Kimberly-Clark Corporation v the Procter & Gamble Company - [1993] APO 34

official notice

decision of a delegate of the commissioner of patents

Application : Number 612742 in the name of KIMBERLY-CLARK CORPORATION

Title: A Disposable Incontinence Garment or Training Pant

Action: Objection to an application under regulation 5.10(2) of the Patents Regulations 1991 for an extension of time to serve evidence in reply in an opposition by THE PROCTER & GAMBLE COMPANY

Decision : Issued . Extension of time to serve evidence in reply allowed.

patents act 1990

decision of a delegate of the commissioner of patents

Re:Patent Application Number 612742 by KIMBERLY-CLARK CORPORATION, Opposition by THE PROCTER & GAMBLE COMPANY, and Objection to an Extension of Time to file Evidence in Reply.

background

Patent application number 612742 in the name of Kimberly-Clark Corporation was advertised accepted on 18 July 1991. The Procter & Gamble Company filed a notice of opposition on 18 October 1991, and filed a statement of grounds and particulars on 18 November 1991.

Evidence in support was due to be served by 18 February 1992. Proctor & Gamble made an application for an extension of time until 18 May 1992 in which to serve its evidence in support. Kimberly-Clark objected to the extension.

On 29 April 1992 the opponent applied for a further three month extension of time until 18 August 1992 in which to serve evidence in support. Kimberly-Clark also objected to this extension. A hearing ('the previous hearing') was held in Canberra on 9 June 1992. The delegate allowed both extensions of time.

The evidence in support was served on the applicant on 11 August 1992.

On 11 November 1992, the applicant served on the opponent three declarations from Rodney Butler, Peter Davies and Gregory Michael Turner as evidence in answer. However, it would appear that an exhibit, PD-1, which constituted part of the evidence in answer and was meant to accompany the statutory declaration by Peter Davies was not served at this time.

On 29 January 1993 the opponent sought a direction from the Commissioner pursuant to Regulation 5.10(1) that certain parts of the applicant's evidence in answer be excluded from the opposition. In a letter dated 25 February 1993, the delegate stated that it would not be appropriate to consider such a direction, as it would involve raising substantive issues concerning the merits of each case. The raising of substantive issues would not be appropriate in a directions determination.

Evidence in reply was due to be served by 11 February 1993. (The opponent has since filed part evidence in reply on 25 March 1993, 16 April 1993, and 26 April 1993.) An application for an extension of time until 11 May 1993 in which to serve evidence in reply was made by Procter & Gamble. Kimberly-Clark objected to the extension and the matter was set down for a hearing in Canberra on 31 March 1993. Mr G Turner, patent attorney of Spruson & Ferguson, Sydney represented the applicant, and Mr G Pryor, patent attorney of Davies Collison Cave, Melbourne represented the…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

Continue reading Kimberly-Clark Corporation v the Procter & Gamble Company

Details

AGLC: Kimberly-Clark Corporation v the Procter & Gamble Company [1993] APO 34
Case: [1993] APO 34
Decision Date: 13 May 1993

CaseChat Overview and Summary

In the case of Kimberly-Clark Corporation v Procter & Gamble Company, the court was asked to decide on an application for an extension of time to serve evidence in reply in an opposition to a patent application. The application was filed by Procter & Gamble, and Kimberly-Clark objected to the extension. The court had to determine whether the circumstances of the case justified an extension of time, considering factors such as the complexity of the issues, the delay in receiving an exhibit, and the impact of the Christmas/New Year holiday period.

The court considered the submissions from both parties and found that the opponent had not made a full and frank disclosure of the facts that gave rise to the need for an extension. The court also found that the applicant's failure to timely serve a copy of an exhibit contributed to the opponent's need for an extension. However, the court was not satisfied that the other justifications for the extension were sufficient. The court concluded that the balance of the interests of the parties, and of the public, favoured granting an extension of part of the time requested. The court granted an extension of time to 1 May 1993 to file evidence in reply, and awarded costs against the applicant, Kimberly-Clark Corporation.

This case highlights the importance of making a full and frank disclosure of the facts when seeking an extension of time in patent opposition proceedings. The court found that the opponent had not provided sufficient information to justify the full extension of time sought. The court also found that the applicant's failure to timely serve an exhibit contributed to the opponent's need for an extension. However, the court was not satisfied that the other justifications for the extension were sufficient. The court concluded that the balance of the interests of the parties, and of the public, favoured granting an extension of part of the time requested. The court granted an extension of time to 1 May 1993 to file evidence in reply, and awarded costs against the applicant.

Orders