IGC(Australia) Pty Ltd v Britax Child-Care Products Pty Ltd
[1999] APO 40
•9 July 1999
OFFICIAL NOTICE
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No. 685026 in the name of IGC (Australia) Pty Ltd
Title: Safety Seat
Action: Opposition by Britax Child-Care Products Pty Ltd and an objection to an application for an extension of time to serve evidence in support
Decision: Issued .
Abstract
While an adequate reason was not provided for the delay in serving evidence in support at the time of the application for extension of time, a subsequent letter from the opponent to the patent applicant provided further and sufficient explanation for the delay.
As the main ground of opposition was in relation to obtaining, the interests of the opponent and the public would be best served by granting the extension of time to serve evidence to support this ground. The applicant's interests would not be greatly disadvantaged if the extension of time was granted.
Extension of time granted.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No. 685026 by IGC (Australia) Pty Ltd, Opposition thereto by Britax Child-Care Products Pty Ltd and an objection to an application for an extension of time to serve evidence in support
BACKGROUND
Patent application 685026 in the name of IGC (Australia) Pty Ltd (hereinafter IGC) was advertised accepted on 8 January 1998. On 6 April 1998, Britax Child-Care Products Pty Ltd (hereinafter Britax) filed a notice of opposition. Britax served its statement of grounds and particulars on 6 July 1998. On 29 September 1998, 4 December 1998 and 5 March 1999, Britax applied for and was granted extensions of time to serve evidence in support, the latest extension of time taking the time for completing service of evidence in support up to 6 May 1999. On each occasion, there was no objection from IGC.
On 5 May 1999, Britax applied for a further extension of time to serve its evidence in support from 6 May 1999 to 6 July 1999. IGC objected to the granting of this further extension of time.
On 1 June 1999 and 10 June 1999, declarations were served on IGC as part of the evidence in support.
The matter was heard in Canberra on 23 June 1999. IGC was represented by Mr Keith Callinan, patent attorney of Freehills Patent Attorneys of Melbourne. Britax was represented by Mr Craig Vinall, patent attorney of Madderns of Adelaide. Both parties appeared via telephone.
APPLICATION FOR EXTENSION OF TIME
The application for extension of time requests an extension of two months from 6 May 1999 to 6 July 1999 within which to serve evidence in support.
The reasons provided in the application for extension of time are:
"Further time is required to finalise declarations by Mike Lumley and Alan Reynolds. As a result of review of these declarations it was necessary to obtain declarations from Brian Gasket in relation to company structures and Alex Robson to corroborate certain photographs taken by him.
The declarations by Lumley and Reynolds were reviewed by counsel on 29th April 1999. Changes have been made and will be forwarded to the declarants for their review and signature. Alan Reynolds will again depart Australia on overseas business on 7th May 1999 and will return on 1st June 1999. His declaration will be signed shortly thereafter. The remaining declarations should be completed and signed shortly."
SUBMISSIONS
Both parties provided oral submissions at the hearing. Mr Callinan also provided me with written submissions before the hearing. Attached to these submissions was a copy of a letter sent by Mr Vinall to Mr Callinan on 25 May 1999 providing expanded reasons for Britax's need for an extension of time to serve evidence in support.
DECISION
The law on extensions of time is set out in Regulation 5.10.
The time for serving evidence in support of an opposition is three months from the date of serving the statement of grounds and particulars under regulation 5.8. This time may be extended under regulation 5.10:
(2) The Commissioner may:
(a) on the application of a party in the approved form; and
(b) on such reasonable terms (if any) as the Commissioner specifies;
extend the time within which the party may take a step prescribed in this chapter, not being a step that is taken under regulation 5.3 or paragraph 5.4(1)(a).
Regulation 5.10(5) provides:
(5) The Commissioner must not ... grant an application under subregulation (2) ... unless the Commissioner:
...
(c) ...(i) gives the parties a reasonable opportunity to make representations concerning the application...; and
(ii) is reasonably satisfied that ... an extension of time or the serving of further evidence is appropriate in all the circumstances.
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. It is clear from these decisions that regulation 5.10 confers a broad discretion, which cannot be reduced to an imperative compliance with particular requirements. This would not concur with the relevant regulation. On the contrary it is necessary to give proper, genuine and realistic consideration to all relevant aspects of the case. Relevant aspects include:
(a)The provision of an explanation or justification for the delay in completing the evidence in support
The reasons why the evidence was not served in time are a relevant consideration, but a satisfactory explanation is not a mandatory requirement.
(b) The public interest
The public interest in determining a serious opposition on its merits is a relevant consideration. There is also the efficient and orderly administration of matters before the Patent Office to consider.
(c) The interests of the parties involved in the opposition
Disadvantages to either the applicant or opponent are relevant considerations.
If I am to be reasonably satisfied that an extension of time is appropriate in all the circumstances, then I must take into account all matters relating to the above aspects when deciding the issue.
The main ground of opposition in the present case is that of obtaining. A ground of lack of novelty was included subsequently via amendment in the statement of grounds and particulars together with a particular referring to a patent document.
The explanation or justification for the delay in serving evidence in support
Mr Callinan concentrated mainly on the inadequacy of the reasons provided for the need for an extension of time. He indicated that IGC's main reason for objecting to the allowance of the extension of time was because of the inconsistency of the reasons given by Britax in its various applications for extensions of time. He argued that Britax had not provided a full and frank disclosure in relation to the need for the extra time. Mr Callinan also submitted that the opponent had only provided very scant reasons at the time of the application for extension of time. It was unfair that more extensive reasons were not provided at that time because it meant that IGC had little to go on in relation to whether or not to object to the allowance of the extension. IGC was therefore put under pressure to object, pay a hearing fee and prepare submissions before any attempt was made by the party requesting the extension to provide a more detailed explanation. The party requesting an extension of time should be required to provide adequate reasons at the time of applying and not just after the other party objected to the granting of the extension.
It seems to me that, on considering the reasons provided with the latest extension of time, one could argue that the facts are sufficiently clear as to why an extension is needed. However, while the present application should be considered mainly in relation to the reasons given for that application, even Mr Vinall conceded that the reasons provided in earlier applications should be taken into account even if only to a small degree. Previous reasons have included the fact that declarations have been completed but await final review while declarants have either being on leave or overseas. When considering the present reasons in the background light of the previous reasons provided for earlier extensions of time, I have some sympathy for Mr Callinan's position in relation to lack of explanation of the reasons in the application for extension of time. I note that one of the reasons seem to be repeating in slightly different guise the same reasons provided in the earlier applications for extension of time viz. the declarations are almost ready but just need reviewing and signing; one of the declarants is out of the country and will review and sign his declaration on his return from overseas. Given the repetition of similar reasons, I think that IGC is quite entitled to have concerns about the speed with which evidence is being gathered.
However, the present application does provide further reasons for the need for more time. Britax contends that declarations from two other declarants are required on the advice of counsel.
One of these further declarations will be from the person who took some photographs which have been introduced into evidence. Mr Callinan argued that this declaration should have been produced much earlier because Britax or its representatives should have been aware that any photographs in evidence should be verified as to when and where they were taken. Mr Vinall argued that there was some verification of the photographs in another declaration but that counsel had indicated the need for the photographer to provide evidence.
Both parties debated the degree of difficulty involved in gathering evidence for the ground of obtaining. Mr Vinall argued that the degree of proof required for obtaining was higher than for other grounds of opposition and Mr Callinan submitted that the evidence should already be in the hands of Britax as they were the ones alleging that obtaining had occurred.
Mr Callinan also contested the reason that a declarant was overseas as being sufficient justification for the Commissioner to exercise a discretion to extend the time to serve evidence in support. He argued that modern technology allows parties to adequately communicate with each other while one party is overseas. The use of facsimile machines, for example, according to Mr Callinan, was a well-known business practice and could have speeded up the process of finalising declarations. Mr Vinall argued that declarations needed to be signed. In any case, Mr Vinall submitted, not all businesses carried on business the way Mr Callinan suggested.
In considering whether or not Britax has provided an adequate explanation for the delay in serving evidence in support, I note that Mr Vinall sent a letter to Mr Callinan elaborating on the reasons for the delay. Mr Callinan has kindly attached this letter to the written submissions he has provided me. This letter does provide further information about why more time is needed. For example, Mr Vinall indicates that he was not made aware of the overseas departures of some of the declarants in sufficient time to finalise declarations before they left. The letter also provides to IGC an indication of when certain declarations will be served. As it turns out, the relevant declarations have been served around about when this letter indicated they would be.
I think that, on balance, the explanation provided in the letter in conjunction with the reasons provided with the application for extension of time together with the fact that part of the evidence in support has now been served are sufficient reasons for me to say that an adequate explanation for the delay in serving the evidence has been provided.
In relation to a declarant being overseas, Mr Callinan referred to a couple of office decisions which I do not believe necessarily assist in the present matter. The decisions referred to were issued before the Ferocem decision and appear to take the line that a full and frank disclosure of all the facts concerning the reason for the delay must be provided before the Commissioner can exercise a discretion to allow the extension of time. The Ferocem decision clearly indicated that such a requirement, while being a factor which needs to be considered, is not mandatory.
Further to this, Mr Callinan argued that the line of decisions on extensions of time all indicated that a full and frank disclosure was needed of why evidence had not been served in time before the Commissioner should exercise the discretion to allow an extension of time. In the present case, Mr Callinan submitted, the opponent had not provided such a full and frank disclosure.
I disagree with Mr Callinan that the series of office and court decisions all suggest that a full and frank disclosure of all the facts relating to the reason for the delay in serving evidence is required before the Commissioner can exercise a discretion to allow an extension of time. It is quite clear in the Ferocem decision (supra), that this is an incorrect approach in determining whether or not a discretionary power should be exercised such as is contained in regulation 5.10. Certainly a full and frank disclosure of the reasons or justification for the delay in serving the evidence is a consideration to be taken into account. However, it is only one of a number of factors which are relevant to the exercising of the Commissioner's broad discretion. I have already indicated other factors which need to be taken into account.
As it turns out, I believe that, on balance, Britax has provided an adequate reason for its delay in serving evidence in support.
The respective interests of relevant parties
Mr Vinall took me through the relevant interests of all parties involved in the present opposition in relation to any exercise of the Commissioner's discretion to allow the extension of time. Mr Callinan indicated that it was appropriate in relation to the various competing interests to have all relevant evidence available, at least in relation to the relevant prior art, when the substantive opposition is decided. I think it is fair to say that the applicant did not seriously challenge that it would be in the best interests of determining the opposition on its merits if the evidence which at least has been already served in the period between 6 May 1999 and the present hearing is included in the opposition. I have perused the evidence already provided by Britax and I am of the opinion that it is, on the face of it, important to the opponent's case in relation to the ground of obtaining.
I think, on balance, the public interest in having the opposition decided on its merits and the interest of Britax would be best served by allowing the extension of time to complete service of the evidence in support. I think also that the public interest in having an efficient and orderly administration of the Patent Office would not be affected because there would be no further delay in the present proceedings if I should grant the extension of time. IGC did not contest that it would be greatly disadvantaged if the evidence in support was completed. I do not think that IGC will be disadvantaged if I grant the extension of time because it would not face any further delays in the resolution of the opposition. Indeed, Mr Callinan suggested that the approach taken by Burchett J in the Ferocem decision (supra) in allowing a short extension of time to allow the opponent a chance to serve any evidence readily at hand was probably appropriate in the present case.
I have found that Britax has provided an adequate reason for the delay in serving evidence in support and that the respective interests of Britax and the public would best be served by granting the extension of time. I have found that IGC would not be greatly disadvantaged if the extension of time was granted.
CONCLUSION
I grant an extension of time to serve evidence in support from 6 May 1999 to 6 July 1999.
Mr Vinall indicated that the evidence in support would be completed within this time.
COSTS
Mr Callinan strongly argued that the reasons provided in the application for extension of time were insufficient. I have indicated that I found them to be misleading when read in conjunction with the earlier reasons provided for previous extensions of time. I found that the further explanation provided in Mr Vinall's letter of 25 May 1999 together with the fact that part of the evidence in support was served on 1 June 1999 and 10 June 1999 contributed to my decision that an adequate explanation had been provided.
Therefore, I award costs, including the hearing fee, up to and including 10 June 1999 against Britax.
It seems to me that IGC was in a position, after 10 June 1999, to reassess its objection to the granting of the extension of time. As it has proceeded with the hearing and Britax has been successful in having the application for extension of time granted, I award costs against IGC from 11 June 1999 up to and including the hearing (but not the hearing fee).
R Hallett
Delegate of the Commissioner of Patents
Patent attorneys for the applicant : Freehills Patent Attorneys, Melbourne
Patent attorneys for the opponent : Madderns, Adelaide
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