Keith Hall Smith v Edward Andrew BONEL

[1986] APO 7

In the Matter of the Patents Act 1952

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In the Matter of Patent Application 546817 in the Name of KEITH HALL SMITH

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In the Matter of an Application under Section 160 by EDWARD ANDREW BONEL for an Extension of the Time in which to Lodge Notice of Opposition.

DECISION OF A SUPERVISING EXAMINER OF PATENTS:
         Patent application 546817 was advertised accepted on 19 September, 1985 and consequently the three month period allowed by sub‑section 59(1) for lodging notice of opposition expired on 19 December, 1985.  A document entitled "Notice of Opposition" was received from EDWARD ANDREW BONEL on 18 December, 1985 but without the appropriate fee.  On 24 December, 1985, a fresh Notice of Opposition was lodged with the appropriate fee and was accompanied by an application under paragraph 160(2)(a) for an extension of the time from 19 December, 1985 to 24 December, 1985 in which to lodge a notice of opposition.  SMITH objected to the application for an extension of time and the matter was set down for a hearing on 10 February, 1985.  However, both SMITH through his Patent Attorneys, Cullen, Halford & Maxwell and BONEL through his Patent Attorneys, Grant Adams & Company chose not to appear but instead lodged written submissions in the matter.
         The application for an extension of time relies on the ground in paragraph 160(2)(a) of the Act which reads:

"160(2)  Where, by reason of ‑

(a)an error or omission on the part of the person concerned or of his agent or attorney ...

(b)...

an act or step in relation to an application for a patent or in proceedings under this Act ... required to be done or taken within a certain time has not been so done or taken, the Commissioner may, upon application by the person concerned ... extend the time for doing the act or taking the step."

Section 160 is a remedial section and should be applied where it appears to be applicable unless there is some clear indication to the contrary. (Scaniainventor v. Commissioner of Patents (1981) 36 ALR 101 at 105). Sub‑
section 160(2) appears to be applicable to the time prescribed by sub‑section 59(1), and as there is no indication in the latter sub‑section to the contrary it may be applied, in a proper case, to allow extensions of the time provided for lodging notice of opposition.  In deciding whether there is a proper case for the grant of an extension of time under paragraph 160(2)(a) there are two matters which must be considered.  The first of these is whether the applicant for extension of time has established that failure to meet the time limit is due to error or omission on the part of the person concerned or of his agent or attorney.  Once this test has been satisfied the Commissioner does have jurisdiction to grant an extension of time.  The second matter which must be considered is that the Commissioner has a true discretion whether to grant or refuse the extension of time.  The Commissioner must take all relevant considerations (and no others) into account in deciding how to exercise this discretion.  (Michigan Technological University v. Deputy Commissioner of Patents (1982) 40 ALR 577 and Lehtovaara v. Commissioner of Patents (1981‑2) 39 ALR 103).
         BONEL submits that the notice of opposition was not lodged within the time limit set by sub‑section 59(1) because of "an error or omission on the part of my attorney".  The evidence lodged in support of the alleged "error or omission" comprises a statutory declaration dated 24 December, 1985 by John Anthony Callinan, an employee of Grant Adams and Company.  His declaration reads as follows:

"1.That on the instruction given on the 17th December by the Solicitors for Edward Andrew Bonel a Notice of Opposition to Patent Application No. 546,817 was drafted on that day by Mr. Adams.  On the following day, the 18th December, the Notice of Opposition was typed and, Mr. Adams being absent from his office that afternoon, I instructed a clerk to ensure that it was lodged that day at the Patents Sub‑office, Brisbane, and that a copy should be sent with its covering letter by registered mail to the Attorneys for the applicant.

2.The Senior Clerk who normally puts documents in order for filing was absent during last week and the clerk who therefore attended to the matter has been only recently engaged.  Since she has had no previous experience in the lodging of Notices of Opposition, I should have informed her of the appropriate fee stamp to be attached, but I failed to do so; and as I was engaged with a client when the Notice of Opposition was taken to the Sub‑office, I omitted to check it before it left.  The receiving clerk at the Sub‑office appears not to have noticed, and did not mention, the absence of the fee stamp.  The first notification I had of the defective lodgment was the telephone call from the Patent Office, Canberra.

3.The failure to affix a fee stamp to the Notice of Opposition was due to an error or omission on my part."

In submissions lodged on behalf of the applicant for the patent it is stated that the alleged facts in the Callinan declaration "are considered insufficient" and that there "are no supporting or corroborating declarations or exhibits which establish:

(1)that instructions were in fact issued on 17th December, 1985 by the opponent's solicitors;

(2)whether instructions if so given were given to Mr. Callinan or Mr. Adams;

(3)that the clerk concerned had in fact been issued with the instructions mentioned."

It is also submitted that the surrounding circumstances indicate that due care was not exercised in the preparation and lodgement of the notice of opposition.
          The Callinan declaration, I believe, adequately sets out the facts as to why the "notice of opposition" was lodged without the appropriate fee stamp. I see no reason to have supporting declarations to establish points 1‑3 raised above by the patent applicant; clearly instructions must have issued in order that the "notice of opposition" be prepared and filed at the Brisbane Sub‑
Office on 18 December, 1985 and clearly the clerk received instructions and "attended to the matter".  Whilst it may be that proper care was not fully exercised in the preparation and lodgement of the "notice of opposition", this does not mean that the actions of Mr. Callinan cannot be regarded as an "error or omission" within the terms of paragraph 160(2)(a) of the Act.
         The evidence, I conclude, clearly shows that Mr. Callinan failed to:

(a)inform the clerk, who was instructed to attend to this matter, that an appropriate fee needed to be attached to the "notice of opposition"; and

(b)check the "notice of opposition" before it was taken to be lodged at the Brisbane Sub‑Office.

Because of this the "notice of opposition" was filed without the appropriate fee stamp.  This "notice of opposition", like all similar documents lodged at a Sub‑Office for the Commissioner of Patents, was transmitted to the Patent Office in Canberra where it was received by the relevant administration unit and deemed not lodged due to the absence of the fee.  I am satisfied that the failure to lodge the notice of opposition in time was by reason of an error or omission on the part of BONEL'S attorneys.
         Having concluded that the application for extension of time satisfies paragraph 160(2)(a) of the Act, I must now consider whether I should exercise my discretion favourably towards the applicant for extension of time.  In considering this point I shall have regard to the following matters:

(a)whether there is a serious opposition foreshadowed,

(b)the respective interests of the patent applicant, the potential opponent and the public, and

(c)whether there was any undue delay in making the extension application.

The patent applicant has contended in his submissions that "the opposition is a frivolous one intended to unnecessarily delay the issuance of the patent so that infringement action against the opponent's company cannot be taken".  These submissions further state that BONEL was aware of the patent application for a considerable time but for some unknown reason waited until the last days of the allowed opposition period before taking action to oppose the application.  It also appears from these submissions that an ongoing dispute exists between SMITH and BONEL (or their companies) regarding a licensing agreement which terminated well before acceptance of the present patent application.
         There is nothing before me to suggest that BONEL is launching a frivolous opposition.  The fact that BONEL may have known of the patent application for some time seems of little relevance, after all a party has to consider the accepted patent specification for opposition purposes, and in this regard a 3 month period is provided for by sub‑section 59(1) to lodge notice of opposition.  Similarly the fact that there is a dispute between the parties and an associated court action pending does not establish that BONEL is not serious in its opposition.  To the contrary, the fact that BONEL gave instructions to his Attorneys to file an opposition to the application and did actually file a "notice of opposition" (albeit without the required fee) before the expiry of the permitted opposition period, is prima facie evidence that a serious opposition is contemplated by BONEL.
         I turn now to the interests of the various parties.  It is true that if an extension of time is granted, the patent applicant would be adversely affected since the sealing of his patent would necessarily be delayed.  On the other hand, the interests of the potential opponent could also be affected if an extension of time was not granted, since he may find himself restricted in his activities by a patent which has questionable validity and which he can then only challenge through the courts to protect his interests.  Finally, there is the public interest in ensuring that patents that issue are prima facie valid.  It seems to me that in this case the public interest and interest of the potential opponent outweigh the patent applicant's interest and that accordingly there is no reason why I should not exercise my discretion in favour of the applicant for extension of time, i.e. the potential opponent.
         With regard to the question of undue delay, I need only say that I consider the potential opponent to have acted with appropriate haste to correct the error or omission when it was brought to his attention, initiating rectification action within the space of one day.  Such a period hardly constitutes undue delay.
         It may be said that BONEL'S Patent Attorneys did not exercise due care in the preparation and lodgement of the "notice of opposition" and that this ought to be a relevant factor to consider in the exercise of discretion in this matter.  In this case, as in all similar matters where an "error or omission" arises, it seems to me that the very existence of the error or omission means that at least a certain lack of care was involved, simply because someone did something incorrectly or omitted to do something.  Looking at the circumstances surrounding this case, the lack of care leading to the omission was as a result of, what seems to me to be an unusual combination of circumstances arising in the office of the Patent Attorneys.  There is no indication of inadequate office procedures in general, or negligence by the Attorneys concerned, factors which if they existed could count against BONEL.  Given the present circumstances I am not inclined to exercise my discretion unfavourably against BONEL on this point.
         In summary therefore I conclude that an error or omission within the meaning of paragraph 160(2)(a) of the Act did occur.  Furthermore I consider that the Commissioner's discretion should be exercised in favour of the applicant for the extension of time.  I therefore grant an extension of time to 24 December, 1985 in order to validate the notice of opposition which was lodged on that date.
         Pending the issuance of this decision on the section 160 application, the opponent (BONEL) could not know whether its Notice of Opposition filed on 24 December, 1985 would be deemed lodged.  Accordingly it is unreasonable to expect the opponent to file its Evidence‑in‑Support by 24 March, 1986, i.e. within 3 months from the date of filing the Notice of Opposition.  In my view it is appropriate, and I so determine, that the time for service of Evidence‑
in‑Support is 3 months from the date of this decision.
         I make no award of costs in the matter.

(T.R. BRUHN)

Patent Attorneys for the patent applicant : Cullen, Halford & Maxwell