John William Ryan v Lindsay John Gessner and Noel Stanley Gessner

[1984] APO 5

In the Matter of the Patents Act 1952

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

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

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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 (hereinafter referred to as 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 "opponent" used hereinafter refers to "Linsday John Gessner and Noel Stanley Gessner trading as Gessner Bros.".
          On 18 January, 1984 the opponent applied for an extension of time to 18 April, 1984 in which to serve evidence‑in‑support.  The circumstances in which, and the grounds upon which, the application was made were:

"The time so far allowed to serve the Evidence in Support has proved insufficient.  The possibility of an amicable settle‑

ment was canvassed and rejected by the applicant.  Part of the Evidence in Support has been settled but not yet executed by the opponent.  The offer of settlement has delayed the preparation of the remainder of the Evidence in Support.  The additional time is required to have part of the evidence executed by the opponent and serve it on the applicant and to prepare, settle, execute and serve the remainder of the evidence."

In apparent anticipation of a favourable outcome to the application for extension the opponent, on 3 February, 1984, served part of the evidence‑ in‑support.  However, in the meantime, on 31 January, 1984, the applicant lodged an objection to the application.
         The matter was set down for a hearing in Canberra on 27 February, 1984.  The applicant lodged a Statutory Declaration setting out the grounds of objection and was represented at the hearing by Mr. W.L. Thomson, Patent Attorney.  The opponent was not represented, relying on written submissions in support of its application.  Annexed to those submissions was a series of statements by a Mr. Allen Boyd, set out in the form of a Statutory Declaration with four exhibits.  It was, however, unsigned and unwitnessed and hence not a properly executed declaration.  I will refer to this as the Boyd document.  It was implied in the written submissions that when properly executed the Boyd document would form part of the evidence‑in‑support, and in fact was so served subsequent to the hearing.
         The opponent's submissions in support of the application may be summarised as follows:

(a)The applicant did not object to the extension of time to lodge Notice of Opposition.  This, amounts to tacit acknowledgement that the opponent (a manufacturer of agricultural equipment) has a valid interest and that the opposition is a serious one.

(b)Although the opponent has been aware of application No. 528335 since February 1980, it could not begin collecting evidence until it was certain whether, and in what form, the application had been accepted.  However the opponent did not become aware of acceptance until 15 July, 1983.

(c)The stringent definition of "common general knowledge" arising from the decision in Minnesota Mining and Manufacturing Co. and 3M Australia Ltd. v. Beiersdorf (Australia) Ltd. 54 ALJR 254 makes it difficult to find witnesses having the common general knowledge of the art.

(d)The two witnesses found by the opponent are located a long way from each other and from the opponent.

(e)Time and resources were required to prosecute an offer of settlement made to the applicant.

(f)Part of the evidence‑in‑support was served on 3 February, 1984, indicating diligent prosecution of a serious opposition.

(g)It is against the public interest to grant an invalid patent, and the Boyd document, together with its exhibits, carry a strong suggestion that at least some claims of application No. 528335 are invalid.

(h)Erling Vangedal‑Neilsen & Others v. Commissioner of Patents and Gelphen Nominees 57 AOJP 6, p.298 is distinguished since:

(i)that case concerned a Notice of Opposition which required little preparation compared with evidence‑in‑support;

(ii)unlike the present case, inappropriate reasons were given in the extension request;

(iii)unlike the present case there was no evidence of a serious opposition.

(i)There is no Office precedent for refusing an extension of this kind in the face of reasonable grounds, at least not in the twelve months following lodgement of the Notice of Opposition.

In reply, Mr. Thomson submitted the following on behalf of the applicant for the patent in suit:

(a)No implication should be read into the applicant's failure to object to the so‑called late lodgement of the Notice of Opposition.  Under the terms of the Act, as read by a person without the benefit of professional advice (as the applicant then was) it was not a late lodgement but one expressly permitted by the Act.

(b)The applicant had warned the opponent several times of the existence of application No. 528335 in the period between its publication and its advertisement of acceptance.  Therefore the opponent could, should, and evidently did, maintain a watch on the case and so should have been in a position to start collecting its evidence on, or very shortly after, 28 April, 1983 rather than 15 July, 1983.  In effect the opponent had about nine months to formulate its evidence.

(c)Regardless of any changes the 3M case might have caused in the definition of obviousness, the Legislature evidently still regards three months as a sufficient time.

(d)The remote location of witnesses is not a valid reason in view of modern communication facilities.

(e)The opponent's offer of settlement was rejected by the applicant on the day following the receipt.  Hence, any time lost because of the offer must have been due to a decision by the opponent to work on formulating the offer instead of on collecting evidence‑in‑support.  While such a course may be commercially expedient it cannot be said to constitute a diligent prosecution of the opposition.

(f)On 18 October, 1983 the applicant informed the opponent by letter that it intended to object to any request for extension of time to lodge evidence‑in‑support.

(g)The applicant considers that since 1981 the opponent has been conducting operations which would infringe a patent granted on application No. 528335.  Granting the extension would not pay due regard to the applicant's rights and at the same time would enable to opponent to embark on a fishing expedition for further evidence.

(h)Unlike the applicant's evidence, neither the opponent's written submissions nor the Boyd document are sworn.  Furthermore, the written submissions are not made by the opponent personally and are thus hearsay and opinion.

(i)The person lodging the present application is not the same legal entity as the person lodging the application for extension of time to lodge the Notice of Opposition.

Dealing first with the alleged discrepancy in the name of the opponent I cannot see that any significance can be attached to it.  This matter concerns a request for an extension of time to serve evidence‑in‑support following the lodgement of a Notice of Opposition.  The Notice of Opposition and the application for extension of time are both in the same name, and I do not think there is any doubt that Lindsay John Gessner and Noel Stanley Gassner, individually or trading as Gessner Bros., are persons interested within the terms of section 59 of the Patents Act.  If there is any defect at all it appears to me to be a procedural one of the kind referred to by Kitto No. in Kaiser Aluminium v. Reynolds Metals 43 ALJR 156:

"In my opinion, however, it is in the public interest that a serious opposition by a person entitled in fact to oppose the grant of a patent should be dealt with on the merits, rather than that it should be shut out in consequence of a failure in procedure, lamentable though the failure may be."

On the question of time spent in canvassing a settlement, the applicant's Statutory Declaration establishes that once the offer was received it was rejected promptly.  It may well be that in preparing the offer the opponent diverted time and resources from the task of collecting evidence‑in‑support, but there is no evidence to show the extent to which time and resources were so diverted.  Moreover, I note that the offer of settlement referred to four citations which, prima facie, appear to be very relevant to the substantive opposition, from which I deduce that the two tasks were not altogether mutually exclusive.  However I do not believe that I should place any significant weight on this ground in deciding whether to grant an extension.
         Further, in the absence of any evidence of disruption to the normal modes of communication I do not consider the distances separating the opponent from his witness to be a sufficient reason in itself to justify the granting of an extension.
         The applicant indicates that it warned the opponent several times of the existence of the patent application in suit in the period between its publication and advertisement of acceptance.  Accordingly, Mr. Thomson submitted, the opponent should have been in a position to start collecting evidence on, or very shortly after, 28 April, 1983, the date of advertisement of acceptance.
         Section 59 allows the potential opponent 3 months from the date of advertisement of acceptance to consider whether to lodge a Notice of Opposition.  That provision also allows the potential opponent to apply within that 3 month period for an extension of time in which to lodge the Notice.  In this case the opponent applied for a 3 month extension in which to lodge the Notice on the basis that it had only just become aware of the acceptance of the application ‑ this is consistent with the opponent's present contention that it did not become aware of acceptance until 15 July, 1983.  The applicant did not object to this application.  Mr. Thomson did submit that under the terms of the Act, as read by a person without the benefit of professional assistance, as the applicant then was, it was not a late lodgement but one expressly permitted by the Act.  However this submission does not take account of the fact that it is the practice of this Office to notify an applicant of any application for an extension of time for lodging a Notice of Opposition and informing the patent applicant that it has a right to object to the extension; this is done in accordance with Regulation 85.  Regulation 55 of the Act specifies that the 3 month period for serving evidence‑in‑support starts from the date of lodgement of the Notice of Opposition.  It will be seen from all this that the applicant's contention that the opponent has had 9 months in which to formulate its evidence is not consistent with the circumstances of this case or the provisions of the Act.
         The applicant establishes by its evidence that the opponent received prior warning that an application for extension of time to lodge evidence would be the subject of an objection.  However, such prior warning is in my opinion irrelevant ‑ see for example Vulcan Australia Ltd. v. Little and Little 51 AOJP 36 p.1886.
         To say, as the opponent does, that the decision in 3M v. Beiersdorf (supra) makes it more difficult than in the past to locate suitable independent witnesses is, in itself, no more than a generalisation.  I have no doubt that in some circumstances it could form the basis for a valid argument for an extension of time.  But where this is the sole ground put forward for the extension it would appear that it would have to be shown that such difficulty has in fact been encountered in the particular circumstances of the case.  In the present case this is put forward as one of many grounds in support of the application for extension.
         I turn now to the question of whether the evidence establishes that a serious opposition is in progress.  While I discount the opponent's suggestion that the applicant, by failing to react to the initial request for extension, has conceded anything in this regard, the fact remains that there is nothing in the applicant's evidence to refute the opponent's contention that it is prosecuting a serious opposition.  That contention is supported by the fact that part of the evidence‑in‑support has already been served.  The applicant's declaration exhibits the four United States specifications cited in the opponent's offer of settlement.  A close analysis of these specifications, and the applicant's counter arguments, should be avoided because of the possibility of pre‑empting the substantive opposition.  Nevertheless, a cursory inspection of the specifications is sufficient to show, prima facie, that they are not irrelevant.
         The exercise of discretion in this matter is governed by regulation 83A which reads:

83A.Where ‑

(a)the Commissioner is authorized by these Regulations to grant an extension of time for the doing of any act or the taking of any step in relation to, or in relation to an application for, a patent and

(b)provision is not made by these Regulations (apart from this regulation) as to the matters to be taken into account by the Commissioner in deciding whether or not to grant the extension of time,

the Commissioner shall not grant the extension of time unless he is satisfied that the extension is justified having regard to all the circumstances of the case.

Mr. Thomson, on behalf of the applicant, contended that the granting of the present requested extension would not pay due regard to the applicant's rights and would at the same time enable the opponent to embark on a fishing expedition.  In this matter I have to consider the relative rights of the applicant and the opponent, and the public interest.  At this stage of proceed‑
ings I consider that it is the public interest that must prevail.  Part of the evidence‑in‑support has been served and I am satisfied that a serious opposition is being mounted.  The public interest is not served by the granting of clearly invalid patents; the opponent has filed, and intends to file, evidence which it asserts affects the validity of the patent application in suit.  Having due regard of all the circumstances of the case, I consider that public interest is best served by the granting of the requested extension.
Decision
         I grant an extension of time to 18 April, 1984 for serving evidence‑
in‑support.
         On the question of costs, the opponent's grounds set out in its written submissions for the hearing are far more extensive and detailed than those set out in the application for the extension of time itself.  On the other hand, the applicant would have been made aware of the serious intent of the opponent when he was served with part of the evidence‑in‑support before the hearing.  I am of the opinion that each party should bear its own costs and I make the award accordingly.

(P.A. KILBORN)