Glenwood SYSTEMS Pty Ltd v Andrew Laurence Gooden

[1992] APO 68

official notice

decision of a delegate of the commissioner of patents

Application        :    No. 571435 in the name of GLENWOOD SYSTEMS PTY. LTD.

Title:    PLAY STRUCTURE

Action:    S.59 opposition by ANDREW LAURENCE GOODEN; hearing; further evidence.

Decision:    Issued            .  Special leave granted.

patents act 1990

decision of a delegate of the commissioner of patents

Re: Patent Application No. 571435 by GLENWOOD SYSTEMS PTY. LTD, opposition under S.59 of the Patents Act 1952 by ANDREW LAURENCE GOODEN and application by the opponent for special leave to adduce further evidence under R.59(1).

background

Application No. 571435, for a patent for an invention relating to a children's play structure, comprises a complete specification lodged on 3 March 1983 with priority claimed from a provisional specification lodged on 4 March 1982.  The application was advertised accepted on 21 April 1988 and opposed on 10 May 1988, and the matter was heard in Canberra on 26 June 1992; the applicant was represented by Mr G. Noonan and Ms Karen Yeilds, patent attorneys; and the opponent, who attended the hearing, was represented by Mr H. Schulze, patent attorney.

At the hearing it was discovered that a declaration, by Pamela Jane Young, in the evidence-in-support, was undated.  Also, Mr Noonan submitted that parts of the declaration were ambiguous.  Thus, on 10 July 1992 the opponent applied under R.59 for special leave to adduce further evidence.  The declaration required by R.59(3) indicates that the further evidence, a new declaration by Pamela Jane Young, should be admitted since "the opponent is concerned lest the technicality should lessen the importance of this very important piece of evidence".  Glenwood opposed Mr Gooden's application for special leave and both parties lodged written submissions in lieu of a hearing on the matter.

SUBMISSIONS

Mr Noonan's submissions for Glenwood can be summarized as follows:

.The granting of special leave would cause unreasonable delay because a fresh hearing on the opposition would be necessary.

.Refusal to grant special leave would cause no injustice to the opponent since he would have the opportunity to appeal and improve his evidence.

.In the light of the judgement in Kaiser Aluminium v Reynolds, 43 ALJR 156, the opponent is not seeking to merely overcome a failure of procedure but is seeking to rectify a failure of content.

.In the light of the decision in Canadian Industries Limited v Australian Paper Manufacturers Limited, 50 AOJP 4565, (i) a new hearing would be necessary because the opponent is seeking to adduce new evidence; and (ii) the patent applicant did not point out the deficiencies in the original Young declaration in the evidence-in-answer firstly because the applicant had no evidence per se to answer the Young declaration, and secondly because "the applicant certainly is not required to help the opponent prepare its case!".

Mr Schulze's submissions for Mr Gooden can be summarized as follows:

.The fact that the Young declaration was undated is not a matter that goes to the substantive value of the declaration considering that the date of signing had to be prior to the lodgement of the declaration as part of the evidence-in-support.

.Any ambiguity in the wording was self-evidenly not deliberate; the opponent does not want to leave the matter in any doubt and the new declaration expresses the same facts in unambiguous wording.

.The evidence cannot be classed as new evidence.

.The purpose of an opposition is to establish the facts and to avoid an appeal together with further evidence in a de novo action.

.There will be no further protraction of the opposition because the applicant is already aware of the evidence.

DECISION

In letters dated 19 October 1992, I notified both parties that I had decided to grant special leave to adduce the further evidence and that I would give reasons for my decision in a subsequent written decision.

Thus, after consideration of criteria from the CIL V APML case, supra, and from the decisions in Micronair (Aerial) Ltd v Waikerie Co-op Producers Ltd, 7 IPR 107, and Sue v Carpenter (1991) AIPC 90-750, I concluded as follows:

.It is not relevant to show in this case that the evidence could not have been obtained at an earlier stage since the evidence is a corrected form of evidence already lodged.

.It was clear to me from submissions made at the hearing on the original Young declaration, that the evidence would "have an important influence on the result of the case", and "that it would contribute to a more correct, just or expeditious result".

.The evidence is prima facie credible.

.Some necessary protraction of the opposition would result from granting leave to adduce the further evidence, since the other party has a right under R.59(6) to lodge evidence-in-reply to the further evidence and is given one month to do so.  However, in the present circumstances I thought that no unnecessary protraction would occur since  a fresh hearing on the opposition should not be necessary: firstly because the patent applicant had already had an opportunity to comment on the original Young declaration and secondly because it seemed unlikely that the patent applicant would adduce evidence-in-reply which would need to be heard, since that party did not adduce any evidence-in-answer to the original Young declaration.  I did not agree with Mr Noonan's distinguishing of the present circumstances from those in the CIL v APML case, because in both cases the evidence is not new evidence as such but a corrected form of evidence already lodged.  In the CIL v APML case the hearing officer explicitly stated that "there ought to be no consequential hearing".

.The party seeking to adduce the further evidence had "been diligent in prosecuting the opposition".  The evidence did take several years to accumulate, and both parties applied for several extensions of time; but such extensions were typical of oppositions prosecuted under the 1952 Act.  I had nothing before me save Mr Noonan's submissions to lead me to the conclusion that the opponent had not been diligent in prosecuting the opposition in this case.

.No injustice would be done to Glenwood by admitting the further evidence since it already had had an opportunity to consider the original Young declaration.

Finally, I took into account my decision in Nomad Structures v Heyring (1992) AIPC 90-887 where I granted special leave to adduce evidence which in effect was to correct an error in the evidence already lodged.

On the matter of costs, it is clear that the actions taken in relation to further evidence arose out of problems generated by the opponent in the S.59 opposition.  However, there was no hearing on the further evidence, and there is no provision in Schedule 8 for any evidence or preparation costs associated with further evidence; therefore I conclude that it is not appropriate  to make any award on costs relating to the further evidence.

J.I.WELSH

Delegate of the Commissioner of Patents

Patent attorneys for  Glenwood:       Davies & Collison, Melbourne

Patent attorneys for  A. Gooden:       Collison & Co, Adelaide