Humberto Urriola v Australian Drainage Modules Pty Ltd (and Peter Schindler)
[2000] APO 30
•14 April 2000
OFFICIAL NOTICE
DECISION OF A DEPUTY COMMISSIONER OF PATENTS
Application : No. 704302 in the name of Humberto Urriola
Title: Underground Drainage System
Action: Opposition under Section 59 by Australian Drainage Modules Pty Ltd (and Peter Schindler), and a request under reg. 5.10(2) to extend the time for serving evidence in answer.
Decision: Issued 14 April 2000
Abstract
The patent applicant sought an extension of time of 7 days to serve evidence in answer. At the hearing it became apparent that a longer extension was required. The extension was granted, based on admitted errors or omissions of the applicant's attorney.
PATENTS ACT 1990
DECISION OF A DEPUTY COMMISSIONER OF PATENTS
Re:Patent application 704302 in the name of Humberto Urriola, opposition under Section 59 by Australian Drainage Modules Pty Ltd (and Peter Schindler), and a request under reg. 5.10(2) to extend the time for serving evidence in answer.
BACKGROUND
Two parties opposed the application, using a common attorney. I note that the parties to this matter have been previously involved in litigation over another patent - see Atlantis v Schlinder 39 IPR 29, and the present opposition relies heavily on the findings of the court in that action. Evidence in support of the opposition was served by both opponents on 7 December 1999. Evidence in answer was therefore due to be served on 7 March 2000, but in fact was served on a later date. When the evidence was filed with the patent office (on 22 March), the attorney for the applicant sought an extension of time of 7 days to serve the evidence. Australian Drainage Modules Pty Ltd (one of the opponents) objected to that request, and sought to be heard. A hearing was held on 13 April 2000, where the opponent was represented by Mr V Bizannes (solicitor). The applicant did not appear, but his attorney (Mr Taylor) provided brief written submissions.
The evidence in answer consists of 3 declarations, each in respect of both oppositions. The originals of the declarations filed with the Commissioner are all dated 15 February 2000. Mr Bizannes asserts that one of the declarations served on the opponents is not dated. From the discussion that occurred at the hearing, I have no reason to doubt his assertion. I note that the date entered on the corresponding declaration filed with the Commissioner is entered in a different pen to that used for the signatures – leading to the inference that the copy of the declaration served on the opponent is in fact not a copy of that filed with the Commissioner [Reg 5.8(2)(a)]. I enquired of Mr Bizannes whether he wished to challenge whether the declarations were in fact executed on 15 February – and in particular whether they might have been executed after 7 March 2000. Mr Bizannes did not seek to challenge their date of execution. I accept that the declarations were all executed on 15 February - ie about 3 weeks before the due date for service of evidence.
The evidence in answer was filed in the Sydney State Office on 22 March 2000. Points of particular note arising from the accompanying letter are:
it is dated 14th March
it unequivocally asserts that service was effected on the opponents on 14th March
was filed with the Commissioner in the Sydney State Office on 22 March 2000; and
requests an extension of one week to serve evidence (which would be appropriate if service was effected on 14 March)
the opponent contends that the letter they received with the evidence was dated 14 November 2000.
the opponent claims service was effected on or about 22 March.
If I accept the opponents contention about date of service, there is a clear inference that the attorney's letter to the Commissioner involves a misrepresentation of relevant facts. I note that the attorney's letter of 14 March was filed with the Commissioner on 22 March, which is remarkably consistent with the date of service as alleged by the opponent. At this time I have no reason to doubt the contention of the opponent regarding the date of service.
A request for an extension of time accompanied the above letter. It too is dated 14 March. The request commences with:
I, Humberto Urriola, of ….., apply for an extension of time of one week from 7th March 2000 to 14th March 2000, to serve evidence in answer on the opponent, …
It then proceeds to detail, in the first person, a series of personal circumstances arising from a serious illness of "my mother", including the need for medical attention, and the consequential personal disruption. The events evolved from a diagnosis on 24th January, to surgery on 6th February, hospital visits 9th to 11th February, and subsequent favourable test results in early March. [In my view it is fair to say that the circumstances would cause significant (but not debilitating) distress to most people.]
Additionally, para 4 of the request states, with respect to discussions with a further engineer:
"Unfortunately, late in March we were advised…."
The request itself is dated 14th March, and seeks an extension beyond 7th March. If taken at face value, this paragraph suggests the applicant was not ready to serve his evidence on 7th March, because he was actively seeking a further declaration at the relevant time. However, if I treat the paragraphs in the request as being written in chronological order (which they otherwise are), the difficulty is resolved if I substitute the reference to March by a reference to February.
As indicated, the request is in the name of Urriola, and written in the first person. However, it is signed as:
Humberto Urriola
By his attorneys
Paul R. Taylor and Associates
[signed PR Taylor]
On the 4th of April, Mr Taylor provided a letter of that date containing submissions. On the day preceding the hearing (ie on April 12), Mr Taylor faxed a letter to replace the submissions in the letter of 4th April. That letter is dated 14th March 2000 (which is clearly erroneous), and refers to patent application "7043302" (which, again, is clearly in error). The letter confirms that he will not be appearing, but will rely on written submissions. The letter goes on to provide the submissions, which I cite in full:
"As stated in my request for an extension, which was for only 7 days, the reason the evidence was not lodged was through an error on my behalf and due to no fault of the applicant. The evidence, which consisted of three statutory declarations, was prepared and executed on the 15th February 2000.
"It was only due to my mother's illness that I did not serve the evidence in the required time. Therefore as my client should have the right to present evidence in support of his patent application, I believe the extension should be allowed, particularly as the evidence is already served and the delay was through no fault of the applicant.
"Further as the solicitor for the opponents only successfully lodged their two applications and their two objections through the guidance of the Patent Office, which was in accordance with natural justice, I believe that similar consideration should be given to the applicant under natural justice, and hence the applicant's extension of time should likewise be allowed such that a decision can be made upon the true facts."
[signed PR Taylor].
From this, it is apparent that the personal circumstances given in the request for the extension of time are not those of Mr Urriola, but of his attorney Mr Taylor, and that the request for the extension is based on mea culpa on the part of the attorney.
At the hearing, Mr Bizannes raised numerous criticisms of the documentation in support of the extension, and queried whether an extension could be granted. In my view, regulation 5.10(2) is clearly the basis for the current request. Mr Bizannes also queried whether an application for an extension could be made after the period sought to be extended had expired. In my view, applications can be made after the expiration of a period - although there will be additional complications/considerations if the Commissioner has advised the parties that the relevant evidentiary stage under regulation 5.8 has been completed. In forming this view, I note the absence of any provision in regulation 5.10 limiting extensions to those that have been applied for before the end of the period to be extended. I also note that under the 1952 Act extensions were available if applied after the end of the period [regulation 82] but subject to 'special circumstances'. I consider the issue of circumstances under the 1990 Act is fully dealt with by the provision of regulation 5.10(5)(c)(ii). Accordingly, I believe an extension of time is available to the applicant, even though the request was filed after the end of the period to be extended.
Considering the documentation surrounding the service/filing of the evidence, and that provide in support of the request, I can only express considerable concern at the lack of attention to important detail – with possible misrepresentations arising therefrom. I particularly note:
On face value, the request sets out personal circumstances of the patent applicant, Urriola. The only reason to doubt this is the fact that it is signed by his attorney. It is only from the subsequent correspondence that it is apparent that the reasons are personal to the attorney.
The letter faxed prior to the hearing is clearly misdated.
The opponent alleges the letter to them accompanying the evidence was dated 5 months after even today's date;
The opponent alleges that one of the declarations was not dated. Since the originals of all the declarations filed with the Commissioner are dated, there is a clear inference that the applicant has not been served a copy of the relevant declaration filed with the Commissioner.
The request of 14 March asserts service by that date. That letter was only received by the Patent Office on 22 March; and the opponents allege service occurred on or about 22 March.
Paragraph 4 of the request for an extension refers to advice being received 'late in March', whereas I have concluded the relevant date is 'late in February'.
Bringing all these issues together, it seems to me that objectively the situation in the present case can be summed up as:
Prior to the due date for service of evidence, relevant declarations had been completed. A further declarant was being pursued, but that did not eventuate, and the material was ready to be served by the due date;
The declarations were not served for reasons associated with the conduct of the attorney; and
In all probability, service occurred on or about 22 March, rather than the date of 14th March as asserted by the applicant's attorney.
DECISION
A thorough consideration and summary of the law, as it stands, on the extension of time provisions was given by Burchett J in Ferocem Pty Ltd v Commissioner of Patents (1994) 28 IPR 243 and more recently by Sackville J in A Goninan & Co Ltd v Commissioner of Patents (1997) 38 IPR 213. In Ferocem, Burchett J stated
"The determination of an application for an extension of time under Regulation 5.10(2) involves a balancing exercise, in which competing considerations must be taken into account. There are the interests of the persons directly concerned in the application and opposition in question. There are also the public interests, which are not necessarily all ranged on the same side. They include the expeditious disposal of matters in the Patents Office, and questions of cost, of efficiency, and of insistence upon proper professional standards being maintained by those who deal with the office. But they also include, as Kitto J pointed out in Kaiser Aluminium & Chemical Corporation v The Reynolds Metal Company (1969) 120 CLR 136 at 143, "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 am satisfied that the material was ready to be served by the due date; the attorney had a responsibility to his client to serve it by that date; and the attorney has admitted to being responsible for failing to timely serve it. In dealing with this situation, I am very mindful of the above comments of Kitto J, which seem to have particular relevance to the present case. I am also mindful of the comments of the Administrative Appeals Tribunal in Sanyo v Commissioner of Patents 36 IPR 470 @ 479:
The decisions of the courts concerning the approach to be taken to the exercise of a discretion to extend time are now well established and include:
…..
It is "more important to consider the consequences of extending or refusing to extend time than debate the reasons why the act was not done in time": per Davies J in Chalk's case, at 156, with whom Black CJ and Cooper J agreed. Similar comments are to be found in Comcare v A'Hearn (1993) 119 ALR 85, particularly at 88
Actions of the agent of a principal should not necessarily be regarded as being the actions of the principal: A'Hearn's case:
A legislative provision providing for the exercise of a discretion to extend time is beneficial in nature and should be applied beneficially: Davies J in Chalk's case at 155.
It seems to me that in the present case the result of my refusing the extension would be to shut out entirely the evidence of the patent applicant. There is nothing before me to suggest that the applicant was not proceeding in good faith. Also, I have inspected the declarations that have been filed, and have formed the view that they address at least some of the grounds of opposition. In the circumstances of this case, I do not think that the admitted failures of the attorney should be visited on the patent applicant.
Furthermore, the attorney has only sought an extension of 7 days, up until 14 March. As I have indicated, I consider service more likely occurred on or about 22 March. It seems to me therefore, that the request for an extension of time misrepresents the extension the applicant actually needs. In the circumstances of this case I do not believe that I should be limited to the period actual requested by the attorney. Rather, I consider I should grant an extension sufficient to validate the service of the evidence.
Accordingly, and to remove any possibility of uncertainty, I grant an extension of time to serve evidence in answer, of up until the day of the hearing (April 13). This is a date beyond any possible date of actual service. The time for service of a notice of intention to serve evidence in reply would normally commence on the date of service of evidence in answer. However, given the uncertainty prior to this decision of whether evidence in answer has been served, I consider it appropriate for the periods prescribed in regulation 5.8(4) to commence on the date of this decision.
COSTS
Neither party made submissions on costs. Costs generally follow the event, In this case, I do not consider it appropriate to make any award of costs.
D Herald
Deputy Commissioner of Patents
Patent attorneys for the applicant : Paul R Taylor & Associates
Patent attorneys for the opponent : Victor A. Bizannes
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