Glenwood Systems Pty. Ltd. v. Peppertown (Australia) Pty. Ltd.

[1989] APO 14

In the Matter of the Patents Act 1952

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In the Matter of Patent Application 571435 in the Name of GLENWOOD SYSTEMS PTY. LTD.

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In the Matter of Opposition thereto by PEPPERTOWN (AUSTRALIA) PTY. LTD.

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In the Matter of an Application for Extension of Time within which to Serve Evidence‑in‑Support.

DECISION OF AN ACTING ASSISTANT COMMISSIONER OF PATENTS:
Background
        Patent application 571435 for an invention entitled "Play Structure" was advertised accepted in the Official Journal on 21 April 1988.  A notice of opposition to the grant of a patent on the application was lodged by PEPPERTOWN (AUSTRALIA) PTY. LTD. (PEPPERTOWN) on 21 July 1988.
        The time to lodge Evidence‑in‑Support has twice been extended, without objection to 21 January 1989 and then 21 April 1989.  A further application pursuant to regulation 55 was made on 21 April 1989 and this application was objected to by GLENWOOD SYSTEMS PTY. LTD. (GLENWOOD).  Both parties were offered a hearing which both declined, each lodging written submissions in lieu, through their Patent Attorneys, Messrs. Cullen & Co. for PEPPERTOWN and Davies & Collison for GLENWOOD.

Application
        With respect to the granting of extensions of time in opposition proceedings, regulation 83A of the Patents Regulations requires that "... the Commissioner shall not grant the extension of time unless he is satisfied that the extension is justified having regard to all the circumstances of the case".  I therefore need to consider the reasons advanced for and against the present extension as provided by the parties.
        The circumstances and grounds given in the present application for extension of time are as follows:

"Statements have been obtained from persons in the industry relevant to the invention and it is necessary to reduce those statements to Statutory Declaration form.  As the declarants are in various locations throughout Australia, additional time is required to complete the Statutory Declarations."

The attorney's submission in support of the application only referred to the delay caused by "the person in the firm who has been handling the matter (having) recently resigned" and another member of the firm becoming responsible for the matter.  I note that the opponent lodged material comprising its evidence‑in‑support in this matter on 14 June 1989.
        The applicant's attorney submitted as follows in support of GLENWOOD's objection to the extension application:

"The grant of a further extension of time in this matter will cause undue delay in the grant of a patent to the applicant, without sufficient justification being offered by the opponent.  If this extension is granted, a full year will have passed since the opposition was served.

The latest application for extension of time is based on grounds having no relationship to either of the two previous applications and there has been little evidence supplied by the opponent of substantial ongoing preparation of opposition evidence.  Nine months after the opposition was lodged, the opponent indicates that it is only now obtaining statements from persons in the industry and confirms that those statements have not yet, after nine months, been reduced to statutory declaration form.  We submit that preparation of the evidence is taking far too long and is not being conducted in a timely fashion."

I note that the first application for extension of time referred to performing searches overseas, the devolution of ownership of the invention and the establishment of the date of publication (by use) of a play structure.  The second application referred to the latter two points.
Decision
        The law on extension of time in this class of action is well established.  In particular it is clear that in deciding whether an extension of time should be allowed, the Commissioner

(i)must be satisfied that an applicant who seeks such an extension has made out a proper case justifying the extension, and

(ii)must consider not only the respective interests of applicants and opponents, but also those of the public by ensuring that worthless patents are not granted and that there are no unreasonable delays in the proceedings.

The reasons given on the application for extension of time whilst brief do give some indication of why the time previously allowed has been insufficient.  Nevertheless, given the fact that the opponent had already had a total of nine months to prepare evidence a more specific explanation of the difficulties associated with gathering the evidence from expert witnesses should have been given; without it, the extension does not seem justified.
        The submission provided by the attorney to support the extension sought clearly provides no justification for the extension.  Having taken on the responsibilities regarding the opposition for its client, the Patent Attorney firm involved ought to be in a position to pursue the action in an adequate manner irrespective of changing personnel.  Furthermore the basis for an extension concerns matters existing prior to the extension application and why time up to that date has proved insufficient.  There is no indication when the resignation took place or how such resignation, if it occured prior to the application date, affected the evidence preparation process.
        As to the applicant's comments regarding delay in proceedings, I do not see this as a significant factor for two reasons.  Firstly, as PEPPERTOWN has lodged material constituting its evidence‑in‑support, there will be little delay in opposition proceedings if the extension is granted.  Secondly, the application is under opposition by a second opponent and irrespective of PEPPERTOWN's opposition, the application cannot proceed to grant before the other opposition is decided, and that opposition is still in the evidence stages.
        Finally I need to consider the opponent's interests and the public interest.  The opponent, especially in view of the evidence material it lodged subsequent to seeking this extension, is clearly not engaged in a frivolous opposition action.  Furthermore it is in the public interest generally that opposition action be fully canvassed rather than an opponent be shut out with the possible consequence that a patent granted on the application has questionable validity.
        On considering the matters above I am satisfied that the extension should be granted.  Whilst PEPPERTOWN has not made out a convincing case, it has lodged evidence of a substantial opposition in the extended period sought and thus in my view it is in the public interest to allow its opposition to be fully argued.  Accordingly I allow PEPPERTOWN the extension of time sought.  As the evidence filed by the opponent on 14 June 1989 and served on the applicant on or about that date comprises all the evidence‑in‑
support on which it will rely, and as the allowance of the extension by this decision validates the lodgement and service of that evidence, I direct that the initial period for serving evidence‑in‑
answer expires three months from the date of this decision.

(T.R. BRUHN)

Patent Attorneys for the applicant: Davies & Collison, Melbourne