Google Inc. v David Brian Webber
[2010] APO 17
•30 August 2010
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
David Brian Webber v Google Inc [2010] APO 17
Patent Applications 2006208079
Title:Multiple index based information retrieval system
Patent Applicant: Google Inc.
Opponent: David Brian Webber
Delegate: Xavier Gisz
Decision Date: 30 August 2010
Hearing Date: Heard by written submission
Catchwords: PATENTS – opposition to an extension of time to serve a Statement of grounds and particulars – statement served at wrong address - error in checking address of applicant – error causative - extension of time under section 223(2)(a) allowed.
Representation: Patent applicant: Robert Finzi of Pizzeys, Canberra
Opponent:Nik Ramchand of Davies Collison Cave, Melbourne
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2006208079
Title:Multiple index based information retrieval system
Patent Applicant: Google Inc.
Date of Decision: 30 August 2010
DECISION
The extension of time to serve the Statement of Grounds and Particulars is allowed under the provisions of section 223(2)(a).
Costs are awards against Google Inc.
REASONS FOR DECISION
BACKGROUND
Patent application 2006208079 was filed on 25 January 2006 in the name of Google Inc (the Applicant) under the provisions of the Patent Cooperation Treaty (PCT). It claimed priority from a US basic application (serial number 11/043,695) filed on 25 January 2005 and entered national phase in Australia on 21 August 2007.
The Australian application was advertised as accepted on 26 November 2009 and a notice of opposition was filed by David Brian Webber (Mr Webber, the Opponent) on 26 February 2010. Under regulation 5.4, the Opponent then had 3 months to serve a copy of the Statement of Grounds and Particulars (SGP) on the Applicant. Thus the deadline for serving the SGP was 26 May 2010.
On 26 May 2010 Mr Ramchand, a patent attorney working for Davies Collison Cave, (the Attorney for the Opponent) served a copy of the SGP on Spruson & Ferguson, patent attorneys. However, Mr Ramchand should have served the SGP on Pizzeys, patent attorneys, who are the address for service for this application.
Two days later, on Friday 28 May 2010, Mr Ramchand received an email from Spruson & Ferguson indicating that they were not handling Australian patent number 2006208079. That day, Mr Ramchand served the SGP on Pizzeys. On the same day, Mr Webber filed the application for an extension of time. The application for an extension of time was accompanied by a Statutory Declaration by Mr Ramchand.
On 15 June 2010 the Applicant filed an opposition to the extension of time. The parties were informed that the hearing would proceed on the basis of written submissions.
APPLICABLE LAW
Section 223 of the Patents Act (1990) (the Act) permits the extension of time periods in limited circumstances. The present request for extension is under subsection 223(2)(a). Subsection 223(2) provides:
(2) Where, because of:
(a) an error or omission by the person concerned or by his or her agent or attorney; or
(b) circumstances beyond the control of the person concerned;
a relevant act that is required to be done within a certain time is not, or cannot be, done within that time, the Commissioner may, on application made by the person concerned in accordance with the regulations, extend the time for doing the act.
Sub-regulation 22.11(1) provides that:
(1) For the purposes of subsection 223 (2) or (2A) of the Act, an application for an extension of time must be in the approved form and have with it a declaration setting out the grounds on which the application is made.
The factors to be considered in the exercise of discretion under section 223 were summarised in Lazer Safe Pty Ltd and Commissioner of Patents and Ors [2001] AATA 967 as follows:
(A) whether there has been a frank, comprehensive and clear disclosure of all the circumstances relevant to weighing the discretionary consideration;
(B) whether a serious opposition has been foreshadowed;
(C) whether there has been undue delay in seeking an extension of time;
(D) the interests of the parties in refusing or granting an extension; and
(E) the public interest in refusing or granting an extension.
DECISION
Who is the ‘person concerned’ and who is their agent or attorney?
Subsection 223(2)(a) of the Act provides that the Commissioner may, on application by the person concerned, extend the time for doing an act (such as filing a statement of grounds of opposition). In the case of extending the time to serve the SGP, the person concerned is the opponent. I accept that Mr Webber is the person concerned and that Mr Ramchand is the Attorney for the Opponent.
The request for production of documents
10. On the 6 July 2010 the Applicant requested that the Commissioner issue a Notice for production of documents (under the provisions of subsection 210(c)) to Davies Collison Cave (DCC) which relate to patent application 2006208079. The Commissioner declined this request, but informed the Applicant that a request that the Commissioner issue a Notice for production of documents limited to communication between the Opponent and the Attorney for the Opponent would be considered.
11. On the 8 July the Applicant filed a revised request that the Commissioner issue a Notice for the production of documents relating to communication between the Opponent and the Attorney for the Opponent. On 9 July 2010 the Deputy Commissioner issued this Notice of production.
12. The notice required the production of the following documents:
- All communication to Davies Collison Cave from the Opponent regarding instructions to file the Statement of Grounds and Particulars by the relevant deadline of 26 May 2010.
- All communication from Davies Collison Cave to the Opponent regarding instructions to file the Statement of Grounds and Particulars by the relevant deadline of 26 May 2010.
13. On 19 July 2010 the Mr Ramchand informed the Commissioner that:
“Many of the communications with the Opponent in relation to this matter are oral, and are not documented. In particular, documents answering the description of the documents requested in the Notice are not in existence on our files.”
14. On 12 August 2010 a delegate of the Commissioner advised the Applicant and the Opponent that the information provided in the letter of 19 July 2010 was satisfactory and the notice to produce had been complied with.
What was the intention of the Opponent?
15. The Applicant argues that the intentions of the Opponent are a relevant factor in determining whether there was a relevant error or omission. The last sentence of paragraph 13 of the Applicant’s submission states:
As the authorities note, there can be no “error or omission” to enliven s 223(2)(a) if the Opponent never had the intention at all relevant times to serve the Statement by the deadline, except for the limited circumstance in which the error or omission precluded the forming of the specific intention (Apotex Pty Limited and Commissioner of Patents and Les Laboratories Servier [2008] AATA 226 at [21])
16. The Applicant asserts that further evidence about the Opponent's intention is necessary for the Commissioner to determine whether a causative error has occurred. In essence, the Applicant is arguing that an absence of evidence about the Opponent's intention is evidence of an absence of intention.
17. There is a single relevant fact in determining whether the Opponent had an intention for the SGP to be served: that the SGP was served on time, but to the wrong address. It is readily inferred from this fact that the Opponent did indeed have an intention for the SGP to be served.
18. Without any evidence to the contrary, I accept that the Opponent had the intention to serve the SGP.
Was there an error or omission?
19. A prerequisite for an extension of time to be granted under subsection 223(2)(a) is that the Commissioner must be satisfied that an error or omission was the reason that a required action was not done within a certain time.
20. The Statutory Declaration describes the actions of the Attorney for the Opponent that resulted in the SGP being served after the prescribed period that could be viewed as errors or omissions. I must now determine if these actions are errors or omissions necessary to enliven subsection 223(2)(a).
Possible error or omission
21. In paragraph 4 of the Statutory Declaration, Mr Ramchand states: “…I erroneously assumed that my secretary had inserted the correct details for the attorneys for the Applicant in each of the Statements, and the letters by which the Statements would be served”.
22. In paragraph 5 of the Statutory Declaration, Mr Ramchand states: “As a result of my mistaken assumption referred to above, and my failure to check the details of the Applicant’s address for service, a copy of the Statement for the present opposition was erroneously sent to Spruson & Ferguson, patent attorneys.”
23. Mr Ramchand’s failure to check the details of the Applicant’s address is understandable, especially in light of his reasonable assumption that his secretary had inserted the correct address. This failure to check the Applicant’s address can clearly be characterised as an “accidental slip which frustrates an intention to do an act” (as per Re Kimberly-Clark Limited v the Commissioner of Patents and Minnesota Mining and Manufacturing Company [1988] FCA 421 (2 December 1988)) which is an error or omission which may enliven s 223. Consequently, I accept that Mr Ramchand’s failure to check the details of the Applicant’s address is an error or omission.
Did an error cause the failure to serve the SGP?
24. I am satisfied that the Attorney for the Opponent made an error in the course of the SGP being prepared and served. I now must determine if the error or omission caused the failure to serve the SGP.
25. If the address was wrong then this is self-evidently the cause of the SGP being served to the wrong address. Therefore I accept that Mr Ramchand’s failure to check the address was the direct cause of the SGP being sent to the wrong address.
Should the discretion be exercised?
26. I have found that an error by the Attorney for Opponent was causative of the failure to serve the SGP in the prescribed time. I must now consider whether to exercise the discretion provided in section 223 to extend the time to serve the SGP. The relevant factors to consider are given in Lazer Safe (supra).
Is the disclosure of the error frank, comprehensive and clear?
27. Mr Ramchand has made a Statutory Declaration as required by sub-regulation 22.11(1) which details the errors that lead to the SGP being served after the prescribed time. Mr Ramchand has stated in the letter of 19 July 2010 that communication between himself and the Opponent with regard to serving the SGP was not recorded.
28. I accept that Mr Ramchand’s Statutory Declaration is sufficiently explicit about: a) the error; b) the circumstances that lead to the error; and c) how the error caused the failure. Consequently, I am satisfied that the disclosure of the error is frank, comprehensive and clear.
Has a serious opposition has been foreshadowed?
29. The opposition, particularly to the grounds of novelty and inventiveness matters, appears prima facie serious. Thus I accept that a serious opposition has been foreshadowed.
Was there undue delay in seeking an extension of time?
30. The Opponent sought an extension of time on the same day they became aware of the error. There was no undue delay in seeking this extension of time.
What are the interests of the parties in refusing or granting an extension?
31. The consequence of granting the extension of time is that the opposition of substantive matters may proceed. The extension of time is for two days and amounts to a small inconvenience to the Applicant. Hence I believe that the balance of interests of the parties favours granting the extension.
Is there a public interest in refusing or granting an extension?
32. It is in the public interest to allow the Opponent to challenge the validity of an application. The public deserves patents which have a high expectation of validity.
CONCLUSION
33. I have found that the factors listed in Lazer Safe (supra) all point in favour of exercising the discretion to grant the extension of time. I see no other reason that may outweigh these factors, and so I believe granting the extension of time is appropriate under the provisions of subsection 223(2)(a).
COSTS
34. The Commissioner has a discretionary power to award costs under section 210 and regulation 22.8.
35. I see no reason to depart from the normal practice that costs follow the event. The Opponent, Mr Webber, has been successful in this opposition. I award costs according to Schedule 8 against Google Inc.
Xavier Gisz
Delegate of the Commissioner of Patents
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