John Richard Gumley v E.F. International S.A

[1989] APO 17

In the Matter of the Patents Act 1952

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In the Matter of Application No. 580698 by JOHN RICHARD GUMLEY

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In the Matter of Objection by the Applicant to an Extension of Time under Regulation 55 to lodge Evidence‑in‑

Support of Opposition by E.F. INTERNATIONAL S.A.

DECISION OF AN ACTING SUPERVISING EXAMINER OF PATENTS:
Background
         Application No. 66551/86 was lodged on 12 December 1986 by John Richard Gumley for a patent for an invention entitled "Improvements in Lightning Conductors".  The application was advertised as accepted on 27 January 1989 and given the Serial No. 580698.  A notice of opposition was lodged on 3 February 1989 by E.F. International S.A., a Swiss company manufacturing apparatus in the field of the invention.  On 2 May 1989 the opponent lodged an application for an extension of time of 3 months to 3 August 1989 to lodge evidence‑in‑support.  The reason for the extension stated on the application is:

"Further time is required to obtain the supporting declarations and arrange execution of same."

In a letter to the Patent Office dated 12 May 1989 the Applicant objected to the extension.  The matter was heard in Canberra on 19

June 1989; Mr Gumley appeared to present his own case and the
opponent was represented by Mr P. Kildea, patent attorney.  At the hearing I allowed both parties 14 days to lodge any documentary evidence relevant to submissions made at the hearing.  The opponent responded by lodging a declaration by its Australian patent attorney explaining the circumstances of the case and the reasons for the extension and the applicant responded by lodging evidence relating to an alleged disturbance in the applicant's marketplace caused by the opposition.  Both parties were subsequently given 10 days to comment on the other's evidence lodged after the hearing.
Evidence and Submissions
         The opponent's declaration, by Hector John Cumming, lodged on 27 June 1989, is summarized or cited as follows:
     1.  The opponent alleges that the applicant's invention is a "slavish copy of Patent No. 564606 in the name of E.F. International S.A."
     2.  A notice under Section 57 was lodged before acceptance on 30 June 1988, drawing attention to Patent No. 564606.
     3.  A watching service operated by Mr Cumming's firm advised sometime after 12 December 1988 that the application had been accepted on 9 November 1988.  This date was given undue emphasis, viz:

"For some reason which is not now apparent, it was assumed that 9 November 1988 was the date that acceptance had been advertised in the Official Journal.  On the basis of that assumption, the deadline for filing Notice of Opposition against 580698 was calculated to be 9 February 1989.  In fact, acceptance was advertised on 27 January 1989 so that the deadline for lodging Notice of Opposition was 27 April 1989.  This error deprived the opponent of approximately 2‑1/2 months which would otherwise have been available to it for preparatory work towards its opposition."

4.  An attempt was made to obtain a copy of the applicant's accepted specification before the 1988 Christmas holidays, but it was not available.  In February, March and April 1989 Mr Cumming was occupied with matters relating to other patent oppositions, a conference and holidays.  His return from holidays was delayed by floods.  Thus a copy of the accepted patent specification was not obtained until 1 May 1989.  A copy was sent to the opponent on 2 May 1989.
     5.  After further correspondence between the opponent and Mr Cumming, on 19 May 1989 the opponent was advised that it would be necessary to obtain expert opinion on whether the applicant made an "obvious adaptation" of the opponent's invention.  Since then a written approach has been made to one expert whose "evidence is still awaited", his delay being "largely due to a recent shift by his company ...".  Another expert was overseas and unavailable until mid‑June 1989.
     6.  Also, Mr Cumming deposes that he has spent a great deal of time on matters related to this case "which are only indirectly related to this opposition" viz:

"The prosecution of this application has been complicated by the vast amount of correspondence which has passed between E.F. International S.A. and my Firm concerning the adverse effects, caused by alleged unfair competition by Mr Gumley, on E.F. International S.A.  Allegations concerning unfair competition have been made in respect of activities in Australia, in Asia and in Europe."

At the hearing Mr Kildea referred to:
     1.  The mistake made by Mr Cumming's firm relating to the date of advertisement of acceptance.
     2.  The holiday period and interruptions to Mr Cumming's work.
     3.  The considerable correspondence between the opponent and its attorneys, he stated:

"Proceedings also have been complicated by a lot of international activity due to the rivalry between Mr Gumley and the opponent."

4.  The need to obtain independent expert evidence relating to matters of novelty and obviousness.
He also submitted that Mr C.G. Invernizzi, manager of E.F. International S.A., is often busy travelling and "at one stage there was an exchange of facsimile messages in Singapore", that the opponent has been diligent because a declaration has been made by Mr Invernizzi, that "where there is a prima facie case of obtaining the rights of the opponent are very important" and that it is "very unreasonable for an objection to be made to an application for the first extension of time" [under Regulation 55].  A copy of Mr Invernizzi's declaration referred to by Mr Kildea has been served on the applicant and at the hearing I was told that it was soon to be lodged as part of the evidence‑in‑support.
         In the letter dated 12 May 1989 from the applicant's attorneys some objections to the extension of time were made, they are summarized or cited as follows:
     1.  The opponent has been aware of the applicant's corresponding European application since 3 February 1988.
     2.  As is evident by the material lodged pursuant to Section 57 on 27 June 1988, the opponent was aware of the present application and "at 2 May 1989 it had had just over 10 months to gather together such evidence as may be required in this opposition."
     3.  On 26 July 1988 the equivalent US patent issued and that "should have convinced the opponent that opposition in Australia was futile."
     4.  The opponent was causing a "disturbance in the market" viz:

"The applicant advises that claims are being made by the opponent in the market place that the applicant's application is invalid and that 'they are taking legal action'.  Such an approach is calculated to destroy the commercial creditability of the applicant and his licencee, and the prolongation of this opposition will assist such destruction."

At the hearing Mr Gumley reiterated the points made in his attorney's letter referred to above.  In particular, he stated:

"The fact that E.F. International is running this opposition to my patent has been broadcast around the whole of my South East Asian markets and is being used in a commercial way to denigrate our product.  It has created an insecurity in the minds of our agents and is creating an instability with them.  I have had back personally from customers in Hong Kong and Malaysia their doubts about using our product because it's under challenge under law, and in one case one of our agents has dropped our product. ... I believe the actions in this case of asking for an extension of time are not necessarily technical or through a lack of time to accumulate the necessary declarations but I believe it has a strong commercial bent."

He also made the following submissions:
1. The opponent must show that "exceptional circumstances" exist to be allowed an extention of time. Re Vangedal‑Nielsen v. Commissioner of Patents and Gelphen Nominees 33 ALR 144.
     2.  The fact that the opponent is an overseas company is not signfiicant since facsimile communications allow contact similar to that obtained from Western Australia for example.
     3.  Mr Invernizzi's travel arrangements are also not significant since he travels no more than Mr Gumley himself.
     4.  "Christmas holidays and mistakes in business" are not acceptable as reasons for allowing an extension of time.
     5.  There are significant differences in principle between his invention and the opponent's invention.
     6.  With regard to obtaining expert evidence he stated:

"At any time in the past [E.F. International] could have gone and got and expert witness in Europe ..."

In reply to Mr Gumley's submissions, Mr Kildea submitted that it was not necessary to prove "exceptional circumstances", that the fact that an opponent is residing overseas has been considered as a relevant factor in previous decisions on extension of time made by the Patent Office, that grant of the US equivalent patent and acceptance in Australia "is not conclusive of the issue" and that knowledge of the art in Australia is important which is why the opinion of Australian experts is being sought by the opponent.
         Near the end of the hearing Mr Gumley made a concession to the opponents : in referring to the abovementioned served copy of Mr Invernizzi's declaration he stated:

"I'd have no objection to it being received by the Patent Office if it's done by the end of next week, but I believe that it's the only extension that should be made."

(At the date of this decision no evidence‑in‑support has yet been lodged at the Patent Office.)
         The evidence lodged by the applicant after the hearing comprises copies of two letters to Mr Gumley's company, one from a business in Indonesia dated 22 June 1988 and the other from a business in Malaysia dated 4 April 1988.  The following extracts from these letters are noteworthy:

"I have been to some of our customers who tell me that you still have a problem against E.F.  The customer is confused because he does not want to purchase a product from a company which may be in trouble in the future."

.....

"I think you should be aware that [Mr Invernizzi] is telling all his agents that he is suing [your company] because you copied his patents.  This will not be good for your product in this country as companies under legal threat are not trusted by clients."

Decision
         In consideration of the matter of extension of time under Regulation 55 I am required to have regard to the respective interests of the applicant, the opponent and the public; the opponent carries the burden of establishing a case to justify the extension, there should be a good reason why the evidence has not been lodged within the time allowed under the Regulations, there should be some indication that a serious opposition is foreshadowed and there should be no unreasonable delays.
         I cannot agree with Mr Gumley's view that the prospective opponent needs to show that there are "exceptional circumstances" which prevented lodging the notice of opposition.  Bowen C.J.'s reference to "exceptional circumstances" in the Vangedal‑Nielsen case is in a different context, i.e. he is saying that sub‑section 59(1) should not be interpreted such that an extension is automatically allowed unless the patent applicant refers to some exceptional circumstances as to why the extension should not be allowed.  This does not mean that the prospective opponent must show exceptional circumstances in order to justify an extension of time; as Bowen S.J. proposes elsewhere in the part of the decision cited above, the prospective opponent does "carry the burden of establishing an appropriate case", but this is not as stringent a requirement as having to prove "exceptional circumstances".
         The evidence before me indicates that a serious opposition is foreshadowed.  Not being deterred by patent grant in the US and Europe or by acceptance in Australia, the opponent seems to be serious in its allegations of the similarity of its own invention and the applicant's invention and of obtaining by the applicant.  Pursuance of independent experts, inter alia, is a good indication of the opponent's determination in this regard.
         On the matter of delay I am not convinced that the opponent's attorneys were particularly diligent in pursuing the opposition at the start of 1989, Mr Cumming's work should have been taken on by someone else when he was on holidays and floodbound.  However, I do accept that the mistake in determining the appropriate date of acceptance did contribute to the opponent ostensibly having less time in which to lodge its evidence‑in‑support.  Patent attorneys have been known to make such simple mistakes.
         The fact that E.F. International S.A. was aware of Mr Gumley's application since February 1988, I do not consider to be significant since at the time the application had not been accepted.  The scope of claims of specifications often changes considerably during the examination stage of a patent application and I think that there is no need for an opponent to have its opposition substantially prepared before the accepted claims are published; this would be an unnecessary drain on an opponent's resources.
         Also, I take into account that this application for extension of time is the first application for such an extension and generally it is very common for such first extensions to be granted.  I conclude therefore that there has been some delay but no unreasonable delay and that the opponent has established an appropriate case to justify allowance of the extension of time.  I accordingly allow the extension of time to 3 August 1989 to lodge evidence‑in‑support.
         However, taking into account the clear evidence that the opposition proceedings are affecting the marketing of Mr Gumley's invention, I also conclude that it is important that there are no further significant delays and that if any further extension is applied for, allowance of any such extension should be based on grounds different than those presented by the opponent in the present circumstances.
         The opponent argued that it should be awarded costs since it was unreasonable for the applicant to object to the first extension of time to lodge evidence‑in‑support; also award of costs would normally follow the decision.  However, in this case I take into account the statement of circumstances on the application for extension, which per se is not sufficient to establish a case to justify allowance of the extension.  The opponent was aware that Mr Gumley was zealously pursuing his application, but details of the circumstances upon which the application for extension was based were not disclosed until the hearing and after the hearing in Mr Cumming's declaration.  Mr Gumley therefore had some justification in his objection based on the application for extension per se.  Thus I conclude that each party should bear its own costs.

(J.I. WELSH)

Patent attorneys for the applicant: Smith Shelston Beadle, Melbourne