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

[1984] APO 14

In the Matter of the Patents Act 1952

‑ and ‑

In the Matter of Patent Application No

533276 by GROKO MASKIN AB

‑ and ‑

In the Matter of Opposition thereto by

SEBASTIAN ENGINEERING (1981) PTY. LTD.

‑ and ‑

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 time may be extended notwithstanding that it has expired.
The power of the Commissioner to extend times under sub‑sec. 160(2) is a general power applicable to extend the times prescribed in the Patents Act for doing an act or taking a step in relation to an application for a patent or proceedings under the Act (exluding court proceedings) except where specifically excluded (Lehtovaara v Acting Deputy Commissioner of Patents 39 ALR 103). As such, it is applicable to extend the time specified in sub‑sec 59(1) for lodging a notice of opposition to the grant of a patent on an application for a standard patent.
        However, the entitlement to an extension of time under sub‑sec. 160(2) is conditional, in the first place, on the failure to do the act or take the step within the prescribed time being the result either of an error or omission on the part of the person concerned or of his agent or attorney or of circumstances beyond the control of the person concerned.
        The circumstances giving rise to the present application under sub‑sec. 160 (2) are specified in the application as follows:

"Due to an error or omission we became aware of the opportunity  to oppose the present application after 17th February 1984 and had we been aware of the application before that date we would have filed a notice of Opposition."

However, as required by reg. 47, the application is also accompanied by a declaration on behalf of the applicant for extension setting out the grounds upon which the application is made.  The declaration is made by Mr Lelio Sgaravizzi, Managing Director of Sebastian Engineering (1981) Pty. Ltd.

Briefly, Mr Sgaravizzi explains the nature of the error or omission in his declaration as follows‑

.His company offers the service of bending corrugated metal sheeting and commenced trade promotions of this service in November 1983.

.On or about 22 February 1984 his company became aware of the present patent application for the first time when it received a threatening letter from Groko Maskin AB dated 15 February 1984 drawing attention to that application.

.He was most surprised that any other party could claim relevant patent rights since the services offered by his company were to correspond with services that had been offered in Europe by another company for several years.  By letter dated 23 February 1984 he instructed a firm of patent attorneys (Griffith, Hassel & Frazer) to investigate the patent application and advise.

.On 14 March 1984, following conferences with the firm, he became aware for the first time of the nature and scope of the present application. Had he been acquainted with the present application, his company would have filed an opposition prior to 17 February 1984.  Accordingly, notice of opposition was not filed by his company before the due date under sub‑sec. 59(1) by virtue of an error in not commissioning the necessary patent investigations and searches at an early enough date to determine the nature of the present application.

A copy of the letter from Groko Maskin AB is attached to Mr Sgaravizzi's declaration.  In the light of the contents of that letter, I accept that the statements of Mr Sgaravizzi constitute an accurate explanation of the facts involved in the failure of Sebastian Engineering to lodge a notice of opposition within the time prescribed in sub‑sec. 59(1).  Accordingly, the first question for determination is whether those facts involve an error or ommission on the part of that company or, alternatively, circumstances beyond its control.
        Clearly, the letter communicated by the applicant for the patent to Sebastian Engineering indicates that the applicant considers that the activities of Sebastian Engineering intrude on the presumptive monopoly arising from that application.  Similarly, the application for an extension of time for the lodgement of a notice of opposition and the concurrent lodgement of such notice indicates that Sebastian Engineering considers that its operations will be affected by the grant of a patent on the application.  In the circumstances of these facts, I consider that the failure to lodge a notice of opposition to the sealing of a patent on the application within the time prescribed in sub‑sec. 59(1) involved an error or omission on the part of Sebastian Engineering.
        However, notwithstanding that the reason for the failure of Sebastian Engineering to lodge a notice of opposition within the time prescribed for such lodgement falls within the reasons specified in sub‑sec.160(2), the grant of an extension under sub‑sec. 160(2) still remains a matter for the discretion of the Commissioner. 
        The considerations applicable to the grant of an extension of time under sec. 160 were explained by  Aicken J. in the Board of Control of Michigan Technological University's Application (AOJP Vol 52, No. 43p 1998) as considerations which‑

"involve matters of public interest generally as appears from the requirements for an advertisement, from the provision for opposition by persons likely to be affected and from the provision in sub‑s.(6) for the protection of persons who might suffer prejudice by reason of steps taken out of time.  Delay or undue delay in making such an application is not expressly referred to in s.160, but would plainly be material to the consideration of the application in so far as it might affect third parties."

I believe that the consideration of public interest generally applies irrespective of whether the extension sought is not sufficiently long to require advertisement and thus permit of opposition.  By virtue of sec. 151, a decision of the Commissioner under sec. 160 is subject to review irrespective of the length of extension sought.  The scope of such review is unaffected by the length of extension sought.
        Aicken J. did not spell out the matters constituting the public interest generally except to identify undue delay in making an application under sec. 160 as being one such matter.  Undue delay, i.e. delay which he identified as "unreasonable in all the circumstances", is not involved here since the application was lodged less than 1 month after the expiry of the time sought to be extended.  That period also corresponds with the period within which the applicant initiated the application for extension after becoming aware of Groko Maskin AB's patent application.  I think that the period is not an unreasonable one in which to make such decision.
        The generality of public interest in determining whether or not to grant an extension of time under sec. 160 obviously includes the specific public interest inherent in both the purpose and scope of the particular provision in which the time specified is sought to be extended as well as any conditions expressly governing the grant of such extensions (see judgements of Gibbs C.J. and Aicken J., Board of Control of Michigan Technological University v Deputy Commissioner of Patents, supra).
The specific public interest inherent in the particular purpose and scope of sec. 59(1) was analysed in Vangedal‑Nielsen v Commissioner of Patents (33 ALR 144).
In that case Bowen C.J. stated‑

"The right to lodge a notice of opposition within three months is clearly given mainly in the interests of the person wishing to oppose a patent on any one or more of the grounds stated in s.59(1). No doubt there is also a public interest involved in ensuring that worthless patents are not granted because insufficient opportunity has been afforded of raising those grounds (Kaiser Aluminium and Chemical Corporation v Reynolds Metals Company (1969) 120 CLR 136). Three months has been considered by Parliament to be an appropriate period to allow for this. But it has been recognised that cases may occur where for one reason or another three months may prove insufficient. Accordingly, it has been provided that further time may be allowed not exceeding a further three months. The Commissioner is interposed as the Arbiter whether such an extension should be allowed and how long it should be. Clearly, the Commissioner will have to consider the interests of the prospective opponent who, for some good reason, has not been able to mount his opposition within the initial period of three months. The Commissioner will further have to have in mind, where a serious opposition is foreshadowed, the public interest which has been mentioned, but he will have to require to be satisfied by an applicant for an extension that a proper case has been made out justifying an extension."

Although Bowen C.J. was considering an extension of the time prescribed in sub‑sec. 59(1) under the specific provisions for extension in that sub‑section, the same considerations of public interest are involved in the grant of an extension of a particular prescribed time, as stated above, notwithstanding that different statutory mechanisms are available for seeking such extension.Bowen C.J. thus identified two specific and independent considerations of public interest in the grant of an extension of the time.  Firstly, the interest of a prospective opponent who, for some good reason, was not able to mount his opposition within the initial period of three months.  Secondly, where a serious opposition is foreshadowed by a prospective opponent, the interest of the public in ensuring that worthless patents are not granted because insufficient time has been afforded in raising the grounds of opposition specified in sub‑sec. 59(1).  In the first case, favourable exercise of the discretion to extend the time for lodging a notice of opposition is subject to the applicant for the extension establishing a good reason for the failure to lodge the notice in the prescribed time.  In the second case, favourable exercise of the discretion is subject to the applicant establishing that a serious opposition is involved.
        In the present case, I think the most convenient approach is to consider whether the failure of Sebastian Engineering to lodge a notice of opposition within the time prescribed involves a "good reason". 
Acceptance of an application for a standard patent is advertised in the Australian Official Journal of Patents, Trade Marks and Designs. Such advertisement is "notice to the world at large" that an interested party may oppose the application (Board of Control of Michigan Technological University v Deputy Commissioner of Patents AOJP Vol 52, p1992). However, in my view, responsibility for awareness of that publication cannot be attributed so widely. Certainly, it has been held that persons or their agents responsible for a specific application or patent have a responsibility to be aware of publications in the Journal involving that application or patent (Board of Control of Michigan Technological University v Deputy Commissioner of Patents, supra) although ignorance of the law has also been held to be a mitigating factor (G.D. Searle and Co v Drug Houses of Aust. Pty. Ltd. 1984 AIPC 90‑133).
        However,in the present case, Sebastian Engineering, was not involved in any way in the patent application concerned and the delay in lodging the notice of opposition was not caused by ignorance of the law in respect of opposition but unawareness of the technical content of that patent application.  In view of the explanation provided by Mr Sgaravizzi of his view of the unpatentability of that matter, I see no reason why Sebastian  Engineering should have been aware of the patent application.  However, on becoming aware of the application, it acted forthwith in instituting opposition proceedings. In these circumstances, I consider that there was a good reason for the failure to lodge a notice of opposition within the time prescribed.  I therefore allow the application for extension of time under sub‑sec. 160(2).
        I make no award as to costs in this matter.

(     C.H. Friemann)
  Deputy Commissioner of Patents.