Harold J. Heinen, Gene E. McClelland and Roald E. Lindstrom v Newmont Holdings Pty Ltd and Nine Others

[1984] APO 7

In the Matter of the Patents Act 1952

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In the Matter of Patent Application No. 521933 for Letters Patent by HAROLD J. HEINEN, GENE E. McCLELLAND and ROALD E. LINDSTROM

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In the Matter of Opposition thereto by NEWMONT HOLDINGS PTY. LTD., HOMESTAKE AUSTRALIA LTD., THE SHELL COMPANY OF AUSTRALIA LTD., PANCONTINENTAL MINING LTD., WHIM CREEK CONSOLIDATED N.L., THE BROKEN HILL PTY. CO. LTD., RENISON LTD., PLACER EXPLORATION LTD., WESTERN MINING CORP. LTD. and CENTRAL NORSEMAN GOLD CORP. LTD.

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In the Matter of Objection to Extension of Time for Serving Evidence‑in‑Answer.

DECISION OF AN ASSISTANT COMMISSIONER OF PATENTS:
         This matter concerns an application for an extension of time for lodging evidence‑in‑answer.  The opponents, Newmont Holdings Pty. Ltd., Homestake Australia Ltd., The Shell Company of Australia Ltd., Pancontinental Mining Ltd., Whim Creek Consolidated N.L., The Broken Hill Pty. Co. Ltd., Renison Ltd., Placer Exploration Ltd., Western Mining Corp. Ltd. and Central Norseman Gold Corp. Ltd., lodged notices of opposition under section 59 variously between 29 July and 6 August 1982.  The opponents' evidence‑in‑

support was served on 29 April 1983 after two applications for extensions of time were granted.  The applicants' evidence‑in‑answer was therefore due to be served on 29 July 1983.  The applicants lodged applications for extensions of time to lodge evidence‑in‑answer on 28 July 1982 and 27 October 1983, both of which were granted, and on 25 January 1984 a further application for extension of time of three months to 29 April 1984 within which to serve the evidence.  The opponents objected to the third application and the matter was set down for a hearing at the Patent Office Canberra on 9 March 1984 and was attended by Mr. R. Hind, patent attorney of Davies and Collison, on behalf of the applicant and by Mr. C.J. Oberin, patent attorney of Phillips, Ormonde & Fitzpatrick on behalf of the opponents.
         The circumstances in which, and the grounds upon which the application (dated 24 January 1984)  is made are stated to be:

"Following a conference with Counsel in November, preparation of Evidence‑in‑Answer is progressing satisfactorily but has not yet been completed.  Discussions are still in train concerning expert evidence to be supplied both from Australia and the United States, experimental work arising out of some of the evidence filed by the opponents has not yet been finalised and Counsel, with whom we wish to confer following completion of the evidence but before the filing thereof, has been overseas during the Xmas vacation and will not be available until next month.  Further time is accordingly necessary for completion and filing of our Evidence‑in‑ Answer."

At the hearing the applicant submitted argument in support of the application for extension.  The points raised which I consider relevant to the application may be summarised as follows:

1.The opponents comprise ten companies, most of which are major Australian mining corporations, and the volume of evidence‑in‑support to the opposition is considerable.  The applicant is only a small company with limited resources and has only 2 persons capable of reviewing the evidence‑in

‑support and consequently a considerable period of

time is required to formulate the evidence‑in‑answer.

2.The applicants' programme of experiments on the allegation of prior use by the opponents is well advanced, however additional time is required to finalise certain experiments on the Harford declaration of prior use.

3.The applicants found it extremely difficult to obtain the services of independent experts to analyse the evidence‑in‑

support.This was due, in part, to the fact that the field of the invention is small and specialised and there were a limited number of experts available who could be willing to assist.

4.A second draft of the evidence‑in‑answer was shown at the hearing and the applicant stated that the second draft had only to be settled by senior counsel prior to serving.  It was further stated that the applicant would expect the bulk of the evidence to be ready by the end of the period of extension of time under consideration, i.e. by 29 APRIL 1984.

In his submissions pertinent to the points I have listed above  Mr. Oberin presented the following:

1.It was not relevant to the issue whether the opponents were large companies or not.  The applicants have had more than 9 months already to serve their evidence and the reasons for the extension do not support any further extension being granted.  Mr Oberin also made the point that although the company is small it does have the benefit of resources provided by their patent attorneys and counsel.

2.There was no evidence submitted that the experimental work had even been started.  Furthermore, its nature and the period of time remaining before its completion have not been fully explained. 

3.It was submitted that the applicants' difficulty in obtaining the services of independent experts had not been substantiated.  For example there are many independent experts at universities.

4.There were no reasons given why part of the evidence had not been served already nor was any timetable given for serving the evidence.  It is apparent that an extension after 29 APRIL  1984 will be required to serve all the evidence.

In support of his submissions, Mr. Oberin drew my attention to ten various published decisions relating to applications for extensions of time for serving evidence in opposition matters and I consider that their subject matter, whilst being relevant to the matters under consideration, only provides an indication of a general nature of the matters I should give weight to.
         In considering the evidence put before me by both parties, I have found it necessary to consider what importance to attach to each portion of the evidence to satisfy the requirements that good reasons have been put forward in the request for extension, that the applicants has been diligent, and that the public interest has been satisfied.
         I have decided that there are good reasons supporting a further extension.  They are as follows.
         On the issue of the programme of experiments concerning the allegation of prior use, Mr Hind said at the hearing that Mr Oberin was wrong in stating that this programme had not started.  He said that the trials had been underway for the past few months and all that is now required is the carrying out of some final trials on further ore samples.  I accept this as a sufficient reason to support the applicants' request for an extension of time.  Another supporting reason is the requirement to obtain senior counsel's opinion on the second draft of the evidence in answer.  I accept Mr Hind's point that senior counsel's return to duties in February, after a vacation in January, has meant that a large number of people have been competing for his time thus delaying his consideration of the second draft.  I am sympathetic to the arguments put forward by Mr Hind regarding the disparity of size between the opponents and the applicants and that few resources are available to the applicants, and also regarding the difficulty in obtaining independent experts. I disagree with Mr Oberin's view that the availability of professional resources to the applicants compensates for their slender resources as the applicants must, of necessity, play an important part in the consideration of evidence in support and in the formulation of evidence in answer.  However although I am sympathetic to these arguments I am not convinced by them as I was not supplied with detailed reasons illustrating the presence of diligence in attempting to solve these difficulties.
         In view of the reasons I have given above I allow the request for an extension of time for lodging evidence in answer to 29 April 1984.
         Both parties sought an award for costs.  Mr Oberin said the reasons argued by the applicants at the hearing, and the facts upon which they were based,  were not available to him prior to the hearing, and consequently he was entitled to costs irrespective of its outcome. The circumstances and grounds upon which the application is made are given above and although they do refer to experimental work not having been finalised and the unavalability of counsel there is no reference to the fact that the trials have been underway for a few months and that all that is now required is the carrying out of some final trials on further ore samples.  Also the opponents had no knowledge that matters had proceeded to the stage of a second draft of the evidence in answer.  These extra facts put a different complexion on the matters at issue.  In these circumstances I made no award for costs.

(G.J. BAKER)

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