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

[1999] APO 10

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 to serve evidence-in-support of an opposition by BRITAX CHILD-CARE PRODUCTS PTY LTD

Decision:          Issued             

Abstract

Adequate reasons for an extension not provided at the time of the request. Reasons provided in the written submissions filed before the hearing were sufficient to justify the extension, considering all the circumstances. Part evidence served just prior to the hearing. Extension allowed until 11 March 1999. Costs awarded against the opponent.

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Patent Application No. 688322 by Graco Children's Products, Inc, an application for an extension of time to serve evidence-in-suppport of an opposition by Britax Child-Care Products Pty Ltd, and objection thereto by Graco Children's Products

BACKGROUND

Patent Application 688322 was filed on 19 April 1994 by Graco Children's Products (hereinafter referred to as Graco). The application was advertised accepted on 12 March 1998. A notice of opposition to the grant of the patent was filed by Britax Child-Care Products Pty Ltd (thereinafter referred to as Britax) on 11 June 1998, and a statement of grounds and particulars was served on 11 September 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 of three months from 11 December 1998 to 11 March 1999 to serve evidence-in-support. Graco objected to the extension on 24 December 1998.

Graco was represented by Graham Cowin of Phillips Ormonde & Fitzpatrick, patent attorneys, Melbourne. Britax was represented by Craig Vinall of Madderns, patent attorneys, Adelaide.

The application for extension was set down for hearing in Canberra on 5 February 1999. Mr Cowin appeared in person , Mr Vinall appeared by telephone.

THE APPLICATION FOR EXTENSION OF TIME

The application, which was filed on 10 December 1998, includes the following statement relevant to the need for an extension of time of three months from 11 December 1998 to 11 March 1999 in order to serve evidence-in-support:

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

·    Further time is required to complete evidence-in-support of the opposition.

·    Samples of prior art have been difficult to locate. Some are no longer in production and drawings of older models are no longer held by the opponent.

·    Also, information and evidence is being sought from Taiwanese manufacturers. We have been assured that the required evidence will be forthcoming shortly."

SUBMISSIONS

Mr Vinall made written submissions 8 days before the hearing. These were accompanied by a statutory declaration made by Alan Reynolds of Britax. Mr Vinall also made oral submissions by telephone at the hearing. He made it quite clear that this statutory declaration was not evidence as such but merely set out more detailed reasons why the extension should be granted

Mr Cowin just made oral submissions at the hearing. He also stated that two additional statutory declarations, which are part of the evidence, had been received 2 days before the hearing. At the time of the hearing IP Australia had not received these, they arrived after the hearing.

I will refer to the submissions where relevant

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 A Goninan & 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

Accompanying the original request for an extension was an explanation from the opponent that , further time is required to complete evidence-in-support of the opposition; samples of prior art have been difficult to locate [some are no longer in production and drawings of older models are no longer held by the opponent]. Also, information and evidence is being sought from Taiwanese manufacturers. We have been assured that the required evidence will be forthcoming shortly.

On 28 January the opponent filed a statutory declaration by Mr Alan Reynolds, Technical Manager of Britax. In this declaration Mr Reynolds makes reference to particular prior art strollers, [which have been particularised in the Statement of Grounds and Particulars] which he believes will anticipate the stroller of the specification in suit. He states however that these particular strollers are no longer in production and there has been some difficulty in locating second hand examples. Accompanying the statutory declaration were two exhibits which were respectively illustrations from a stroller catalogue [which are insufficiently detailed to give more than an inkling of the prior art] and a drawing from a design registration which shows an earlier stroller in some detail. There was also reference to the need to consider the content of Australian Patent Application 13384/88 in relation to the Graco stroller of the application in suit.

Mr Cowin made a number of submissions on behalf of the applicant, which may be summarised as follows:

• The original statement accompanying the request for extension did not establish good reasons why the extension should be granted.

• The Reynolds declaration appeared to show that Britax were still trying to find evidence since Mr Reynolds stated only that he "believed" the strollers anticipated his client's stroller.

• There was no explanation as to why Australian Patent Application 13384/88 had not already been served as part of the evidence-in-support.

• There was no indication of how long the information and evidence sought from the Taiwanese manufacturers would take.

Mr Cowin however conceded that as some evidence had been served prior to the hearing that he did not see how he could really object to an extension of time up to the date of service, in respect of that evidence only. He however made the point that as he believed the opponent was really on a fishing expedition in respect of the prior art strollers, it was not proper to grant an extension to look for evidence, only to permit the preparation of evidence to hand.

As to the matter of the opponents being on a fishing expedition for new evidence I am not persuaded. The drawings and employee recollections of the prior art strollers, whilst they give an initial indication of anticipating the Graco stroller, are likely to be nowhere as persuasive as an actual example of the stroller. However as a result of the other submissions in the declaration I am myself unclear as to why the evidence in respect of Australian Patent Application 13384/88 was not filed as part evidence in the original three month period. Also if the explanation provided in the Reynolds declaration had been available at the outset perhaps Graco may not have felt the need to oppose the extension. [Mr Cowin noted at the hearing that the Reynolds declaration arrived too late for him to consult his overseas client about withdrawing the objection to the extension-of-time]On balance I am of the view that the later explanation, in itself justifies the full extension requested, not merely one up to the date of the serving of part of the evidence. It seems to me that locating actual examples of the prior art strollers ought to be possible and that everyone's interest is best served if this were to be allowed to happen.

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."

This has been well summarised in the Office decision on Patent 675388, Nippon Steel Corp v. BHP Steel (JLA) Pty Ltd, issued 26 February 1998. As the hearing officer so succinctly put it:

"On the issue of the public interest 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 this is the first extension requested. Some evidence was served on the applicant prior to the hearing but not received by the hearing officer until after the hearing. The opponent still maintains that they will need additional time to complete their evidence. The opponent in their submissions makes reference to the fact that it will be difficult enough to meet the extended deadline requested. Clearly any extension of time granted has the potential to cause further protraction of the case past 11 March 1999.

On the question as to whether the opposition is a serious one, Mr Vinall submitted that the serving of some of the evidence on Graco prior to the hearing is a clear indication that it is.

The part evidence so far served relates to both Australian Patent Application 13384/88 and the prior art Graco stroller covered in the lapsed Australian design registration. These are both particularised in the Statement of Grounds and Particulars. I therefore consider the evidence to be relevant and I am therefore satisfied that a serious opposition is in train.

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, the opponents would not have any evidence at all on file. If I were only to grant an extension up to the date of filing part of the evidence, then what appears to me crucial evidence of examples of allegedly prior art strollers would not be available. It is difficult to imagine how an opponent can proceed with an opposition without this crucial evidence.

CONCLUSION

As of the date set down for the hearing the opponent had only lodged part of its evidence. The statement of Grounds and Particulars clearly indicates that a serious opposition is on foot. It is in the public interest that this opposition is heard on its merits. The opponent would be severely disadvantaged if I did not at least grant the extension up the date of serving the evidence. As to granting the full extension to try and complete the service of evidence I am inclined in all the circumstances to do so. I feel that not to do so would exclude vital evidence, and without this evidence the public interest would not be served.

Some of the evidence has now been filed. I have considered it and am of the clear view that it should be admitted. I note that examples of the other prior art strollers that were particularised have not yet been located, thus the evidence so far served is incomplete. Thus I am inclined to grant the full extension requested, so that the opponent may serve all its evidence, and not have to rely only on what has so far been served.

The strongest argument against granting an extension is that the reasons accompanying the original request for an extension were unsatisfactory. They led the applicant to believe that the evidence was in an advanced state of preparation, and would in all probability be filed prior to the hearing date. In the event part of this evidence was so filed. In view of this the applicants indicated at the hearing they would have no real objection to my granting an extension so as to allow this evidence to be served. I would note that a satisfactory explanation for why the extension is required is not mandatory.

The reasons for delay in the opponent's written submissions just prior to the hearing were far more convincing. The ability to get replies from Taiwanese companies is beyond the control of the opponent. I would also concede that it would be hard for the opponent to track down second hand examples of the prior art strollers within the three month period. I am however a little concerned about the delay that will be caused if I grant the extension. I would expect that if I were to grant the extension that the opponents would be able to find examples of the prior art strollers before 11 March. Normally, since this is the first extension requested, I would be of the view that a three month delay was not excessive. However the opponent in its submission has alluded to the possibility of a further delay, particularly with respect to obtaining information from Taiwan. If this were to occur this further delay could extend the proceeding unduly.

Overall I do not consider that this lapse in procedure by Britax outweighs the public interest in having a serious opposition dealt with on its merits. Accordingly having considered all relevant circumstances I will allow the full extension of time requested to serve evidence-in-support to 11March 1999

COSTS

Costs normally follow the event. In their submission the applicant asked for their costs, the opponent merely asked that costs follow the event.

However in this case I do not believe that the reasons given by the opponent with their initial request were adequate. If they had been more frank about the difficulty in obtaining information from Taiwan and obtaining actual examples of prior art strollers perhaps Graco would not have felt the need to oppose the extension. The further explanation and the declaration by Mr Reynolds were only filed 8 days before the hearing. I do not believe this gave the applicant sufficient time to consider withdrawing their objection to the extension.

In the circumstances, although I have granted the opponent's extension, I do not believe they were as diligent as they might have been in giving the true reason for the request. Consequently I award costs against Britax.

R.A.Melvin
Delegate of the Commissioner of Patents

Patent attorneys for the applicant  : Phillips Ormonde & Fitzpatrick Sydney

Patent attorneys for the opponent   : Madderns Adelaide