Grafton Industries Pty Ltd v Kenneth George Wyborn

[1991] APO 30

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re: Patent Application No 599538 by GRAFTON INDUSTRIES PTY LTD,     opposition by KENNETH GEORGE WYBORN, and objection to extension of time to lodge evidence-in-support.

Background
     Patent Application No 599538 by Grafton Industries Pty Ltd entitled `Lifting Device for a Vehicle' was advertised as accepted on 19 July 1990.
Under section 59(1) of the Patents Act 1952, the period allowed for lodging notice of opposition expired on 19 October 1990. On 24 October 1990 the opponent lodged an application (under section 160(2)(a) of the Patents Act 1952) for an extension of the time for lodging a notice of opposition.  It lodged the notice of opposition at the same time.
     The applicant objected to this application for an extension of time.  A hearing (`the previous hearing') was held in Canberra on 12 December 1990.  The delegate allowed the extension of time.
     On 10 April 1991 the opponent applied for a three month extension of time (to 11 July 1991) to lodge its evidence-in-support.  The applicant did not object to this application for an extension of time.  It did however give notice that it would object to any further extensions of time.
     On 9 July 1991 the opponent sought a further extension of time of one month to 11 August 1991.  The patent applicant objected to the extension and the matter was set down for a hearing in Canberra on 8 August 1991.  Prior to the hearing Mr John Pizzey, patent attorney of Pizzey & Company, advised that the opponent would not be represented and would rely instead on written submissions.  Mr Ross Hancock and Mr Ian Roberts, both of Grafton Industries, appeared for the applicant, and presented written submissions.
Application and Submissions
     The grounds that the opponent gave in its application for extension of time were:

Additional time is required for the opponent to prepare, serve and lodge a Declaration as Evidence in Support of the opposition.

In support of their application, the opponent in its written submissions advanced the following arguments as justification for the extension of time being granted:

1. there has been insufficient time to finalise    the evidence in written declaratory form and to serve it by 11 July 1991;

2. further material had been raised shortly before 11 July 1991, and it was not possible to incorporate this material before the due date;

(iii)any delay in finalising the evidence would only involve a period of approximately three weeks;

1. grant of the extension would not result in an unreasonable delay in proceedings since all the evidence-in-support had been served on the applicant on 2 August 1991; and

2. there was some delay in the office of Pizzey & Company caused by the late notification (by the Patent Office) of the granting of the first extension of time.

On the issue of private and public interests the opponent argued:

1. that because there has been recent litigation involving Mr Wyborn in respect of patent No 554494, Mr Wyborn has a strong interest in being allowed to continue with this opposition;

2. it would be prejudicial to Mr Wyborn's chance of success if the extension of time was not granted;

(iii)the three week delay would not have any serious affects on the interests of the applicant, and would not inconvenience the public;

1. the public interest is best served by not granting invalid patents; and

2. if the extension was refused, the evidence would still be before the Commissioner and it would have to be considered in a possible `bar to sealing' action.

In summary the opponent submitted;

1. the opposition is serious (as evidenced by the lodgement of evidence-in-support);

2. neither the applicant nor the public are inconvenienced by the granting of this extension; and

(iii)the proceedings will not be unreasonably protracted by the granting of this extension.

The reasons why the applicant objects to the latest application for an extension of time are contained in written submissions by Mr Grant Adams, patent attorney, of Grant Adams & Company.  The submissions may be summarised as follows:

1. no endeavour to file evidence-in-support of the opposition has been made since August 1990;

2. the period of 23 August 1990 to 11 July 1991 was more than adequate to collect, prepare, execute and serve a simple statutory declaration by the opponent;

(iii)the evidence-in-support served on the applicant had been in the opponent's hands since at least 1987, and therefore the statement of reasons in the extension application clearly shows the opponent has been exceedingly dilatory;

1. any delay seriously affects the applicants in their commercialisation of the invention;

2. the opponent has provided no substantive prima facie evidence as to the reasons a further extension was sought.

At the hearing Mr Hancock made several representations on behalf of the applicant.  He expanded on the main points advanced by the applicant's written submission, in particular questioning the opponents diligence in serving evidence-in-support when it had been available for four years.  Mr Hancock also raised the issue of locus standi.  To support his objection that Mr Wyborn does not have locus standi to oppose the grant of the patent, Mr Hancock tendered copies of several documents, including:

1. a judgement, dated 4 July 1988, by Kearney J of      the NSW Supreme Court granting an injunction to Beltech Corporation Limited against Mr Wyborn (Beltech was the original applicant for the present application, and subsequently assigned all rights to Grafton Industries);

2. a Deed of Compromise in relation to patent No 554494, made on 9 September 1988, prohibiting any challenge by Mr Wyborn to the validity of any patents referred to therein; and

(iii)a Deed of Assignment, dated 9 September 1988, in     which Mr Wyborn assigned to Beltech all of his rights in respect of his patents.

In effect, Mr Hancock stated that because the opponent does not have standing, he is not entitled to any extension of time.

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 an 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.

.    The applicant for extension of time must make out a            `proper case justifying extension'.
     .    In deciding whether the applicant for an 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 applicant's 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
     In his verbal submissions, Mr Hancock raised the issue of the opponent's standing to oppose.  The issue of standing was also raised in the previous hearing.  The hearing officer then decided:

...  with regard to locus standi I am influenced by the judgement of the High Court in Kaiser Aluminium & Chemical Corporation v The Reynolds Metal Co. 120 CLR 136, in which locus standi was considered and in which Kitto J stated "In my opinion, however, it is in the public interest that a serious opposition by a person entitled in fact to oppose the grant of a patent should be dealt with on the merits, rather than that it should be shut out in consequence of a failure in procedure, lamentable though the failure may be."  Thus, I think that the matter of locus standi is best left to the opposition proceedings per se and is not a relevant consideration in the present application for extension of time.

I think that I am bound by the previous decision, and cannot re-open the issue of standing in this decision.  (See R v Commissioner of Patents, ex parte Mole Engineering Pty Ltd (1981) 147 CLR 340, 35 ALR 119.)
     The applicant has raised the issue of whether the opponent has acted with all due diligence in addressing the evidence in this matter.  It appears from Mr Pizzey's declaration of 24 October 1990 that Mr Wyborn instructed him to lodge a notice of opposition in a letter dated 20 August 1990.  That letter was received by Mr Pizzey on 23 August 1990.  However, it was not until after 11 January 1991, (the date of the `previous decision') that Mr Wyborn knew that he had been granted an extension of time to oppose.  In this case, no great weight should be given to the observation that the opponent could have been preparing evidence between 24 October 1990 and 11 January 1991.
     In addition, the evidence in support which has been lodged does rely to some extent on material supplied by a third party.  It is `notoriously difficult' to expeditiously obtain such evidence, (see Lyons v Registrar of Trade Marks, cited above).
     I think that the opponent has made `a proper case justifying extension' of the time to serve evidence-in-support. The balance of the competing interests is such that the extension of time should be granted.  I am aware that the applicant's legitimate commercial interests may be adversely affected by further delay in determining the opposition.  However, in view of the evidence served I accept the opponents submission that a serious opposition is foreshadowed.  The grant of the extension, of itself, would not cause any major further delay.  The public interest would be best served in this case if all the available evidence is before the Patent Office in determining the opposition.
     I allow the opponent an extension of time to 2 August 1991 (the date on which evidence was actually served and filed) to serve evidence-in-support of their opposition.  In accordance with the usual Patent Office practice, the time for lodging evidence-in-answer will run from the date of this decision.
Costs
     The reason given in the first application for an extension of time to lodge evidence-in-support was:

Additional time is required to collate pertinent evidence collected to date; to put same in the form of Statutory Declarations; to obtain execution thereof and serve same upon the applicant.

The reason given in the second application for an extension of time to lodge evidence-in-support was:

Additional time is required for the opponent to prepare, serve and lodge a Declaration as Evidence in Support of the opposition.

The second application did not give any real information on the progress of the preparation of the evidence.  At best, it implied that evidence had been `collated', but not yet put into declaratory form.  It implies, for example, that no new material had been raised between the dates of the first and second applications for extension of time.  This is contrary to the opponent's written submission that further material had been raised shortly before 11 July 1991.  In these circumstances, I think that the reasoning in the Patent Office decision British-American Tobacco Co Ltd's Application is in point.  In that decision, the delegate said:

Usually, a successful litigant is entitled to its costs, but in cases where that litigant has been involved in conduct which led to the action being brought or which causes unnecessary litigation and expense, that root principle in the award of costs may be varied.  See Jones v NAALS (1986) 82 FLR 264 at 265 and Ritter v Godfrey [1920] 2 KB 47 (CA) at 60 and 61. In many cases relating to extension of time in patent opposition matters the award of costs has been varied; the most common occurrence being where an extension of time to lodge notice of opposition or to serve evidence-in-support is allowed but where no award of costs is made because the prospective opponent or opponent is found to be justified in objecting to the extension because the grounds stated on the application are inadequate. In some such cases the costs have been awarded against the successful opponent or prospective opponent.

I think that the grounds given in the application for extension of time in this case are inadequate.  I can speculate that this inadequacy may not have been the root cause of the applicant's decision to object to the extension of time.  (The applicant notified the Patent Office as early as 30 April that `further extensions will be objected to'.)  I am however of the opinion that this is a case in which I should not make an award of costs.

(ALLEN EVANS)
  Delegate of the Commissioner of Patents

Attorneys for the applicants: Grant Adams & Co, Brisbane

Attorneys for the opponent  : Pizzey & Co, Brisbane