Fletcher Insulation Pty Ltd v Anton Brandt Buenemann
[2014] APO 73
•12 November 2014
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Fletcher Insulation Pty Ltd v Anton Brandt Buenemann [2014] APO 73
Patent Application: 2009236041
Title:A roofing bracket
Patent Applicant: Anton Brandt Buenemann
Opponent: Fletcher Insulation Pty Ltd
Delegate: Dr S.D. Barker
Decision Date: 12 November 2014
Hearing Date: Written submissions completed on 17 October 2014
Catchwords: PATENTS – request for dismissal of an opposition to an extension of time – whether a real and not fanciful prospect of success – one ground of opposition dismissed
Representation: Patent applicant: Think IP Strategy
Opponent:Phillips Ormonde Fitzpatrick
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2009236041
Title:A roofing bracket
Patent Applicant: Anton Brandt Buenemann
Date of Decision: 12 November 2014
DECISION
I dismiss ground 2.
I award costs in accordance with Schedule 8 against Anton Brandt Buenemann.
REASONS FOR DECISION
Patent application number 2009236041 in the name of Anton Brandt Buenemann lapsed due to non-payment of the continuation fee due on 12 November 2013. An application for extension of time was filed on 23 May 2014, accompanied by a declaration and the required fee. The application for extension of time was opposed by Fletcher Insulation Pty Ltd (Fletcher). Mr Buenemann has requested dismissal of the opposition. The parties were heard in relation to the dismissal by way of written submissions.
The opposition
The statement of grounds and particulars identified three grounds of opposition: an error or omission is not established, the failure to pay the fee was due to a deliberate decision, and there has not been a full and frank disclosure of all relevant circumstances.
The law on dismissal
Regulation 5.5 states that the patentee may request dismissal within one month of being served with a copy of the statement of grounds and particulars. That requirement has been satisfied.
The circumstances in which the Commissioner will dismiss an opposition are well established: "whether there are prospects of success that are real and not fanciful or merely arguable" (Re Preference Manufacturing (Aust) Pty Ltd and Commissioner of Patents [2012] AATA 393, 129 ALD 322 at [14]).
The Commissioner can dismiss the opposition in its entirety, or can dismiss a particular ground (or grounds) (L'Air Liquide, SA pour L'Etude et L'Exploitation des Procede Georges Claude v The Commonwealth Industrial Gases Ltd [1992] APO 1, 24 IPR 27).
The application for extension of time
The declaration supporting the extension of time is very brief. It states:
"My patent attorneys had notified me about the upcoming renewal and I intended to have it paid. However, I have been quite busy on other matters and I neglected to arrange payment of the required renewal fee. [There is reference to a personal matter that also caused additional work for Mr Buenemann.] The patent renewal was missed amongst all of this."
On 1 October 2014 (after the applicant had requested dismissal of the opposition) a further declaration was filed by Mr Buenemann. This declaration provides further details that expand on the statement already made.
The statement of grounds and particulars
The present matter relates to an extension of time to pay a continuation fee. The grounds of opposition to an extension of time relate to the basis for allowing the extension, i.e. whether the criteria in subsection 223(2) or 223(2A) are satisfied.
The statement of grounds and particulars identifies three grounds of opposition, and I will consider each in turn. The first question is whether each asserted ground is a ground that is available according to what I have said in the previous paragraph. If a ground of opposition is available to the opponent, the next question is whether there are particulars that set out a case that is "real and not fanciful" in relation to this ground.
Ground 1
Ground 1 is:
"The Applicant has not established any relevant error or omission for the purposes of Section 223(2)(a)."
I accept that this is a ground of opposition available to Fletcher. The question then is whether there are particulars that set out a case that is "real and not fanciful" in relation to this ground.
The particulars of ground 1 are conveniently summarised as:
"the alleged error or omission must have occurred prior to 12 November 2013 for it to be causative"
The particulars point out that the declaration of Mr Buenemann dated 28 May 2014 is phrased in the present tense, and "there is no indication that the circumstances described were present prior to 12 November 2013". This matter is addressed in the second declaration of Mr Buenemann, which says that the circumstances existed prior to 12 November 2013.
However, the second declaration of Mr Buenemann implies that he became aware of the failure to pay the fee prior to 14 May 2014 (paragraph [9]). This is significant, as the fee could have been paid within the grace period up until 12 May 2014. It is not clear why Mr Buenemann did not pay the fee within the grace period. In this case, the original error may not have been causative (as Mr Buenemann had an opportunity to pay the fee during the grace period and avoid lapsing), and the relevant error (if there is one) may have been whatever prevented Mr Buenemann paying the fee during the grace period. Given the shortage of evidence on this point, there is a real and not fanciful argument that an error or omission has not been established. This ground should not be dismissed.
Ground 2
Ground 2 is:
"The Applicant's failure to pay the continuation fee before the 4th anniversary was due to a deliberate decision not to pay that fee and not due to an error or omission."
I accept that this is a ground of opposition available to Fletcher. The question then is whether there are particulars that set out a case that is "real and not fanciful" in relation to this ground.
The particulars of ground 2 are that Aldeck Sales Pty Ltd, Aldeck Roofing (Vic) Pty Ltd and Aldeck Safety Systems Pty Ltd (of which Mr Buenemann is/was a director) have a history of failing to pay renewal or continuation fees. Assuming that these companies had a history of failing to pay renewal or continuation fees, I do not see that a logical conclusion could be drawn that Mr Buenemann would have had an intention to allow the present application to lapse. I consider that the case in relation to this ground is fanciful and not real. This ground should be dismissed.
Ground 3
Ground 3 is:
The Applicant has not made a full and frank disclosure of all of the circumstances in which the alleged error or omission is said to have been made."
I accept that a full and frank disclosure is a well established consideration in extensions of time (Kimberly-Clark Ltd v Commissioner of Patents (No 3) [1988] FCA 421, 13 IPR 569), and as such this is a ground of opposition available to Fletcher. The question then is whether there are particulars that set out a case that is "real and not fanciful" in relation to this ground.
The particulars of ground 3 is that there are "no details of the number or date(s)" when Mr Buenemann was advised by his patent attorney about the requirement for fees. Also, it is particularised that there are "no details of the circumstances in which he became aware that the continuation fee had not been paid".
It must be accepted that the first declaration filed by Mr Buenemann is short on detail, and it is open to Fletcher to argue that falls short of a full and frank disclosure. However, Mr Buenemann has filed a second declaration providing additional information. In relation to the dates that he was advised by his patent attorney in relation to the fees, Mr Buenemann says "I do not see how this level of detail is relevant". In relation to how he became aware of the lapsing of the application, Mr Buenemann says
"I cannot remember the precise date on which I became aware that the patent had lapsed. Once I became aware, I was under the misunderstanding that there was no way to fix the situation … [after 14 May 2014] I mentioned to Mr Bucknell that I had a patent application as well but that it had lapsed. I understood from my discussion with Mr Bucknell that it was indeed possible to have my patent application revived since I had intended to pay the renewal fee and had not done so by mistake. Mr Bucknell was travelling at the time and so with one thing and another it took a short while before we could make this application for an extension of time."
There remains a lack of detail from Mr Buenemann that could lead a hearing officer to conclude that he has not provided a full and frank disclosure. I cannot conclude that this is a fanciful ground of opposition. This ground should not be dismissed.
Conclusion
Ground 2 should be dismissed.
Costs
It is normal for costs to follow the event. Mr Buenemann has been successful in part, and Fletcher has been successful in part. Ordinarily I would make no award of costs. However, Mr Buenemann provided important information as part of his request for dismissal. I consider that costs should be awarded against Mr Buenemann.
Dr S.D.Barker
Delegate of the Commissioner of Patents
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