G & J Koutsoukos Holdings Pty Ltd v Capral Aluminium Limited - [2003] APO 28

OFFICIAL NOTICE
DECISION OF A DEPUTY COMMISSIONER OF PATENTS
Application : No. 754829 in the name of G & J Koutsoukos Holdings Pty Ltd

Title: A Security Closure

Action: An application under section 223 for an extension of time by Capral Aluminium Limited, to file the Statement of Grounds and Particulars

Decision: Issued 6 August 2003
Abstract

An earlier decision granting a s.223(2) request to file a notice of opposition issued more than 3 months after the notice of opposition was filed. The attorney had not served the Statement of Grounds and Particulars, believing he would have 3 months from the date of the decision to do so.
·    Where an applicant files a request under s.223, they ought to ensure any subsequent actions due before the s.223 request is determined are, in fact, done at the relevant time. Failure to perform those actions at the relevant times would be a new ‘error or omission’ not covered by the s.223 request under consideration.
·    The decision in Ferplas Industries Ltd’s application (No. 2) considered, and was found to have no application under the 1990 Act.
·    The attorney had made a deliberate decision not to serve the Statement of Grounds and Particulars on the due date. That decision was allegedly based on a belief of a 'reasonable expectation' of consistent decision making that was said to arise from older decisions.
·    The failure to timely serve the Statement was not due to an error or omission of the Commissioner (through alleged inconsistencies) [s.223(1)], and was not a circumstance beyond the control of the opponent (by reason of the earlier decision issuing after the relevant date) [s.223(2)(b)] as, inter alia there was no causative relationship.
·    s.223(2A) does not apply, as the requirement to take due care is inconsistent with the absence of intention to serve the statement of Grounds and Particulars by the due date.
·    The attorney's belief that the Commissioner would allow 3 months from the date of the earlier decision was an error on his part which enlivened s.223(2)(a). It was appropriate in all the circumstances to exercise the discretion and grant the extension.
PATENTS ACT 1990
DECISION OF A DEPUTY COMMISSIONER OF PATENTS
Re:Patent Application No. 754829 in the name of G & J Koutsoukos Holdings Pty Ltd, and application under section 223 for an extension of time by Capral Aluminium Limited to file the Statement of Grounds and Particulars

Background

Patent Application 754829 (91328/01) was filed in the name of WA Security Products Pty Ltd on 13 November 2001 as a divisional application of 742820 (37825/00). The parent application was accepted on 10 January 2002 and a notice of opposition was filed by Capral Aluminium Limited (Capral) on 10 April 2002.
The divisional application was advertised accepted on 28 November 2002. A notice of opposition was filed twelve days after the due date for filing that notice. A request under s.223 to extend the time for filing that notice was also filed. The applicant objected to that extension. After hearing both parties, by a decision dated 17 June 2003 a delegate of the Commissioner granted the extension of time to file the notice of opposition.
The time for filing the Statement of Grounds and Particulars is prescribed by regulation 5.4(a) as being “within 3 months of filing the notice of opposition”. The decision on the extension of time to file the notice of opposition was issued 3 months and 5 days after the date on which the notice of opposition was filed. The decision included the following paragraph:
44. I note that the provisions of regulation 5.4 mean that the opponent must serve on the applicant a copy of the statement that sets out the grounds of opposition and the particulars relating to each ground within three months of filing the notice of opposition. This time limit is dependent on when the notice of opposition was filed and not when the section 223 application was granted. Therefore the statement of grounds and particulars was due on 12 June 2003.
Subsequent to that decision:
·the name of the applicant has been changed to G & J Koutsoukos Holdings Pty Ltd (Koutsoukus);
·the applicant has sought review by the Administrative Appeals Tribunal (AAT) of the decision to grant the extension of time; this was filed in the Western Australian registry;
·on 17 June the opponent filed a s.223 request to extend the time for filing a statement of Grounds and Particulars. A supporting declaration was filed on 2 July;
·when filing the declaration in support of the s.223 request, the attorney also requested the Commissioner “reviews the decision … and corrects a manifest error’, the error being the reference to the date on which the statement was due. By letter of 8 July the attorney was advised that:
“we have considered the opponent’s comments … but do not consider that the decision involved a manifest error.”
·the opponent subsequently filed an application for review by the AAT (in the Queensland Registry);
·the applicant objected to the extension of time to serve the Statement; and
·the Statement was served on the applicant on 11 July 2003.
I heard the parties on the s.223 request and the objection thereto, on 31 July 2003. The patent applicant (Koutsoukus) was represented by Mr R.J.L. McCormack of counsel, instructed by Mr M.R. Finn of Wray & Associates, Perth. The opponent (Capral) was represented by their patent attorney, Mr Michael Angliss of Cullen & Co, Brisbane. Both parties provided helpful written submissions prior to the hearing.
Submissions
The submissions of Mr Angliss, for the opponent, are briefly summarised as:
1. An extension of time should be granted under s.223(1). The relevant errors of the Commissioner were:
·inconsistent decision on the approach to be followed where an extension of time to file a notice of opposition is pending. Mr Angliss had a legitimate expectation of consistency of decision making. Either the ‘old’ decisions were wrong and misled Mr Angliss, or the June decision was wrong – and in either event the opponent is entitled to an extension based on one or other of those errors.
·the fact that the June decision did not issue until after the due date for serving the statement
Additionally, Mr Angliss suggested that the patent applicant had no right of involvement with the s.223(1) matter.
2. In the alternative, an extension should be granted under s.223(2)(b), on the basis of:
·delay in issuing the decision was a circumstance beyond control
·the inconsistency of decisions versus the legitimate expectation of consistency of decision making was a circumstance beyond control
It is not readily apparent from the submissions that Mr Angliss is seeking an extension of time under s.223(2)(a) – error or omission of the person concerned or his or her agent (that is, Mr Angliss). Nor was there any argument about whether an extension of time should be granted under s.223(2A). However having regard to all the circumstances I believe it is appropriate to conclude that these bases are also included.
The submissions of Mr McCormack for the patent applicant, may be briefly summarised as:
·    That there was no extension of time available at all, as reg 5.10 was excluded from operation, as was s.223
·    Deliberate policy did not constitute a relevant error. The reliance by Mr Angliss upon his understanding from the old cases was both incorrect and unreasonable in terms of policy – and is therefor excluded from the operation of s.223
·    There were no, or minimal, inconsistencies, in past decisions. Most apparent inconsistencies could be explained as arising from consent (which was not the present case), or the implicit application of s.223 to the period for serving the statement
·    Recent decisions were fully consistent with the delegates decision in the June decision. In particular, the decision in Golden Casket Lottery Corporation Limited v Neurizon Pty Ltd [2002] APO 30 was explicitly on point in para 55 when it stated:
“…the opponent must serve on the applicant a copy of the statement….. This time limit is dependant on when the notice of opposition was filed and not when the section 223 application was granted.”
·    The applicant’s reliance upon legitimate expectation was flawed. There is a professional responsibility to maintain current knowledge. The basis for Mr Angliss’s expectations were rooted in old decisions, and he had not updated his expectations as a result of more recent decisions.
During the hearing, I raised the matter of International Business Machines Corporation v Total Peripherals [2000] APO 44, as well as a notice in the AOJP of 4 February 1999. The notice, and the decision related to the situation where a s.223 request was pending in respect of a renewal fee, and the date for paying the subsequent renewal fee arose before the s.223 request was determined. The notice advises users that the subsequent fee payment must be timely made, and cannot be deferred pending the s.223 matter. The above decision concerns such a situation, and notes the prior assumption by Patent Office staff that a subsequent renewal fee was not due until the s.223 had been resolved.
Relationship of S.223 to subsequent actions
An initial issue that I must deal with is how a time period is to be computed under the Patents Act, where the action that initiates the setting of a time period is itself the subject of a s.223 request for an extension of time. In the present instance, the time period is the time for filing the Statement of Grounds and Particulars; the trigger for setting that period is the date of filing the notice of opposition, and there was a s.223 application which needed to be granted before that notice could be treated as having been timely filed.
In dealing with this matter, I am aware that the opponent has sought AAT review of the earlier decision, presumably on the basis that paragraph 44 of that decision is a reviewable decision. However, noting the absence of any analysis of the relevant statutory provisions, I do not believe that the paragraph is a decision as such, as distinct from an observation or aide memoire – although that may well be a matter for the AAT to determine.
Mr Angliss referred me to a number of decisions where the hearing officer (which, in one instance, was myself) set the time for serving the Statement of Grounds and Particulars as 3 months from the date of the decision, based on the fact the decision ‘validates’ the notice of opposition, the agreement of the parties, reliance upon regulation 22.14, or for unstated reasons. See, in particular:
·    Outokumpu Harjavalta Metals Oy v WMC Resources Ltd [1996] APO 61
·    Bausch and Lomb Incorporated v Allergan Inc [1997] APO 45
·    Oz Technology Inc v Boral Energy Ltd [1999] APO 18
However none of these decisions provides a detailed analysis of the statutory regime. On the other hand, the Golden Casket decision clearly states a contrary view - but it similarly does not provide a detailed analysis of the statutory regime.
Having regard to the criticality of this issue to the present matter and to procedural matters generally, I think it is appropriate that I undertake a full analysis of the situation.
It is well known that the Patents Legislation operates on the basis of a range of time periods, and that failure to comply with a time period will lead to a loss of rights. Unlike the Patents Act 1952, the Patents Act 1990 essentially provides a single mechanism for extending time periods – s.223.
It is important to understand the operation of s.223. S.223 acts solely to extend time periods. It does not change the date an action was done. Nor, in the context of filing a document or paying moneys, does it determine whether or not the document was actually filed, or moneys actually paid. Rather its operation is consequential upon the filing of a document or receipt of moneys. It is used to determine whether a document that has been filed, or moneys that have been paid, have been done within a specified time limit such that the filing of that document or payment of moneys has the intended effect.
In the present case, the opponent filed its notice of opposition on a date after the due date. The fact that it was filed ‘late’ does not alter the fact that it was filed; nor that it was a notice of opposition. The question to be resolved by the s.223 request was not whether the filing of the notice of opposition per se was valid. Rather it was whether regulation 5.3(1) had been complied with – that is whether or not there was an opposition on foot that prevented the application from being sealed.
Where an action is done which requires the granting of a s.223 extension of time, the question sometimes arises (as in the present case) of the time for doing any subsequent actions. It seems to me that if the Act specifies that time by reference to an earlier action, that time is necessarily set independently of any actions under s.223 that might be needed to ensure that the precedent action was timely done for its intended purpose. If this was not intended to be the case, then I would have expected that the time period would have been referenced to the status achieved as a result of the earlier action, rather than the action itself.
A party might well argue that until the precedent s.223 request has been determined, they do not know whether or not they are an opponent – and it is unreasonable to expect them to expend resources to comply with the subsequent requirements until such time as the s.223 matter is resolved. I am not persuaded by this. The Patents Act provides a statutory regime for processing applications that is heavily dependent upon a range of time limits. If those time limits are to be varied, there must be some statutory basis for so doing. In the context of an opposition, express provision has been made for such variations by way of regulation 5.10(1). However, this only comes into operation for actions after the Statement has been served. Its very existence highlights the intended absence of such a mechanism with regard to the Statement of Grounds and Particulars.
Furthermore, there must be an expectation that applications under s.223 are made with all seriousness. Having regard to the balance of the rights of applicants, third parties, and the broader public interest, it seems to me to be inappropriate for applications under s.223 to be made merely in the hope or off-chance that an extension of time will be granted. It seems to me that a person who files a request under s.223 should properly do so only with a reasonable belief that the extension was justified. And if that is the case, there can be little justification to argue against complying with subsequently expiring time limits as and when they fall due. On the other hand, I see little reason to relieve a person of their obligations to comply with subsequent time limits as and when they fall due, merely because they have made a speculative request under s.223.
Consequently, it is my view that where an applicant files a request under s.223, they will need to ensure any actions due at a subsequent date that expires before the s.223 request is determined are, in fact, done at the relevant time. Failure to perform those actions at the relevant times would, in my view, be a new ‘error or omission’ not covered by the s.223 request under consideration. I note that this is consistent with the decisions in International Business Machines Corporation v Total Peripherals [2000] APO 44, Golden Casket Lottery Corporation Limited v Neurizon Pty Ltd [2002] APO 30, and the AOJP notice of 4 Feb 1999.
In forming this view, I have carefully reviewed the decisions referred to in paragraph 11. I can find nothing in them that justifies a departure from the view of the correct operation of s.223 as I have discussed above.
In particular, one of the decisions purports to set a new date for serving the Statement by way of Regulation 22.14. That regulation is directed to the doing of a thing "that is not provided for by the Act or these Regulations". It seems to me that this regulation cannot operate to overcome a failure to otherwise comply with a statutory time limit – that would be a total subversion of the operation of s.223. Indeed, as a general proposition the very existence of a time limit for doing something means that the doing of that thing is provided for by the Act and Regulations – and is therefore outside the scope of operation of regulation 22.14. Consequently, given the express mechanism for serving the Statement, I do not think that regulation 22.14 can be used to set a different date for serving that Statement.
I also note that there were a number of other decisions cited that gave ‘directions’ about when the statement of grounds and particulars was due. However, these were before the regulations were amended in 1993 to exclude the directions provisions of reg 5.10 from applying to the time for filing that statement, and are therefore of no guidance – as the ‘directions’ made therein were made under that regulation.
A decision of particular relevance, which was not raised by either party, is Ferplas Industries Ltd’s application (No. 2) [1979] 49 AOJP 1185. In an earlier decision Ferplas Industries Ltd [1979] 49 AOJP 381 the Commissioner dealt with a situation where the application had lapsed for failure to pay a continuation fee, and also for failing to gain acceptance by the due date. The Commissioner directed that the matter proceed with concurrent advertisements of extension of time requests for both lapsing issues. Subsequent to that decision, but before the matter was finalised, the AAT issued its decision in Toyo Pulp Co Ltd v Deputy Commissioner of Patents [1978] 48 AOJP 4234. As a result of this decision, the Commissioner formed the view that he could no longer proceed on the basis of the earlier decision. The “Ferplas #2” decision resolved the difficulty the Commissioner was then faced with. It was to the effect that when the application had lapsed for failure to pay the continuation fee, the time period for gaining acceptance came to a stop. Furthermore, that period recommenced with the whole of the unexpired period for acceptance remaining, when the application was restored with respect to the continuation fee issue. I note that this decision is referenced in the Patent Office Manual of Practice and Procedure, implying current relevance.
The relevance of this decision to the present matter is the concept of having certain time periods stop when other time periods have not been complied with. That is, whether there is any argument derivable from this decision to the effect that, pending the resolution of the s.223 request to file the notice of opposition, the time for serving the statement of grounds and particulars was in fact on hold. If this is the case, the current s.223 request is rendered irrelevant since the statement of grounds and particulars was served well within the period of 3 months from the date of the decision regarding that s.223 request.
When considering older decisions, some appreciation of the legislative environment can be critical. And this would appear to be particularly the case here. The issue that gave rise to the difficulties dealt with in the Ferplas cases was the fact that there were several extension of time mechanisms provided for in the 1952 Act. Extensions of time for paying continuation fees were dealt with by s.47E. Extensions of time for acceptance were dealt with under s.54. And s.160 dealt with other extensions (and was essentially equivalent to the present s.223) – but with express exclusion of, effectively, s.47E. The difficulty faced in the Ferplas decisions was the interaction between these various extension mechanisms – and the outcome was necessarily tied to the existence of the diverse extension mechanisms. The Patents Act 1990 does not have such diverse extension mechanisms. S.223 is a general extension mechanism applicable to all but a very small number of specific actions (see Regulation 22.11). Furthermore, in the opposition processes of Chapter 5 of the Regulations the statutory regime is that either section 223, or regulation 5.10, applies – but never both. The interaction between diverse extension mechanisms does not exist in the 1990 Act, and therefore the ratio of the Ferplas decision (that is, the periods stopping when the application lapses for other reasons – being derived from the interaction of the various extension mechanisms) does not apply to the 1990 Act.

I also note that the Ferplas #2 decision refers to the situation in Esso Research and Engineering Company v Commissioner of Patents (1960) 102 CLR 347. In that case, the notice of appeal was filed within the appeal period, but outside the time for acceptance. The Commissioner argued that there could be no effective appeal because the application had lapsed re the period for acceptance, before the appeal was instituted. The court rejected the argument. But again, to the extent that the Ferplas #2 decision draws support from this decision, I note that the relevant provisions in the 1990 Act do not have the tension that was present in the 1952 Act – see Reg 13.4(1), especially the relationship involving subpara (h).
Accordingly I am of the view that the Ferplas Industries Ltd’s application (No. 2) decision is not relevant to the operation of time periods under the Patents Act 1990. In particular, it does not support any notion that the time for serving the statement of Grounds and Particulars can be treated as suspended pending the determination of the s.223 request with respect to the notice of opposition. It follows that I must determine the present s.223 request.
Right to be Heard – s.223(1)
Mr Angliss submitted that, with respect to his request as it related to s.223(1), that the patent applicant had no right to be heard. Mr Angliss based this by way of reference to the opposition provisions in s.223. However S.223(6) is only one basis for there being a hearing in relation to s.223 matters. S.216, and Regulation 22.22, require an opportunity to be heard be given to any person who might be adversely affected by the exercise of a discretionary power. In the context of s.223(1) there is no exercise of discretion as such, although there is an issue of whether the conditions precedent to the exercise of that provision exist – and a person adversely affected by that decision may seek review by the Administrative Appeals Tribunal [see s.27(1) of the Administrative Appeals Tribunal; also Control Investments Pty Ltd v Australian Broadcasting Tribunal (1980) 50 FLR 1 at 8-9]. It is the long-standing practice of the Commissioner that in the application of s.223 in inter partes matters all parties are afforded an opportunity to be heard. With respect to s.223(1), see for example Jeijing v Commissioner of Patents (1995) AIPC ¶91-144. Consequently I heard the applicant on all matters.
Is an extension available?
Mr McCormack argued that no extension of time was available under s.223, as regulation 5.4 was prescribed under Regulation 22.11. However this argument is without basis. The structure of s.223 as it relates to regulation 22.11(4) requires careful consideration, as there are multiple levels of negatives. In essence, s.223 applies to all ‘relevant acts’. S.223(11) defines a relevant act as an action other than a prescribed action. Consequently the items listed in Reg. 22.11(4) are provisions to which s.223 does not apply. Regulation 22.11(4)(a) prescribes all of chapter 5 of the regulations other than Reg. 5.4 (inter alia) – so that the reference here to regulation 5.4 means that this regulation is included within the operation of s.223. Consequently an extension of time under s.223 is not statutorily prohibited.
s.223(1) – error or omission of the Commissioner
Mr Angliss argues that the failure to serve the statement of grounds and particulars arose out of errors he attributed to the Commissioner. My observations on the various arguments are as follows:
Legitimate expectation of consistency of decisions. Mr Angliss points to a number of decisions in the 1990’s that ‘validate’ the notice of opposition, and set the time for serving the statement from the date of that decision. But the Golden Casket decision was clearly inconsistent with this, and the IBM v Total Peripherals decision and related AOJP notice were indicative of a change of view about the operation of s.223. Whilst legitimate expectations may well have a role, there is also a responsibility (as argued by Mr McCormack) to maintain currency of knowledge. Mr Angliss declared (para 27) that “Before, and at least until 12 March 2003 I was familiar with the practice of the Patent Office to issue direction in respect of the service of the Statement…”. If Mr Angliss had made himself fully aware (as he declared), he would have been aware of the Golden Casket decision. I don’t think that his apparent lack of awareness of that decision can be attributed to an error or omission of the Commissioner. Similarly, as that decision clearly negates any past expectations that might have arisen, I don’t think there is any basis for Mr Angliss to attribute to the Commissioner the consequences of his reliance upon old past practice.
Decision issuing after the relevant date. The causative relationship does not exist. The highest this point can be put is that, if the decision had issued earlier, Mr Angliss would have been alerted to the need to serve the statement by the due date – and presumably would have taken steps to serve it in time. But I don’t think that it can be said that the ‘late’ issuance of the decision ‘caused’ him to serve the statement late. The decision about when to serve the statement was a decision by Mr Angliss, and no-one else.
Accordingly I do not believe that there is any identifiable relevant error or omission of the Commissioner having a causal relationship to the late serving of the statement. That is, there is no basis to extend the time under s.223(1).
s.223(2)(b) – Circumstance beyond the control of the person concerned
Mr Angliss argues that the extension was justified because of circumstances beyond his control. The issues are the same as those argued under s.223(1) - namely the inconsistency of decisions versus the legitimate expectation of consistency of decision making was a circumstance beyond his control; and delay in issuing the decision was a circumstance beyond his control.
It is well established that, besides the issue of causative relationship, the criterion of ‘circumstance beyond control’ is a force majeur provision – see, for example, Rohrmoser v Registrar of Trade Marks (1987) 70 ALR 613. As discussed above, the timing of the issue of the decision had no causative relationship to the late service of the statement. Furthermore, given the statutory obligations to serve the statement by a due date, I do not see how that decision could in any event give rise to a force majeur. Similarly the issues about what was to be expected from earlier decisions is not in the category of force majeur, especially noting the clear statement in the Golden Casket case.
Accordingly, I do not believe that there is any identifiable relevant circumstance beyond the control of the person concerned to enliven s.223(2)(b).
s.223(2A) – in spite of ‘due care’
S.223(2A) was introduced into the Patents Act in 2002. It provides for an extension of time – without consideration of discretionary issues – provided “the Commissioner is satisfied that the person concerned took due care, as required in the circumstances, to ensure the doing of the act within that time”.
It is apparent from the evidence that Mr Angliss had no intention of serving the statement of Grounds and Particulars by the due date. Given this manifest intention, I do not see how it can be said that Mr Angliss had taken due care to ensure the statement was filed by that date. Accordingly, there is no basis for an extension of time under s.223(2A).
s.223(2)(a) – error or omission of the person concerned, or his agent
Mr Angliss did not make any substantive submissions under this heading. Nevertheless, I consider it to be the most relevant provision in the circumstances.
From the material on file, it is my view that:
· Mr Angliss formed a view in the early 1990’s that, when an extension of time was required to file a notice of opposition, the time for service of the Statement would be directed to commence on the date of the determination of the s.223 request.
· Mr Angliss continued with that view or belief up to the present time – in apparent ignorance of the Total Peripherals decision, and the Golden Casket decision.
I add that I believe this was a genuinely held belief, as evidenced by the correspondence immediately following the issuance of the decision.
The question then is whether there has been a relevant error or omission. Mr McCormack argues that there is no relevant error or omission:
· The level of knowledge about office practice was a professional matter that required Mr Angliss to keep abreast of current developments. Mr Angliss had deliberately failed to maintain currency of knowledge and awareness. And since this was a deliberate decision on his part, s.223 was not enlivened (citing Weir Pumps v Commisioner and Stork Pompen BV 13 IPR 163)
· Mr Angliss’s reliance upon legitimate expectation, despite being flawed, was a deliberate decision on his part.
The question of what constitutes an error or omission requires careful consideration. The definition of an error or omission was expressed by Jenkinson J in Kimberly-Clark Ltd v Commissioner of Patents (No 3) 13 IPR 569-584 as:
"It is in my opinion difficult to suppose that only the inadvertence and accidental steps, and not errors resulting from faulty reflection, of the former class of persons were intended by the draftsman to be within s 160(1). Further, the word 'error' is not easily assigned a clear meaning restricted by reference to one or several particular categories of flawed mental function. The attempt is likely to lead to the drawing of fine and often unrealistic distinctions. And some errors of judgement by agents and attorneys may be as bizarre and as little to be anticipated as lapses of memory and accidental slips."
Jenkinson J rejected the argument that section 160(2)(a) excluded errors or omissions that were the products of deliberation. Consequently, the concept of what constitutes an error should be interpreted broadly and includes an error of judgement. However, Jenkinson J also made the following comments at page 580:
"By no means every judgement by the "person concerned" or by "his agent or attorney" which can be shown to have been mistaken will answer the description "error or omission" in the ordinary meaning of those words, which in their context carry, in my opinion, a connotation of obviousness in error."
In applying these considerations to the present circumstances, I particularly note:
·    If a belief was neither plausible nor reasonable, it may be the case that acting on those beliefs would not constitute an error or omission. I note that Mr Angliss’s expressed belief is consistent with several decisions through the 1990’s (up until 1999), with the first decision that was clearly inconsistent being in 2002. I also note that Mr McCormack did not cite any decision in that period that was inconsistent with that belief.
·    While Mr McCormack argued that several decisions issued since 2000 were consistent with a changed view of the operation of s.223 (thereby imputing a failure by Mr Angliss to keep up-to-date), only the Golden Casket decision is inconsistent with Mr Angliss’s expressed belief. The fact circumstances of other decisions do not lead to express inconsistency with that belief.
·    Mr McCormack relied in argument on the Total Peripherals case and the AOJP notice, in support of his contention that there had been a clear shift of interpretation of which Mr Angliss should have been aware. However it is noteworthy that Mr McCormack had no knowledge of them or their significance prior to my referring to them at the hearing – which indicates some disingenuousness in these arguments.
In my view, having regard to all the circumstances I am satisfied that the actions of Mr Angliss in not serving the statement by the due date can reasonably be described as being an error or omission on his part.
Discretionary considerations
The granting of an extension of time under s.223(2) is subject to discretionary considerations. Mr McCormack argued that I should not grant the extension on the basis that:
·    there was no evidence from the actual opponent in relation to the matter;
·    there had been no full and frank disclosure of all the surrounding circumstances, including the delay in filing a declaration in support of the s.223 request;
·    it is not apparent that there is a serious opposition – with observation that many of the items in the Statement of Grounds and Particulars have apparently been copied from the equivalent statement filed in respect of the parent application – without having relevance to the divisional application; and
·    allowing the extension would cause the proceedings to be unnecessarily delayed.
Mr Angliss argued that there was identity in several of the dependant claims of the current application with dependant claims in the parent application – and that to allow the present application to proceed to grant would effectively bypass the opposition on the parent application.
In my view, the material before me is sufficient for me to be satisfied about the existence and nature of the causative error. With regard to the absence of evidence from the actual opponent, this is not a case where I think such evidence would add much. Nor, on balance, is it a case like New Clear Water v Atlantis Corp [2002] APO 48, where the apparent ignorance of the actual opponent about the proceedings was a material consideration. I am also reasonably satisfied that there is a serious opposition being foreshadowed.
At the hearing I raised the issues of :
· “it is more important to consider the consequences of extending or refusing to extend time than debate the reasons why the act was not done in time” as per Davies J in Chalk’s case (1994) 33 ALD 420
· whether, assuming there was an error or omission on the part of Mr Angliss, it was appropriate to visit the consequences of that error on his client – see Comcare v A’Hearn (1993) 119 ALR 85
Mr McCormack submitted that applying these criteria must not be such that the applicant was totally free of the actions of the agent. He also referred me to the decision in G.S. Technology v Commissioner of Patents & Onor [2003] AATA 353, and particularly to paras 16 and 19, where it is stated:
16. The Tribunal has come to the conclusion that the failure to pay the continuation fees on 30 August 1997 or, within six months of that date, was due to a combination of incompetence and negligence by Mr. Stack and Mr. Abaza. It was not because of any error made by Mr. Stack or Mr. Abaza. It was because of an omission to at least check the due date, then enter the date in a diary or an automatic reminder system and then pay on or before the due date.
19. In this case the "error or omission" is the failure to pay the continuation fee. In which case the discretion would not be enlivened. However, even if an omission of the type that occurred could be regarded as the type of omission which may enliven the power to grant an extension of time, it is the Tribunal's view that the conduct of the Applicant's representatives in failing to put in place a proper diary or reminder system was unreasonable, not without moral fault and not deserving of the granting of the indulgence.
In my view the above quotes from the GS Technology decision must be read with some care. They need to be read in the context of the whole decision, including the decision the subject of the review and the plural related decisions involving the parties. In my view, the essence of the statements quoted above from the GS Technology case are not appropriate to the factual circumstance of the present case. I do not think that the errors or omissions of Mr Angliss are anything more than just that.
I am conscious of the fact that this is the second extension of time requested by the opponent with respect to this opposition. Also, that the applicant has sought review by the AAT of the decision to grant an extension of time to file the notice of opposition. Assuming the AAT affirms the decision to grant the extension of time to file the notice of opposition, I am of the view that it is appropriate that this opposition should be dealt with on its merits (see Kitto J in Kaiser Aluminium& Chemical Corporation v. Reynolds Metal Company (1969) 120 CLR 136). I also do not think that this is a case where the consequences of the errors of an agent should be visited on the opponent.
DECISION
I am satisfied that:
· there has been a relevant causative error on the part of Mr Angliss, in failing to serve the statement of Grounds and particulars by the due date; and
· in all the circumstances, it is appropriate to exercise the discretion to grant an extension of time under s.223(2)(a) to serve the statement of grounds and particulars
and I so grant that extension.
Directions for the future conduct of this opposition
The time for serving evidence in support of the opposition is 3 months from the date of service of the Statement [Reg 5.8(1)] – that is, by 11 October 2003. However, unlike the Statement of Grounds and Particulars, the due date for serving evidence in support of the opposition is properly open to directions. [Reg 5.10(1)].
As I indicated previously, both parties have applied to the AAT for review of the decision to extend the time for filing the notice of opposition. While this decision may negate the need for one of those applications, it remains the case that the Review sought by the patent applicant is not per se affected by this decision. There is also the possibility that application may be made to have this present decision reviewed by the AAT.
I do not believe that it is appropriate that a party to inter partes proceedings carries a burden of unnecessary expense as a result of matters over which they have no control. It is the case that the on-going status of this opposition is dependent upon the outcome of the application for Review that has been filed by the patent applicant. Until that is resolved, it seems inappropriate to expect the opponent to prepare its evidence in support of the opposition – even noting s.41 of the Administrative Appeals Tribunal Act. I also note that it is the usual practice of the Commissioner to use Directions to (in effect) suspend the evidentiary processes while appeals are pending. Accordingly I consider it appropriate to make the following direction with regard to the time for service of evidence in support:
· The time for serving evidence in support pursuant to regulation 5.8(1) will commence on the day on which the Application for Review filed by the patent applicant in respect of the decision of the Commissioner dated 17 June 2003 is finally determined or otherwise concluded.
· I further direct that if the patent applicant seeks Review of the present decision, the time for serving evidence in support pursuant to regulation 5.8(1) will commence on the later of the days on which the respective applications for review are finally determined or otherwise concluded.
I raised the issue of these directions at the hearing. Whilst Mr Angliss indicated in principle agreement, Mr McCormack indicated that he would need to consult with his client. Before I can make a direction, I am required to afford the parties a reasonable opportunity to make representations about any proposed directions. Accordingly I allow the parties 10 days from the date of this decision to make any representations concerning the above proposed directions.
Costs
Both parties indicated that costs should follow the event. I see no reason to depart from this in the present case, and award costs against the patent applicant – G & J Koutsoukos Holdings Pty Ltd.
D Herald
Deputy Commissioner of Patents
Patent attorneys for the patent applicant : Wray & Associates, Perth
Patent attorneys for the opponent : Cullen & Co, Brisbane