Flexible Steel Lacing Company v Beltreco Ltd
[2000] APO 24
•28 March 2000
OFFICIAL NOTICE
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Patent: No. 584013 in the name of Flexible Steel Lacing Company
Title: Pulley Lagging
Action: Application for an extension of time under Section 223 by Flexible Steel Lacing Company. Proposal by the Commissioner to invoke regulation 5.11 and objection thereto by Beltreco Ltd.
Decision: Issued .
Abstract
Following a hearing on application for an extension of time delegate of the Commissioner proposed to invoke regulation 5.11 to have regard to six documents that were referred to in the submissions from Flexible Steel Lacing Company. Beltreco Ltd objected that it was inappropriate for Commissioner having regard to any of these documents.
Regulation 22.22 found to apply. Hearing granted on Beltreco Ltd's objection. Invoking regulation 5.11 was found to be appropriate in the circumstances for five of the six documents and the objection against these documents was dismissed. One document was found to be of insufficient relevance and significance. The delegate will not have regard to this document.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re: Patent No. 584013 by Flexible Steel Lacing Company, application
under Section 223 and opposition thereto by Beltreco Ltd. Proposal
by the Commissioner to invoke regulation 5.11 and objection thereto by
Beltreco Ltd.
BACKGROUND
Patent 584013 in the name of Flexible Steel Lacing Company ceased when the renewal fee for the 12th year was not paid by 25 June 1997. Flexible Steel Lacing (Flexible) filed a section 223 application for an extension of time in which to pay the renewal fee. The extension of time application was opposed by Beltreco Ltd (Beltreco) and the matter was heard in Canberra on
23 November 1999. Following the hearing, the Hearing Officer after considering the evidence filed with the application for the extension of time, informed both parties that he proposed to invoke 5.11 to have regard to six documents that were referred to in the Flexibles' submissions but not served as evidence in the current action and gave the parties 1 month to respond to the fact or documents.
Beltreco then objected to the Hearing Officer using regulation 5.11 to have regard to any of the six documents and requested a hearing on this issue.
A hearing on the objection to the use of regulation 5.11 was held in Canberra on 15 March 2000.
Flexible was represented by Peter Pearson, patent attorney for HR Hodgkinson & Co and counsel Ms Julia Baird both of whom appeared by phone. Beltreco was represented by Malcolm Bell, patent attorney for Phillips Ormonde & Fitzpatrick who also appeared by phone.
THE LEGISLATION
Regulation 5.11 states:
5.11 (1) The Commissioner may inform himself or herself of a fact by reference to a document available in the Patent Office.
(2) If the Commissioner proposes to refer to a document under subregulation (1), he or she must:
(a) notify the parties accordingly; and
(b) give the parties a copy of, or access to, the document; and
(c) give the parties an opportunity to give evidence or make representations with respect to the fact or document.(3) In subregulation (2), "document" does not include a document filed under regulation 5.4 ("filing of statement"), 5.8 ("time for giving of evidence") or further evidence referred to in subregulation 5.10 (4) (" conduct of proceedings to which this Chapter applies").
Regulation 22.22 states:
22.22 (1) The Commissioner must, before exercising a discretionary power under the Act or these Regulations adversely to a person, give the person at least 10 days notice of the time when, and the place where, that person may be heard in relation to the exercise of the power.
(2) The Commissioner may exercise that power, if the person:
(a) informs the Commissioner that he or she does not wish to be heard; or
(b) does not attend the hearing; or
(c) being an applicant or patentee, requests the Commissioner to exercise the power of the Commissioner without the applicant or patentee being heard.(3) A request:
(a) must be in the approved form; and
(b) may be accompanied by written submissions.
(4) The Commissioner must, after hearing the person, notify him or her of the decision.
THE DOCUMENTS IN QUESTION
This hearing concerns the following six documents which were referred to by Flexible in submissions at the hearing on its application for an extension in time but appear not to have been filed and served in the current action. I note that Flexible's submissions also referred to three other declarations which were filed with the application for an extension of time and are not in dispute as evidence in the current action.
1. Statutory declaration of Hugh Rudyard Hodgkinson dated 11 December 1998
2. Statutory declaration of Peter Ralph Abecrombie dated 16 December 1998
3.Letter from H.R.Hodgkinson & Co dated 19 June 1998 to Peter Abecrombie of Belle Banne Flexco Pty Ltd
4.Memo dated 25 June 1998 from Mr P.M Ramsay of Flexible Steel Lacing Company to HR Hodgkinson & Co
5.Memo dated 21 October 1998 from Mr P M Ramsay of Flexible Steel Lacing Company to H R Hodgkinson & Co
6.Letter dated 26 October 1998 from H R Hodgkinson & Co to Mr P. M Ramsay of Flexible Steel Lacing Company.
Items 1-2 comprises evidence served during the applicant's dismissal of Opposition hearing.
Items 4-6 were filed in response to a Notice under S.210 to produce documents which was issued on the instigation of Beltreco.
SUBMISSIONS
Submissions from each party are referred to in the decision.
DECISION
Basis for the Hearing:
Regulation 5.11 is an opposition regulation that empowers the Commissioner to refer to documents available in the Patent Office in order to inform himself or herself of a fact. In essence if the Commissioner proposes to exercise this power to refer to documents not served as evidence in the opposition then under subregulation 5.11(2)(c) the parties to the opposition must be allowed an opportunity to give evidence or make representations with respect to the fact or document.
Have the documents been previously served as evidence during evidentiary stages of the opposition to the application for an extension of time?
The documents in question were referred to in Flexible's written submissions at the hearing on their extension of time in the following terms:
"We confirm that the Applicant relies on the evidence as previously filed as outlined in numbered paragraphs 1-8 of our letter to the Commissioner dated 16 August 1999."
In their letter of 16 August 1999 (during evidence in answer) Flexible referred to the documents as follows
"We acknowledge receipt of your facsimile letter dated 15 July 1999 advising us that because the opponent has not served Evidence in Support of the opposition by the due date of 8 July 1999, the provisions of regulation 5.8(3) apply.
In reply, we advise that the applicant does not intend to file Evidence in Answer to the opposition, and now respectfully request that the Commissioner determine the opposition taking into account the following evidence as previously filed and served:
The letter of 16 August 1999 listed 8 documents, the first two of which had been filed during Flexibles' application for an extension of time, the other six, as I have previously indicated were filed in accordance with other actions and while on file had not been included as evidence in the current action.
Flexible advised the Commissioner in the letter of 16 August 1999 that they were not filing evidence in answer, and has never asserted they were filing the material either as evidence in answer or as further evidence under reg.5.10(4). Letters from the Patent Office dated 28 September 1999 which were sent to both Flexible and Beltreco acknowledge receipt of the letter of 16 August 1999 and Flexible's advice that they did not intend to file evidence in answer. Beltreco filed no evidence in response. A mere reference by Flexible to documents filed and served as evidence in the application for dismissal of opposition or filed in response to the Notice under S210 to produce documents would not normally bring these documents in as evidence in the opposition to the extension of time action.
Taking into account the explicit statement from Flexible and the responses of the parties and those of the Patent Office at the time, I conclude that the documents in question have not been filed and served in the current action as evidence in answer or as further evidence. On this basis at least, they are documents that may fall within the ambit of documents on which the Commissioner's discretion under regulation 5.11 could be meaningfully exercised, and which the parties concerned in the opposition have a right to make representations.
Do the parties have a right to a hearing on the threshold question of whether the documents fall within the ambit of regulation 5.11?
Beltreco has argued that as a matter of natural justice they have the right to be heard, on the threshold issue of whether the sort of material sought to be relied upon in fact comes within the ambit of regulation 5.11. Beltreco has also argued that it is inappropriate as a matter of discretion for the delegate of the Commissioner to inform himself of any facts in these documents in the circumstances of the case.
Subregulation 5.11(2) requires the Commissioner to give the parties an opportunity to give evidence or make representations with respect to the fact or document that the Commissioner seeks to inform himself or herself of. It appears to me that subregulation 5.11(2) may only provide for a hearing on the nature of the facts or documents that the Commissioner has proposed to inform himself or herself of, and does not allow for a hearing on whether the Commissioner should inform herself of a fact from these documents.
However even if that is the case then regulation 5.11 must also be considered in the light of regulation 22.22 which provides:
22.22 (1) The Commissioner must, before exercising a discretionary power under the Act or these Regulations adversely to a person, give the person at least 10 days notice of the time when, and the place where, that person may be heard in relation to the exercise of the power.
The application of regulation 22.22 to a procedural regulation in which the Commissioner's discretion is exercised was considered in the ex tempore judgement of Ryan J in Nakamura-Tome Precision Industry Co & Ors v Yamazaki Mazak Corporation &Anor (unreported VG396/1991, Ryan J, 16 November 1991). In that decision, Ryan J considered the application of regulation 22.22 to subregulation 22.23(2). Subregulation 22.23(2) provides that:
The Commissioner may adjourn a hearing from time to time or from place to place by notifying the parties to the hearing accordingly,
Ryan J found that:
"In my view, at least as presently advised, that regulation [regulation 22.22] proscribes a procedure to be followed by the Commissioner before exercising a discretion which is capable adversely of effecting [sic.] the substantive rights of a person. It does not apply to discretionary decisions of a procedural nature one of which is contemplated by regulation 22.23(2)."
(Emphasis added)
I need therefore to consider whether in regulation 5.11 the Commissioner is exercising a discretion that is capable of adversely affecting the substantive rights of a person. As a consequence of the exercise of regulation 5.11, evidentiary material could be included or excluded from a hearing. I consider that the inclusion or exclusion of evidence does impact on the substantive rights of both parties in an opposition. On this basis I conclude that the exercise of the Commissioner's discretion in subregulation 5.11(1) is subject to regulation 22.22 and either party has a right to a hearing on the matter.
Even if I am wrong in concluding that the parties have a right to a hearing on this basis, I think that it is likely that natural justice would require that a hearing should be offered in this case. Again I am guided by the Nakamura (supra) decision where Ryan J concluded that, in respect of the Commissioner's exercise of procedural discretions not subject to the terms of regulation 22.22, the Commissioner was still
"obliged to afford a hearing in conformity with the requirements of such of the rules of natural justice as may be applicable"
Should the Commissioner invoke regulation 5.11 to have regard to the documents?
Are there facts in these documents that the delegate of the Commissioner can inform himself of?
Beltreco's arguments on this point were most succinctly put in their letter to the Patent Office dated 15 February 2000:
"In our submission regulation 5.11 is quite clear. It enables the delegate to ascertain a fact (or presumably facts) which may be ascertainable by reference to a particular document in the Patent Office. It is limited to facts. It does not enable the delegate to have regard to documents in a general sense and to take account of matters that are not facts. The regulation does not provide that the Commissioner may in some general way, refer to, rely on or otherwise take account of a document available in the Patent Office.
……..none of the documents referred to contain any matter that can be regarded as facts for the purpose of regulation 5.11. The various documents consist of statutory declarations or letters. The declarations of Mr Hodgkinson and Mr Abercrombie contain a number of assertions by the declarants. However none of these are facts that a delegate can inform himself simply by reference to that document. The same applies to the various letters from Mr Hodgkinson's firm. On no analysis can these documents be considered to contain facts. It is not a fact that these letters were ever written, let alone that their contents are accurate. The only possible fact is that these documents were filed in the Patent Office on a particular date."
It is my view that regulation 5.11 confers on the Commissioner the power to read and assess information in a document in the Patent Office in order to become informed of a fact or facts relevant to an opposition proceedings, and to be able to refer to that fact in an opposition proceedings. In the absence of any definition of 'fact' in the Patents Act or Patent regulations, I have referred to Butterworths Concise Australian Legal Dictionary (1997) and have used the following definition of the word 'fact' in order to construe regulation 5.11:
"Any act, occurrence, or other thing deemed legally relevant to the issue at trial"
The 'issue at trial', or the issue before me in the opposition, is whether the Commissioner should extend the time required for paying a renewal fee on the basis that the fee was not paid in time because of an error or omission by the person concerned or their agent or attorney.
I will therefore consider whether the documents may provide evidence of any acts or occurrences or things deemed legally relevant to the issue before me. This means I will consider if the documents contain any evidence of any act or occurrence, that may allow me to determine relevant facts. Relevant facts are those that could lead to a conclusion on the ultimate facts such as the causes or reasons why the renewal fee for patent 584013 was not paid.
The information in the documents used to infer a fact may include or be based upon for example, assertions or declared evidence or copies of business records. I do not agree with Beltreco that the information cannot be in the form of assertions or declarations or must be shown to be accurate before it can be used for a determination of fact. Rather before there is a determination of fact the evidence must be given appropriate weighting considering its source and nature.
Applying this approach to the documents being contested I will consider whether any documents should be excluded from the proposed exercise of regulation 5.11 on the basis that they do not contain any information that could lead to the determination of fact(s) in the issue at trial. I have listed the documents separately but have also considered how they relate to each other and the documents already filed and served in support of the extension of time application. Documents that have some relevance but are clearly not significant per se or in the light of other evidence will also be discarded as their inclusion would serve little purpose.
Statutory declaration of Hugh Rudyard Hodgkinson dated 11 December 1998
This document contains a declared statement by Mr Hodgkinson on the normal procedures used in his firm for recording and processing details of renewals. Annexed to this declaration are copies that include what appear to be diary entries on patent actions including entries of renewal prompts for patent 584013, records of renewal receipts and correspondence concerning patent 584103.
This evidence may allow for a determination of fact on the normal procedures through which patents were renewed. This document is relevant to the issue before me and can be included.
Statutory declaration of Peter Ralph Abecrombie dated 16 December 1998
This document contains a declared statement by Mr Abecrombie on the arrangements that exist between Flexible Steel Company, its Australian subsidiary Belle Banne Flexco (Australia) Pty Ltd, and H R Hodgkinson & Co with regard to renewal instructions. This document has relevance in that it may be able to establish the relations between the parties and the role of each in the renewal process. This document is relevant to the issue before me and can also be included.
Letter from H.R.Hodgkinson & Co dated 19 June 1998 to Peter Abecrombie of Belle Banne Flexco Pty Ltd
This correspondence from the patent attorney to the owner of patent 584013 refers to the lapsing of 584013, and in general terms asserts what may be the cause of the patent lapsing. This document is relevant to the issue before me and can also be included.
Memo dated 25 June 1998 from Mr P.M Ramsay of Flexible Steel Lacing Company to HR Hodgkinson & Co.
This document refers to the Patentees' concerns about the lapsing of the patent and seeks indemnity from any resulting loss or damage from H R Hodgkinson &Co. This document may be relevant to the determination of facts relating to the reason why the renewal payment was not made. It is relevant to the issue before me and can also be included.
Memo dated 21 October 1998 from Mr P M Ramsay of Flexible Steel Lacing Company to H R Hodgkinson & Co.
This letter refers to the resignation of a member of staff from HR Hodgkinson & Co, and obliquely to the method of handling Federal Court proceedings NG935 and the seeking an assurance. This document is referred to in the letter I subsequently refer to as document number 6, and so might further validate document no 6. However I do not consider that this document could allow for a finding on a relevant fact in itself and it relevance and significance when considered with any of the other documents is very slight. I will not consider this document under regulation 5.11.
Letter dated 26 October 1998 from H R Hodgkinson & Co to Mr P. M Ramsay of Flexible Steel Lacing Company.
This details an assurance that the attorney firm of HR Hodgkinson & Co is accepting responsibility for the failure to renew patent 584013. This document may be relevant to determining facts associated with the cause of the renewal fee not being paid. This document is relevant to the issue before me and can be included.
Should regulation 5.11 be invoked in the current circumstances?
Beltreco has argued that in the light of the other regulations governing the filing of evidence and prior decisions of the Patent Office it is inappropriate to use regulation 5.11 so that in effect fresh evidence is allowed in.
“The Act and regulations under chapter 5 set out provisions which regulate the filing of evidence in opposition cases. Those provisions are clear and, we submit, well understood by practitioners.
Evidence is able to be filed as evidence in support, evidence in answer, evidence in reply, with provision for further evidence in exceptional cases. There has been no suggestion that the applicant's attorneys misunderstood the provisions for filing evidence and there has been no suggestion of any impediment to the applicant filing material as evidence in answer. The documents that the delegate has referred to are properly the subject of evidence and if they are to be relied upon should have been filed and served in the normal way.”
I concur with the view that the documents in question are evidence and that Flexible should have filed and served these documents in the normal way. However I do not think the main issue as I see it, is predominantly whether Flexible should have the documents to better make its case, but whether the delegate should be able to inform himself using this provision to better make his decision.
Beltreco referred to a number of earlier Patent Office decisions. Two of these were by the then Assistant Commissioner. In Leonardis v. St Alban 24 IPR 351 he stated:
"Having regard to the constraints placed by regulations 5.8 and 5.10(4) on the filing of evidence by the parties to an opposition, it is entirely inappropriate for a party to an opposition to rely on the provisions of regulation 5.11 to have material considered by the Commissioner as part of the opposition. As a general proposition, the Commissioner ought not invoke regulation 5.11 in respect of material filed by a party to an opposition which ought to have been filed as part of their evidence in the opposition."
This line of reasoning was further developed in Coal Corporation Of Victoria v. David William Hinkley and Brian Alan Nugent [1993] APO 56 (17 September 1993) where the delegate stated:
"Where an opponent does not provide any evidence to support documents identified in the statement, there may be good cause for the Commissioner to consider those documents in the public interest. But for the Commissioner to consider such documents as part of the evidence in the opposition, he would have to act under regulation 5.11, providing both parties with copies of the relevant documents. If the Commissioner was to so act in an inter parte opposition, he would be taking on part of the role of the opponent. However taking on that role is inconsistent with the primary role of the Commissioner as an arbiter in oppositions, and should only occur when the circumstances dictate that it is clearly necessary to protect the public interest."
I note in both of these decisions that the evidence which the delegate did not allow in under regulation 5.11, was considered later by the Commissioner in the public interest under the so called "bar to sealing" procedure. This procedure, considered in Gould Inc 13 IPR 644, is designed to prevent the Commissioner from knowingly granting invalid patents, it does not apply to procedural hearings like the present case.
Another decision referred to was Bausch & Lomb Inc v. Allergan, Inc [1997] APO 42 (17 September 1997) where the delegate who became aware of a highly relevant document prior to a hearing decided to invoke regulation 5.11, despite having concerns that the document should have been listed in the statement of grounds and particulars.
“As I advised the parties in a letter on 9 January 1996, I think that, in the normal course of events, allowing the MIMS document to be included in this opposition would seem to me to be contrary to the whole purpose of requiring the opponent to provide a statement of grounds and particulars.
However I am conscious of the significance of this particular document. It seems to me in receiving submissions from both sides at the initial hearing on the disclosures in the MIMS document that it is a document that could clearly be determinative of the opposition. As a consequence, I am loathe to exclude the document due to a failure in the procedure.
Therefore, in accordance with regulation 5.11, I informed myself of this document in determining the opposition. Although I had already received submissions from both parties at the initial opposition hearing, I gave the applicant the opportunity to provide evidence in relation only to the MIMS document.”
The earlier decisions of the Patent Office view regulation 5.11 in the context of reasonably strict procedures prescribed by regulations for filing evidence. These procedures have an adversarial character, with the opponent initially filing evidence in support, the applicant responding with evidence in answer and the opponent able to file evidence in reply. Applications can be made to serve further evidence or for an extension of the period for filing evidence and these applications can be objected to by the other party. In a number of decisions on whether to refer to documents under regulation 5.11 the decision maker has apparently viewed him or herself predominantly as an arbiter between two parties, and taken the view that they should not to appear to be taking sides by allowing evidence in outside the normal evidentiary stages, or outside the provisions for further evidence.
Bausch & Lomb Inc v. Allergan Inc (supra) which is a more recent case, indicates that in some circumstances the delegate of the Commissioner has considered that regulation 5.11 can be invoked in order for the decision maker to properly or more fully determine the matter.
Regulation 5.11 must be understood in the context of the regulated procedures for filing evidence, and so it would not be expected that the Commissioner should take an active role in obtaining more information without a reasonable basis. Nevertheless regulation 5.11 permits the decision maker to consider material that is not served as evidence. The purpose of this provision is clearly to enable a more correct determination of a matter. Procedural fairness is preserved by letting all parties make representations on the proposed new material. A similar view of regulation 5.11 was recently expressed in an unpublished Patent Office decision RGC v Wimmera (1999) APO 79 16 December 1999 in which the Hearing Officer stated:
"….. the Commissioner has an inquisitorial role in an opposition. While she must allow the parties natural justice to reply to evidence, she is not bound by the rules of evidence. Reflective of this, the Commissioner even has the power under regulation 5.11 to consider documents in an opposition that are not part of the evidence."
This view of regulation 5.11 appears consistent with the general approach to administrative decision making for tribunals as described in Alleyn James Boucher v Australian Securities Commission [1996] 1062 FCA 1 (5 December 1996)
“There is a fundamental difference between the exercise of an administrative function, such as the activity in which the Commission engages when considering whether to make a banning order under s 829 the Corporation Law, and the exercise of a judicial function: see Precision Data Holdings Limited v Wills (1991) 173 CLR 167 at 188- 190. A court determines an issue between two parties on the evidence each chooses to put before the court: any power a court may have in both civil and criminal proceedings to call evidence of its own motion is strictly limited…
An administrative agency is, in contrast, "under a duty to arrive at the correct or preferable decision in the case before it according to the material before it. If the material is inadequate [the administrative decision-maker] may request or itself compel the production of further material": Bushell v Repatriation Commission (1992) 175 CLR 408 at 425.”
Although the present case is an original decision rather than an appeal, I think it is possible to extract some principles or guidance from Alleyn James Boucher v Australian Securities Commission (supra) applicable to the circumstances before me. In a form applicable to regulation 5.11 these principles could be written in the following terms:
The regulations for the Patent Act of 1990 have set procedures for the filing of evidence by the parties to an action and provide in regulation 5.11 a provision allowing the decision maker to admit further evidence. In contrast to limitations in the capacity of courts to consider and admit new evidence, the decision maker should not view their capacity to decide an issue between parties as being strictly limited to the evidence each party chooses to put before it.
The administrative decision maker should endeavour not to make a decision on material he or she considers inadequate if they are aware of material available in the Patent Office which they have reason to consider would allow them to come to a more correct determination of the matter.
Following the hearing on the application for an extension of time, I considered the current evidence filed, which consists of three declarations. However I considered that this evidence was deficient in key areas. It did not provide a sufficiently detailed explanation on the errors or omissions in the policing records. I also considered the current evidence lacked sufficient details about the circumstances or intentions of those concerned at the relevant time. Flexible's written submissions provided for the hearing on their extension of time application, asserted (presumably in relation to the evidence that they sought to rely on) that:
"the applicant has provided a clear explanation of the circumstances surrounding the non payment of the renewal fee by the due date of 25 June 1997, including its arrangements and instructions regarding the payment of the renewal fees."
In the light of the deficiencies in the evidence currently before me, this submission suggests these six documents are likely to contain information that is relevant and significant to the areas in which the explanations I have currently had regard to are deficient. A superficial reading of the six documents that Flexible intended to rely upon supported my view that all documents were relevant and of potential significance to the issue before me.
Secondly, I am also aware from the correspondence file of 584013, that these six documents derive from Flexible's dismissal of opposition action, and Flexible's response to a S.210 Notice to produce documents. The sources of this evidence suggest the documents are likely to be relevant. The S.210 Notice is on the correspondence file and the types of documents demanded by this notice are relevant to an understanding of the circumstances, acts and occurrences surrounding the non payment of the renewal fee.
Thirdly, I now have knowledge of the relevance of the six documents from my considerations on whether these documents meet the requirements of regulation 5.11 with regard to their factual content. In order to determine whether the documents contained relevant fact, I have needed to assess the six documents in more detail. I am now aware, having made this assessment, that five documents are particularly relevant and appear significant and one document is only slightly relevant and of little overall significance to the issues in the hearing on the application for an extension of time.
As five of these documents contain relevant fact, and appear likely to provide a better basis for a determination on the cause of the non payment of the renewal fee, I consider it appropriate to invoke regulation 5.11 with regard to five of these documents.
CONCLUSION
I have found that five of the documents brought to my attention are of potential significance and could provide information from which I can determine relevant facts. I have determined that it is appropriate to consider these documents under regulation 5.11, as I consider that they would allow a better or more correct determination of the hearing on the application for an extension of time.
Accordingly I dismiss Beltreco's objection to the proposed invocation of regulation 5.11 with regard to the five documents that contain relevant facts. I will invoke regulation 5.11 in order to inform myself and refer to facts from these five documents. Beltreco's objection is upheld for the document titled "Memo dated 21 October 1998 from Mr P M Ramsay of Flexible Steel Lacing Company to H R Hodgkinson & Co", and so I will not have regard to this document.
Regulation 5.11(2) requires the affected parties to have an opportunity to respond to the fact or document. I am aware that Beltreco, although objecting to these documents being considered nevertheless gave submissions on these five documents during the hearing on Flexibles’ application for an extension of time held on 23 November 1999. When I earlier proposed to invoke regulation 5.11 both parties were provided with one month to give submissions on the documents or facts. Further time was granted after Beltreco objected to this proposal and sought clarification on the facts being considered. In these circumstances, I consider it appropriate to allow the parties a short period to have the opportunity make further submissions on these documents.
I will invoke regulation 5.11 and have regard to the following five documents:
1. Statutory declaration of Hugh Rudyard Hodgkinson dated 11 December 1998
2. Statutory declaration of Peter Ralph Abecrombie dated 16 December 1998
3.Letter from H.R.Hodgkinson & Co dated 19 June 1998 to Peter Abecrombie of Belle Banne Flexco Pty Ltd
4.Memo dated 25 June 1998 from Mr P.M Ramsay of Flexible Steel Lacing Company to HR Hodgkinson & Co
5.Letter dated 26 October 1998 from H R Hodgkinson & Co to Mr P. M Ramsay of Flexible Steel Lacing Company.
DIRECTIONS
Both parties are given one week from the date of this decision to make submissions on the facts or documents.
COSTS
The documents under consideration appear to be evidence that was not properly filed and served by Flexible. However I view this circumstance as more relevant to deciding on any award of costs in the related extension of time hearing rather than the current hearing. The delegate of the Commissioner rather than any of the parties has instigated the proposal to refer to these documents under regulation 5.11. Beltreco objected to the Commissioner having regard to the six documents. This objection was upheld for one document which been found to contain information of insufficient relevance or significance but was dismissed for the majority which the Commissioner will have regard to.
Having considered all these circumstances, I consider it appropriate to award costs against Beltreco.
Ross Osborne
Delegate of the Commissioner of Patents
Patent attorneys for Flexible Steel Lacing Co : H R Hodgkinson &Co.
Patent attorneys for Beltreco Co : Phillips Ormonde, Melbourne.
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