Ici Australia Operations Pty Ltd v Commercial Polymers Pty Ltd
[1992] APO 8
•5 March 1992
official notice
decision of a delegate of the commissioner of patents
Application : No. 606285 in the name of ICI AUSTRALIA OPERATIONS PTY LTD
Title : Cable
Action: Application under regulations 55 and 82(b) (Patents Act 1952) for an extension of time to lodge evidence in support of the opposition.
Decision: Issued . Extensions granted. Public interest considerations when several oppositions are on foot considered.
patents act 1990
decision of a delegate of the commissioner of patents
Re:Patent Application No. 606285 by ICI AUSTRALIA OPERATIONS PTY LTD, and an application by COMMERCIAL POLYMERS PTY LTD for an extension of time to serve evidence in support of the opposition, and an application under regulation 82(b).
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 opposition. In particular, regulations 55, 82 and 83A are relevant to the present action.
Metal Manufactures Ltd also oppose this patent application. Pirelli Cables Australia Ltd. sought an extension of time under section 59(1) to oppose this patent application; a delegate of the Commissioner refused to grant that extension on 31 Oct. 1991.
Subsequent to filing their notice of opposition, COMPOL sought two extensions of time to lodge evidence in support, which have been granted for a cumulative period ending on 18 January 1992. By letter dated 25 November, ICI advised the attorneys for COMPOL that whilst they consented to the then latest request (ending on 18 January 1992), they would object to any further extension of time.
On Tuesday 21 January 1992 (three days after the expiration of the period to be extended), COMPOL filed a third application for an extension of time for the period of two months ending 18 March 1992, together with a request for an extension of time in which to file that application; a declaration in support of that request was also filed. The basis for requesting the extension of time to file the application is regulation 82(b) of the regulations under the Patents Act 1952.
On the day preceding the hearing, COMPOL served part evidence-in-support on the applicant. This evidence consists of a 17 page declaration, and 18 exhibits consisting of copies of publications from numerous sources. Also, two days before the hearing the applicant filed a declaration by Mr. Angliss (of ICI) and a purported original of a declaration faxed previously in relation to when the hearing should be set down (I say purported, as the signatures on the document were clearly different to that on the copy faxed to the Commissioner).
At the hearing, ICI was represented by Mr. John McCormack of Griffith Hack & Co, Melbourne, assisted by Dr. Carolyne Rolls of ICI. COMPOL was represented by Mr. Greg Chambers of Phillips Ormonde & Fitzpatrick, Melbourne.
the applications for extension of time
The application for extension of time to serve evidence was lodged on 21 January 1992. The stated circumstances and grounds upon which the application is made are as follows:
"The opponent has furthered its enquiries and searching in connection with this opposition since the date of the last extension application. Various expert witnesses have now been interviewed and preliminary drafts have been prepared which intend to take the form of declarations to be filed in support of the opposition. Further prospective witnesses are still to be interviewed and the further time now sought is required to finalise outstanding enquiries, interview the remaining witnesses, finalise declarations and serve those in support of the opposition. In addition a proposed witness has been away during the Christmas period and absent overseas in January 1992. This absence and the Christmas holiday period has made it difficult to finalise the opponent's evidence in the time available."
Additionally, Mr. Chambers submitted a declaration setting out the reasons the request for an extension of time was not filed by 18 January. The reasons declared to can be conveniently summarised as:
-On Friday 17th January he dictated an extension request for his secretary. She was unable to type the request on that date. She was instructed to type it on the following Monday.
The need to file the request on the Monday was not diaried.
- The secretary was sick on the Monday.
-The failure to file the request was discovered the next day (Tuesday); steps were immediately taken to file it.
submissions
Mr. Chambers' submissions for COMPOL can be conveniently summarised as :
-Part evidence was served on 18 February 1991;
-The latest request for an extension was for a period of only two months, rather than the usual three months;
-ICI will suffer no prejudice by the present extension, as the other opponent has not yet served any evidence;
-ICI appears to be treating the two opponents differently; whilst they have objected to COMPOL's extension application, they have not objected to an extension application by the other opponent. It might be asserted that the public interest in the opposition is protected through the existence of the other opposition and there is thus no particular public interest in the present opposition; however if an extension of time is not granted in the present opposition (and is thereby concluded), the applicant might negotiate an agreement with the remaining opponent, leading to no effective opponents and loss of protection of the public interest. Thus the differences in treatment should be a matter of concern.
-There is no suggestion of infringement, nor any claim to unfair prejudice, arising from performance of the invention by third parties.
Mr. McCormack's submissions for ICI can be conveniently summarised as:
-The present invention relates to a significant improvement in telecommunication cables; the public interest is best served by early grant of the patent so that the public can benefit from improved telecommunications.
-The opponent's submissions indicates that the reason for opposing is solely commercial gain;
-The opponent has had 1 year since the advertisement of the opposition to prepare its evidence, but it was only the day before the hearing that any evidence was lodged. The evidence does not foreshadow a serious opposition, but is merely a delaying tactic;
-The public interest in the opposition is served by the existence of another opponent (and by implication, public interest considerations are of no relevance to the present opposition)
-Nothing that has occurred prior to the day before the hearing proves credence of the opponent; the lodging of part evidence in support the day before the hearing is no more than a last-ditch attempt to save their position. (and I was referred to NAUTICAL SERVICES PTY. LTD. and HITECH DISTILLATION ( AUSTRALIA) PTY. LTD. 7 IPR 567)
-Finally, if the extension is granted, that I should refuse to grant any future extensions.
decision
Request under Regulation 82(b)
The first matter that I must decide is whether an extension of three days under the provisions of regulation 82(b) is justified.
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.
In this matter I am guided by previous decisions of the Commissioner. In Genentech v Wellcome 11 IPR 401 an extension under Regulation 82(b) of nearly two months was allowed, it was established that the opponent's attorney failed to diarise a bring-up date and the law relating to special circumstances was fully discussed. In conclusion, the Commissioner's delegate stated, at 405:
"Consequently, it seems to me that the errors made by Dr Horner's firm in failing to make appropriate diary entries do qualify as special circumstances."
In Mitsubishi v Asahi 10 IPR 591 an extension under Regulation 82(b) was allowed where the circumstances included an application for extension of time being left too long in a fees basket before being processed by a clerk in an attorney's office.
In the present case the declaration by Mr. Chambers demonstrates that there was a serious intention to file the application for an extension of time under regulation 55, but there were a number of inter-related events that individually and/or collectively constitute one or more errors. The errors made in Mr Chambers' office are, in my view, of a similar order to those made in the two cases referred to above; I also note that the length of extension sought is far less than in Genentech (supra). Consequently I conclude that special circumstances exist in the present case, and I hereby allow COMPOL an extension of time of three days to 21 February 1992 in which to lodge its third application for extension of time under Regulation 55.
Request under Regulation 55
The second matter that I must decide is whether I should grant an extension under regulation 55.
The law regarding this class of extension 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.
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."
In considering these issues, I note the following:
The opponent has lodged a substantial amount of evidence-in-support of the opposition, albeit on the day preceding the hearing. At the hearing ICI asserted that the filing of this evidence was no more than a `last-ditch' effort to save the opposition. From a quick perusal of that evidence I conclude that it addresses substantive issues; certainly it is not consistent with a `last-ditch effort' as asserted by ICI. I am of the view that the opponent is mounting a serious opposition.
Secondly, in considering whether the opponent has made out a proper case justifying the extension, I need to consider whether there has been undue delay by the opponent. Mr. Chambers referred to a number of decisions such as British-American Tobacco Co Ltd v Phillip Morris Ltd (1991) AIPC 90-738, Vanitone Pty Ltd v Formica Technology Inc (1990) AIPC 90-651, and BASF Corporation v ICI Australia Operations Pty Ltd 1988 AIPC 90-523, 13 IPR 458 to illustrate circumstances similar to the present in which extensions have been granted. Although one might speculate why in the present case the opponent has filed part evidence-in-support the day before this hearing, in all the circumstances I am satisfied that there has been no undue delay on the part of the opponent.
Thirdly, with respect to the respective interests of the parties, I note that the interests of the opponent are best served by continuance of the opposition. Conversely, the applicant's interest in opposition matters is usually to have the opposition finalised as soon as possible. In the present case, ICI assert that they are experiencing difficulties with sales pending grant of a patent. However there are two oppositions to the present application; the other opponent has not yet filed any evidence in support of the opposition, and the applicant has not apparently taken any steps to object to any extensions sought by the other opponent. In these circumstances, I fail to see how the present request for an extension can delay the grant of a patent. I consider any assertion that ICI's position is unduly prejudiced by the extension presently sought is incongruous with ICI's actions with respect to the other opponent. I am therefore of the opinion that the balance of the interests of the parties is in favour of granting the extension sought.
The final issue that I must address in the present case is the issue of the public interest. At the hearing ICI in effect suggested that there are no public interest considerations in the present opposition as there is another opposition on foot - the mere existence of that opposition guarantees that the public interest is maintained.
This issue was raised by ICI in a hearing on an application for an extension of time under Section 59(1) by Pirelli Cables Australia Ltd with respect to the present application; that S.59(1) application was refused by a decision of a delegate of the Commissioner dated 31 October 1991. The issue was also raised by ICI in a concurrent action regarding an extension of time in respect of another opposition.
In the present case the opponent observed that the applicant, for reasons unknown, has chosen to treat the two opponents differently. To support this assertion, the opponent:
observed that there has been no objection raised to any of the other opponent's applications for extension of time, and
ii.provided a declaration by Gregory Chambers (the patent attorney for the present opponent) stating that Mr. Keith Leslie of Messrs Davies Collison Cave (the patent attorney for the other opponent) had advised him that (as of Feb. 10 1991) Metal Manufacturers had not served any evidence in support, and had not received any communication from the Applicant's attorneys indicating that objection would be taken to any further extensions of time.
Firstly, I note that ICI has not objected to the first two extensions of time by either opponent; and that whilst it has objected to COMPOL's third extension of time application, it has not (as of the date of the hearing) had an opportunity to object to the third application for an extension of time by the other opponent - to this extent there is no apparent difference in treatment of the two opponents.
Secondly, I note that there is a significant difference between the opponents' respective requests for extensions of time. All the applications for an extension of time by COMPOL provide a somewhat detailed statement of circumstances and grounds to support the application; the applications of the other opponent have all merely stated "Assessment of prior art located has not been completed, and more time is required to complete this and to prepare relevant evidence". However, despite COMPOL's requests for an extension of time being apparently fuller than those of the other opponent, the opponent alleges that no warning letters of the type sent to the present opponent on 25 Nov. 1991 have been sent to the other opponent. They support this by a declaration relaying verbal advice from the attorney for the other opponent. In the absence of any refutation by ICI, this shows to me that ICI have prima facie treated the two opponents differently.
There may be good reasons why an applicant may treat oppositions by different parties differently. However the present opponent proposed the following as possible explanation in the present case:
The interests of COMPOL in the invention (as polymer manufacturers) is closer to ICI's interests in the invention than the other opponent (who was a cable manufacturer - not a manufacturer of polymers);
ICI was attempting to dispose of the more serious opposition by procedural technicalities; and
if ICI succeeded, they might then negotiate a settlement with the remaining opponent - resulting in the withdrawal of that opposition, and no opposition remaining on foot.
In this scenario, the opponent notes that the public interest in ensuring only valid patents would be granted, would be reduced to merely a bar-to-sealing consideration of whatever evidence had been filed. In this context, the opponent also observed that the bar-to-sealing considerations were very restricted, as discussed in Applications by Gould Inc. 13 IPR 644.
At the hearing I invited the attorney for ICI to respond to this proposition, or to indicate the reasons for the alleged different treatment of the opponents. The only comments provided were to the effect that the relevant section of ICI was short-staffed, and short of funds; as a result ICI were dealing with each opposition one at a time.
I am not in a position to ascertain why the applicant is apparently treating the opponents differently, and I note again that there may be good reasons for treating opponents differently. However the submissions of the opponent give a plausible explanation for the different treatment, which has not been controverted; and this explanation illustrates that the public interest in an opposition is not protected merely by the existence of another opposition.
Thus I qualify the principles stated in ALBRIGHT & WILSON LIMITED v COLGATE-PALMOLIVE COMPANY 9 IPR 669, 1987 AIPC 90-444, where it was said:
"The public interest in this matter, which essentially is that no invalid patents are granted, is taken account of by Unilever's opposition, but could also be further served if Colgate-Palmolive produced relevant evidence not adduced by Unilever. Also it is in Colgate-Palmolive's interest to pursue the opposition in the event that Unilever may withdraw theirs."
firstly by noting that it is proper, when considering all the circumstances of the case, to have regard to the circumstances surrounding any other opposition to the case, and secondly by saying that where more than one opposition exists, the public interest considerations in respect of any one of those oppositions is best served by primarily considering the merits of that opposition independently of any of the other oppositions.
In the present case, I am of the view that the public interest is best served if the present opposition is continued.
I therefore find that the opponent has justified its application for an extension of time (to 18 March 1992) to lodge evidence in support.
At the hearing I asked the attorney for COMPOL whether he expected the remaining evidence to be filed within the time now sought. He indicated that it may not be; another month may be required; and (in response to a settlement offer by ICI) he was not able to offer a guarantee that even this time would be sufficient.
The attorney for ICI suggested that if I was to grant this extension, I should at the same time refuse any further extensions. This I cannot do. Each application for an extension of time must be considered on its merits. It would be grossly improper of me to make a decision now presuming facts which will only be known when an application is made sometime in the future.
conclusion
I have found that opponent's request for an extension of time to lodge evidence-in-support is justified, and extend the time for lodging the remaining evidence-in-support to 18 March 1992.
costs
Both parties made submissions that costs should be awarded to them. I note that the COMPOL filed part-evidence-in-support the day before the hearing; ICI filed declarations two days before the hearing; and ICI was apparently unaware of the details of the requests by COMPOL prior to the hearing. In the event, I make no award of costs.
(D. HERALD)
Assistant 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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