John William Ryan v Lindsay John Gessner and Noel Stanley Gessner

[1984] APO 17

In the Matter of the Patents Act 1952

‑ and ‑

In the Matter of Application No. 528335 by JOHN WILLIAM RYAN

‑ and ‑

In the Matter of Opposition thereto by LINDSAY JOHN GESSNER and NOEL STANLEY GESSNER

‑ and ‑

In the Matter of an Application for Extension of Time within which to Serve Evidence‑in‑

Support.

DECISION OF A SUPERVISING EXAMINER OF PATENTS:
        Application No. 528335, relating to a plough shank, was lodged on 7 August, 1978 by John William Ryan (the applicant) and became open to public inspection on 14 February, 1980.  Acceptance of the application was advertised on 28 April, 1983.
        On 18 July, 1983 a request in the name of Gessner Bros. was lodged, seeking an extension of time to 28 October, 1983 in which to lodge Notice of Opposition.  No objection was raised by the applicant, and the extension was granted.  A Notice of Opposition was subsequently lodged on 18 October, 1983 in the names of Lindsay John Gessner and Noel Stanley Gessner "trading as Gessner Bros.".  The term "opponents" used hereinafter refers to "Lindsay John Gessner and Noel Stanley Gessner trading as Gessner Bros.".
        On 18 January, 1984 the opponents applied for an extension of time to 18 April, 1984 in which to serve evidence‑in‑support.  The applicant objected

to the granting of this extension and the matter was set down for hearing and heard by me.  I subsequently granted an extension of time to 18 April, 1984.
        On 17 April, 1984 the opponents applied for a further 3 months extension to 18 July, 1984.  The patent applicant did not object to this application and the extension was granted.  On 17 July, 1984 the opponents applied for a further 3 months extension and this time the applicant objected. The matter was set down for hearing, however both parties sought to rely on written submissions.  This decision is based on those submissions.
        The applicant, Mr. Ryan, lodged a statutory declaration setting out his objections to the present application for extension of time.  In this declaration Mr. Ryan sets out the history of the present opposition.  He states, inter alia, that on 26 April, 1984 he received a letter from the opponents' attorney advising him that the opponents were requesting a further extension to 18 July, 1984.  Exhibited to his declaration is a copy of a letter addressed to the opponents' patent attorney in which Mr. Ryan consents to that application, but also pointing out that  any further applications for extension of time for serving evidence would most likely be objected to.  The declaration continues:

"In their request of 27 April 1984, for an extension of time to 18 July, it was stated that evidence from John Shearer Limited was being gathered.  In their current request of 17 July 1983, requesting an extention to 18 October 1984, again it is stated that evidence from John Shearer Limited was being gathered; I believes the opponents request for an extension of time to 18 October 1984 should not be granted for the following reasons:

a.Since my Patent Application was advised as accepted on 28 April 1983 a period of sixteen months has passed with the opponents only providing three declarations

b.Since the last of the declarations was served a period of six months has passed

c.The grounds for the last two requests for extensions are identical, with the grounds of the request of the April 1984 being not supported by any results

d.On numerous occasions I have warned the Attorneys acting for the opponents that their requests for extensions would be objected to since we required the Deed Letters Patent as soon as possible as infringement is occurring."

The opponents on the other hand rely on submissions made on their behalf by their patent attorney, Mr. Eichberger of G.R. Cullen & Company, in a letter dated 21 August, 1984.  That part of the submission relevant to the present application for extension reads as follows:

"The extension request objected to states that the circum‑

stances in which and the grounds upon which the application for more time is made are:

"The time so far allowed to serve the Evidence in Support has proved insufficient.  Three declarations have already been served and these declarations form part of the Evidence in Support.  Further evidence from John Shearer Limited is still being sought and the gathering of material from them is being actively pursued.  The additional time is required to gather further material and to prepare, settle, execute and serve the remainder of the evidence."

The opponents' attorneys first contacted Mr. Thomas, Research and Development Manager of John Shearer Limited by telephone on 24 January, 1984 and during this discussion his assistance was solicited and patent application 528335 was discussed.  Mr. Thomas agreed to assist in the opposition.  Prior to this telephone contact assistance was asked for by letter of 4 January, 1984.  The opponents' attorneys telephoned Mr. Thomas on 2 February, 1984 only to be advised by his secretary that he was interstate and was expected to return 6 February, 1984 and that he had collected the material relevant to the proposed application and would shortly send that material to the opponents' attorneys.  Further reminder letters were sent to Mr. Thomas on 24 February, 1984, 19 April, 1984 and 20 June, 1984.  The opponents' attorneys telephoned Mr. Thomas on 7 August, 1984 and were advised that the requested material would be sent in about two days.  From discussions with Mr. Thomas it was apparent that he had information to offer which was particularly cogent to the validity of the opposed application and it was for this reason his assistance was actively pursued.  By letter of 7 August, 1984 Mr. Thomas' comments were received.  The opponents' attorneys telephoned Mr. Thomas on 10 August, 1984 and were advised that he would be absent from his office in Adelaide for about four weeks but that he would be available to execute the statutory declaration in Bundaberg, Queensland during the last week in August.  Attached is an unsigned copy of the declaration produced for signature by Mr. Thomas.  The opponents' attorneys would expect to be able to serve this declaration early in September and the evidence in support of the opposition would then be complete.  Thus, the "fishing expedition" referred to in submissions made on behalf of the applicant in the previous submissions has not eventuated and will not occur.

For the requested extension to be granted it must be shown that the opponents' opposition is a serious one and that due diligence is being exercised in pursuing the opposition.  The Hearing Officer previously concluded that the evidence lodged at that time established that the opposition was a serious one and that an inspection of that evidence showed that it was not irrelevant to the validity of the opposed application.  As mentioned above the completion of the evidence has been actively pursued and the fact that, in the absence of unforeseen circumstances the evidence will be completed and served in September, 1984, supports this contention.  We submit that the public interest should prevail in that potentially invalid patents should not be granted.  The evidence lodged to date and the Thomas declaration which will shortly be served are central to the validity of the opposed application.

The reason for requesting the extension which has been objected to by the applicant is consistent with these submissions and the facts of the case.  These factors should enable costs to be awarded in favour of the opponents."

Having considered the submissions made on behalf of the opponents and by the applicant I am satisfied that the opponents have been reasonably diligent in their collection of evidence thus far.  I take note of the opponents' indication that the evidence‑in‑support will be completed on service on the applicant of the Thomas statutory declaration and that this service is expected to occur early in September 1984.  Taking into consideration all the circumstances of this case (reg. 83A), I consider that the granting of the requested extension is justified.  Accordingly I grant an extension of time to 18 October, 1984 within which the opponent may serve evidence‑in‑support.  As to the question of costs, I believe that the repetition of grounds given in the earlier extension application was inadequate in the circumstances, particularly where the applicant has expressed concern about any further delay in the gathering of the opponents' evidence.  I therefore award costs against the opponents.

(P.A. KILBORN)