Joseph Louis Blankenzee v Croner Trading Pty Limited

[1988] APO 48

In the Matter of the Patents Act 1952 and In the Matter of Application No. 571375 for a Patent by JOSEPH LOUIS BLANKENZEE - and - In the Matter of Opposition thereto by CRONER TRADING PTY. LIMITED - 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:

Patent application 571375 for an invention entitled "Jumpball" was lodged on 30 July, 1986. The application and complete specification were laid open to public inspection on 12 February, 1987. Acceptance of the application was advertised in the Official Journal of Patents on 14 April, 1988. On 13 July, 1988, CRONER TRADING PTY. LIMITED (CRONER) lodged notice of opposition to the grant of a patent on the application, and thus evidence in support was due by 13 October, 1988.

On 11 October, 1988, CRONER applied under the provisions of Regulation 55 for an extension of time of 3 months (viz. until 13 January, 1989) within which to serve its evidence. The applicant gave notice of its objection to the extension being granted and the matter was set down for hearing. The hearing was conducted in Canberra on 24 November, 1988 with Mr. R..Cross, patent attorney of Phillips Ormonde & Fitzpatrick, Melbourne representing CRONER and with Mr. P. Taylor, patent attorney of Arthur S. Cave & Co., Sydney representing the applicant for the patent.

The Application for Extension of Time

The circumstances and grounds given in the application for extension of time are as follows:

"In a letter of 13 July, 1988 to the attorneys for applicant, we advised as to a basis for settlement of the opposition. That letter was acknowledged in a reply of 2 September 1988, although we still are awaiting applicant's reply on such settlement. However, since 13 July 1988, we have been diligent in assembling documentary evidence in support of our opposition.

Also, an expert in the art of the opposed application has provided verbal evidence on which a statutory declaration now is being drafted. We also have located a second expert and arranged for an early conference with him, while we have diligently pursued evidence of a relevant prior art product known to have been on sale in Australia before the priority dates claimed for the opposed application. Further time is required for completion of these matters and, in lieu of a settlement, to serve our evidence in support."

In its letter to the Patent Office raising objection to the granting of the extension sought, the applicant's attorneys referred to a Court action between the parties in September 1987 and given that evidence relevant to the alleged lack of novelty of the subject invention was produced before the Court, it was suggested that the opponent ought to have been able to adduce evidence in this opposition in the time previously available.

SubmissionsBehalf of the Opponent

Firstly Mr. Cross summarised events involving his client leading up to the lodgement of opposition to the application in suit. In so doing he explained that the Court action in September 1987 involved CRONER and a company Concorde Trading Pty. Limited (Concords), Concorde apparently being an exclusive licencee in respect of the subject invention from the patent applicant or his assignee. Basically, Concorde had sought in the action to restrain CRONER from marketing items which were considered to constitute an infringement of the rights likely to result from a patent granted on the present application. As part of the Court action, certain prior art material was placed before the Court with a view to establishing that the novelty of the invention was lacking or at least questionable. For various reasons, which I need not detail here, the Court decided against granting an interlocutory order as Concorde had sought. It is however clear from the judgement, which formed an exhibit to a statutory declaration by Mr. Cross tendered at the hearing, that the Court did not examine the novelty matter to any great degree.

Mr. Cross explained that the Court matter came on for hearing at short notice which gave CRONER little time to assemble its material on the novelty question : in any event, extensive evidence was not required for the Court action. He further explained that it was reasonable for the opponent to wait until the patent application had been accepted and advertised as such (which occurred in April 1988) before committing resources to gathering evidence to mount opposition to the patent grant. In any event, only after acceptance had taken place could CRONER determine whether opposition was warranted to the application and complete specification in its accepted form. Notice of opposition was subsequently lodged within the time allowed under the Act.

Turning to Mr. Cross' submissions elaborating on the reasons given in the application for extension of time, these included the following points:

(a) Consideration as to whether the extension sought was justified needed to be assessed against the time previously available commencing from the date of lodgement of notice of opposition.

(b) The opponent had pursued the assembly of its evidence and its investigations regarding the opposition in a diligent manner prior to seeking the present extension of time. Several experts in the art had been located, and a declaration was in the course of preparation by one of these experts. Furthermore evidence of relevant prior art products had been pursued. (Whilst not directly material to provide justification for the present extension, I note that Mr. Cross in his statutory declaration tendered at the hearing, states that substantial further progress in the preparation of evidence in support has occurred since 11 October, 1988 when the extension was sought.)

(c) The fact that the opponent had foreshadowed a settlement proposal in communications with the attorneys for the applicant had not meant that evidence was not pursued by the opponent while a response was awaited.

In summary Mr. Cross submitted that the reasons given on the application for extension of time had provided sufficient basis for the extension sought. Furthermore the opponent was mounting a serious opposition to the application and given that fact, it would not be in the opponent's interest nor the public interest if the opponent was denied sufficient time to assemble and serve its evidence.

Submissions on behalf of the Applicant

Mr. Taylor's submissions can be summarised as follows:

(a) The opponent has been aware of the patent application from at least the time of the Court action and hence ought to have been in a position to address matters associated with opposition action to the application in a timely manner even to the extent of conducting searches and engaging experts prior to acceptance of the application.

(b) If the opponent was serious in its opposition action, it seems reasonable that in the six months since acceptance, the opponent ought to have been in a position to assemble and serve at least part of its evidence in support.

(c) Delay occasioned by the opposition process and hence sealing of a patent was preventing the applicant (or parties having an interest in the application/patent) pursuing alleged infringement actions. In those circumstances, the applicant wished to see the opposition proceedings advance in a timely manner, and ensure that the opponent did not delay evidence stages unjustifiably.

(d) In the event that an extension of time be found justified, consideration should be given to not allowing the full three months sought.

Decision

In this class of action, before an extension of time is allowed, the Commissioner:

(i) must be satisfied that an applicant who seeks such an extension has made out a proper case justifying the extension; and

(ii) must consider the interests of the parties as well as the public interest.

It seems to me that the questions of whether the opponent has had insufficient time to prepare and serve its evidence and whether it has justified the grant of an extension of time for doing so, must be considered and assessed against its actions and endeavours since becoming entitled to serve such evidence, which in my view commenced on the day the notice of opposition was lodged. The Patents Act and Regulations clearly differentiates between the times to enable, firstly, notice of opposition and, secondly, evidence in support, to be lodged. I accept Mr. Cross' submission that it was reasonable for his client to wait until acceptance occurred before embarking on detailed investigations concerning opposition action. Once notice of opposition was lodged, the initial time in which to lodge evidence was set. The opponent thus has had a period of three months to serve its evidence and now seeks an extension of time of a further three months.

The circumstances as outlined on the application for extension of time and elaborated on at the hearing by Mr. Cross satisfy me that the opponent had been diligently pursuing the preparation of its evidence in the time so far available. A declaration by a first expert had reached the draft stage, with other contacts made and prior art products investigated as part of the evidence preparation process. From this it is evident to me that relevant investigations had been undertaken by the opponent in the period since the lodgement of the notice of opposition with a view to preparing and serving its evidence in a timely manner.

I am in no doubt that the opponent is serious in its action to oppose the application in suit - it is apparently involved with the exploitation of a product of a similar type to that the subject of the patent application (as the Court action indicates) and, notwithstanding the fact that it raised with the applicant the basis for a settlement, clearly feels the applicant is not entitled to a monopoly as presently defined by the accepted claims. Whilst the, material assembled for the Court action may have proved of some assistance to the opponent in its preparation of evidence in support, it is evident that further evidence and apparently more detailed facts had to be obtained to fully support its opposition case. On the basis of the submissions before me, I am satisfied that the opponent has had insufficient time to prepare and serve its evidence and has made out a proper case to justify an extension of time to do so.

In deciding whether the extension should be granted, I need also to consider the interests of the parties and the public interest. The opponent's interests in the matter are evident from my earlier comments - no doubt the opponent is concerned that if a patent is granted on the application, its business interests may be unjustly affected by a patent which may be of questionable validity. On the other hand, the applicant's interests are of course not being advanced due to the opposition process which has delayed the application from proceeding to sealing. Whilst I can appreciate the applicant's concern arising from the delay in sealing, some delay is inevitable once opposition action has commenced under the Patents Act - it is however reasonable for the applicant to seek to ensure that the opposition is pursued by the opponent in a timely fashion. The public interest is essentially concerned with ensuring that invalid patents are not granted, and that proceedings are not unreasonably protracted.

In my view the respective interests of the patent applicant on the one hand and the opponent on the other hand at present slightly favour the opponent in this matter. In addition, I am presently of the view that in this matter the aspect of the public interest concerning ensuring that invalid patents are not granted' predominates, since I consider that there has not been any significant protraction of the opposition proceedings to this stage. Overall, consideration of these interests indicates to me support for the extension sought.

Conclusion

I have decided that in the present circumstances an extension of time is justified. Whilst noting Mr. Taylor's submission that the full extension period sought should not be granted, I see no significant reason to restrict the extension in that manner. I therefore grant an extension of the time for serving evidence in support to 13 January, 1989.

On the question of costs, the opponent has been successful in its application for extension of time. The circumstances and grounds for the extension stated in general terms on the application properly reflected the situation and the basis on which the extension was sought. Accordingly I see no reason why costs should not follow the event. I therefore award costs against the patent applicant.

(T.R. BRUHN)

Supervising Examiner of Patents

12 DEC 1988

Patent Attorneys for the applicant: Arthur S. Cave & Co., Sydney

Patent Attorneys for the opponent : Phillips Ormonde & Fitzpatrick, Melbourne