ICI Australia Operations Pty Ltd v Dowelanco
[1992] APO 12
•8 April 1992
official notice
decision of a delegate of the commissioner of patents
Application : No. 606719 in the name of ICI AUSTRALIA OPERATIONS PTY LTD
Title: Water Dispersible Granules
Action: Objection to an application for extension of time under S223(2)(a) to file a notice of opposition
Decision : Issued .
S 223 (2)(a) is appropriate to extend the time to file a notice of opposition; proper case made out; extension allowed
patents act 1990
decision of a delegate of the commissioner of patents
Re:Patent Application No. 606719 by ICI AUSTRALIA OPERATIONS PTY LTD, and an application by DOWELANCO for an extension of time under S 223 of the Patents Act 1990 to file a notice of opposition.
background
ICI Australia Operations Pty Ltd (hereafter referred to as ICI), lodged Patent Application No. 606719, for an invention titled WATER DISPERSIBLE GRANULES. The application was accepted on 15 November 1990 and advertised accepted on 14 February 1991. The time for lodging a notice of opposition expired on 14 May 1991.
On 14 May 1991, an opposition was filed by MONSANTO COMPANY.
On 21 May 1991, DOWELANCO filed a Notice of Opposition and simultaneously requested (under Section 223 of the Patents Act 1990) an extension of time of one month to file the notice of opposition.
On 24 June 1991, the Commissioner informed DOWELANCO that they had not filed a proper request under Section 223. On 2 July 1991, DOWELANCO lodged a request under section 223, and a Statutory Declaration by Ms L. J. Upleger in support of that request.
On 8 August 1991, ICI advised that it had been informed of the application for extension by the attorney for DOWELANCO, and advised that it objected to the lodgement of the request for the extension of time and requested a hearing on this matter.
On 14 August 1991, DOWELANCO lodged an application for an extension of time for serving evidence in support of the opposition.
On 27 August 1991, the Commissioner informed DOWELANCO that the Commissioner was not satisfied that the section 223 extension was justified, and requested copies of certain documents referred to in the declaration of Ms. Upleger.
On 18 November 1991 DOWELANCO lodged a further declaration by Ms Upleger, including certain exhibits.
On 5 Dec. 1991, the Commissoner formally advised ICI of the extension application, and requested confirmation that they still objected to that request. Subsequently a hearing on this matter was held in Canberra on 7 February 1992. DOWELANCO was represented by Mr A DUNCAN of DAVIES COLLISON CAVE and ICI was represented by Mr J McCORMACK of GRIFFITH HACK & Co, and assisted by Mr M ANGLISS of ICI. The hearing was only in respect of the application for an extension of time under S.223 to file a notice of opposition.
Subsequent to the hearing, ICI filed a copy of a `Confidential Disclosure Agreement' between Mintech (N.Z.) Limited and Ivon Watkins Dow Ltd.
THE APPLICATION FOR AN EXTENSION OF TIME
The circumstances and grounds stated in the application for an extension of time are as follows:-
"Due to an error and omission an appropriate watching service was not initiated as required."
In support of their application DOWELANCO submitted two declarations by Ms L Upleger, setting out the reasons why the notice of opposition was not filed before the expiration of the time limit i.e. 14 May 1991. I have summarised the reasons stated in the Declaration as follows:
.In a written request dated 27 February 1991 Mr T D Zindrick, Patent Attorney employed by DOWELANCO, in the Patent Department of the Dow Chemical Company asked Ms L Upleger of the same department to set up watch on ICI's patent application 19605/88. DOW Chemical Company was responsible for maintaining watches on applications of interest to DOWELANCO.
.Subsequent to the request, Mr Zindrick and Ms Upleger moved offices and the request was misplaced.
.In early May 1991 Mr Zindrick asked Ms Upleger for a status report on the said watch.
.Upon discovery that the watch had not been instigated, Ms Upleger immediately telefaxed their attorneys in Australia to establish a watch. That facsimile was despatched on 15 May 1991.
SUBMISSIONS
Mr Duncan's submission for DOWELANCO can be conveniently summarised as:
.Paragraph 223 (2)(a) is the general provision to correct errors permitting the granting of the extension of time for doing a relevant act if there had been an error or omission by the person concerned or by his or her agent or attorney.
.Sub-section 223(3) allows the extension of time for the doing of the relevant act after that time as expired
.Sub-section 223(11) defines "relevant act" - subject to the exclusion of prescribed acts.
.Sub-regulation 22.11(3)(a) defines a prescribed acts for the purpose of S.223, and does not include filing a notice of opposition as a prescribed act.
.Consequentially, the filing of a notice of opposition is a relevant act, and, hence, Section 223 is appropriate and can be used to extend the time to file a notice of opposition.
.Ms Upleger and Mr Zindrick are agents of DOWELANCO within the meaning of Section 223.
.The notice of opposition was filed 7 days after the final date for lodging a notice of opposition and this included 2 days which were weekend days and hence there was no undue delay.
.There was an error or omission by Mr Zindrick and Ms Upleger.
.A serious opposition is being contemplated as the notice of opposition was filed within one week and recited the grounds of opposition.
.It is in the public interest that the extension of time be granted.
Mr McCormack's submission for ICI can be conveniently summarised as:
.Section 223 in conjunction with sub-regulation 22.11(3) is not appropriate for the extension of time to file a notice of opposition.
.The opponents have had approximately nine months since the filing of the notice of opposition and as yet have not lodged any material evidence before the Commissioner. Thus a serious opposition is not foreshadowed and the application for extension of time is merely a delaying tactic.
.Mr Zindrick may have made an error in advising Ms Upleger to place a watch. He should have advised her to file a notice of opposition rather than to instigate a watch.
.The public interest factor is already served by the existence of another opposition.
.There has been unreasonable delay in lodging the evidence in support of the application for the extension of time.
.If the delegate of the Commissioner was to grant the extension of time, he will place ICI in an intolerable position as ICI will face opposition proceedings twice.
.DOWELANCO merely produced details of events after the discovery that a watch had not been set up. There was no information as to how an error or omission had occurred; i.e. there is some doubt as to whether the circumstances can be properly construed as an "error or omission".
.The declarant of the Statutory Declaration submitted by DOWELANCO, Ms Upleger, is an employee of Dow Chemical Company and not that of DOWELANCO.
.There was a confidential disclosure agreement dated 10 July 1987 between Mintech (a predecessor in business of ICI) and Ivon watkins Dow ( a predecessor of DOWELANCO) relating to a joint venture, from which the present invention arose. Thus DOWELANCO was aware of ICI's application and should have set up a watch much earlier than they did.
.The onus is on DOWELANCO to produce evidence why an extension should be allowed. This onus has not been discharged.
.Finally, if the extension of time is granted, that I should refuse to grant any future extensions.
decision
Applicability of Section 223
As Mr McCormack has raised the issue of the applicability of S.223 to the present situation, I must first decide whether Section 223 of the Patents Act 1990 is appropriate for lodging an application for an extension of time to file a notice of opposition; especially whether the operation of sub-regulation 22.11(3), excludes the operation of Section 223 with respect to filing a notice of opposition.
At the hearing I expressed the view that the application of S.223 in the opposition environment was clear - that is:
S.223 applied to filing a notice of opposition (and regulation 5.10 does not apply), and
after a notice of opposition has been filed, any extension of times under chapter 5 of the regulations was under regulation 5.10.
However I indicated that I was prepared to consider any logical interpretation of S.223 and subregulation 22.11(3) which resulted in a different interpretation. Mr McCormack did not attempt to provide such an interpretation at the hearing; he requested that he be allowed to lodge written submissions (to which I agreed), but in the event he subsequently informed me that he was not lodging any written submissions on this matter.
I note that this issue was considered in the unreported decision of the delegate of the Commissioner in PERTTI PIETINEN and ASLAK SADONJOUSI v SUNS DEFIBIRATOR JY (issued 28 October 1991) where it was stated:
"The prescribed actions that are excluded under this section (as defined under sub-regulation 22.11(3)) do not include the lodgement of notice of opposition. In other words, this section, as is the case with Section 160 of the 1952 Act, is applicable to extend the time for lodgement of notice of opposition."
I fully agree with this being a correct statement of the application of S.223.
Extension of Time
The application for an extension of time relies on the ground in paragraph 223(2)(a) of the Patents Act 1990 which reads:
"223.(2) Where, because of:
(a)an error or omission by the person concerned or by his or her agent or attorney; or
(b)circumstances beyond the control of the person concerned;
a relevant act that is required to be done within a certain time is not, or cannot be, done within that time, the Commissioner may, on application made by the person concerned in accordance with the regulations, extend the time for doing the act."
In deciding whether there is a proper case for the grant of an extension of time under para 223(2)(a) I must first consider whether the applicant for the extension of time has established that the failure to meet time limit was due to error or omission on the part of the person concerned or of his agent or attorney. Secondly, if this is established I must consider whether to exercise my discretion to allow the extension of time. In this latter matter I note that I must take all relevant considerations (and no others) into account in deciding how to exercise this discretion (see, for example, Board of Control of Michigan Technological University v Deputy Commissioner of Patents (1982) 40 ALR 577 and Lehtovaara V Commissioner of Patents (1981) 39 ALR 103.)
Error or Omission
DOWELANCO submits that the notice of opposition was not lodged within the time limit set by sub-regulation 5.3(1), because of "an error and omission, an appropriate watching service was not initiated as required." The evidence lodged in support of the alleged "error or omission" comprises a statutory declaration, the contents of which I already have summarised, by Ms L J Upleger an employee of the Patent Department of the Dow Chemical Company which is responsible for maintaining watches on applications of interest to DOWELANCO. DOWELANCO is a company partly owned by the Dow Chemical Company.
In submissions lodged by Mr McCormack on behalf of the patent applicant, I note that ICI did not submit any evidence nor put forward any argument that the non-instigation of a watch by Ms Upleger was not an error or omission. Nor did ICI try to show that neither Ms Upleger nor Mr Zindrick were not agents or attorneys of DOWELANCO. Mr McCormack submitted that Mr Zindrick may have erred in advising Ms Upleger to place a watch: he should have advised her to file a notice of opposition rather than instigate a watch.
ICI argued that, on the basis of the confidential disclosure agreement, DOWELANCO had been aware of ICI's application and should have set up a watch earlier. However I do not consider that this is relevant to the error or omission that is alleged to have occured in the present case - at most, it indicates that perhaps another error or omission was committed by DOWELANCO (in not setting up the watch earlier).
Because of the relationship of The Dow Chemical Company and DOWELANCO and the fact that Mr Zindrick is a Patent Attorney employed by DOWELANCO in the Patent Department of the Dow Chemical Company and that Ms Upleger, also an employee of The Dow Chemical Company, was the person who normally established the watch on an Australian application, I am of the opinion that Mr Zindrick and Ms Upleger are agents or attorneys within the meaning of paragraph 223(2)(a).
In the statutory declaration by Ms Upleger, she stated that Mr Zindrick had requested in writing to set up a watch on the ICI patent application 19605/88 (which was later given the serial number 606719); because of the relocation of Mr Zindrick's and Ms Upleger's offices the request was misplaced and hence the watch was not instigated as requested; upon discovery that Ms Upleger had not set up a watch, she immediately telefaxed their attorneys in Australia to establish a watch.
Keeping in mind the decision in Danby Pty Ltd v Rib Loc Group Ltd (1987) AIPC 90-440, wherein it was held that a patent attorney's "failure to instigate a watch was an error or omission within the meaning of sec. 160(2)" [of the 1952 Act], I consider that Ms Upleger made an omission in not setting up a watch. Hence, I am satisfied that the failure to lodge the notice of opposition in time was by reason of an error or omission on the part of DOWELANCO's agent or attorneys.
Having concluded that the application for extension of time satisfies paragraph 223.2(a) of the Patents Act 1990 I must now consider whether I should exercise my discretion favourably towards the applicant for extension of time. In considering this point I am guided by the decisions of the following:
Vangedal-Nielson v Commissioner of Patents and Gelphen 14 Nominees (1980) 33 ALR 144
Lyons v Registrar of Trade Marks (1983) 50 ALR 496, 1 IPR 416
The law developed from these decisions can be summarised as follows:
a)the applicant seeking the extension of time has to make out a proper case
b)there must have been no undue delay on the part of the potential opponent
c)the private interests of the applicant and the opposition as well as the public interest are considered by ensuring that invalid patents are not granted and that patent proceedings are not protracted
d)There is a serious opposition in train.
Undue Delay
With regard to the question of undue delay, I am satisfied that Ms Upleger, upon the discovery that a watch had not been set up, acted without undue delay in advising the attorneys in Australia to establish a watch. The notice of opposition together with the request for an extension of time was lodged within seven days of the time limit for lodging a notice of opposition; furthermore these seven days included two days which were weekend days. There is no suggestion that she did not act promptly when the error was discovered. I am also satisfied that DOWELANCO prosecuted the section 223 application without undue delay.
Private and Public Interest
On this issue, I note that the interests of DOWELANCO are best served if I allowed the extension of time and let the opposition proceed. Conversely, the interests of ICI are best served by having any opposition matters finalised as soon as possible, and by having the evidentiary stages of the two oppositions running in synchronisation.
On the issue of public interest, Mr McCormack submitted that the public interest is maintained by the existence of another opposition (by MONSANTO COMPANY) currently in train. He reinforced this point by quoting the unreported decision of the delegate of the Commissioner of Patents in ICI Australia Operational Pty Ltd v Pirelli Cables Australia Ltd (issued 31 October 1991).
This same issue was raised by ICI in a recent unreported decision involving ICI (ICI Australia Operations Pty Ltd v Commercial Polymers Pty Ltd - issued 5 March 1992, but heard after the hearing of the present case), where I stated, in qualifying the principles stated in Albright & Wilson Limited V Colgate-Palmolive Company 9 IPR 669, 1987 AIPC 90-444, 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 satisfied that the balance of the interests of the parties and the public is in favour of granting the extension sought.
Serious Opposition
Mr McCormack noted that approximately 9 months has since expired since the lodgement of the extension of time to file the notice of opposition, and yet DOWELANCO has not lodged any material evidence before the Commissioner. Hence he concluded that there was no serious opposition being mounted. I do not agree with this inference. Unless the extension the subject of this decision is allowed, there is no opposition on foot; an opponent cannot be expected to file evidence if they do not know whether the opposition is on foot.
Furthermore, although no evidence has yet been filed, I note that:
(i)As soon as DOWELANCO discovered that they had not set up a watch they "immediately telefaxed Phillips Ormonde and Fitzpatrick with a request to establish a watch on Australian application 19605/88. The facsimile was despatched on 15 May 1991." This demonstrates a serious concern by the opponent that the watch had not been established.
(ii)One of the grounds of opposition is stated to be obtaining, and at the hearing it was asserted that this was indeed a ground of the opposition. I note the confidential Disclosure Agreement filed by ICI, and the assertions made that the subject matter of the present application arose from the joint venture. This suggests to me that the ground of obtaining may have a serious basis.
I am thus of the view that there is a serious opposition.
Conclusion
After considering all the material before me, I am satisfied that there was an error or omission which resulted in the notice of opposition not being filed within the prescribed period, and that DOWELANCO has made out a proper case justifying an extension of time to file a notice of opposition.
Consequentially I allow an extension of time under subsection 223(2)(a) until 14 June 1991, to file a notice of opposition.
As this allowance of the request under s.223 validates the notice of opposition filed on 14 June 1991, I direct that the initial period for filing evidence in support of the opposition expires 3 months from the date of this decision. The application for an extension of time to file evidence, filed on 14 August 1991, is consequently of no relevance.
At the hearing, the attorney for ICI suggested that if I was to grant this extension, I should at the same time refuse any further extensions. I do not accede to this suggestion. 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.
COSTS
Normally in actions of this nature costs follow the event. In this case I decided that the opponents request for an extension of time is justified and that a proper case has been made out. Furthermore, an applicant for an extension of time has a duty to give a full disclosure of all the surrounding circumstances which led to the need for an extension [Kimberly-Clark v Commissioner and Minnesota Mining and Manufacturing Co 13 IPR 569]; this occurred in the present case, by way of the declarations of Ms Upleger. I therefore award costs against ICI.
(D. HERALD)
Assistant Commissioner of Patents
Patent attorneys for the applicant : Davies Collison Cave, Melbourne
Patent attorneys for the opponent : Griffith Hack & Co, Melbourne
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