Kabushiki Kaisha Ishida Koki Seisakusho v Duro Matic Pty. Limited

[1983] APO 1

In the Matter of the Patents Act 1952

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In the Matter of Application Nos. 523,588 and 523,958 in the Name of KABUSHIKI KAISHA ISHIDA KOKI SEISAKUSHO for Letters Patent

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In the Matter of an Application under Section 160(2)(a) for an Extension of Time in which to Lodge Notice of Opposition by DURO‑MATIC PTY. LIMITED

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In the Matter of an Opposition thereto by KABUSHIKI KAISHA ISHIDA KOKI SEISAKUSHO.

DECISION OF THE COMMISSIONER OF PATENTS:
This matter concerns two applications by Duro‑Matic Pty. Limited (hereinafter referred to as Duro‑Matic) made under paragraph 160(2)(a) of the Patents Act 1952 for an extension of time within which to lodge notices of opposition to patent applications Nos. 523,588 and 523,958 in the name of Kabushiki Kaisha Ishida Koki Seisakusho (hereinafter called Ishida). THE applications for extension of time are opposed by Ishida.
          The two applications for an extension of time are each supported by the same statutory declaration by Alan Keith Guthrie, a Director of Duro‑Matic. The main substance of the declaration is that Duro‑Matic failed to file notices of opposition in respect of the subject patent applications because of the omission of Arthur S. Cave & Co., patent attorneys, (hereinafter referred to as Cave) in not advising Duro‑Matic of the existence of the patent applications. 

Application No. 523,588 was advertised accepted on 5 August, 1982 and application No. 523,958 was advertised accepted on 26 August, 1982. Times for lodgement of notice of opposition under section 59 of the Patents Act 1952 expired on 5 November, 1982 and 26 November, 1982 respectively.
         From the available evidence it appears that Mr. Guthrie in late 1981 and early 1982 requested Cave to conduct a search of Australian Patent Office records to determine whether there was a corresponding Australian patent application or patent to United States patent No. 3,939,928.   The searches revealed that there was no corresponding Australian patent or patent application.   A further request was made to ascertain whether there was an equivalent patent in the United Kingdom.
         In the event, the existence of the subject patent applications was disclosed by Cave to Duro‑Matic on 29 November, 1982, and notices of opposition were lodged on the same day, together with the applications for an extension of time.  
The first contention made on behalf of Duro‑Matic was that Cave had failed to discharge its responsibility to Duro‑Matic by not locating the subject patent applications and identifying them to Duro‑Matic in sufficient time to lodge notices of opposition. This was said to constitute an error or omission on the part of Cave as agent or attorney of Duro‑Matic such as to attract the operation of paragraph 160(2)(a).
         A search of patent literature could have one or more of a wide range of possible objectives, and the extent of the search will depend on which objective the searcher has in mind.   For example, a search might be to assist in assessing the current state of the art in a broad area of technology.   Such a search would be required to be quite extensive.   At the other extreme, a more narrow search would be required to ascertain whether a recently developed product had been patented previously.   This might be for the purpose of avoiding infringement or for assisting in determining whether to seek patent protection for the new development.
         An even more restricted search would be required to determine whether a particular invention patented in another country was the subject of a patent or patent application in Australia.   This might be for the purpose of watching a competitor's activities which might affect the market or for detecting new developments which could be licensed (if a patent is granted in Australia) or taken up without a licence (if no patent is granted in Australia).
         It seems to me that whether Duro‑Matic succeeds in its contention that Cave ought to have uncovered the two subject patent applications of Ishida  depends on the extent of the search which Mr. Guthrie requested.   In addition to Mr. Guthrie's statutory declaration, I was supplied with copies of correspondence relating to the search between Mr. Guthrie and Cave.
         I am satisfied that the objective of the search was to locate any corresponding Australian patent or patent application which related to the same invention as that in US patent No. 3,939,928.   In a letter from Cave to Duro‑Matic, marked for Mr. Guthrie's attention and dated 8 January, 1982, the search is described in these terms:

"We refer to the writer's telephone discussion with you on 4th December 1981 and as requested we have conducted investigations in the Australian Patent Records in the name of KABUSHIKI KAISHA ISHIDA KEKI SEISHAUSYO (sic) and also in the names of the inventors detailed in the specification of U.S. Patent No. 3,939,928 in order to ascertain whether the Japanese company or the inventors mentioned in the U.S. patent have applied for a patent in Australia corresponding to U.S. patent No. 3,939,928.

The investigation was conducted over the period ranging from 1973 to 1977 being the period which the Japanese company or the Japanese inventors could have applied for a patent in Australia corresponding to the mentioned U.S. patent.   No patent or application for patent was found over the period searched in any of these names and in the circumstances we think it safe to conclude that there is no patent in Australia corresponding to U.S. patent 3,939,928."

I take it that a "corresponding" application or patent is seen by the writer of the letter as one which is both for the same invention and made by the same applicant or patentee (or at least having the same inventors).   The question of whether two applications or patents, in order to be said to be "corresponding", must necessarily have some relationship based on a common Convention priority date is not so readily answered, but need not be answered here.
         In any case, there is no evidence based on subsequent correspondence or otherwise that would indicate to me that the type of search performed, as explained in Cave's letter of 8 January, 1982, was anything other than as required by Mr. Guthrie on behalf of Duro‑Matic.   Nor is there any evidence that the search was inadequately carried out.
         I am satisfied that neither of the two subject patent applications could be said to be "corresponding" applications to U.S. patent No. 3,939,928.  The applicant appears in each case to be the same as the patentee of the U.S. patent (despite the spelling differences apparent from the passage quoted above and from the copy of the US patent provided to me, where the patentee is shown as Kabushiki Kaisha Ishida Koki Seisakusyo).  
         The inventors named are not the same, however, and more importantly, a comparison of the complete specifications with the text of U.S. patent No. 3,939,928 shows that neither of the inventions claimed in the subject applications is claimed or disclosed in the U.S. patent, although all relate to automatic weighing apparatus.   However,I do not propose here to attempt a detailed construction of the U.S. patent or of the two subject applications.  
          Another matter drawn to my attention was that Cave happened to be the patent attorneys acting for Ishida in each of the two subject patent applications.   There is no evidence of any impropriety or conflict of interest on the part of Cave.   It is, in any event, not necessary to look at that question since I am satisfied that neither of the subject applications could be said to be a "corresponding" application to U.S. patent 3,939,928 in the terms of the search described in Cave's letter of 8 January, 1982.
         I find that Cave complied with the instructions given on behalf of Duro‑Matic.   The search undertaken in accordance with Mr. Guthrie's instruct‑
ions was to locate any Australian patent or patent application corresponding to U.S. patent No. 3,939,928, and it could not be said that either of the subject patent applications ought to have been uncovered by a properly undertaken search of that nature. I find therefore that there was no error or omission on the part of Cave as agent or attorney of Duro‑Matic which would establish the grounds set out in paragraph 160(2)(a) of the Act.
         It was further argued on behalf of Duro‑Matic that, even if there was no error or omission on the part of Cave, there was an omission on the part of Duro‑Matic in failing to make enquiries which would reveal the existence of the subject patent applications.   In this respect  Duro‑Matic's patent attorney referred to a previous decision of a Supervising Examiner as a delegate of the Commissioner of Patents in Ronstan Marine Equipment Pty. Ltd.'s Application for an Extension of Time (1980) 50 AOJP 3874. That decision concerned an applic‑

ation by Ronstan Marine Equipment Pty. Ltd. for an extension of time under paragraph 160(2)(a) in which to lodge a notice of opposition under sub‑section 59(1) to a patent application in the name of Dega Pty. Ltd. Particular reliance was placed on the following passage"It is difficult, therefore, to identify any error or omission in these circumstances attributable to the person concerned, or his agent or attorney. However, a similar situation was considered by Hanger J. (Supreme Court, Brisbane) in Moon v. The Nominal Defendant (Queensland) 1966 Qd. R. 59 at page 64. That case concerned an application by a claimant for an extension of time (beyond the prescribed time of 3 months) in which to make a claim against the Nominal Defendant (Queensland) for damages for personal injury received in a motor collision. Section 4F(4)(b) of the Motor Vehicles Insurance Acts 1936 (as amended 1963) provided inter alia that the Court may extend the time for giving notice of intention to claim to The Nominal Defendant (Queensland) upon being satisfied that failure to give such notice has been caused ... by any cause which the Court is satisfied was not occasioned by any act or omission of the claimant or any person acting on his behalf.   Hanger J., (referring to the claimant), wrote in his decision that ... 'it was ignorance of his legal position which occasioned the failure to give notice; though it may well be said that knowledge of the factual situation was necessary, to some extent anyway, before the legal position fell to be considered, and is thus tied up with the immediate cause of the failure ... He had an interest in knowing what the position was.   I think that a person who has an interest in knowing his legal position and who does not make appropriate inquiries to ascertain it, has "omitted" to ascertain it'."

I am not inclined to give such a broad meaning to the word "omission" in paragraph 160(2)(a) of the Patents Act, and after careful consideration I have decided to that extent not to follow the decision in the Ronstan Marine Equipment case.
There is an important distinction between paragraph 4F(4)(b) of the Queensland Motor Vehicles Insurance Acts and paragraph 160(2)(a) of the Patents Act. Under the former, the court may extend the time if the court is satisfied that failure to give timely notice of a claim against the Nominal Defendant "has been caused by the death of any person or by any other cause which ... the court is satisfied was not occasioned by any act or omission of the claimant or any person acting on his behalf ...". The provision in the Patents Act provides for extension where an act or step was not done "by reason of ... an error or omission on the part of the person concerned or of his agent or attorney ...".
         Thus, a person who seeks an extension under the Queensland Insurance Acts must show that his failure to lodge a notice is not caused by an act or omission on his part, while relief under the Patents Act is potentially available when the delay is caused by an error or omission.
A further factor is the immediate context of the word "omission". In my opinion the word is capable of bearing a broader meaning in the phrase "act or omission" in the Queensland Insurance Acts provision than in the more restricted expression "error or omission" which is used in the provision in the Patents Act.
I also bear in mind in arriving at my interpretation that in the case of the Patents Act the interests of the applicant for a patent (in this case Ishida) are clearly involved in addition to those of the intending opponent. A further consideration is the desirability of operating the patent system efficiently and without unreasonable delays. Such factors were considered important by Bowen C.J. in considering the meaning of extension of time provisions of the Patents Act in sub‑section 59(1) itself; Vangedal‑Nielsen v. Commissioner of Patents (1980) 33 ALR 144 at 150; (1980) 51 AOJP 298 at 300.
         In the Moon case Hanger J., in discussing the provision in the Queensland Insurance Acts, had this to say ([1966] Qd. R.59 at 63):

"The provision is no doubt framed as it is because a liability is imposed upon The Nominal Defendant to make redress for some other person's fault, as to which it has no knowledge, and because of the great importance of its being informed promptly of such a claim."

I think that it is consistent with the view of Hanger J. to hold that a narrower meaning of omission should be ascribed when the omission is relied on to give the delaying party relief as in paragraph 160(2)(a) rather than to deny relief as in paragraph 4F(4)(b).
Having regard to all these matters, I am of the opinion that the word "omission" in paragraph 160(2)(a) of the Patents Act is not capable of including a failure to make appropriate enquiries by way of instructing Cave to make a search which would or should have revealed the existence of the subject patent applications to Duro‑Matic.
         Thus, I find that there has been no error or omission on the part of either Duro‑Matic or of Cave acting as Duro‑Matic's agent or attorney.   I therefore refuse the two applications for an extension of time in which to lodge notices of opposition.

(F.J. SMITH)