Groko Maskin AB v Sebastian Engineering (1981) Pty. Ltd - [1984] APO 14

In the Matter of the Patents Act 1952
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In the Matter of Patent Application No
533276 by GROKO MASKIN AB
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In the Matter of Opposition thereto by
SEBASTIAN ENGINEERING (1981) PTY. LTD.
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In the Matter of an Application for an Extension of Time under Section 160(2)(a)

DECISION OF THE DEPUTY COMMISSIONER OF PATENTS:
        This matter is an application under sub‑sec. 160(2) for an extension of the time provided in sub‑sec. 59(1) for lodging a notice of opposition to the sealing of a patent on an accepted application for a standard patent.
        T     he application concerned is Patent Application No. 533276 in the name of Groko Maskin AB which was advertised on 17 November 1983. Sub‑sec. 59(1) prescribes a period of three months from that date as the time within which a notice of opposition, or an application requesting an extension of that time, must be lodged. That period therefore expired on 17 February 1984. On 15 March 1984, Sebastian Engineering (1981) Pty. Ltd. lodged an application for an extension of time under sub‑sec. 160(2).
        The extension of time sought under sub‑sec. 160(2) is less than 3 months. Accordingly, the requirement to advertise the application for extension does not arise nor does the entitlement to oppose the application

(vide sub‑secs. 160(4),(5) and regulation 48). However, under sec. 151, a
decision of the Commissioner under sec. 160 is subject to review by the Administrative Appeals Tribunal, the persons entitled to obtain such review being limited to persons affected by that decision (vide sec.27, Administrative Appeals Tribunal Act 1975). The applicant for the patent is clearly such a person. In this circumstance, I consider it appropriate that the applicant for the patent should be able to express its views on any submissions made on behalf of the applicant for the extension of time. I believe that approach is consistent with the conclusion expressed by the Federal Court in Scaniainventor v Commissioner of Patents (36 ALR 101) that the exercise of the discretion found in sub‑sec. 160(2) "should permit of due account having taken of the interests of anyone likely to be adversely affected by an extension sought." The applicant for the patent availed itself of this opportunity and both applicants were heard in the matter.
The extension of time sought is governed by sub‑sec. 160(2) which provides that‑

"(2) where by reason of‑

(a) An error or omission on the part of the person concerned or of his agent or attorney: or

(b) circumstances beyond the control of the person concerned, an act or step in relation to an application for a patent or in proceedings under this Act( not being proceedings in a court) required to be done or taken within a certain time has not been so done or taken, the Commissioner may, upon application by the person concerned, but subject to this section, extend the time for doing the act or taking the step."

By virtue of sub‑section (3), the…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

Continue reading Groko Maskin AB v Sebastian Engineering (1981) Pty. Ltd

Details

AGLC: Groko Maskin AB v Sebastian Engineering (1981) Pty. Ltd [1984] APO 14
Case: [1984] APO 14
Decision Date: 21 August 1984

CaseChat Overview and Summary

The case of Groko Maskin AB v Sebastian Engineering (1981) Pty Ltd involved an application for an extension of time to lodge a notice of opposition to the sealing of a patent on an accepted application for a standard patent. The application concerned was Patent Application No. 533276 in the name of Groko Maskin AB, which was advertised on 17 November 1983. Sebastian Engineering (1981) Pty Ltd lodged an application for an extension of time under subsection 160(2) on 15 March 1984, more than three months after the initial period had expired. The legal issues the court was required to decide included whether the failure to lodge a notice of opposition within the prescribed time was due to an error or omission on the part of Sebastian Engineering, or circumstances beyond their control, and whether the extension of time sought was justified in light of the public interest and the interests of the parties involved.

The court considered that the failure to lodge a notice of opposition within the prescribed time involved an error or omission on the part of Sebastian Engineering, as they had not commissioned the necessary patent investigations and searches at an early enough date to determine the nature of the present application. The court also considered that there was a good reason for the delay in lodging the notice of opposition, as Sebastian Engineering was not involved in the patent application concerned and had acted forthwith in instituting opposition proceedings upon becoming aware of the application. The court granted the application for an extension of time under subsection 160(2), noting that the extension sought was less than three months and did not require advertising or opposition. The court made no award as to costs in this matter.

This decision highlights the importance of timely lodging of notices of opposition to patent applications and the potential consequences of failing to do so within the prescribed time. It also demonstrates the discretionary power of the Commissioner to extend times under subsection 160(2) of the Patents Act, subject to the public interest and the interests of the parties involved. The decision provides guidance on the factors that the court may consider in determining whether to grant an extension of time, including the reasons for the failure to lodge a notice of opposition within the prescribed time, the period of delay, and the potential impact on third parties.

Orders