Hich-Tech Auto Tools Pty Limited v Ferocem Pty Limited
[1992] APO 72
•3 December 1992
official notice
decision of a delegate of the commissioner of patents
Application : No. 621447 in the name of HIGH-TECH AUTO TOOLS PTY LIMITED
Title: An apparatus and method for cleaning electronic fuel injectors
Action: Extension of time to serve evidence in support of an opposition under Section 59 of the Patents Act 1990 by FEROCEM PTY LIMITED
Decision: Issued . Relevance of a relating action in the Federal Court; extension of time to lodge evidence in support refused
patents act 1990
decision of a delegate of the commissioner of patents
Re:Application No. 621447 by HIGH-TECH AUTO TOOLS PTY LIMITED, Opposition by FEROCEM PTY LIMITED, and Objection to an Extension of Time to serve evidence-in-support.
Background
Patent application No. 621447 by High-Tech Auto Tools Pty Limited (High-Tech) was lodged under the Patents Act 1952 on 8 January 1990, and was advertised accepted under the Patents Act 1990 on 12 March 1992. As a consequence, the opposition is proceeding under Part V of the Patents Act 1952, together with the procedures of Chapter 5 of the Patent regulations 1991.
On 6 October 1992, Ferocem Pty Limited (Ferocem) requested an extension of time from 6 October 1992 to 6 December 1992 to serve evidence-in-support. High-Tech objected to the extension.
The application for an Extension of Time gave the circumstances and grounds upon which the application was made as:
"The opponent and patent applicant in respect of this matter are respectively the first applicant and first respondent in an action in the Federal Court of Australia, New South Wales District Registry, General Division No. G6333 of 1990 in which the opponent seeks, inter alia, the revocation of the petty patent No. 621, 027 (previously application no. 83484/92) which was divided from the present application and has a substantially identical specification. It is proposed by the opponent that the evidence in relation to the opposition be substantially identical to the evidence submitted to the Federal Court in order to maintain substantially the same evidence as a basis for both proceedings. Further time is required to complete the evidence for the opposition as the evidence for the Federal Court proceedings is not yet completed."
The matter was heard in Canberra on 5 November 1992. High-Tech, represented by Mr P Taylor of Davies Collison Cave (patent attorneys) Sydney, appeared in person and Ferocem, represented by Mr F Old of Spruson and Ferguson (patent attorneys) Sydney, by telephone.
Application 621447 is for an apparatus and method for cleaning electronic fuel injectors.
Submissions
In summary, Mr Old's submissions for Ferochem were as follows:
Part of the evidence in support has already been prepared and served. This comprised a statutory declaration by Mr Old giving the accession dates of various patent specifications.
The opponent wishes to have the evidence-in support of the opposition under section 59 substantially identical with the evidence in the revocation action before the Federal Court. This is because the Patent Office is the junior tribunal and any appeal on a Patent office decision will be heard by the Federal Court and almost certainly by the same Judge hearing this action before the Federal Court.
In order to provide the evidence in the same form as before the court it is proposed to provide a covering declaration and enclose within that declaration all the affidavits and other material submitted before the Federal Court.
As the material has not yet been completed for the Court Proceedings further time is required to enable the evidence-in-support of the opposition matters to be lodged as indicated.
The parties have in fact agreed to the timetable set down by the Federal Court and that is a matter of consent between the parties and the Court. The applicant is therefore stopped from objecting to the extension of time as the extensions have already been agreed to in equivalent proceedings.
In response to Mr Taylor's submission (referred to below), Mr Old argued:
It is clear that there is a serious opposition in train and that the decision in Kaiser Aluminium and Chemical Corporation v The Reynolds Metal Company (1969) 120 CLR 136 relating to the opposition not being struck out by procedural matters has a substantial bearing on this matter.
The suggestion by the attorney for the applicant that in the event that the patent is sealed in relation to the standard patent under opposition the patent would be joined to the Court case is mere supposition as it relates to future events which may or may not take place.
The extension sought is a reasonable one and should be allowed.
The attorney for the applicant made a statement about an alleged lack of evidence as to the agreement existing between the opponent and the applicant about the timetable of the Federal Court proceeding. It is submitted that it is not necessary to adduce that evidence as it is within the judicial knowledge of the hearing officer that in conducting a Court case there is an agreed timetable and therefore it is not necessary that the timetable be provided in evidence.
Mr Taylor lodged, by facsimile on 3 November 1992, two statutory declaration's in relation to this matter.
The first by Mr Taylor himself declares that
"I am the patent attorney for Davies Collison and Cave responsible for the prosecution of Australian patent application No. 621447. An earlier opposition was lodged by Francis Hedley Horwood against the present application. Due to an oversight by the solicitors handling the matter, it was necessary for them to request an Extension of Time and I enclose herewith (as Exhibit PRT 1) a copy of that Extension of Time, together with a Statutory Declaration by Mr Phillip James Crawford and attachments. The original of the application and the Declaration is held by the Patent Office."
The second by Mr Bruce Tilley declares that:
"1. I am the solicitor for High Tech Auto Tools Pty Limited, Michael Skovron and Alan Skovron. I act for them with respect to proceedings presently pending before the Federal Court of Australia and initiated by Ferocem Pty Limited and Celtin Pty Limited. The proceedings relate to various issues under the Trade Practices Act and the Patents Act.
2. The proceedings were initiated by the filing of an application on the 6th November 1990. To date the proceedings have not yet been heard. Various affidavits have been filed in those proceedings on behalf of the applicants. Annexed hereto and marked with the letter "A" is a list of those affidavits which includes the date on which they were sworn and the date on which they were filed in the Court. The affidavits offer evidence in relation to the following matters:
i. a claim for prior use with respect to patent application No. 621447;
ii a claim for lack of novelty with respect to Patent Application No. 621447."
The list of affidavits referred to above is as follows:
Date sworn Date filed
Gerard Sylvester McGinty 6.11.1990 6.11.1990
Francis Hedley Horwood 6.11.1990 6.11.1990
Patrick Sherwood 6.11.1990
Frank Dietsche 12.11.1990
Clive Brown 5.11.1990
Grant Robert Bonner 8.1.1991 9.1.1991
Gerhard Emil Schach 27.3.1991 28.3.1991
Robert William Prudius 5.4.1991 9.4.1991
Mark Robert Boxsell 8.4.1991
Mark Robert Boxsell 15.5.1991 21.5.1991
Gerard Sylvester McGinty 15.7.1991 16.8.1991
Gerard Sylvester McGinty 13.8.1991 15.8.1991
Grant Robert Bonner 13.8.1991 15.8.1991
Francis Hedley Horwood 13.8.1991 15.8.1991
Clive Brown 13.8.1991
Francis Hedley Horwood 13.8.1991 15.8.1991
Frank Dietsche 17.8.1991 19.8.1991
Phillip Edward Ryan 20.8.1991 22.8.1991
Patrick Sherwood 20.8.1991 22.8.1991
Robert William Prudius 21.8.1991 22.8.1991
John McCaffrey 15.8.1991 16.8.1991
Mark Paine 16.4.1992 16.4.1992
Kevin Alan Greenfield 16.4.1992 16.4.1992
Frank Dietsche 16.4.1992 16.4.1992
In summary, Mr Taylor's major submissions for High-Tech were as follows:
While the opponent's wish for the evidence in support of the opposition be substantially identical to the evidence lodged in the Federal Court proceedings is an admirable and desirable situation it would however be preferable that the questions of prior user, prior publication and questions of obviousness should be argued before the Court where cross examination of witnesses and discovery and interrogatories are tools for which the truth of such statements which remain in particulars 2(a) to 2(j) can be ascertained, however, this is not the question at issue. At issue is the last paragraph of the reasons for the extension of time, that is, "Further time is required to complete the evidence for the opposition as the evidence for the Federal Court proceedings is not yet completed."
There has been no evidence put forward as to the reasons or otherwise for the lack of completion of the evidence. There are no material facts which are supported by statutory declarations or other such evidence to show why there has been a delay in respect of completion of the evidence within the required 7 month period from publication of the application. The opponent has only made assertions
The opponent in the Court procedures has lodged certain evidence before the Courts and has served that evidence on the solicitor acting for the present applicant of the patent application High-Tech Auto Tools. The statutory declaration by Mr Bruce Tilley which lists certain affidavits, when they were sworn and when they were served.
I refer you to paragraph 2 of that declaration in which Mr Tilley states under oath
"The affidavits offer evidence in relation to the following matters:
i. a claim for prior use with respect to patent application No. 621447;
ii a claim for lack of novelty with respect to Patent Application No. 621447."
The opponent of the present application has been able to obtain affidavits at various stages from his experts, the last of which were executed on 16 April 1992. There appears to be no valid reasons, or any reasons, put forward as to why there has been delay in the completion of evidence in support.
The opponent has not presented his evidence within the required time and has given no valid reasons apart from a wish to conform the evidence to that presented or to be presented in the Federal Court. If the present application proceeds to grant the applicant will have to withdraw the petty patent to allow the patent to be sealed. In these circumstances the applicant will automatically undertake to enjoin the patent into the Court case whereby the true facts and statements can be verified under the rules of a court of law. The public would therefore not suffer.
If the affidavits referred to do in fact support the contention of the opponent, these being the affidavits presented in the Court procedures it would have been a simple matter to forward copies of these to the Patent Office and to the applicant under a statutory declaration attesting that these are true copies of affidavits served in the pending Federal Court action upon which the opponent will be relying.
The opponents experts have been available for a considerable period of time and have executed other affidavits.
The opponent has not provided evidence and only made assertions as to an agreed timetable for the settling of the Court procedures. There is generally no indication of when the opponent undertook any action which has not been completed or to substantiate why there has been a delay in serving evidence. The only evidence which has been lodged is a copy of the publication date of certain documents indicating when they were available from the Patent Office.
Mr Taylor referred to Kent-Moore Corporation v Environmental Products Amalgamated Pty Ltd (1992) AIPC 90-915, in particular on page 9 where it states
"For oppositions governed by the procedures of Chapter 5 of the Patents Regulations 1991, the situation is markedly different. The opponent is required to file a statement of grounds and particulars within 1 month of filing their notice of opposition. That statement, in setting out the grounds and particulars, sets out the basis of the opposition. It thus sets the environment for the future actions in the opposition of both the opponent and applicant. Having filed that statement of grounds and particulars, `all' that remains to be done by the opponent is to prove their opposition [such as by establishing publication dates, putting the material into evidentiary form, and (where needed) obtain declarations by appropriate experts in respect of material referred to in the statement]..."
Mr Taylor also referred to the paragraph bridging page 14 of the same decision, that is
"I consider my view of Kaiser Aluminium is consistent with Vangedal-Nielsen v Commissioner of Patents (1980) 33 ALR 144, which concerned an extension of time to lodge a notice of opposition. At 150 Bowen CJ states:
"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"
and refers to Kaiser Aluminium. He goes on to state:
"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 the extension. It would be wrong if he granted an extension simply because no-one had raised rather exceptional circumstances why it should not be granted. Reasons why this is so include the desirability of operating the system efficiently and without unreasonable delays and also the interests of the applicant for a patent which are also clearly involved."
(my emphasis added)
As a result, I conclude that the balance of the interests of the parties, and of the public interest, is against granting an extension of time - unless the extension is otherwise clearly justified on its merits."
10. Mr Taylor also argued that Ferocem had been "rather tardy" in completing any of the timetables which have been set before or by the Court. Again, he said, he has not provided any evidence of this but as Mr Old had said this can be obtained from the Court. We are dealing with the matter set before us and it would be difficult to consider every action before the Court without relevant evidence being provided to the other party and the hearing officer.
Decision
Subregulation 5.10(2) enables the Commissioner to grant an extension of time to (inter alia) file evidence in support of an opposition. This subregulation provides:
(2) The Commissioner may:
(a)on the application of a party in the approved form; and
(b)on such reasonable terms (if any) as the Commissioner specifies;
extend the time within which the party may take a step prescribed in this Chapter, not being a step that is taken under regulation 5.3 ("filing of opposition").
Subregulation 5.10(5) sets out the conditions precedent for the Commissioner to grant an extension of time under regulation 5.10(2) (inter alia). This subregulation provides:
(5) The Commissioner must not give a direction under subregulation (1) or grant an application under subregulation (2) or (4) unless the Commissioner:
(a)if he or she proposes to grant an application by a party-is reasonably satisfied that the other party has been notified of the application; and
(b)if he or she proposes to act on his or her own motion-ensures that the parties are notified of the proposed action; and
(c)in either case:
(i)gives the parties a reasonable opportunity to make representations concerning the application or proposed action; and
(ii) is reasonably satisfied that a direction, an extension of time or the serving of further evidence is appropriate in all the circumstances.
I note that, before I can grant an extension of time in this matter, I must be reasonably satisfied that the extension of time is appropriate in all the circumstances. If I am not so satisfied, I cannot grant an extension of time.
In Kent-Moore Corporation v Environmental Products Amalgamated Pty Ltd (1992) AIPC 90-915 on pp10-12 the hearing officer states:
"The law which was applied under the 1952 Act to this class of extensions has been comprehensively reviewed by the Federal Court in Vangedal-Nielsen v Smith and Gelphen Nominees (1980) 33 ALR 144 and in Lyons v Registrar of Trade Marks 1 IPR 416; in addition there are many Office decisions dealing with such extensions, quite a few of which are published in the Butterworth Industrial Property Reports (IPR) and in the CCH publication, Australian Industrial & Intellectual Property (AIPC). This law can be stated simply as follows:
(i) The Commissioner, before allowing the extension, must be satisfied that the person seeking the extension has made out a proper case justifying the extension;
(ii) The Commissioner must consider not only the private interests of applicants for patents, and opponents, but also the public interest, by ensuring that invalid patents are not granted, and that proceedings are not unreasonably protracted."
The opponent's case relies on the fact that there is an action before the Federal Court on a petty patent derived from the present application and that when the evidence for the Federal Court action has been completed it will be served in the present opposition.
As the hearing office said in Kent-Moore (supra)
"... whatever the justification might ultimately be, it seems to me that it is imperative that the person seeking the exercise of the Commissioner's discretion must provide the Commissioner will a full and frank disclosure of the facts which give rise to the need for the extension. That much is apparent from the words of Jenkinson J in Kimberly-Clark v Commissioner of Patents 13 IPR 569, when he was considering an extension of time under s 160 of the Patents Act 1952. At page 583 he says:
"The considerations that were identified by Bowen CJ in Vangedal-Nielsen v Commissioner of Patents (1980) 33 ALR 144 at 150 as relevant to the exercise of the power of extension conferred by s 59(1) will in my opinion be relevant also to the exercise of the power conferred by s 160(2)(a) in relation to the time prescribed by the former subsection for lodging notice of opposition, although the relative weight of each consideration may well be different in the two different discretionary judgements. In order to make out the "proper case ... justifying an extension" to which Bowen CJ referred in that case, an applicant would in my opinion have to go beyond a disclosure of the processes by which an agent's errors came to be committed, and would have to expose frankly, inter alia, all the conduct, knowledge, beliefs and mental processes of the applicant (or, in the case of corporation aggregate, of the relevant officers and other agents) relevant to an understanding of the way the failure to do the act or take the step occurred, or relevant to an evaluation of the reasonableness of that conduct."
(My emphasis added.)
In my opinion, a person seeking an extension of time to serve evidence in opposition proceedings is bound by the same onus of disclosure. If that onus is not discharged, the Commissioner cannot be satisfied that the extension is appropriate in all the circumstances, and therefore must not grant the extension of time."
In my view, the opponent has not provided the Commissioner will a full and frank disclosure of the facts which give rise to the need for the extension.
There is evidence indicating many affidavits have been lodged before the Federal Court.
The opponents objective in wishing evidence in the present opposition to be substantially identical with that in the Federal Court action is laudable but not relevant, in my view, to the present issue. That is, to the proper explanation and justification of why a delay has occurred in completing evidence in support. It is not sufficient to say that the evidence has not been completed for a relating (but not the same) case in the Federal Court and the opponent desires to provide the same evidence in both cases, even with good reason, without a proper explanation of the facts and circumstances surrounding the delay.
The requirements of Kimberly-Clark v Commissioner of Patents (supra) have not been satisfied. The opponent has not provided evidence which establishes, for instance, why the delays in completing evidence have occurred or what evidence is required to be completed and by whom or when the evidence is likely to be completed.
The argument relating to timetables being within the judicial knowledge of the hearing officer is also not relevant in my view as it has no bearing on a full and frank disclosure of the facts which give rise to the need for an extension of time. These facts are associated with the gathering of evidence and not with delays brought about by actions in the Federal Court. It is not for the Commissioner to approach the Federal Court for material, for example timetables, which may or may not be relevant to the present issues. If the content of this material is to be considered by the hearing officer it should be presented as evidence.
Consequently, in my view the opponent has not made out a proper case justifying an extension of time.
Public interest
Mr Old said that the extension should be granted because a serious opposition is clearly in train.
In dealing with the public interest the hearing officer in Kent-Moore (supra), page 13, said
"In my view, the introduction of the statement of grounds and particulars has significantly changed the outcome when considering the balance of the interests. Following the filing of the statement of grounds and particulars, the Commissioner (and through him, the public) is aware of the basis of the opposition. If there is no evidence in support filed, the opposition nevertheless continues, and the opponent can still appear at the hearing. Furthermore, even if the opposition ceases by withdrawal of the opposition, the Commissioner can (and does) conduct a bar-to-sealing action on the basis of material referred to in the statement. (The 'bar-to-sealing' procedure is elaborated in Re Applications by Gould Inc 13 IPR 644.) In so doing, the public interest in ensuring only valid patents are granted is largely met; as a result the only remaining public interest is in ensuring that the proceedings are not unreasonably protracted."
and on page 15, followed Vangedal-Nielsen v Commissioner of Patents (1980) 33 ALR 144, where Bowen CJ in referring to Kaiser Aluminium (supra) states:
"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 the extension. It would be wrong if he granted an extension simply because no-one had raised rather exceptional circumstances why it should not be granted. Reasons why this is so include the desirability of operating the system efficiently and without unreasonable delays and also the interests of the applicant for a patent which are also clearly involved."
I seems to me that what is being said here is that it is not enough that a serious opposition be in train. The Commissioner must be satisfied that a proper case has been made out justifying the extension of time.
As I have said earlier, a proper case justifying an extension of time has not been made out. The Commissioner would be wrong if he "granted an extension because no-one had raised rather exceptional circumstances why it should not be granted".
Conclusion
I believe an appropriate case for an extension has not been made out and I refuse to grant the extension sought.
The time for evidence-in-answer commences from the date of this decision.
Costs
Normally in actions of this nature costs follow the event. I see no reason to vary this practice and consequently, I award costs against Ferocem Pty Limited.
(R.J.SAWYER)
Delegate of the Commissioner of Patents
Patent attorneys for the applicant: Davies Collison Cave,
Sydney
Patent attorneys for the opponent: Spruson & Ferguson,
Sydney
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