James Howden Australia Pty Ltd v D. Richardson & Sons Ltd, and Flakt A.B

[1986] APO 4

In the Matter of the Patents Act 1952

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In the Matter of Patent Application No. 540554 by JAMES HOWDEN AUSTRALIA PTY. LTD.

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In the Matter of Oppositions thereto by:

1.D. RICHARDSON & SONS LTD., and

2.FLAKT A.B.

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In the Matter of an Objection to Extensions of Time to Serve Evidence‑in‑Answer.

DECISION OF A SUPERVISING EXAMINER OF PATENTS:
         Patent Application No. 540554 in the name of JAMES HOWDEN AUSTRALIA PTY. LTD. (hereinafter called HOWDEN) was advertised accepted on 22 November, 1984.  Notices of opposition to this application were lodged on 21 February, 1985 by D. RICHARDSON & SONS LTD. (hereinafter called RICHARDSON) and on 22 February, 1985 by FLAKT A.B.
         The service of joint Evidence‑in‑Support was completed on 25 September, 1985 after the grant of several extensions of time.  One of these was objected to, resulting in a hearing on 17 July, 1985.
         The period for serving Evidence‑in‑Answer expired on 26 December, 1985.  On 24 December, 1985 HOWDEN lodged Part Evidence‑in‑Answer and also applied for extensions of time of three months (to 26 March, 1986) within which to serve Evidence‑in‑Answer to the Oppositions.  However on 5 February, 1986, the opponents notified their objections to the granting of these extensions and accordingly a hearing was set down to enable the parties to be heard on the matter.

The circumstances and grounds for seeking extensions of time as stated by HOWDEN in its applications for extension of time are as follows:"This application was advertised as accepted on the 22 November 1984 and 10 months later on the 25 September 1985, the lodgement of Evidence‑in‑Support of the Opposition was completed.

Since the receipt of the Evidence‑in‑Support the applicants and their Patent Attorneys have been working assiduously in the preparation of the Evidence‑in‑Answer, however, the collection of this evidence has not yet been completed.

Considerable time has been taken up checking the veracity of the Declarations filed as part of the Evidence‑in‑Support.  As one of the declarants is resident in West Germany this has delayed matters.  Further time has been spent in discussions with the State Electricity Commission of Victoria and with the International Combustion Australia Limited to obtain Declarations attesting to the confidential nature of certain disclosures made by or to them.

The foremost Australian academic expert in the field of fan designs is Dr. J.P. Gostelow of the School of Mechanical Engineering, The New South Wales Institute of Technology.  It is intended to obtain a Declaration from Dr. Gastelow in this matter, however, he is overseas on study leave until the beginning of the 1986 Academic year in February 1985 (sic)..  It has therefore not been possible to contact Dr. Gostelow during his absence overseas and therefore further time is required to secure declaratory evidence as to the state of the art in Australia at the time the present invention was made.

A further Declaration is being obtained from Mr. B.A. Russell, one of the inventors of the present invention.  This Declaration requires the detailed consideration of the voluminous test results from the extensive and costly research project that lead to the development of the present invention.  This Declaration is nearing completion but has been delayed by the distractions commonly encountered as one approaches the festive season."

The provisions of the industrial property legislation material to extensions of time in opposition proceedings have been considered by the Federal Court in Vangedal‑Nielsen v. Smith (1980) 33 ALR 144 and in Lyons v. Registrar of Trade Marks (1983) 50 ALR 496, 1 IPR 416. These decisions show that:

.The applicant seeking the allowance of an extension of time carries the burden of establishing an appropriate case to justify that allowance.  That is, the applicant for extension of time carries the onus of proof; an extension cannot be granted merely because the other party has been unable to show that an extension should not be granted.

.The applicant for extension of time must make out a "proper case justifying extension".

.In deciding whether the applicant for extension has made out a proper case justifying extension, the Commissioner must take all relevant considerations (and no others) into account.

Additionally, factors to be considered in deciding whether an extension of time should be granted in opposition proceedings include:

.the public interest in ensuring that worthless patents are not granted because sufficient time has not been allowed to raise an objection or to prepare and serve evidence in support of an objection,

.the applicant's interest in having sufficient time to prepare an adequate defence of its application, and

.the opponent's interest in expeditiously preventing the grant of a patent which will curtail its activities.

Turning now to the situation before me, a hearing was set down for 19 February, 1986.  However, the applicant and opponents both chose not to appear but instead have relied on written submissions lodged on their behalf by their respective Patent Attorneys.  Accordingly, based on these submissions I have to consider whether the applicant's circumstances and grounds amount to a proper case justifying an extension of time.
         The opponents in their written submission have stated that even though the Evidence‑in‑Support was completed on 25 September, 1985, the period taken by the opponents to prepare Evidence‑in‑Support is irrelevant to the question of the time necessary to prepare Evidence‑in‑Answer; with this I agree.  Also, it is stated that a primary declaration by Haertsch was served on the applicant on 7 June, 1985. Therefore, it is concluded that from that time the applicant should have started to research, collate and present its evidence.  I cannot agree with this conclusion since I consider that it would be unreasonable to expect the applicant to devote perhaps considerable resources to obtaining its answering evidence at a stage when it is uncertain what further evidence will be produced by the opponents and hence before the overall case against the accepted application is known.
         I have no reason to doubt that the applicant and its Patent Attorneys have been "working assiduously" towards its preparation of Evidence‑in‑Answer as stated in its request.  Checking the veracity of the Declarations filed as part of the Evidence‑in‑Support and discussions with two organisations are given by the applicant in its request as matters attended to and which have been time consuming in the time period so far available for lodgement of its evidence.  While it is not stated explicitly by the applicant, I believe it fair to infer from the above that the time consuming nature of these discussions and the preparation of two declarations from officers of the two organisations in question (filed as part of Evidence‑in‑Answer), necessarily reduced the time available to be spent on other considerations concerning its answering evidence.
         The applicant has also stated that it is having difficulty in obtaining a Declaration from Dr. J.P. Gostelow, who is described as being the "foremost Australian academic expert in the field of fan designs", as he is overseas on study leave until the beginning of the 1986 Academic year in February 1986.  However, in the opponents' submission it is stated that, according to their information, Dr. Gostelow did not leave Australia until December 1985.  Therefore the opponents submit that the applicant had six months (taken from the time of service of the Haertsch declaration) in which to approach Dr. Gostelow for his opinion but appear to have done nothing in this respect.  I do not entirely agree with the opponents since I consider that it would be unreasonable to expect an expert witness to form a concluded view on part evidence lodged without knowing what further evidence may be produced at a latter date and hence without knowing what other issues may be relevant to the opponents' case and which may require answering.  On the other hand there is no evidence before me to indicate when the applicant made contact with Dr. Gostelow, if at all, prior to 26 December, 1985.  While an extension of time may perhaps be appropriate given Dr. Gostelow's absence if discussions had begun with him prior to departure overseas, I do not consider the applicant should be granted more time merely to initiate for the first time consultation with Dr. Gostelow on his return from overseas.
         Finally, the last ground given by the applicant is that a Declaration by one of the inventors, Mr. B.A. Russell, which has almost been completed, was delayed by the consideration of voluminous test results and by "the distract‑
ions commonly encountered as one approaches the festive season".  The opponents have contended that as Mr. Russell is one of the inventors, he should be fully armed with the relevant details of the invention.  I would tend to agree with this and in any event it is not clear from the submissions on file why there was a need to spend months considering these test results.  I can only speculate as to the reasons for this.
         It is well known that there are a number of "distractions" around the festive season in Australia and as a consequence delays can be encountered and are usually anticipated.  It is considered that this ground is not really applicable because the period allowed for service of evidence, extended to 26 December, 1985.  Consequently the relevant issue relates to why the Declaration by Mr. Russell was unable to be completed before the onset of the festive season.  On this issue the only explanation by the applicant is that associated with the need for a "detailed consideration of the test results".  I note however the statement by the applicant that this declaration by Mr. Russell "is nearing completion".
         Accordingly, having considered the stated circumstances and grounds for the extension of time as well as the applicant's submissions, I have reservations concerning whether the applicant has clearly established an appropriate case for the granting of an extension of time.
         However, there are other aspects that I have to consider, the public interest and the interests of the applicant.  While it is true to say that it is in the public interest to have opposition proceedings resolved as quickly as practicable, this consideration, generally, speaking, is subordinate to ensuring, so far as possible, the validity of any grant of Letters Patent.  This in turn requires that the Hearing Officer have before him as much of the evidence bearing upon the matter as can reasonably be made available.
         In considering the applicant's interest, I have to consider whether the applicant has been allowed to prepare an adequate defence of its application given the time available so far.  Firstly, the applicant has filed part Evidence‑in‑Answer and I take this as an indication that the applicant has been properly devoting its attention to providing answering evidence in this matter.  Secondly, the opponents' Evidence‑in‑Support, while not voluminous, appears to be material to the opposition grounds of prior publication, lack of novelty and obviousness.  It is not unreasonable, given evidence relevant to those grounds of opposition, that the applicant would want to obtain answering evidence from an expert in the field, or from the inventors.  In fact I note that the applicant in its grounds for an extension of time states that it requires further time "to secure declaratory evidence as to the state of the art in Australia at the time the present invention was made".  I also note that a declaration by one of the inventors, Mr. Russell, is "nearing completion". Hence, while I have expressed reservations earlier as to the case made out for an extension of time by the applicant, I am reluctant at this stage to deprive it of an adequate opportunity to complete and lodge its answering evidence given the above observations.
         Having due regard to all the matters discussed, I have decided to grant the extension of time sought and accordingly I extend the period of time for serving Evidence‑in‑Answer, to 26 March, 1986.
         As the Scale of Costs in Opposition Proceedings makes no provision for costs in matters of this nature where parties do not attend a hearing, I therefore make no award of costs in this matter.

(T.R. BRUHN)

Patent Attorneys for the Applicant : F.B. Rice & Co.
Patent Attorneys for Opponent 1    : Edwd. Waters & Sons