Ici Australia Operations Pty Ltd v Commercial Polymers Pty Ltd
[1993] APO 25
•28 April 1993
official notice
decision of a delegate of the commissioner of patents
Application: No. 606285 in the name of ICI Australia Operations Proprietary Limited
Title: Cable
Action: Application for an extension of time to serve evidence-in-answer under reg
56 (1952 Act); objection by opponent
Commercial Polymers Pty Ltd; hearing.
Decision: Issued . Extension granted; costs awarded to opponent.
patents act 1990
decision of a delegate of the commissioner of patents
Re: Patent Application No. 606285 by ICI AUSTRALIA OPERATIONS PTY LTD, opposition thereto by COMMERCIAL POLYMERS PTY LTD, and an application for an extension of time to serve evidence-in-answer.
background
ICI Australia Operations Pty Ltd (ICI) lodged application 606285 on 15 June 1989 for an invention relating to cables, particularly those which are to be laid underground . The Patent Office advertised acceptance of the application on 31 January 1991. On 18 April 1991, Commercial Polymers Pty Ltd.(COMPOL) lodged a notice of opposition.
As the application was both lodged and advertised accepted before the commencement of the Patents Act 1990, the provisions of section 234(3) of the 1990 Act, and regulation 23.3 are applicable to this application. In particular, regulations 56, 82 and 83A are relevant to the present action.
Compol was granted a number of extensions of time to serve evidence-in-support the last of which expired on 18 June 1992. No further evidence was served in the final month of the extension and on 19 June 1992 as a matter of courtesy, COMPOL wrote to ICI to confirm that the evidence filed to date was the total of the evidence-in-support. This letter was received by ICI's attorneys on 22 June 1992.
On 1 October 1992 ICI sought an extension of time to lodge evidence-in-answer. The extension sought was from 22 September until 22 December 1992. The reasons why this first extension was sought were given as follows:
" The circumstances in which, and the grounds upon which this application is made will be set out in the declaration to be filed shortly. As we have just been informed by the Patent Office of the need to prepare and lodge an application for extension of time, further time is needed to prepare the declaration".
Since this extension should have been sought before the time for serving evidence had expired, namely 18
September 1992, it was accompanied by a request for an extension of time to file that application; the reasons in support of that request were exactly the same as those given in the request for extension of time to serve evidence-in-answer.
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COMPOL wrote to the Patent Office on 22 October stating that they were uncertain whether to object to this extension, since with no reasons having been advanced by the applicant they were unsure of their position.
On 22 December 1992 the applicant applied for a further extension of time to serve evidence-in-answer. The extension sought was for three months from 22 December 1992 to 22 March 1993. No request for an extension of time to file this application was received. COMPOL were notified on 7 January 1993. They opposed this extension.
Correspondence from COMPOL was received on 13 January 1993 indicating that they believed that the earlier extension should have run until 18 December 1992 and that the latest extension should have been sought until 18 March 1993. On 9 February 1993 the Patent Office notified ICI by telephone that their extensions should all run from the 18th of the month.
On 17 February 1993 ICI lodged substitute forms as follows:
a request for an extension of time from 18 September to 1 October 1992 in order to file a request for an extension of time to serve evidence-in-answer;
a request for an extension of time from 18 September 1992 to 18 December 1992 in order to serve evidence-in- answer; and
a request for an extension of time from 18 December 1992 to 18 March 1993 in which to serve evidence-in- answer.
On 18 December 1992 the applicant had supplied relevant declarations in support both of the first extension of time to request an extension of time to serve evidence-in-answer, plus the request for extension of time itself. Both these extensions were unopposed and the Commissioner's Delegate granted them on 5 March 1993.
A hearing regarding the December to March extension was set down in Canberra on 16 March 1993.
On 15 March 1993, the day preceding the hearing, ICI served part evidence-in-answer on the applicant. This evidence consists of an 11 page declaration and 4 exhibits consisting of copies of publications from various sources.
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At the hearing ICI was represented by Mr. John McCormack of Griffith Hack & Co, Melbourne. COMPOL was represented by Mr. Greg Chambers of Phillips Ormonde & Fitzpatrick, Melbourne.
THE APPLICATION FOR EXTENSION OF TIME.
The application for extension of time under regulation 56, originally stated as from 22 December 1992 to 22 March 1993, to serve evidence was lodged on 22 December 1992. A substitute application requesting an extension from 18 December 1992 to 18 March 1993 was lodged on 17 February 1993. The stated circumstances and grounds upon which the application is made, which are identical on both documents, are as follows:
"The applicant is awaiting the decision of the Delegate of the Commissioner of Patents regarding the request for extension of time to lodge an application for an extension of time to serve evidence-in-answer. A declaration in support of the earlier request for extension of time has now been lodged and is being considered by the delegate of the Commissioner of Patents."
SUBMISSIONS
Mr McCormack made a number of submissions for ICI the most relevant of which can be conveniently summarised as follows :
- That until the Patent Office had granted the earlier extension of time from 18 September to 18 December 1992 there was little point in serving evidence as it would not be accepted.
- Part evidence was served on 15 March 1993, only 6 days after ICI received notification that its earlier extension had been granted. This shows that there has been no undue delay on the part of the applicant.
- ICI has only this one chance to rebut the opponent's evidence and would be adversely affected if this extension were not granted.
- Delays to the proceedings usually favour the opponent not the applicant so the request for the extension by ICI should not be seen as a delaying tactic to disadvantage the oppponent. This assertion is borne out by the fact that in practice it appears that there are less requests for an extension to serve evidence-in- answer than there are to serve evidence-in-support. The public interest is best served by not granting invalid
patents and it is in their best interest for the
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Commissioner to consider all the evidence, rather than some of it be excluded on a technicality.
- That, as it was in the public interest for the Commissioner to be able to consider all the facts, ICI should be allowed the extension so that they could serve all the evidence.
- That the opponent's evidence was of a complex nature, and voluminous; it also asserted that similar polymers to the applicant's cable sheathing were used in cling films in conjunction with an intermediate layer. ICI's invention which does not have this layer, is quite different. The need to question the relevance of some of the evidence-in-support will take additional time.
- That the opponent's evidence included reference to the use of the polymer of ICI's invention in the cling film industry rather than in the cable making industry of the invention. This part of the evidence appeared irrelevant, but because of this the experts in the cable industry consulted by ICI were unable to comment on it. This meant ICI has had to find other experts which has taken more time. In addition, ICI has had difficulty finding independent cable industry witnesses due to there only being a small number of cable makers in Australia. In fact one of the technical experts to be used by ICI was in hospital from 10 to 15 March 1993. Thus evidence was still being gathered.
- That the reasons for the late application for an extension of time to serve evidence-in-answer were given in the statutory declarations filed on 18 December 1992 in support of the first extension. On 22 December when this present extension was applied for,
ICI was still of the belief that the application was made in time.
Mr Chambers made a number of submissions for COMPOL the most relevant of which can be conveniently summarised as follows:
- That the correct date from which the extension should be sought is from 18 December 1992.
- That by applying for the extension of time to serve evidence on 22 December rather than 18 December, without also making an application for an extension of time in which to make the request, the request is not properly made and should not be considered.
- That some of the evidence-in-support was served as long ago as 18 February 1992 and the applicant has already had ample time to consider it.
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- That ICI had not really made out a proper case to justify its first extension at the time they requested it. Consequently COMPOL was unable to oppose the first extension. This was evidenced by the fact that this first extension, until 18 December 1992, was not in
fact granted until 5 March 1993.
- That in order for a request for an extension of time to serve evidence be granted, the party making the
request must make out a proper case. If the party fails to do this the Commissioner must refuse the request (and I was referred to Vangedal-Nielsen v Smith and
Gelphen Nominees (1980) 33 ALR 144, and also to Kent- Moore Corporation v Environmental Products Amalgamated Pty Ltd (1992) AIPC 90-915). Whilst the Kent-Moore decision supra relates to an application made under the provisions of the Patents Act 1990 and the present matter concerns an application made under the provisions of the Patents Act 1952, there is still the requirement that the party making a request for an extension of time to serve evidence must make out a
proper case.
- That if an extension is granted it will delay proceedings unneccessarily and thus disadvantage COMPOL since their investment plans will be delayed until this entire matter is concluded.
- The opponent has made out its case which requires original research. The applicant on the other hand has an easier task as it merely has to respond to the opponent's declarations. COMPOL does not agree that any of its evidence is irrelevant. However if the applicant truly believes that it is, then rebutting it is easier;
and less, not more time consuming.
- The hospitalisation of one of ICI's expert witnesses from 10 to 15 March 1993 has no bearing on this request since it had not occurred when the request was made,
namely in December 1992.
- That although ICI had asserted that getting expert witnesses had been difficult and time consuming it had produced no evidence to support their assertions.
- That any party seeking an extension has a duty of full and frank disclosure. In particular ICI should indicate exactly what steps it has actually taken to obtain expert witnesses. On the evidence supplied at this hearing coupled with the declarations filed in support of the extension, COMPOL submits that there has not been such disclosure. I was referred to Kimberly-Clark
Ltd v Commissioner of Patents and another(No 3) 13 IPR 569.
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DECISION
Request under regulation 82(b)
The first matter I must decide is whether an extension of time from 18 December 1992 to 22 December 1992, in which to lodge the extension of time application under regulation 56, is justified under the provisions of regulation 82(b).
Reg. 82 reads as follows:
" An application for an extension of time under these Regulations shall be lodged at the Patent Office-
(a) before the expiration of the time sought to be extended; or
(b) if the Commissioner is satisfied that special circumstances existed which prevented the
application being made before that time, within such time as the Commissioner allows."
Thus in order for me to grant an extension of time under regulation 82(b), I must be satisfied that special circumstances existed that prevented the application being made in the relevant time. There is no requirement in the regulation that the applicant has to formally request it.
The present application has experienced an unusual series of events leading up to this hearing. At the time the original application for an extension of time was made, ICI believed that the time for serving evidence had expired on 22 September 1992. The Patent Office appears to have advised both parties by telephone on 29 September 1992 that this date was correct. Consequently when on
1 October ICI made its application it also applied for an extension of time to lodge its application from 22 September to 1 October 1992. Since this request was not determined until after the expiration of the extension sought, ICI was not aware of the error when it requested the second extension on 22 December 1992, which it believed was the correct date rather than 18 December.
A document containing errors can still be effective to initiate action by the Commissioner (e.g. CSIRO v HBH Technological Industries Pty Ltd (1992) AIPC 90-878) but may need to be perfected by substitution with a correct form. This is clearly the situation here, as the Office treated the request made on 22 December 1992 as effective and advised all parties, and it was not until the 9th February 1993 that the Patent Office noted that the period of extension sought was incorrect and the request was made late. ICI was advised and on 17 February 1993 filed substitute documents with the correct dates on them.
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It seems to me in this instance, that the error by ICI regarding the date on which the second request for an extension of time to serve evidence-in-answer was due, is really a compounding of the original error made in respect of the first request. In Genentech v Wellcome 11 IPR 401 it was held that errors by attorneys can qualify as special circumstances. I am therefore of the view that given the history of this case, in terms of confusion and error by, or on behalf of, ICI as to exact dates for serving evidence, special circumstances existed at the time this request was made. In my view it is clear that on 22 December 1992 ICI was genuinely of the opinion that its request was being made in time. Thus I conclude that the special circumstances required by regulation 82(b) exist in the present case, and I allow ICI from 18 December to 22 December to lodge its second application for an extension of time under regulation 56.
Request under Regulation 56
The second matter I must decide is whether I should grant an extension under regulation 56.
The law regarding this class of extension has been comprehensively reviewed by the Federal Court in Vangedal-Neilsen v Smith and Gelphen Nominees (1980) 33 ALR 144 and in Lyons v Registrar of Trade Marks 1 IPR 416. This law can be simply stated 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 delayed
or unreasonably protracted.
In addition, regulation 83A provides:
"the Commissioner shall not grant the extension of time unless he is satisfied that the extension is justified having regard to all the circumstances of the case.
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In deciding whether to grant the extension there are a number of aspects I need to consider:
(i) No Undue Delay
ICI has lodged a substantial amount of evidence-in- answer, albeit on the day before the hearing. If I were to allow the extension there would be no undue delay in respect of the evidence already filed. But ICI has
indicated that this is only part of its evidence, thus potentially more delay could occur.
Mr McCormack pointed out that until the Patent Office had ruled on the applicant's earlier extension he was unable to serve evidence on COMPOL, but as soon as that decision was known he served evidence-in-answer within 6 days. He also referred me to a number of decisions such as British-American Tobacco Ltd v Phillip Morris Ltd (1991)AIPC 90-651 and BASF Corporation v ICI Australia Operations Pty Ltd (1988) AIPC 90-523 to illustrate circumstances similar to the present in which extensions have been granted.
However I am mindful that the applicant's actions in treating the whole opposition process as "on hold" as it were whilst the Patent Office was considering the initial request for an extension of time, has caused some delay to the proceedings; ICI should have continued to collect evidence in the time they were waiting for the Commissioner's decision.
On considering the various aspects, I am of the opinion that there will be little overall delay to the proceedings if this second extension is allowed.
(ii) Proper Case
In considering whether the applicant has made out a proper case justifying the extension I have to have regard to the fact that ICI has asserted that it is still engaged in gathering evidence, particularly in obtaining an impartial expert witness to make a declaration about the applicability of cling film technology to cable making. It seems to me that there is a difference in the technologies and that as ICI is a plastics manufacturer rather than a cable maker it does need to look for experts outside its own company's expertise as it has asserted. I am also of the view that the field of the invention is specialised and quite narrow and one in which there may well be genuine difficulties in obtaining a suitable witness.
It seems to me that when regarded overall, ICI has provided good reasons for requiring a further extension to complete evidence-in-answer, and thus I consider that ICI has made out a proper case.
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(iii) Full and Frank Disclosure
The next matter I must consider is whether ICI have made a full and frank disclosure of all the facts. In its declarations of 18 December 1992, ICI has set out the circumstances leading to the delay in lodging its first application for an extension of time to serve evidence. At the hearing they explained why this current application was lodged on 22 December 1992- namely that at the time they believed this to be the correct date. They also explained the difficulties that they had in obtaining an independent expert witness.
Although ICI only presented a vague outline of the reasons for needing the extension in their written submissions, they disclosed much more complete reasons orally at the hearing. I am satisfied that they have now discharged their duty of full and frank disclosure.
(iv) Interests of the Parties and the Public
Regarding the respective interests of the parties. The best interest of the opponent is met if I do not grant the extension and the opposition proceeds only on the basis of the opponent's evidence. Conversely an applicant's case is usually best served by having no delay at all. However in this particular set of circumstances, ICI would not be able to rebut the opponent's evidence if this extension were not granted. COMPOL has argued that it would be disadvantaged, so far as its investment plans are concerned, if the extension is granted.
As to the public interest, ICI has argued that the public interest was best served by granting the extension sought, as the substantive opposition should be decided with regard to all the facts. If the extension were not granted, ICI would be unable to present its side of the argument and this would not be in the public interest. COMPOL however argued that they had made out a strong case for overturning a bad patent and it was in the public interest for this to happen quickly. The extension would lead to further delay and this was not in the best interest of the public. I am also mindful that ICI has served some evidence, although if the extension were not granted the Commissioner would still, in the public interest, have regard to it in a bar to sealing review. In my view the interests of the public are best served by considering the evidence at the substantive opposition hearing.
In the present case, I am of the view that the interests of the parties are evenly balanced. However in my view the public interest is best served at the present time by allowing ICI some time to fully consider and respond to the opponent's evidence so that
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evidence from both parties is available for consideration to ensure that a fair and informed decision is reached.
Given the above considerations I find that the applicant has justified its application for an extension of time (to 18 March 1993) to lodge evidence-in-answer.
CONCLUSION
I have found that the applicant's request for an extension of time to lodge evidence-in-answer is justified and I extend the time for lodging evidence-in-answer until 18 March 1993.
COSTS
Both parties made submissions that costs be awarded to them. I note that ICI served only part of its evidence one day before the hearing and Mr Chambers was not actually aware of this until the hearing had started. I also note that ICI did not provide particularly cogent reasons to support its extension in its written request, but relied on oral submissions at the hearing to explain and justify its request for an extension of time. Although I have found in favour of ICI on both the extensions requested, my reasons for doing so have relied almost entirely on submissions put forward at the hearing that were not contained in the written extension of time application. COMPOL may not have pursued its objection to a hearing had it been aware of all the facts. Although costs normally follow the event, in this particular case because of the matters just mentioned, I award costs in favour of COMPOL.
R.A.Melvin
Delegate of the Commissioner of Patents
Patent attorneys for the applicant : Griffith Hack & Co,
Melbourne
Patent attorneys for the opponent : Phillips Ormonde &
Fitzpatrick, Melbourne
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