Goran Bolin, Urpo Latvakangas and Jan Sabelstrom v Pro-Bind (Australasia) Pty Ltd

[1991] APO 10

PATENTS ACT 1952

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Patent Application Number 596405 by GORAN BOLIN, URPO LATVAKANGAS and JAN SABELSTROM, opposition by PRO-BIND (AUSTRALASIA) PTY LTD, and objection to extension of time to serve evidence-in-support.

Background

Application 596405 was lodged as an international application on 13 March 1987.  It claims priority of 14 March 1986 from a Swedish patent application.
         The Patent Office advertised acceptance of application 596405 on 3 May 1990.  On 3 August 1990, PRO-BIND applied for an extension of time to oppose the application.  The applicants did not object to an extension of time, and it was allowed by the Patent Office.
         On 31 January 1991, the opponent applied for a three month extension of the time to lodge evidence in support of the opposition.
         The applicants objected to this application for an extension of time.  A hearing was set down for 13 March 1991.  The applicants were not represented at the hearing, but their attorney had previously lodged written submissions.
Application and submissions
         The grounds the opponent gave in its application for extension of time were:

Part of the prior art evidence has been gathered but still further time is required within which to prepare the necessary Statutory Declarations.

The claims of the application are directed to a "booklet, folder or wrapper" and to a "method of producing a booklet, folder or wrapper".

The opponent's patent attorney (Mr Craig Vinall) said that PRO-BIND manufacture thermal binding machines, and binders for such machines.  His firm forwarded a copy of the abridgment of the accepted application to PRO-BIND near the end of the opposition period.  PRO-BIND later requested a full copy of the accepted specification.  After the application for an extension of time to oppose, PRO-BIND lodged a Notice of Opposition on 2 November 1990.
         PRO-BIND then attempted to obtain evidence of anticipation from third parties in Sydney.  The Christmas period intervened.  Late in January, the opponent obtained information about sales of "UNI-BIND" covers and a thermal binding machine in Sydney in or about October 1985.  The person who bought the machine still had it, but had used all the original covers.  The opponents then obtained samples of the current UNI-BIND covers.  Mr Vinall produced one of these covers at the hearing.  He believes that they anticipate the claims of the present application.  Mr Vinall also said that he has had difficulties in getting third parties to give of their time to assist in the preparation of the necessary statutory declarations.
         The written submission from Mr Alun Thomas, the applicant's patent attorney, were to the effect that:

the grounds given in the application for an extension of time to oppose were standardised (i.e. lacking in detail);

the opponent is based only about 1 mile from their patent attorney's office, and communication distance could not be a problem;

the application was first published in September 1987 and the opponent could easily have been aware of the application as early as that;

the opponents had known of the activities of the applicants at least since 1985 and there is every reason to believe that the opponent could have been keeping an eye on the activities of the applicants; and

even if the opponents only became aware of the application in August 1990, there has still been 6 months in which the opponent could have located and lodged evidence.

Relevant law

The Federal Court of Australia has considered the provisions of the industrial property legislation material to extensions of time in opposition proceedings in Vangedal-Nielsen v Smith (1980) 33 ALR 144 and Lyons v Registrar of Trade Marks (1983) 50 ALR 496; 1 IPR 416. These decisions establish that:

.The party seeking an extension of time carries the burden of establishing an appropriate case to justify that extension.  That is, the applicant for extension carries the onus of proof.  An extension cannot be granted merely because the other party has been unable to show that an extension should not be granted.

.In deciding whether the applicant for extension has made out a proper case justifying extension, the Commissioner must take all relevant considerations (and no others) into account.

These cases also show that in meeting the onus upon it, the applicant is not limited to reliance upon facts proved by formal evidence adduced by it.  It may be able to point to background material or to material publicly available or even to facts proved by the other party's evidence.  Factors to be considered in deciding whether to grant an extension of time include:

.The public interest in ensuring that worthless patents are not granted because sufficient time has not been allowed to raise an objection or to prepare and serve evidence in support of an objection.

.The applicants' interest in having sufficient time to prepare an adequate defence of its application.

.The opponent's interest in expeditiously preventing the grant of a patent which will curtail its activities.

Decision
         I believe that the balance of the competing interests is such that the extension of time should be granted.  Although I cannot pre-judge the evidence of alleged anticipation, I believe that there is a "serious opposition" to be determined.
         I agree with Mr Vinall's submission that no great weight should be given to the observation that the opponent could have been preparing evidence in the time before it lodged the notice of opposition.  The opponent in this case is also relying on the evidence of a third party, and it is "notoriously difficult" to expeditiously obtain such evidence.  (See Lyons v Registrar of Trade Marks, cited above.)  Overall, I believe that the opponent has not been dilatory in gathering evidence; and that the public interest is such that what appears to be a serious opposition should be decided on properly prepared evidence.
         I am aware that the applicants' legitimate commercial interests may be adversely affected by further delay in determining the opposition.  However, on balance I am of the opinion that this extension of time should be granted.
         I allow the opponent an extension of time to 2 May 1991 in which to serve evidence in support of its opposition.
Costs
         I award costs, as following the event, against the patent applicants.

(ALLEN EVANS)
  Delegate of the Commissioner of Patents

Attorneys for the applicants: Collison & Co, Adelaide
Attorneys for the opponent  : R.K. Maddern & Associates, Adelaide