Henry Frank Jarvis v John Tom Arthur Doman

[1983] APO 54

In the Matter of the Patents Act 1952

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In the Matter of Application No. 522527 for Letters patent by HENRY FRANK JARVIS

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In the Matter of Opposition thereto by JOHN TOM ARTHUR DOMAN

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

DECISION OF A SUPERVISING EXAMINER OF PATENTS:
        In this matter evidence‑in‑reply was due to be served by the opponent by 5 October, 1983.  On 29 September, 1983 the opponent lodged a request under sub‑regulation 57(a) for an extension of time of one month to 5 November, 1983 in which to lodge evidence‑in‑reply.  The applicant objected to this request in a letter to the Patent Office on 7 October, 1983.
        The matter was set down for hearing in Canberra on 25 October, 1983.  Mr. R.C. Wray, patent attorney of R.C. Wray & Associates represented the opponent.  The applicant was not represented and relied on written submissions made in the forementioned letter of objection and a further letter lodged on 20 October, 1983.
        The circumstances in which, and the grounds upon which, this applic‑
ation is made are as follows:

"The preparation of Evidence in Reply has been delayed because of the Opponent's business commitments.  In the present agricultural season, the Opponent finds it necessary to travel extensively throughout various agricultural areas

in Western Australia and this has delayed the collection of evidence.  Some evidence has been gathered, but further time is required to gather additional evidence, and then present all the evidence in the form of Evidence in Reply."

Mr. Wray tendered a declaration by the opponent, John Tom Arthur Doman made on 22 October, 1983 which further amplified the reasons for the requested extension.  The declaration details the opponent's business commitments and personal commitments resulting from the illness of the opponent's wife and children.  The declarant states that these commitments combined with the need for extensive travel have led to the delay in collecting the evidence‑in‑reply.
        The declaration further indicates that the opponent has been actively gathering evidence and that the nature of the evidence is relevant to the opposition proceedings.
        Mr. K.E. Lord, patent attorney of Kelvin Lord & Co. representing the applicant, in a written submission of 20 October, 1983 contended that the opponent had long standing knowledge of the present applicant's invention and was merely delaying matters so that he (the opponent) could continue manufacturing and selling products which were the subject of the applicant's invention.
        In my opinion, the opponent is mounting a serious opposition and in the circumstances has been diligent in his gathering of evidence.  I can find no evidence of any vexatious actions on the part of the opponent.  Further the extension requested is for the limited period of one month which in my opinion will not unduly prejudice the applicant's interests.
A further consideration in determining whether an extension of time should be allowed is one of public interest. I was referred to the remarks of Kitto, J. in Kaiser Aluminium and Chemical Corporation v. Reynolds Metal Company (1969) CLR 136 at page 158:

"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."

I agree with those remarks, and consider that in this case it is in the public interest that all the evidence stages in the opposition be completed.
        Thus, I am satisfied that the opponent has justified the requested extension of time and is actively pursuing a serious opposition.  Further, I consider the opponent has not been dilatory in his collection of evidence.  Accordingly, I allow the extension of time of one month to 5 November, 1983 in which to serve evidence‑in‑reply.
        In the matter of costs, Mr. Wray made no submissions.  As I have to some extent relied on the further reasons provided by the opponent in his declaration tendered at the hearing in reaching my decision, and as the applicant may not have been aware of these reasons when lodging objection to the extension, I make no award of costs.

(P. HEATHCOTE)