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…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

AGLC: James Howden Australia Pty Ltd v D. Richardson & Sons Ltd, and Flakt A.B [1986] APO 4
Case: [1986] APO 4
Decision Date: 6 March 1986

CaseChat Overview and Summary

In the case of James Howden Australia Pty Ltd v D. Richardson & Sons Ltd, and Flakt A.B, the Supervising Examiner of Patents was required to determine whether an extension of time should be granted to James Howden Australia Pty Ltd to serve its Evidence-in-Answer in opposition proceedings against patent application no. 540554. The application had been advertised as accepted on 22 November 1984, and oppositions were lodged by D. Richardson & Sons Ltd. and Flakt A.B on 21 and 22 February 1985 respectively. The period for serving Evidence-in-Answer expired on 26 December 1985, but Howden applied for an extension of time until 26 March 1986, which was objected to by the opponents.

The legal issues before the court were whether Howden had established a proper case justifying an extension of time and, if so, whether the extension should be granted in the interests of justice, considering the public interest, the applicant's interest, and the opponent's interest. The Supervising Examiner found that while Howden had not clearly established an appropriate case for the extension, there were aspects to be considered, such as the public interest in having opposition proceedings resolved as quickly as practicable, and the applicant's interest in having sufficient time to prepare an adequate defence of its application. The court also considered that it was not unreasonable for Howden to want to obtain answering evidence from an expert in the field or from the inventors.

The Supervising Examiner concluded that despite having reservations concerning whether Howden had clearly established an appropriate case for the granting of an extension of time, it was reluctant at that stage to deprive Howden of an adequate opportunity to complete and lodge its answering evidence. Therefore, the court decided to grant the extension of time sought, extending the period of time for serving Evidence-in-Answer to 26 March 1986. As the Scale of Costs in Opposition Proceedings did not make provision for costs in matters of this nature where parties did not attend a hearing, no award of costs was made in this matter.

This decision highlights the importance of considering all relevant factors when determining whether to grant an extension of time in opposition proceedings, including the public interest, the applicant's interest, and the opponent's interest. It also demonstrates that while the applicant bears the burden of establishing an appropriate case to justify an extension of time, the court may still grant an extension in the interests of justice if it is satisfied that the applicant has been allowed to prepare an adequate defence of its application.

Orders