Industrial Monitoring Systems Pty Ltd v James Hardie Irrigation Pty Limited

[1991] APO 3

PATENTS ACT 1952

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re: Patent Application No. 589669 by INDUSTRIAL MONITORING SYSTEMS PTY LTD, opposition by JAMES HARDIE IRRIGATION PTY LIMITED and objection to extension of time to serve evidence-in-answer.

Background

Application No. 589669 was advertised accepted on 19 October 1989. After one extension of time, the opponent served its evidence-in-support on 9 July 1990, so the period allowed by Reg. 56 for serving evidence-in-answer expired on 9 October 1990. On 12 October 1990 the applicant lodged an application for extension of time under Regulations 56 and 82(b) to serve its evidence-in-answer. The opponent objected to this application, a hearing was set down, but both parties chose to not attend the hearing and to lodge written submissions instead.

Application and submissions

The circumstances as set out in Industrial Monitoring Systems' application for extension are as follows:

"The applicant is currently negotiating with the opponent with a view to reaching a settlement in respect of the opposition and accordingly further time is required to complete such negotiations, and in the event of failing to reach an agreement, attend to serving evidence in answer."

The application was accompanied by a declaration by Stephen George Krouzecky, the applicant's patent attorney. Mr Krouzecky refers to circumstances where he inadvertently made an entry in his work diary of 12 October 1990 as the due date for serving evidence in answer.

The opponent objected firstly that the applicant "has known about the opposition for a long time" and has therefore "had time to prepare evidence", secondly that a statement of proposed amendments to the specification, sent to the opponent, does not "amend the claims so as to avoid the novelty problems as outlined in the evidence-in-support", and thirdly that "some form of settlement was discussed with the applicant by our client several years ago without any agreement being reached and it is difficult to see what settlement may now be available".

The patent applicant submitted that a "clear distinction could be drawn between the applicant's invention and the prior art relied upon by the opponent" and that the applicant "believed that the opponent would be amenable to entering into negotiations to settle the opposition". Consequently, time has been spent on the proposed amendments. The applicant also submitted "that negotiations are clearly proceeding and that the opponent's interests will not be unfairly jeopardised Finally, it submitted that this is the applicant's first application for extension of time to serve evidence, that the opponent was allowed one extension to serve its evidence-in-support and in the interest of natural justice the applicant should also be allowed one extension.

Decision

With regard to Reg. 82(b), I am guided by the decisions in The Dupps Co v Stord Bartz (1990) AIPC 90-657 and Genentech v Wellcome 11 IPR 401, where errors made by patent attorneys in making work diary entries were considered to be special circumstances pursuant to Reg. 82(b). The circumstances in this case are similar, so I hereby allow an extension of time to 12 October 1990 for the applicant to apply for an extension of time under Reg. 56.

With regard to Reg. 56, I will consider the criteria developed from the Federal Court's decision in Vangedal- Nielsen v Commissioner of Patents & Anor. 33 ALR 144. Firstly, it is clear that a serious opposition is in train since the opponent has already served its evidence. Secondly, I think that a three month extension is not an unreasonable delay and I have no evidence before me to indicate that the opponent will be disadvantaged by such a delay. Thirdly, I think that the applicant's consideration of a settlement and proposed amendments, within the time elapsed so far, is a sufficiently good reason to justify an allowance. Prima facie, it seems to be a commendable approach on the applicant's part at this stage in the proceedings to resolve conflict between the two parties. (However, as time goes on, and if it becomes clearly apparent that no settlement is possible, then this may not be a good reason to justify an extension in the future.)

Consequently, I hereby allow the patent applicant an extension of time to 9 January 1991 to serve its evidence-in-support. The parties were contacted by telephone on 8 January 1991 and informed of this decision.

(J.I. WELSH)
Delegate of the Commissioner of Patents

Attorneys for the applicant: Wray & Associates, Perth

Attorneys for the opponent : Collison & Co., Adelaide