Hitachi, Limited v. Hoover (Australia) Pty. Limited and Simpson Limited
[1985] APO 8
•28 May 1985
In the Matter of the Patents Act 1952 - and - In the Matter of Patent Application 533370 in the Name of HITACHI, LIMITED and - In the Matters of Oppositions thereto by HOOVER (AUSTRALIA) PTY. LIMITED and SIMPSON LIMITED - and - In the Matter of Applications by HITACHI, LIMITED for Extensions of Time in which to serve Evidence in Answer.
DECISION OF AN ASSISTANT COMMISSIONER OF PATENTS:
Acceptance of patent application 533370 in the name of HITACHI, LIMITED (hereafter called Hitachi) was advertised on 17 November, 1983. The grant of letters patent has been opposed hy SIMPSON LIMITED (hereafter called Simpson) and by HOOVER (AUSTRALIA) PTY. LIMITED (hereafter called Hoover).
This decision concerns applications by Hitachi for extensions of time in which to serve Evidence in Answer to the Oppositions, and objections thereto by Hoover and Simpson.
The chronology of events relevant to this matter is as follows:
Opposition by Hoover
- Application for extension of time in which to oppose under section 59 was lodged 9 February, 1984;
- Notice of opposition was lodged 9 May, 1984;
- Applications by Hoover for extension of time totally 4 months in which to lodge evidence in support were granted;
- Evidence in support was served 28 September, 1984 and 7 December, 1984.
Opposition by Simpson
- Notice of opposition was lodged 15 February, 1984;
- Applications by Simpson for extensions of time totally 8 months to lodge evidence in support were granted;
- Evidence in support was served 11 September, 1984, 28 September, 1984 and 7 January, 1985.
Evidence in answer should have been served by Hitachi by 7 March in the case of the Hoover opposition, and by 7 April in the case of the Simpson opposition. Under Regulation 56 Hitachi lodged two applications for extension of time ( in total from 7 March, 1985 to 7 May, 1985) in which to serve Evidence in Answer to the Hoover opposition, and an application for extension of time from 7 April, 1985 to 7 May, 1985 in which to serve Evidence in Answer to the Simpson opposition.
I heard submissions on the matter of these extensions in Canberra on 29 April, 1985. Hitachi was represented by Mr. F.L. Schilling, patent attorney, of F.R. Rice & Co., and Hoover and Simpson were both represented by Dr. I.T. Ernst, patent attorney, of Shelston Waters.
On 30 April, 1985 I notified the parties that I allowed the extensions sought and that the reasons for this decision would be advised in due course.
The provisions of the industrial property legislation material to extensions of time in opposition proceedings have been considered by the Federal Court in -Vangedal-Nielson V.-Smith (1980) 33 ALP 141 and in -Lyons v.
Registrar of Trade Marks (1983) 50 ALR 496. 1 IPR 416. These decisions show that:
The applicant seeking the allowance of an extension of time carries the burden of an appropriate case to justify that allowance. That is, the application for extension of time carries the onus of proof; an extension cannot be granted merely because the other party has been unable to show that in extension should not be granted.
The applicant for extension of time must make out a "proper case justifying extension".
In deciding whether the applicant for extension has made out a proper case justifying extension, the Commissioner must take all relevant considerations (and no others) into account.
These cases also show that in meeting the onus upon it, the applicant is not limited to reliance upon facts proved by formal evidence adduced by it. It may be able to point to background material or to material publicly available or even to facts proved hy the opponent's evidence. Factors to he considered in deciding whether an extension of time should be granted include:
the public interest in ensuring that worthless patents are not granted because sufficient time has not been allowed to raise an objection or to prepare and serve evidence in support of an objection,
the applicant's interest in having sufficient time to prepare an adequate defence of its application, and
the opponent's interest in expeditiously preventing the grant of a patent which will curtail activities.
Dr. Ernst submitted that two Further matters of public interest were that the patent system should operate efficiently and without undue delay, and that there should be no uncertainty as to whether a patent will be granted and if so of what scope. He submitted that in the case of evidence in support or of evidence in reply, the public interest in ensuring that a worthless patent is not granted must be balanced against countervailing interests.
Dr. Ernst also contrasted evidence in support and evidence in reply with evidence in answer. He submitted, in effect, that only the applicant's interests are advanced by grant of an extension of time in which to serve evidence in answer, and that the onus of establishing a case is correspondingly higher than for evidence in support or reply.
I do not agree that it is necessarily only the interests of an applicant for a patent that are advanced by allowing extensions of the time in which to serve evidence in answer. In my view, the public interest is not necessarily served if procedural difficulties were to result in total failure of an application for a patent in respect of what may subsequently prove to be a meritorious invention. I also see it in the public interest that patent applications, if they must he refused, be refused in the light of all evidence material to the grant. It is not in the public interest that patent applications be refused as a result of the applicant not having reasonable opportunity to put its evidence before the Commissioner.
I now turn to the situation before me.
The grounds listed by Hitachi in support of their applications are "The applicants require, more time to prepare and formalise their Evidence-in- Answer", and "The applicants have considered the Opponent's Evidence in Answer (sic) and have prepared a draft response which is currently being translated from Japanese into English, however, more time is required to complete the translation".
At the hearing Mr. Schilling explained that the delay in preparing evidence in answer was attributable in part to the enormous amount of evidence which had to be considered and in part to delays in translating material from English to Japanese and from Japanese to English.
On the other hand, in a declaration by Reginald George Vicary on behalf of Hoover, it is attested that delay in resolving this opposition is working to the considerable detriment of Hoover. I note and accept this.
I also accept Dr. Ernst's contention that the fact that the opponents were granted extensions of time in which to lodge their evidence in support, should not necessarily lead to the granting of extensions to the applicant to answer that evidence. Nevertheless I am of the opinion that the consideration by Australian and Japanese Attorneys and the requirements for translations, of a large body of evidence in support (which required extensions of time to prepare), would be neither an easy nor in expeditious task.
I acknowledge that the majority of the "substantive" evidence-in- support was served by 28 September, 1984 and that Hitachi were advised of this. However it does not seem unreasonable that Hitachi should postpone the preparation of their evidence-in-answer until all the opponents' evidence was served.
On balance I have no doubt that the extensions requested should be granted. This decision should not be taken as in indication that further applications for extension of time will necessarily succeed on the some grounds. At the hearing Mr. Schilling was unable to state when evidence-in -answer would be served, and I would expect that any applications for extension would be far more specific in this regard.
I award costs, as following the event, against Simpson and Hoover.
(D. RAINEY)
Assistant Commissioner of Patents
28 MAY 1985
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