition is foreshadowed.
        In the circumstances, therefore, I consider that the application for extension of time under sub sec. 160(2) to lodge a notice of opposition by Automatic Roller Doors should be granted.  Accordingly, I allow the application for extension of time under sub‑sec. 160(2).
        I make no award as to costs since, although the applicant of the application for a standard patent concerned was heard, the matter is essentially an ex parte matter involving the applicant for extension of time under sub‑sec. 160(2) and the Commissioner.

C.H. FRIEMANN

Deputy Commissioner of Patents

Appearances.

For the applicant for extension of     For the applicant of Application No.
time Mr K C Callinan of Callinan &     532820.  Mr D Shavin of Counsel
Associates, patent attorneys,         instructed by Clement Hack & Co. patent