J.M. Smucker COMPANY v Raymond Leon Lyons
[1991] APO 63
•19 December 1991
official notice
decision of a delegate of the commissioner of patents
Petty Patent : No. 597225 in the name of THE J.M. SMUCKER COMPANY
Title : FRUIT JUICE PRODUCT
Action: Application for an extension of time by RAYMOND LEON LYONS under s.223 in respect of a notice under s.68B(3) (1952 Act); objection by patentee; hearing
Decision : Issued
Error by attorney established; exercise of discretion considered; extension of time granted.
patents act 1990
decision of a delegate of the commissioner of patents
Re:Petty Patent No. 597225 in the name of THE J.M. SMUCKER COMPANY and an Application for an Extension of Time by RAYMOND LEON LYONS under s.223.
background
Petty Patent application 39125/89 was lodged on 28 July 1989 being a divisional application based on standard patent application 61616/86 (now 594358). Following acceptance, the Commissioner sealed a petty patent (No 597225) on the application on 17 April 1990. A notification of the sealing of the petty patent was published on page 3588 of the Official Journal dated 24 May 1990. An abridgement of the petty patent appeared in the same Journal at page 3762.
Pursuant to the sealing of the petty patent on 17 April 1990, the patentee had until 17 March 1991 in which to make application to extend the term of the petty patent beyond the initial one year period from sealing. This it did on 30 November 1990. Also, by 17 March 1991, any person was entitled to give notice to the Commissioner of "any facts that the person asserts establish, in relation to the petty patent, any of the grounds set out in paragraphs 100(1)(b), (c), (d), (e), (f) and (g)" (per sub-section 68B(3) of the 1952 Act).
On 23 April 1991, Raymond Leon Lyons lodged such a notice. The facts relied upon were stated to be those "set forth in the declarations constituting my evidence-in-support of my opposition to the grant of patent application number 594358 (61616/86)".
As the notice by Lyons was lodged out of time, an extension of time was sought by Lyons from 17 March to 23 April 1991 under s.223 (1990 Act). The patentee, Smucker, objected to the extension of time being granted but indicated that it did not wish to be heard on the matter. At a hearing on 25 October 1991 I heard submissions presented by Mr R.G. Shelston patent attorney of Carter Smith & Beadle on behalf of Lyons.
The application for extension of time
The extension application identifies the circumstances giving rise to the application thus:
"I instructed Messrs Smith Shelston Beadle (now Carter Smith & Beadle) to prepare and submit a notice under Section 68B(3) of the Patents Act 1952 on 19 April 1991, believing at the time, on advice received from that firm, that the last day for submitting that notice was 24 April 1991. That advice was erroneous, as instanced by the declaration herewith."
The declaration referred to in the application was made by Lyons' attorney, Mr Shelston. His declaration includes the following paragraphs:
"2.During the course of prosecuting the opposition to standard patent application number 594358 I was made aware of the fact that the applicant had filed a divisional application for petty patent number 39125/89.
3.I noted in the Official Journal of 24th May 1990 an abridgement notice relating to the petty patent application which included the references:
(a)"Acceptance No. 597225"; and
(b)"Publication Date of Granted Application: 24.05.90".
4.I erroneously interpreted the abridgement notice as a reference to an application rather than a granted patent. I now believed I was lead into that error by the references to acceptance number (not patent number) and granted application (not granted patent). Be that as it may, I formed the erroneous belief that, up to 24th May 1990, the petty patent application was still an application, and had not been sealed prior to that date.
5.On 25th March 1991 I wrote to Raymond Leon Lyons advising him of the existence of the petty patent, and indicating that it was open to him to notify the Commissioner of any matters which, in his view, should cause the Commissioner to decline to extend its term. In view of my erroneous belief, I pointed out to him in that letter that any notification to the Commissioner must be made before 24th April 1991. This error lead directly to his failure to do so by the due date."
Submissions
The attorneys representing Smucker provided brief written reasons objecting to the extension of time. In summary they were:
1.There was no ambiguity regarding the sealing date for petty patent 597225 and no reason to infer that the publication date was the sealing date. The material lodged by Lyons did not establish an error or omission as is required by the Patents Act.
2.There was no evidence to suggest that grounds of "beyond the control of the person concerned" existed.
3.The purported notice did not include correct documentation and thus did not suggest a serious opposition to the extension of term.
Mr Shelston submitted that when he wrote to Lyons about the petty patent by his letter dated 25 March 1991, he held the view, as expressed in the letter, that the initial term expired on 24 May 1991 and that any notice to the Commissioner needed to be lodged by 24 April 1991. Mr Shelston read the relevant paragraphs of this letter to me at the hearing. With regard to paragraphs 3 and 4 of his declaration, Mr Shelston pointed out that the abridgement notice did not indicate a sealing date. At the time he said he held the view that sealing of a petty patent coincided with the abridgement publication. Mr Shelston further submitted that it was the incorrect information in his letter to Lyons which constituted the error which led to the failure to lodge the notice within the prescribed time. He added that while it could be said that he misunderstood the process of issue of petty patents, that misunderstanding was not advanced as the error for the purposes of relief under section 223, but explains why the error in the letter arose.
As to whether Lyons was serious in objecting to the extension of term, Mr Shelston submitted that the material lodged made it quite clear this was indeed the case. He further submitted that were the extension of term of the petty patent decided and granted without the benefit of hearing Lyons, the public interest may not be well served.
Decision
Section 223, like section 160 of the 1952 Act, is a remedial provision. It has wide applicability to actions in respect of applications or patents other than those actions excluded by sub-section (11). I am clearly of the view that section 223 is available to seek an extension of time in the present situation.
The present extension is sought under paragraph (a) of section 223(2) which reads:
(2) Where, because of:
(a)an error or omission by the person concerned or by his or her agent or attorney;
.....
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.
Thus I first need to decide whether, in the circumstances outlined in the extension application, an error led to the notice under section 68B(3) being filed later than the prescribed time.
If I am of the view that such an error is established, I then need to decide whether to exercise my discretion favourably and grant the extension of time.
In my opinion there are two "errors" identified in either the evidence lodged or submissions made in relation to this matter which I need to consider. Firstly, Mr Shelston, having seen the abridgement notice for petty patent 597225, at some unspecified time formed the view that the petty patent had been sealed on 24 May 1990. That view was wrong and in my opinion it follows that Mr Shelston made an error in arriving at that view. I will call this the "first" error. Secondly, in advising Lyons of the petty patent Mr Shelston indicated that the final date by which to lodge a notice was 24 April 1991. This advice about the date was in reality incorrect, although Mr Shelston believed it to be correct at the time. I am of the opinion that this incorrect advice constitutes an error, the "second" error. In the circumstances of this case, it is clear to me that the second error arose as a consequence of the first error.
Mr Shelston submitted that the second error qualified as the error for the purposes of relief under section 223. Whilst the advice in the letter was incorrect, I am not convinced that this second error was an "error" by Lyons' attorney within the terms of section 223(2). What Mr Shelston wrote in the letter was what he intended to write, given his view of the due date at the time, and thus I believe there was no inherent error by Mr Shelston when writing to Lyons.
I turn now to the first error. This particular error, I believe, is highly significant to the present extension application. This error led to Mr Shelston providing advice by letter to Lyons which was in part incorrect. Lyons, acting on the letter, decided that he wanted to give notice to the Commissioner regarding the petty patent and replied to his attorney in good time so that a notice could be filed by what he believed was the relevant date. From his declaration it is not clear precisely when Mr Shelston viewed the abridgement notice or formed his view about the due date for filing a section 68B(3) notice, and in this regard the evidence is deficient. Nevertheless the first error was such that it led to Lyons being given information which meant that he could not consider or file a notice within the prescribed time. This first error is, in my view, an error which satisfies the requirements of section 223(2). In so concluding I have noted the judgement of Jenkinson J in Kimberley-Clark v Commissioner of Patents 13 IPR 569 at p.580, 581.
Having concluded that circumstances exist to enliven the power to grant an extension of time under section 223, I now need to consider whether or not to exercise my discretion in favour of Lyons. If I do not grant the extension of time that does not, in my view, preclude the Commissioner considering any material provided or referred to by Lyons concerning the validity of the petty patent. However it would have the effect of barring Lyons from being heard on the matter since no valid notice by him under section 68B(3) would exist.
Standard patent application 594358 is the parent application from which petty patent 597225 arose. Raymond Leon Lyons is one of two independent opponents to the grant of a patent on 594358 and has filed evidence in that matter. The evidence stages for both oppositions to 594358 have not as yet concluded. In relation to the petty patent and its validity, Lyons relies on the same evidence already filed for his standard patent opposition. That is not an uncommon situation where a petty patent derives as a divisional from a standard patent application which itself is under opposition. The Patent Office practice in these situations has been to simply allow the informant to make a cross-reference to any evidence on a related application involving the same parties without the need to refile the particular evidence or copies thereof.
Given Lyons' opposition to the standard patent application, prima facie he has a serious opposition in train against that application. Furthermore, in view of the relationship between petty patent 597225 and the standard application, similar validity issues are likely to arise for the petty patent. In that event, I have no reason to conclude other than that Lyons is serious in raising possible validity matters to the petty patent.
I note also Mr Shelston's submission regarding the public interest. It seems to me that in deciding the extension of term matter the Commissioner may well benefit from hearing Lyons in relation to his evidence. It would not only allow the Commissioner to fully appreciate the attack against the petty patent from Lyons' perspective but also allow the patentee to answer the arguments advanced. The overall effect of this would be to place the Commissioner in a better informed position which in my view well serves the public interest.
Taking account of the various considerations to which I have referred, I have decided to exercise my discretion in favour of the applicant for the extension of time. Accordingly, I grant the extension of time sought under section 223.
Costs
In the circumstances of the extension of time application, it seems to me that the patentee had some justification in objecting to the grant of the extension. Additionally, submissions by Mr Shelston at the hearing assisted his client's case for the extension. Given these factors, I have decided to make no award of costs in the matter.
(T.R. BRUHN)
Delegate of the Commissioner of Patents
Patent attorneys for the patentee : Collison & Co, Adelaide
Patent attorneys for the informant: Carter Smith & Beadle,
Sydney
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