Graco Children's Products Inc. v Britax Child-Care Products Pty Ltd

[1999] APO 28

OFFICIAL NOTICE

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Application  :          No. 688322 in the name of Graco Children’s Products Inc.

Title:          Collapsible Stroller

Action:          Application for an Extension of Time under Regulation 5.10(2) by Britax Child-Care Products Pty Ltd.

Decision:          Issued            .

Abstract

I allow an extension of time from 11 March 1999 to 11 May 1999 in which to serve evidence in support consisting only of:

§  A statutory declaration by Mr Alan Reynolds relating to the 1993 Century Products Company product catalogue together with a supporting statement by an independent expert, if necessary; and

§  A Statutory Declaration by Lin Chao Hsi relating to the 1993 Century Products Company product catalogue.

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Patent Application No. 688322 by Graco Children’s Products Inc and opposition under Section 59 of the Patents Act 1990 by Britax Child-Care Products Pty Ltd and an application for an extension of time under r.5.10(2).

BACKGROUND

Patent application 688322 was filed on 19 April 1994 by Graco Children’s Products Inc (Graco) as a PCT application and published as WO 94/23982.  The application was published accepted on 12 March 1998 and Britax Child-Care Products Pty Ltd (Britax) filed a Notice of Opposition on 11 June 1998.

Evidence in support was due to be completed on 11 December 1998.  On 10 December 1998 Britax filed an application for an extension of time from 11 December 1998 until 11 March 1998.  Graco objected to the extension.  A Delegate of the Commissioner allowed the extension after hearing submissions from both parties.

A request to amend the Statement of Grounds and Particulars, filed on 28 January 1999, was allowed without objection from Graco on 16 March 1999.  A further request to amend the statement, filed on 9 March 1999, was allowed without objection on 31 March 1999.

On 9 March 1997 Britax filed another application for an extension of time to file evidence in support from 11 March 1999 to 11 May 1999 and that was objected to by Graco on 23 March 1999

A hearing was held in Canberra on 14 April 1999.  Graco was represented by Mr Graham Cowin of Phillips Ormonde & Fitzpatrick, patent attorneys, Melbourne and Britax by Mr Craig Vinall of Madderns, patent attorneys, Adelaide.

THE APPLICATION FOR EXTENSION OF TIME

Britax provided the following statement in support of its application for an extension of time to serve evidence in support.

“The circumstances in which, and the grounds upon which, this application is made are as follows:

The Opponent has recently applied to amend the Statement of Grounds and Particulars and to include new particulars under the grounds of both novelty and obviousness.  All of the new grounds relate to the recent location of a relevant stroller published in a 1993 Century Products Company product catalogue.  A copy of the correspondence requesting the amendment of the Statement of Grounds and Particulars and setting out the circumstances in which this new evidence was located is attached.

A Declaration has already been obtained from Lin Chao Hsi in relation to publication of the 1993 Century Products' catalogue.  Further time is required to prepare a Statutory Declaration by Mr Alan Reynolds of Britax Child-Care Products.  Based on comments by Mr Reynolds, it may also be necessary to have a statement from an independent expert witness.

Mr Reynolds is currently overseas on business.  He departed Australia as of 5 March 1999, and is not planning to return until early April 1999.  Accordingly, a two month extension of time is sought to obtain a Declaration from Mr Reynolds and from an expert witness.

Lin Chao Hsi is also providing further material which we have not yet received.  He has advised being able to provide further Graco product catalogues together with evidence relating to manufacture of product for Graco Children’s Products incorporated by Lorado China Limited.  He promised to provide this information prior to the 11 April 1999, but as yet, it has not been received.  Further time is required to obtain this material and to also obtain a further Declaration from Lin Chao Hsi.

Particulars relating to the GRACO GLIDER (paragraph 2.1.2) and the STEELCRAFT P515 BIANCA stroller (paragraphs 2.1.3 and 3.1.3) are no longer being relied upon. Accordingly, no extension of time is sought within which to complete evidence in relation to these particulars.

Evidence in relation to the STEELCRAFT RASCAL DELUXE strollers (paragraph 2.1.5 and 3.1.1) have already been served on the applicant.  Evidence in relation to Australian Patent Application No 13384/88 (paragraphs 2.1.4 and 3.1.4) has already been served on the applicant.”

DECISION

The law on extensions of time under regulation 5.10

The time for serving evidence-in-support of an opposition is three months from the date of serving the statement of grounds and particulars under regulation 5.8. This time may be extended under regulation 5.10.

(2)   The Commissioner may:
(a)   on the application of a party in the approved form; and
(b)   on such reasonable terms (if any) as the Commissioner specifies;
     extend the time within which the party may take a step prescribed in this chapter,
     not being a step that is taken under regulation 5.3 or paragraph 5.4( 1)(a).

Regulation 5.10(5) provides:

(5)   The Commissioner must not grant an application under subregulation (2)
unless the commissioner:

(c) 

(i)   gives the parties a reasonable opportunity to make representations concerning the application; and
(ii)  is reasonably satisfied that an extension of time or the serving of further evidence is appropriate in all the circumstances.

The law on extension of time provisions, and more specifically the law on regulation 5.10 of the Patents regulations 1991, has been considered and summarised by Burchett J in Ferrocem Pty Ltd v Commissioner of Patents ( 1994) 28 IPR 243 and more recently by Sackville J in AGoninan & Co Ltd v Commissioner Of Patents (1997) 38 IPR 213. In both of these decisions it was stated that regulation 5.10 confers a broad discretion, which cannot be reduced to an imperative compliance with particular requirements. On the contrary it is necessary to give proper, genuine and realistic consideration to all relevant aspects of the case. Relevant aspects include:

(a)      Reasons provided on why an extension of time to lodge evidence-in- support is needed

Relevant reasons include explanations on any delays in filing evidence to date. The reasons why the evidence was not served in time are a relevant consideration, but a satisfactory explanation is not a mandatory requirement.

(b)      The public interest

The public interest in determining a serious opposition on its merits is a relevant consideration. There is also the efficient and orderly administration of matters before the Patent Office to consider.

(c)      The interests of the parties involved in the opposition

Disadvantages to either the applicant or the opponent are relevant considerations.

Reasons on why an extension of time to lodge evidence-in-support is needed

Graco submitted that:

§the statement by Britax, in its statement supporting its application for an extension of time, had suggested that time was needed to find new evidence, that is, evidence not particularised in the original Statement of Grounds and Particulars and the statement as amended;

§  Britax did not have the evidence upon which to base its opposition and was seeking time to undertake a “fishing expedition” to find the evidence it needed; and

§  the case it needed to defend was based on “shifting sands” with continuing additions to the Statement of Grounds and Particulars and particulars no longer being relied on;

§  there is an absence of a full and frank disclosure of why evidence took so long to appear.  The letter accompanying the request to amend to Statement of Grounds and Particulars filed on 9 March 1999 provides some explanation of circumstances surrounding the matter but does not explain delays associated with Mr Reynolds’ actions.

Graco submitted that the following part of the statement supporting the application for an extension of time was particularly relevant to these conclusions.

“Lin Chao Hsi is also providing further material which we have not yet received.  He has advised being able to provide further Graco product catalogues together with evidence relating to manufacture of product for Graco Children’s Products incorporated by Lorado China Limited.  He promised to provide this information prior to the 11 April 1999, but as yet, it has not been received.  Further time is required to obtain this material and to also obtain a further Declaration from Lin Chao Hsi.

Particulars relating to the GRACO GLIDER (paragraph 2.1.2) and the STEELCRAFT P515 BIANCA stroller (paragraphs 2.1.3 and 3.1.3) are no longer being relied upon. Accordingly, no extension of time is sought within which to complete evidence in relation to these particulars.”

Britax submitted that:

§the extension of time was to allow Mr Alan Reynolds to complete his statutory declaration relating to the 1993 Century Products Company product catalogue only recently provided by a third party Mr Charles Lin (also known as Lin Chao Hsi) (Lin) and for Lin to provide additional material to support Mr Reynolds declaration in relation to the 1993 products catalogue.  Britax have also concluded that any statements made by Mr Reynolds may need to be supported by expert evidence; and

§  evidence in support of the original unamended Statement of Grounds and Particulars has already been completed; and

§  they were not involved in a fishing expedition but just in a struggle to get necessary evidentiary material from the Taiwanese manufacturers.

Britax provided a better explanation of the circumstances surrounding the delays in serving evidence at the hearing.  They submitted that delays in completing evidence relating to the amendments to the statement have been caused by:

§  Mr Reynolds overseas trip;

§  the reluctance of Lorado China Limited (Lorado) to provide information required in evidence;

§  Lin’s slowness in providing materials in support of the product shown in the 1993 catalogue, eg. Drawings and examples of the relevant products; and

§  Both Lorado and Lin being third parties beyond the control of Britax.

Britax said that Lorado supplies product to both Graco and Britax.  Lorado could be seen as being careful not to offend either customer.

I asked Britax whether they had investigated any other sources of the material required to complete evidence in relation to the product disclosed in the 1993 catalogue.  They said that they had been unsuccessful in finding sources other than Lorado and Lin. 

I accept Britax’s submission that the reasons for the delay in completing their evidence in support are beyond their control and that there has not been any undue delay in serving evidence.  I also accept that their application for an extension of time is not to allow them to engage in “a fishing expedition” but is just to allow the completion of evidence relating to the 1993 catalogue recently provided by Lin.  I am sympathetic to the problems caused by the slowness of third parties in providing the necessary evidentiary materials.

The public interest

The significance of public interest in cases where there has been a lapse in procedure was recently considered by Sackville J at p222 in A Goninan & Co Ltd v Commissioner Of Patents (supra)

"The Commissioner must take into account the public interest in determining a serious opposition on its merits. The Commissioner must give consideration to that aspect of the public interest even where the party has failed to comply with the procedural requirements specified in the regulations. However as Burchett J made clear in Ferocem, the public interest must be weighed with and against other considerations. It is not the only factor considered."

I am guided by the reasons of Burchett J in the Ferocem case and reiterated by Sackville J in Goninan (supra). In short , the public interests are not all ranged on the same side. On the one hand are the expeditious disposal of matters in the Patent Office, and questions of costs, efficiency, and of insistence of standards maintained. On the other hand are the words of Kitto J in Kaiser Aluminium & Chemical v. The Reynolds Metal Company (1969) 120 CLR 136 at 143, viz a serious opposition should be dealt with on its merits rather than be shut out as a consequence of a failure of procedure.

In relation to the expeditious disposal of matters in the Patent Office, it is a relevant circumstance that the evidence relating to the original Statement Of Grounds and Particulars has been completed.  All that is required to be completed is the evidence relating to the amended part of the statement, amendments that, I note, were not objected to by Graco.

The completion of service of evidence relating to the original Statement Of Grounds and Particulars is also a clear indication that the opposition is a serious one.

The interests of the parties involved in the opposition

The interests of the applicant (Graco) are clearly in not having the opposition unduly delay the granting of the patent. I am not aware of any other special circumstances, apart from this general consideration, which would specially disadvantage the applicant.

The interests of Britax (the opponent) are clearly in obtaining an extension of time in order to file evidence-in -support. If I were not to grant any extension, evidence of examples of allegedly prior art strollers, that is those contained in the 1993 catalogue, would not be available.

CONCLUSION

I am satisfied that Britax’s application is for an extension of time to complete evidence relating to disclosures in the 1993 Century Products Company product catalogue.  It is not for finding evidence not yet particularised in the amended Statement of Grounds and Particulars as is suggested by the statement supporting their application for an extension of time. 

At the hearing, Britax stated that they were trying to establish whether further material they had, that had not been particularised, would constitute new evidence in the proceedings, and that the present application for an extension of time was not for serving this evidence.

Consequently, I allow an extension of time from 11 March 1999 to 11 May 1999 in which to serve evidence in support consisting only of:

§  A statutory declaration by Mr Alan Reynolds relating to the 1993 Century Products Company product catalogue together with a supporting statement by an independent expert, if necessary; and

§  A Statutory Declaration by Lin Chao Hsi relating to the 1993 Century Products Company product catalogue.

COSTS

Normally in events of this kind costs go with the event, however, in this case I am sympathetic with the difficulties Graco had in understanding what was encompassed by the statement supporting the extension of time application, about what material Lin would provide in evidence.

It seems to me that this hearing could have been avoided if the statement had related clearly to the disclosures in the 1993 catalogue.

Consequently, I award costs against Britax Child-Care Products Pty Ltd.

Bob Sawyer
Delegate of the Commissioner of Patents

Patent attorneys for the applicant  :  Phillips Ormonde & Fitzpatrick

Patent attorneys for the opponent   :  Madderns