Impact Post Anchors v Vincent Charles Carsburg
[1999] APO 15
•24 February 1999
OFFICIAL NOTICE
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : Nos. PP3231 and PP3254 in the name of IMPACT POST ANCHORS PTY LTD
Title: PP3231 Fastening Means
:PP3254 A Post Assembly
Action: Application under Section 36(1) by VINCENT CHARLES CARSBURG for a declaration regarding entitlement to the inventions, request by the Section 36 applicant for permission to file further evidence and a request for the Commissioner to allow inspection of the provisional applications.
Decision: Issued .
Abstract
Substantive Section 36 hearing could not proceed but requests for inspection and further evidence were heard.
Request for inspection was allowed through an independent officer of the Patent Office and also at the substantive hearing on the terms set out in the decision. Brisalebe v Searle 30 IPR 91 followed. In the circumstances the request for further evidence was permitted.
By raising significant and precursory issues shortly before what was set as a substantive hearing the Section 36 requestor has caused considerable inconvenience to the patent applicant and consequently an award of costs was made including the hearing fee and substantiated travel costs.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Provisional applications PP3231 and PP3254 in the name of Impact Post Anchors Pty Ltd, application under Section 36(1) by VINCENT CHARLES CARSBURG for a declaration regarding entitlement to the inventions described, request by the Section 36 applicant for permission to file further evidence and a request by the Section 36 applicant for the Commissioner to allow inspection of the provisional applications.
BACKGROUND
Provisional applications PP3231 and PP3254 were filed by Impact Post Anchors Pty Ltd (Impact) on 27 April and 30 April 1998 respectively. Vincent Charles Carsburg filed a Section 36(1) application on 7 July accompanied by evidence in support. Impact was allowed two months to file evidence in response and filed its declarations in support on 4 September. A hearing notice was issued to the parties on 6 November but by letters dated 6 and 8 January Mr Carsburg through his attorney, Mr Dredge, indicated that further evidence would be submitted (an earlier letter of 12 November apparently having been prepared but not dispatched to the Commissioner). On 18 January reasons were supplied in support of the request for further evidence and a delegate of the Commissioner issued a letter on 20 January proposing a direction to allow further evidence and seeking representations from the patent applicant on the direction as well as foreshadowing a deferment of the hearing. Impact objected to the direction and the possible deferment of the hearing in the strongest of terms. Consequently the delegate directed that the substantive hearing would proceed as set down and that the matter of the further evidence would also be heard at that time.
At 6.35pm on 5 February Mr Dredge faxed a letter to Impact seeking to resolve some "procedural matters", inter alia, application for inspection of the provisional specifications, the location of the hearing, cross-examination of witnesses and deferment of the hearing. On 6 February Mr John Flanagan, a director of Impact, faxed a letter to the Commissioner indicating that he had chosen not to respond to this letter ".. because time and available funds leaves us without choice, as to appear in person at the hearing, departure from Queensland must occur on Sunday, 7 February 1999" and also that it was a last minute attempt to defer the hearing and that Impact was anxious to have the matter expedited. The letter of 5 February was also sent to the Commissioner with a request for "guidance" on the procedural matters including a suggestion that the hearing be deferred. Given that the letter could only be considered on the 8th (the next working day) and Mr Flanagan was apparently already on his way to Canberra, Mr Dredge was informed that the hearing would proceed.
On 8 February Mr Dredge faxed to the Commissioner a statutory declaration largely in support of the request for further evidence but also indicating the view that cross-examination of Impact's declarants was essential to a proper hearing of the matter.
The hearing was held in Canberra on 9 February with Mr Flanagan representing Impact in person and Mr T Dredge of Intellpro, Brisbane, representing Mr Carsburg by telephone.
CONDUCT OF THE HEARING
At the hearing I asked Mr Dredge whether in addition to the further evidence matter he intended to raise the issues of inspection and calling of witnesses as apparent from his letter of 5 February. He indicated that this was so and after much discussion it became clear that he was unwilling and was in no way prepared to address the substantive issues of entitlement as far as could be done so on the material at hand. He further indicated, in effect, that if the consideration of those issues could not be deferred he would withdraw the Section 36 request with the possibility of reintroducing it later. Mr Flanagan for his part submitted that his livelihood depended on the outcome of the matter and that he strongly objected to any deferment or delay in conducting the hearing.
Mr Dredge could not satisfy me as to why such significant and precursory issues as inspection and calling of witnesses had only been foreshadowed, in effect, the day before the substantive hearing and I expressed my concern as to the considerable inconvenience this had imposed on the patent applicant as well as on the Commissioner who has responsibility for the orderly conduct of these proceedings.
Nevertheless it was clear that Mr Carsburg is mounting a serious challenge under Section 36 and I was not inclined to make any direction for the conduct of the hearing that had the effect of a summary dismissal of the request, particularly if the proceedings would simply be re-instigated at a later date. Consequently I restricted the hearing to the matters of further evidence and inspection of the provisional specifications, effectively deferring the substantive hearing to a latter date.
DECISION
Inspection
Requests for the Commissioner to order inspection of documents in relation to Section 56(1)(b) are not common and the Commissioner will only grant such access in exceptional circumstances. Mr Dredge submitted that access was necessary in this case because Section 36 related to the "invention disclosed in a specification" and particularly as the wording of the specifications may be critical to the determination of the matter and hence to the ability of Mr Carsburg to make out his case. For this reason his preference was for direct access to the provisional specifications with undertakings on confidentiality.
Mr Flanagan submitted simply that he did not have any faith in Mr Dredge or Mr Carsburg and that allowing inspection was not in Impact's interests or in the interests of justice.
The present circumstances are similar to those in Brisalebe v Searle 30 IPR 91 and in that light I find the balance is in favour of allowing inspection of the provisional specifications. While under Section 56(1) Impact has a right to non-disclosure of its specifications, Section 36(1) of the Act allows Mr Carsburg to seek a direction in relation to an invention disclosed in a provisional and in apparently pursuing the matter seriously is entitled to such access as would allow him to argue his case. However given the advantage that could accrue to Mr Carsburg by access to information for which he may not be entitled to claim ownership, I am not prepared to allow direct access for Mr Dredge prior to the substantive hearing but will follow generally the approach taken in Brisalebe and also in Magee v Farrell (1985) 7 IPR 288 to allow access through a neutral party.
Hence I allow inspection on the following terms:
Within 14 days from the date of this decision Mr Carsburg will file a concise statement of what his alleged invention is, consistent with the evidence filed by him on 7 July 1998.
Upon receipt of that statement the Commissioner will appoint an independent party from Patent Office examination staff to inspect the provisional specifications, to compare them with Mr Carsburg's statement and report on whether his alleged invention is disclosed in the provisional specifications.
The Commissioner will release a copy of the independent party's report to the patent applicant and to Mr Carsburg only on a written undertaking that their copy of the report shall remain confidential to that party and their legal representatives, shall not be made available to any other person and shall be used only in preparation of their case in this matter.
To prevent unnecessary delay in this matter the time allowed for the filing of written undertakings is within 14 days from the date of this decision.
Furthermore, the provisional specifications may be made available to Mr Carsburg's legal representative at the substantive hearing on a further undertaking of confidentiality and on whatever other conditions are considered reasonable by the delegate presiding.
Item 5 is included in response to Mr Dredge's submissions in relation to the wording of the specifications and is I believe a reasonable compromise given that the specifications are relatively brief and are not technically complex.
Further Evidence
The present proceeding are not governed by Chapter 5 of the Regulations but the considerations that apply to Regulations 5.10(4) and (5) are also relevant here. In this regard I am obliged to follow the now well known principles set out in Ferocem Pty Ltd v Commissioner of Patents (1994) 28 IPR 243 and A Goninan & Co Ltd v Commissioner of Patents 38 IPR 213 concerning the exercise of the Commissioner's discretion.
In the present case the evidence sought to be included has not yet been filed but is said by Mr Dredge to be critical to the success of his client's case and according to him will refute some of Impact’s evidence and establish an earlier date for Mr Carsburg’s invention. In particular evidence from a Mr Hunt is said to confirm Mr Carsburg's account of events over the period in which the disputed invention was made. Hence I accept the evidence may have a significant bearing on the outcome in this matter. In relation to the evidence arising incidentally I also give at least some weight to Mr Dredge's declaration in relation to an attempt to settle and the inherent difficulties in obtaining evidence in these particular circumstances. It should however be made clear that the Commissioner expects all material available to support an application under Section 36 to be filed in the first instance. A tactical withholding of evidence as indicated at paragraph 14 of Mr Dredge's declaration could not justify an opportunity for further evidence and seems to go against the interests of the Section 36 applicant by suggesting a lack of good faith. If it is a measure to overcome "an attempt to contrive a line of independent invention" by the patent applicant it could equally be suspected to allow the Section 36 applicant the same opportunity.
Mr Dredge has indicated that the evidence would be filed within seven days from the date of the hearing and I note that any potential delay associated with the further evidence is now overshadowed somewhat by the deferment required to allow inspection.
I find in the present circumstances the balance is marginally in favour of permitting the further evidence referred to in Mr Dredge’s declaration on the basis that it will most likely allow a more correct determination of the matter. Excluding any evidence that may be "tactically withheld" is not necessary at this point as it will in any event be open to challenge by Impact and can be given appropriate weight by the delegate in the substantive determination as well as being a factor reflected in the award of costs. If he has not already done so Mr Carsburg has seven days from the date of this decision to file his further evidence and serve it on Impact. Impact will then have 1 month from receipt of the evidence to file evidence in response.
CONCLUSION
I have found that inspection of the provisional specifications should be allowed through an independent party at the Patent Office and by Mr Carsburg's legal representative at the substantive hearing on the conditions specified above. I have also permitted Mr Carsburg the opportunity to file further evidence.
The Commissioner in the public interest is charged with the efficient and orderly administration of the Patent Office and proceedings that are brought before it. The parties therefore are required to adhere to the timetable set by the Commissioner and I have made it clear to Mr Dredge that further delays in this matter will not be looked on sympathetically, particularly if reasonable grounds are not presented at the earliest opportunity. In this regard if Mr Carsburg intends to request the Commissioner to summons witnesses I would expect such a request to be filed within 14 days of the filing of Impact’s evidence in response.
COSTS
Regulation 22.8 states as follows:
“(1) The Commissioner must not award costs in proceedings to which this Division applies, other than costs specified in Schedule 8 unless each party to the proceedings has had the reasonable opportunity to make a submission on the matter of the award of those costs.
(2) The Commissioner may award an amount:
(a) for costs in respect of a matter specified in column 2 of an item of Part 1 in Schedule 8; or
(b) in respect of the expenses or allowances of a person in relation to proceedings to which this Division applies.”
The Commissioner's discretion in this regard has been discussed in a number of Office decisions including for example Sterling Drug Inc v Boots Company PLC, 35 IPR 630 and Viskase v W.R. Grace (1998) PTO 47 (26 August 1998). It is clear from these and the principles stated by Sheppard, J in Colgate-Palmolive Co and another v Cussons Pty Ltd, 28 IPR 561, that the Commissioner should not normally depart from an award of costs on a party and party basis unless the circumstances clearly warrant doing so. According to Cooper and Merkel JJ in Re Wilcox; Ex parte Venture Industries Pty Ltd and Others, 141 ALR 727, such circumstances arise "when the justice of the case so requires or where there may be some special or unusual feature in the case"
Here it can be said that the Section 36 requestor has unreasonably allowed the patent applicant to incur the cost of attending the hearing under the expectation that the substantive issues would be addressed. In the circumstances I believe an award above the schedule is justified and I award costs in favour of Impact to include the hearing fee plus Mr Flanagan’s substantiated travel costs.
Such an award was foreshadowed at the hearing and while it is a matter solely between the parties I note that an amount for costs appears to have been negotiated. If that is not the case Impact may seek taxation under Regulation 22.8(3).
Philip Spann
Delegate of the Commissioner of Patents
Patent attorneys for the Section 36 applicant: Intellpro, Brisbane
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