Kenneth Lindsay Pagden v Richard Laurance Llewellin

[1999] APO 54

OFFICIAL NOTICE

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Application  :          No. 688126 in the name of Kenneth Lindsay Pagden

Title:          Structural and Insulative Materials and Products

Action:          Opposition under S.59 by Richard Laurance Llewellin and an objection to an application for an extension of time in which to serve Evidence-in-Answer

Decision:          Issued            .

Abstract

1. Part of the delay has been reasonably explained but the applicant apparently remains uncertain that the evidence can be completed even within the extension sought.  It is unlikely that the proposed evidence would have a significant impact as it is to be directed to common general knowledge.  The latter per se is unlikely to negate the significant part of the opponent's case which is directed to lack of novelty.  If I were to grant the extension of time it would inevitably lead to some protraction of the proceedings, to the detriment of both the public and the opponent's interests.  If I refuse to grant it, there is unlikely to be any serious injury done to the applicant.

1. Having taken all these factors into account I refuse to grant this extension of time to serve Evidence-in-Answer.

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Patent Application No.688126 by Kenneth Lindsay Pagden and opposition thereto by Richard Laurance Llewellin and an objection to an application for an extension of time in which to serve Evidence-in-Answer

BACKGROUND

Patent application 688126 was filed on 26 October 1995 in the name of Kenneth Lindsay Pagden (Pagden) as a divisional of 68923/94 (lapsed).  It was advertised accepted on 5 March 1998.

Richard Laurance Llewellin (Llewellin) filed a notice of opposition on 5 June 1998, followed by the statement of grounds and particulars on 4 September 1998.  Service of the evidence-in-support was completed on 3 December 1998.

An application for extension of time of three months, to 3 June 1999, to serve evidence-in-answer was filed on 2 March 1999.  This was granted without objection.  An application for a further extension of time of three months, to 3 September 1999, was filed on 3 June 1999.  The patent opponent filed an objection to this extension of time on 21 June 1999 and the matter was set down for hearing in Canberra on 21 July 1999.

Neither party appeared at the hearing.  The opponent (Llewellin) filed written submissions on 16 July 1999.

THE APPLICATION FOR EXTENSION OF TIME

The application provides the following reasons for the need for further time in which to serve evidence-in-answer:

"I have been provided with the opponent's Evidence-in-Support, and a review and analysis of this evidence has been commenced with a view to preparing and serving Evidence-in-Answer.  Additional time is required to formulate the Evidence-in-Answer, place the evidence in a declaratory format and serve said evidence on the opponent.  As part of my Evidence-in-Answer I intend to submit evidence from an Australian expert as to the state of Common General Knowledge.  Additional time is required to have the expert review the opponent's evidence, discuss the matter with the expert and prepare a declaration."

On 9 June 1999 the delegate of the Commissioner of Patents requested further information "regarding what steps the applicant had taken to prepare their case, any difficulties encountered with the preparation of their case, more detail about what progress has been made with the evidence, and an estimate of when the evidence is likely to be completed."  Following this on 16 June 1999 the applicant filed the following:

"In reply we advise that since the last extension was requested, an Australian expert has been located and has been provided with a copy of the Evidence-in-Support served by the opponent.  However, due to both work and travel commitments of the expert, the expert has not had sufficient time to carefully review all of the evidence-in-Support and provide detailed comments for the basis upon which to prepare a declaration.

"Additionally, since the last extension was requested, there has been a change in our instructor in respect of this matter.  Accordingly time has been required to brief our new instructor as to the subject matter of the patent application, the nature of the current opposition proceedings, the details of the Evidence-in Support served by the opponent, and to obtain instructions in relation to the preparation of the Evidence-in-Answer.

"Nevertheless we reasonably expect the Evidence-in-Answer should be at least well advanced and nearing finalisation within the period which has been requested."

THE OPPONENT'S SUBMISSIONS

The opponent referred to Paragraph 8.5.3 of Volume 3 of the Australian Patent Office "Manual of Practice and Procedure" which summarises considerations which may be relevant in exercising the Commissioner's discretion to grant an extension of time. [Sub-Regulation 5.10(5)].  It was submitted that:

"Factors that can sometimes be relevant to an applicant's extension application for serving evidence in answer include:

·    Has there been a satisfactory explanation of why a delay occurred?

·    Complexity of the evidence

·    Intervening holidays, leave, etc

·    Unavailability of people.

·    Parties undertaking negotiations.

·    Nature and significance of the evidence"

Submissions were made on each of these factors.  These were followed by detailed submissions on the general considerations relating to the exercise of the Commissioner's discretion and the requirement to consider all the circumstances.  I was referred to the following decisions: Arbor Software Corporation v Gentia Software PLC 42 IPR 169, Iowa State University Research Foundation v Boehringer Engelheim [1998] APO 61 (30 October 1998), Ferocem Pty Ltd v Commissioner of Patents (1994) AIPC 91-057, 28 IPR 243; Kaiser Aluminium v Reynolds Metal 120 CLR 136; A. Goninan & Co v Commissioner Of Patents (1997) 38 IPR 213. I will refer below to these submissions as relevant.

DECISION

The law on granting an extension of time to serve evidence

The power to grant an extension of time to serve evidence is discretionary.  Regulation 5.10(2) of the Patents Regulations provides that:

"(2) The Commissioner may:

(a) on the application of a party in the approved form; and

(b) on such reasonable terms (if any) as the Commissioner specifies; extend the time within which the party may take a step prescribed in this Chapter, not being a step that is taken under regulation 5.3 or paragraph 5.4(1)(a)."

Time for service of evidence falls under regulation 5.8 and thus regulation 5.10(2) is applicable in the present case.

The conditions under which the Commissioner is to exercise this discretion are set out in Regulation 5.10(5):

"(5) The Commissioner must not……….grant an application under sub-regulation (2) unless the Commissioner:

(ii) is reasonably satisfied that…..an extension of time is appropriate in all the circumstances."

Regulation 5.10(5) also includes as prerequisites to any decision that the Commissioner must ensure that the other party has been notified, and that both parties have had an opportunity to make representations.  These matters are not in question in this action.

It is clear from the decisions in Ferocem (supra) and Goninan (supra) that regulation 5.10 confers a broad discretion which cannot be reduced to an imperative compliance with particular requirements.  It is necessary to give genuine and proper consideration to all relevant matters.  Relevant matters include:

• Explanation of delay

• The public interest

• The interests of the opponent

• The interests of the applicant

DECISION

Explanation of delay

Ferocem (supra) makes it clear that the reasons the evidence was not served in time are a relevant consideration, but that a satisfactory explanation is not a mandatory requirement.  The opponent has nominated a number of factors which may contribute to there being a satisfactory explanation of delay, ie complexity of evidence; intervening holidays, leave, etc; unavailability of people; parties undertaking negotiations.

Specifically, the opponent has argued that there is no explanation for the delay and that the technology is old and not complex so that it should have been easy with even modest diligence to locate an expert.  In fact, they argued, it appears that it took the applicant at least 6 months from service of the statement of grounds and particulars to locate an expert.  They state that there are no negotiations concerning the invention between the parties.

From the applicant's statements it is clear that the applicant had located an expert within the previous extension of time but the expert's work and travel commitments in that period delayed his review of the evidence.  In addition they had to "brief our new instructor as to the subject matter of the patent application".  This provides some explanation of the delay.  However, there remains some doubt that the evidence would be complete even by the end of the presently requested extension period as the applicant states, "we reasonably expect the Evidence-in-Answer should be at least well advanced and nearing finalisation within the period which has been requested."

The public interest

Factors that relate to the public interest include the significance of the evidence and the principle that a serious opposition should be dealt with on its merits; and the desirability of matters being dealt with expeditiously before the Patent Office.

The opponent has argued that it is clear that the public interest in having a matter dealt with on its merits is supported by some flexibility in allowing the evidence of an opponent to be heard.  They submitted however that this argument either does not extend to the applicant's evidence or extends only weakly.  It was further argued that refusal of an application would not adversely affect the public interest, though it may adversely affect that of the applicant.  Specifically, it was argued:

"the public interest or benefit is obtained upon publication of the applicant's patent specification, namely the disclosure to the public of the manner of new manufacture. At the later stage now where an applicant is seeking to defend against an opposition, there is no equivalent public interest in valid patents being granted to balance the public interest in invalid patents not being granted - the primary public interest of gaining possession of knowledge of the applicant's alleged invention has already been satisfied by publication of the patent specification."

While there may be some merit in this argument in an individual case, I do not believe that extends to its being valid as a general principle.  The public interest lies also in encouraging inventors to use the patent system.  Devaluing the applicant's interest may discourage inventors from using the patent system with long term negative effects on the exchange of knowledge and encouragement of innovation.  Thus if the evidence the applicant wishes to file is significant in determining the matter then, in my view, its inclusion will contribute to the public interest.

In the present case the applicant has stated that the evidence is to be a declaration from a single Australian expert and that it relates to the matter of common general knowledge.  The opponent has argued that the nature and significance of the evidence has not been explained by the applicant apart from "bland references to evidence concerning the state of common general knowledge."  A brief perusal of the Evidence-in-Support makes it clear that a large part of the opponent's case relates to the question of lack of novelty on the basis of a number of prior documents.  Evidence as to common general knowledge per se is unlikely to have a significant impact on this part of the case.

In addition the applicant has stated that the intended declarant "has not had sufficient time to carefully review all of the Evidence-in-Support and provide detailed comments for the basis upon which to prepare a declaration."  Thus although the intention is "to submit evidence from an Australian expert as to the state of Common General Knowledge", there is little certainty on the material before me that the evidence when it was provided would materially strengthen the applicant's case.

If I grant the requested extension there will be some further delay arising from the need to allow the opponent time to file Evidence-in-Reply.  This would affect the principle that matters should be dealt with expeditiously before the Patent Office.

The interests of the opponent:

In the present context the opponent's primary interest is in a speedy resolution of the opposition.  If Evidence-in-Answer is now filed they will need time to evaluate it and, if necessary, prepare Evidence-in-Reply.  There would inevitably be some delay but it would be largely within their control.

The interests of the applicant

The applicant's interest is clearly in having their case fully heard.  However they have not appeared or presented submissions in this action.  It is unlikely that the evidence for which they are seeking the extension of time will have a significant impact on the outcome of the case.  There has been a significant delay in the preparation of their Evidence-in-Answer and there is even now no certainty that it will be ready within the period sought.  None of this evidence has been filed even though the end of the period of extension sought is only two weeks away.  There is thus unlikely to be any serious injustice done to the applicant.

CONCLUSION

Part of the delay has been reasonably explained but the applicant apparently remains uncertain that the evidence can be completed even within the extension sought.  It is unlikely that the proposed evidence would have a significant impact as it is to be directed to common general knowledge.  The latter per se is unlikely to negate the significant part of the opponent's case which is directed to lack of novelty.  If I were to grant the extension of time it would inevitably lead to some protraction of the proceedings, to the detriment of both the public and the opponent's interests.  If I refuse to grant it, there is unlikely to be any serious injury done to the applicant.

Weighing all these factors, I am not persuaded that it is appropriate that I should exercise the Commissioner's discretion to grant this extension of time.  I therefore refuse to grant this extension of time to serve Evidence-in-Answer.

As the applicant did not appear I am unable to determine whether the applicant has any evidence ready to serve.  I find the circumstances in this case similar to those in Arbor (supra) where the delegate found it inappropriate to allow even a short period within which such evidence might be served as was suggested in the Ferocem case (supra).  Thus I do not allow time for serving of such evidence.  The time for serving Evidence-in-Answer thus ended on 3 June 1999.  As no Evidence-in-Answer has been served, there will be no need to serve Evidence-in-Reply.  Therefore the substantive opposition will be set down for hearing as soon as possible.

COSTS

The opponent has submitted that if I decline the extension costs should be awarded against the applicant.  In matters before the Commissioner costs usually follow the event.  I have refused the extension of time sought by the patent applicant, Kenneth Lindsay Pagden.  Thus I find it appropriate to award costs against the applicant.

I award costs against Kenneth Lindsay Pagden.

Wanda Gunawardana
Delegate of the Commissioner of Patents

Patent attorneys for the applicant  :  Baldwin Shelston Waters, Sydney

Patent attorneys for the opponent   :  Patent Attorney Services, Box Hill