Kimberly-Clark Ltd v Commissioner of Patents

[1988] FCA 697

Re: KIMBERLY-CLARK LIMITED
And: THE COMMISSIONER OF PATENTS and MINNESOTA MINING AND MANUFACTURING
COMPANY
No. VG93 of 1988
Patents

COURT

IN THE FEDERAL COURT OF AUSTRALIA

VICTORIAN DISTRICT REGISTRY
GENERAL DIVISION
Jenkinson J.(1)

CATCHWORDS

Patents - Opposition to grant - Extension of time - Patents Act 1952, s.160(2)(a) - Construction - "Error or omission" - "by reason of".

Patents Act 1952 ss. 59(1), 160

Australian Paper Manufacturers Ltd. v. C.I.L. Inc. (1981) 148 CLR 551

Lehtovaara v. Acting Deputy Commissioner of Patents (1981) 39 ALR 103

Mitty's Authorised Newsagency v. Registrar of Trade Marks (1983) 78 FLR 217

Vangedal-Nielsen v. Commissioner of Patents (1980) 33 ALR 144

HEARING

MELBOURNE

#DATE 2:12:1988

Counsel for the Applicant: Mr J.F. Lyons QC and Mr B.N. Caine

Solicitors for the Applicant: Mallesons Stephen Jaques

Counsel for the First-named Respondent: Mr D. Shavin

Solicitor for the First-named Respondent: Australian Government Solicitor

Counsel for the Second-named Respondent: Mr K.R. Handley QC and Mrs S.M. Crennan

Solicitors for the Second-named Respondent: Williams Niblett

ORDER

The Application be dismissed.

The costs of each respondent of the application (including reserved costs) be paid by the applicant.

NOTE: Settlement and entry of orders is dealt with in O.36 of the Federal Court Rules.

JUDGE1

Application for an order of review in respect of an administrative decision of a delegate of the respondent Commissioner of Patents.

1. The respondent Minnesota Mining and Manufacturing Company ("Minnesota") was at relevant times prosecuting an application for a standard patent. Acceptance of the application and complete specification was advertised in the Official Journal on 7 May 1987. Section 59(1)(d) of the Patents Act 1952 provides:
   

"(1)The Minister or a person interested may, at any time within 3 months after the date of the advertisement of the acceptance of an application for a standard patent and complete specification, or within such further period, not exceeding 3 months, as the Commissioner, on an application made to him within the first-mentioned period, allows, by notice in writing lodged at the Patent Office, oppose the grant of the patent on one or more of the following grounds, but on no other ground: ........ ........ ........ ........ ........ ......

(d) that the invention, so far as claimed in any claim, is the subject of a claim of earlier priority date contained in the complete specification or petty patent specification of a patent."

The applicant is the patentee of an Australian patent relating to a method of making a non-woven web of melt blown polymeric fibres within which web are distributed absorbent particles. The priority date of the claims of the complete specification is 24 November 1981, the date of making the basic application in Great Britain. The basic application in the United States of America upon which Minnesota's Australian patent application is based has for priority date 4 March 1982. Considering that it would probably wish to oppose, on the ground specified in s.59(1)(d), the grant of the patent sought by Minnesota, the applicant lodged on 4 August 1987 a written application to the respondent Commissioner that he allow the applicant, in exercise of the power conferred by s.59(1), until 7 November 1987 for lodging notice in writing of the applicant's opposition to the grant. That application was heard by a delegate of the Commissioner on 18 September 1987 and was refused on 22 October 1987. On 18 September 1987 notice in writing by the applicant of opposition to the grant of the patent had been lodged at the Patent Office. On 4 November 1987 an application in writing was made by the applicant, pursuant to Regulation 47 of the Patent Regulations, for an extension of the time for lodging that notice of opposition from 7 August 1987 until 18 September 1987, by an exercise of the power which the applicant contends that s.160(2)(a) of the Patents Act 1952 confers on the Commissioner. Section 160 provides:

"(1) Where, by reason of an error or omission on the part of an officer or person employed in the Patent Office, an act or step in relation to an application for a patent or in proceedings under this Act (not being proceedings in a court) required to be done or taken within a certain time has not been so done or taken, the Commissioner shall extend the time for doing the act or taking the step.

(2) Where, by reason of -

(a) an error or ommission on the part of the person concerned or of his agent or attorney; or

(b) circumstances beyond the control of the person concerned, an act or step in relation to an application for a patent or in proceedings under this Act (not being proceedings in a court) 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, but subject to this section, extend the time for doing the act or taking the step.

(3) The time for the doing of an act or the taking of a step may be extended under sub-section (1) or (2) although that time has expired.

(4) Where an application is made under sub-section (2) for an extension of time for more than 3 months, the Commissioner shall advertise the application in the Official Journal.

(5) A person may, as prescribed, oppose the granting of the application.

(6) Where an extension of time is granted under this section, such provisions as are prescribed have effect for the protection or compensation of persons who availed themselves, or took definite steps by way of contract or otherwise to avail themselves, of the invention the subject of the application for the patent concerned by reason of the act or step in relation to which the extension was granted not having been done or taken within the time allowed.

(8) This section does not apply in relation to the doing of an act or the taking of a step under section 47, section 47A, section 47B, section 47C or sub-section 52B(1)."

After a hearing in which Minnesota participated a delegate of the Commissioner decided on 9 February 1988 that the application for exercise of the power conferred by s.160(2)(a) should be refused. That is the decision in respect of which an order of review is sought under the Administrative Decisions (Judicial Review) Act 1977. The earlier decision that no extension should be granted, in exercise of power conferred by s.59(1), of the time prescribed for lodging notice of opposition had on 19 November 1987 been made the subject of an application for review by the Administrative Appeals Tribunal. The hearing of that application by the Tribunal, constituted by myself as a Deputy President of the Tribunal, was interposed during the hearing by me of the application under the Administrative Decisions (Judicial Review) Act 1977. The hearings concluded on the same day. The decision in writing of the Tribunal has been published this day, before the Court sat to give judgment on this application.

1. It was submitted by Mr. Handley QC, who appeared with Mrs. Crennan for Minnesota, that the decision sought to be reviewed had been required by law for a reason which had not been given by the Commissioner's delegate. The "act or step" for the doing or taking of which an extension of time had been sought, that is the lodging of notice of opposition, was in Mr. Handley's submission neither an act or step "in relation to an application for a patent" nor an act or step "in proceedings under this Act", within the meanings of those phrases in s.160(2) of the Patents Act 1952. Until proceedings have been commenced an act or step having reference to the proceedings cannot be said to be "in" those proceedings, it was submitted. While it was established by the decision of the High Court in Australian Paper Manufacturers Ltd. v. C.I.L. Inc. (1981) 148 CLR 551 that an act or step which institutes, and which may therefore be conceived as preceding, an application for a patent is an act or step "in relation to" that application, Mr. Handley submitted that the phrase "an act or step in relation to an application for a patent" comprehended only such an act or step as the applicant should or might take in initiating or in furthering the application, not an act or step in initiating or in furthering opposition to the application. The submission was said to draw support from the circumstance that in that case Stephen J., in whose reasons for judgment Mason and Wilson JJ. concurred, had stated that the word "application" in the phrase "application for a patent" referred to "the whole process of seeking patent protection in Australia". But it is to the expression "in relation to" that attention ought in my opinion to be principally directed in determining what manner of act or step is comprehended by the phrase "act or step in relation to an application for a patent". As Mr. Handley admitted, the connection which the expression "in relation to" indicates is very general. It was submitted that sub-section 160(6) contemplated only extensions in favour of the furtherance of a patent application. But the sub-section is not in my opinion inconsistent with the existence of other extensions under the section, in relation to which sub-section (6) would, according to the submission, have no operation. In sub-section 160(8) the application of the section in relation to the doing of an act or the taking of a step under s.47B is excluded. That exclusion would be unnecessary if Mr. Handley's submission were correct, that only an act or step by an applicant for a patent may be "an act or step in relation to an application for a patent", for s.47B is concerned with an act or step by "a person other than the applicant" and the act or step which that section prescribes is not an act or step "in proceedings under this Act".

2. The words "an act or step in relation to an application for a patent" are in my opinion apt to comprehend the lodging of notice in writing of opposition for which s.59(1) provides. Neither in sub-section (1) nor in sub-section (2) of s.160 do I discern any reason to restrict the application of those words to acts and steps by the applicant. The misfortunes with which the two sub-sections are concerned may befall any of the several classes of persons to which the Act accords opportunities to participate in "the whole process of seeking patent protection in Australia", and I see no ground, either in the text of the Act or in the policy which s.160 seems to disclose, of distinction between those classes.

3. It is unnecessary that I express a concluded opinion whether the lodging of the notice contemplated by s.59(1) is "an act or step .... in proceedings under this Act", within the meaning of those words in s.160(2). As at present advised I think that the lodging of the notice, which is the act or step by which opposition proceedings are initiated, is an act or step "in" those proceedings. To reach that conclusion does no violence, in my opinion, to idiomatic usage. Nor do I think that there is any logical difficulty about treating the act by which a proceeding is commenced as an act in the proceeding. The construction to which I incline sorts well, I should think, with the remedial character of the provision.

4. It was a ground of the application for an order of review that the decision involved an error of law in that the person who made the decision mistakenly construed the words "error or omission" in s.160(2)(a) as comprehending only what was described by him as "an accidental event" and as "inadvertence", and as not comprehending that which is the product merely of an "error of judgment".

5. The Commissioner's delegate had before him, in addition to the prior written application for an extension of time and the reasons for the refusal of that application and the two complete specifications and the notice of opposition filed on 18 September 1987, the written application under s.160(2)(a) and two statutory declarations filed in support of that latter application. The written application included the following:
   

"The circumstances in which, and grounds upon which, this application is made are as follows:

In a letter dated 14th March 1984, our British patent agents, Messrs. Lloyd Wise, Tregear & Co., wrote to our Australian patent attorneys, Messrs. Sandercock, Smith & Beadle, instructing them to keep a watch on Australian patent application no. 12031/83, and to let the patent agents know immediately it is published for opposition purposes, it being indicated that we may well wish to oppose the grant of Letters Patent. The first knowledge that our patent agents had that application no. 12031/83 had been accepted under no. 561405, was when the agents received on or shortly before 27th July 1987, a letter dated 20th July 1987 from Sandercock, Smith & Beadle, advising of the acceptance, and of the due date of 7th August 1987 for lodging Notice of Opposition, and enclosing a copy of the specification as accepted. The letter informed the agents that an extension of time could be sought to allow us time to consider the matter. On 27th July 1987 our patent agents instructed our patent attorneys to request an extension of time for lodging Notice of Opposition, and such an application was lodged on 3rd August 1987. We are informed that the person responsible for the watching service in the firm of Sandercock, Smith & Beadle advised the acceptance of application no. 12031/83 on 27th May 1987. The advice of acceptance was given to Peter Smith of that firm, and was shortly thereafter passed to Charles Sandercock, also of the firm, who originated the watch service commission.

Mr. Sandercock erred in not immediately advising our patent agents of the fact and details of acceptance. He also erred in asking the person responsible for the watching service to order a copy of the accepted specification, as such actions were not part of that person's job description. He further erred in not arranging for the creation of a reminder to remind him if the specification had not been received within a short period of time.

The specification was ordered by telephone from a contact searcher located at the Melbourne Patent Sub-Office. Initially, the microfiche copy of the accepted application was not available at the Sub-Office, but the further course of events is unclear, except that there was no monitoring of the situation by Mr. Sandercock or the operator of any reminder system.

The specification in question was ultimately received by the patent attorneys on 20th July 1987, and the copy transmitted to the patent agents under cover of a letter of the same date, as indicated earlier in these grounds. The letter was sent by TNT Skypack, and thus took in the order of a week to reach the patent agents in the United Kingdom. Our patent agents were not informed of any details of the delay in advising acceptance and forwarding the copy of the accepted specification until after 7th August 1987. By 18th September 1987 we were in a position to instruct that a Notice of Opposition be lodged, and documents purporting to be such a notice were lodged on that date. We believe that and (sic) error or omission on the part of our Australian patent attorneys lead (sic) to the failure to lodge Notice of Opposition in this matter. Specifically, but not exclusively there was an error in not immediately informing us of the advertisement of acceptance on or shortly after 27th May 1987; there was an error in not ensuring that a copy of the accepted specification reached us in good time before the due date; there was an error in not transmitting the copy to our patent agents by facsimile transmission on 20th July 1987; and there was an omission in that we were not advised that an extension of time for lodging Notice of Opposition had to be supported by adequate grounds, and that such an extension may be opposed by, in this case, the applicant.

As a result of one or more of the aforementioned errors and omissions, we did not lodge Notice of Opposition prior to the due date of 7th August 1987."

The statutory declaration of Charles Sandercock was in these terms:

"1. That I am a partner in the firm of Sandercock, Smith & Beadle.

2. That I act on behalf of Kimberly-Clark Limited.

3. That I instructed a watch to be made in respect of acceptance of Application No. 561,405.

4. On being advised on or about 27th May, 1987 that Application No. 561,405 had been accepted I instructed Mrs. Pat Doran of this firm to order a copy of the Specification as at acceptance of Application No. 561,405. My instructions to Mrs. Doran were that she should obtain a copy through Mr. Gordon Crickmore a contract searcher who works in the premises of the Patents Sub-Office, Melbourne, by him placing an order with the Sub-Office staff.

5. I erred by omitting to immediately advise the British Patent Agents acting for my client of the fact of acceptance so that they could consider opposing notwithstanding that they were not then in possession of a copy of the complete specification.

6. That my reason for requesting a copy through Mr. Crickmore rather than from the Patent Office in Canberra was that my experience to date indicated that: a. Copies could be obtained more quickly by an order placed at the Sub-Office than by an order placed at the Patent Office in Canberra,

b. While the Patent Office in Canberra is efficient at supplying copies and it is very rare that there is any delay, nevertheless on rare occasions delays do occur and when such delays occur it is difficult for me and my staff to successfully in a short time request Patent Office staff to quickly locate one particular order out of the many orders that the Patent Office receives and further I have found that many delays could in no way be attributed to the Patent Office but were in fact due to mail delays, and c. While the Sub-Office in Melbourne is efficient at supplying copies I had formed the opinion that placing an order through Mr. Crickmore in the Sub-Office had the advantage of interposing in the order chain a human being having direct responsibility to my firm and having the interests of my firm at heart who could be relied upon to follow up if perchance the order for a copy were not filled in a reasonable time.

7. That I now realise that I erred in placing an order for a copy in the way I did.

8. I also made an error in not entering a reminder to remind me if a copy was not received. I did not enter a reminder because I did not conceive that a copy might not be received in time and thus that it is a further error that I made by not having sufficient sense to realise that what I considered to be a safe procedure would prove to be insufficiently safe.

9. I also made an error in failing to follow up Mrs. Pat Doran as to why the copy had not been received.

10. That I am informed by Mrs. Pat Doran that she contacted Mr. Crickmore 4 times to obtain the copy of the specification as accepted of Application No. 561,405. On the first and second occasions she requested Mr. Crickmore to obtain a copy from Sub-Office staff. On the third occassion with about 1 month to the due date she contacted Mr. Crickmore and was then informed that the microfische was not available in the sub-office. On the fourth occassion with about 2 weeks to go she emphasized the urgency and on 20th July, 1987 the copy of the specification was at last received.

11. Exhibited hereto as Exhibit CS1 is a copy of the invoice supplied by the Melbourne Sub-Office.

12. On 20th July, 1987 realizing the urgency of the matter I dispatched a copy of the specification to the British Patent Agents acting for my client. I did not send that copy by fax and this was a further error of mine but my reason was that the copy that was received was of such poor quality as to be unsuitable for faxing. I now appreciated that I made a further error by not having the specification retyped so as to be suitable for faxing.

13. That exhibited hereto as Exhibit CS2 is the front page of the copy that was actually received from the Sub-Office to illustrate the quality of the copy.

14. That I also erred by not informing the British Patent Agents that it would be necessary to present at the Hearing in respect of the Extension of time details of the grounds of Opposition which might be used beyond a statement that Opposition could be based on prior claiming based on a particular granted Kimberly-Clark Limited Patent.

15. That I also erred in not anticipating that a Hearing Officer would take the attitude that because a prior claiming matter had been considered during Examination then that prior claiming matter must necessarily not be persuasive in Opposition proceedings.

16. That the above detailed series of errors on my part caused this matter to go beyond the due date.

17. That because of shortness of time my client was unable to formulate its grounds of opposition to adequately support its case."

It is unnecessary to set out the exhibits. The statutory declaration of Patricia Doran was as follows:

"1. That I am employed within Sandercock, Smith & Beadle to be in charge of watching the Official Journal of Patents for acceptance of certain Patent Applications with a view to advising the partners when such acceptance occurs.

2. That on advising Mr. Sandercock of the acceptance of Application No. 561405 on or about 27th May, 1987 I was instructed by him to obtain a copy of the specification as at acceptance.

3. I then telephoned Mr. Gordon Crickmore on or about 29th May, 1987 at the Patents Sub-Office Melbourne and asked him to place an order for the specification with the staff of the Patents Sub-Office.

4. That I am aware that delays of 2 or 3 weeks can occur in the provision of copies but when I had not received the copy by 12th June, 1987 I again contacted Mr. Gordon Crickmore to remind him and was then informed by him that the microfische was not available but that as soon as it was available he would send me the copy.

5. When I had not received the copy by 30th June, 1987 I was very concerned about the matter and I again contacted Mr. Crickmore.

6. When on about 16th July, 1987 no copy had been received and realizing that the matter was now urgent I contacted Mr. Crickmore on 16th July, 1987 and told him the matter was now very urgent. Mr. Crickmore said he would try again and as a result I received on 20th July, 1987 the copy of the specification which I immediately took to Mr. Sandercock pointing out the urgency of the matter.

7. In explanation of the long delay I advised Mr. Sandercock that I had had to follow up Mr. Crickmore several times but I did not tell Mr. Sandercock that at least part of the delay was due to microfische not being available as at the time it did not seem significant to me and as the specification had been received in time albeit very short time.

8. That I have subsequently discussed this matter with Mr. Crickmore who has told me that he has no specific recollection of the particular order for a photocopy as he orders so many copies from the staff of the Patents Sub-Office but that he does know that microfische occassionally are late in arriving at the Sub-Office or can go missing or astray.

9. That I have subsequentialy discussed this matter with the staff of the Patents Sub-Office Melbourne but they have no recollection of the particular order for a photocopy as so many orders are received."

The reasons for the decision include the following:

"It has been decided that an error or omission of judgment is not one which would comply with the requirements of s.160(2). In C.S.I.R.O.'s Application 1978 AOJP 3019 the Commissioner's delegate stated, at 3021, referring to s.160(2):

'I do not think that that sub-section can be used to change a course of action deliberately chosen by an attorney to a different course of action involving a different application which, with hindsight, the attorney now believes to be more appropriate'.

I consider that to be appropriate for s.160(2) an error or omission should be an accidental event or one of inadvertance, and that the function and capacity of the person making the error or omission should be taken into account.

In this case the two major errors made by SSB were firstly that a copy of the accepted specification was ordered from Mr Crickmore instead of directly from the Patent Office in Canberra; and secondly that with only approximately two weeks remaining of the initial three month period the copy of the accepted specification was forwarded by mail to the prospective opponents in the United Kingdom by their attorneys. SSB's action I consider to be neither mistaken nor accidental but more the product of following a course of action deliberately chosen by Mr Sandercock, and was not an omission in the sense of a failure to act. In the decision of 22 October 1987 in the matter of KCL's application for extension of time under s.59(1) referred to above, the Commissioner's delegate stated, on page 6,

'there are better and more direct ways of obtaining a patent specification, but the Attorneys chose to keep following their original course and just let time pass rather than choose a quicker alternative. Therefore, the difficulties which they encountered were clearly of their own making.'"

In concluding his reasons, which included a consideration of circumstances relevant to the exercise of the discretion which s.160(2) confers, the delegate wrote:

"Even though s.160(2) can be construed as generally being appropriate to extend the period in which to lodge notice of opposition and a prospective opponent is legally entitled to apply under this sub-section of the Act in appropriate circumstances, in this case I refuse to allow KCL's extension of time under s.160(2) to lodge notice of opposition because the errors or omissions made by SSB were essentially errors of judgment and thus not in compliance with the terms of s.160(2), and generally the prospective opponent has not established an appropriate case to justify the allowance."

1. It was strongly submitted by Mr. Handley, and by Mr. Shavin of counsel for the Commissioner, that, unless the words "error or omission" be limited by construction to that which is unintended or which has been produced by accident or inadvertence, every failure, to do an act or take a step within the time prescribed by the Act, to the causing of which failure some mental process contributed which the Commissioner considers erroneous will satisfy the condition specified in s.160(2)(a). This, they submitted, reduces the provisions of s.160(2)(a) to the status of a general discretionary power to extend prescribed times, whereas it is plainly - as it has been described in Lehtovaara v. Acting Deputy Commissioner of Patents (1981) 39 ALR 103 at 112 - a provision for "extensions needed in special cases".

2. The inclusion of error or omission on the part of the person concerned or of his agent or attorney as circumstances enlivening the discretionary power of extension conferred by s.160 was effected by the Patents Act 1960. The speech of the Attorney-General on moving the second reading of the Bill for that Act included this statement of the reason for the amendment:
   

"I now pass to the power of the Commissioner to extend the time set down for the doing of an act. Under section 160 of the act, he can extend the time where the act has not been done by reason of circumstances beyond the control of the person concerned. The committee considered representations that through pressure of business in offices of patent attorneys, errors do occur that result in acts that ought to be done not being done. It recommended that an error or omission on the part of an applicant, or of his agent or attorney be made an additional ground for extending the time for the doing of an act. Clause 29 restates section 160 to give effect to this recommendation. Provision is also made by the amendment to protect persons who are adversely affected by an extension of time under the section."

The committee to which the Attorney-General referred had reviewed, under the chairmanship of Mr. Justice Dean, the operation of the Patents Act 1952 from the time when it commenced on 1st May 1954. Those observations confirm the impression which the words of s.160(2)(a) might be thought to give that Parliament was concerned with accidental slips which frustrate an intention formed to do an act or to take a step within the time required, and not with errors or omissions the products of deliberation. But the same amending Act of 1960 substituted for the words "an error or action on the part of an officer or person employed in the Patent Office" in s.160(1) the words "an error or omission on the part" of such a person. A deliberate choice of the same collocation of words was thus made to designate the aberrations of the person holding office or employment in the Patent Office and "of the person concerned or of his agent or attorney", by reason whereof a consequence of the same description ensued. It is in my opinion difficult to suppose that only the inadvertences and accidental steps, and not errors resulting from faulty reflection, of the former class of persons were intended by the draftsman to be within s.160(1). Further, the word "error" is not easily assigned a clear meaning restricted by reference to one or several particular categories of flawed mental function. The attempt is likely to lead to the drawing of fine and often unrealistic distinctions. And some errors of judgment by agents and attorneys may be as bizarre and as little to be anticipated as lapses of memory and accidental slips. Although the latter kinds of error may be those which the draftsman had principally in mind, I do not think the phrase "error or omission" should be given by construction the restricted meaning which the delegate assigned, and accordingly I conclude that this ground of the application has been established.

1. I do not think that the conclusion I have reached reduces s.160(2)(a) to a mere general power of extension. By no means every judgment by "the person concerned" or by "his agent or attorney" which can be shown to have been mistaken will answer the description "error or omission" in the ordinary meaning of those words, which in their context carry, in my opinion, a connotation of obviousness in error.

2. Mr. Handley submitted that the failure to do the act or to take the step postulated in respect of an application for exercise of the power conferred by s.160(2)(a) cannot itself be the "error or omission" by reason whereof the failure occurred. I accept that. Where before that failure has occurred a step inconsistent with the doing of the postulated act or the taking of the postulated step is deliberately taken, as here before 7 August 1987 application was made under s.59(1) for extension of the time within which to lodge notice of opposition and that step was inconsistent with the lodging of notice on or before 7 August 1987, it cannot in Mr. Handley's submission be said that the failure to lodge the notice on or before 7 August is "by reason of" any error or omission which preceded the making of the application under s.59(1). The deliberate decision to make that latter application - a course of action inconsistent with lodging the notice of opposition on or before 7 August 1987 - was in Mr. Handley's submission the cause of the failure to lodge the notice on or before 7 August 1987, and the taking of that deliberate course of action severed any causal connection which might, if that course of action had not been taken, have been found between an error or omission preceding the taking of that course of action and the failure to lodge notice of opposition on or before 7 August 1987.

3. This submission by Mr. Handley raises a question as to the nature of the causal relationship signified by the introductory phrase "by reason of" in s.160(2). That phrase in a similar statutory context was considered by Beaumont J. in Mitty's Authorised Newsagency v. Registrar of Trade Marks (1983) 78 FLR 217 at 229-230:
   

"The meaning of the phrase 'by reason of' has been considered in a number of authorities. In Main Electrical Pty. Ltd. v. Civil and Civic Pty. Ltd. (1977) 19 SASR 34, Bray C.J. (at 49) said that the phrase implies a relationship of cause and effect but it is a relationship which may be indirect (see The Diamond (1906) P 282; see also Vickers v. Young (1982) 65 FLR 260 at 280). In R. v. Justices of the Peace at Yarram; Ex parte Arnold (1964) VR 31, Sholl J. held (at 24) that 'by reason of' could extend to consequential matters. In my opinion, the phrase, where used in s.131, should be given the meaning explained in these cases."

1. The evidence before the Commissioner's delegate relevant to a determination of questions about the cause or causes of the applicant's failure to lodge notice of opposition on or before 7 August 1987 is less extensive than the evidence which was before me in the proceeding in the Administrative Appeals Tribunal to which I have referred. But the material before the delegate would probably justify a finding that nothing which had happened before that date either had made the lodging of the notice of opposition by that date impossible or had convinced any servant or agent of the applicant that the lodging of the notice by that date was impossible. In that sense the failure to lodge the notice by that date and the taking of the inconsistent step of applying under s.59(1) for an extension of time were the products of deliberate decisions by the applicant. But in my opinion those conclusions do not necessarily preclude a conclusion that some prior error or omission had contributed to cause the failure to lodge the notice. The various acts and omissions of the applicant's agents in this country which contributed to the result that the applicant's servants and agents overseas, who were charged with the responsibility to decide whether or not the applicant would oppose Minnesota's application, received Minnesota's complete specification at so late a date may be said to have contributed to cause those two deliberate decisions to be made and so to cause the omission to lodge the notice. If the delay in communicating the complete specification to those persons overseas had not occurred, lodging of notice of opposition on or before 7 August 1987 would probably have occurred, one may suppose that the delegate would have found. Other circumstances apparently contributed to the making of those deliberate decisions, including other voluntary acts and omissions of Mr. Sandercock. The statement of the grounds of the application discloses that his letter dated 20 July 1987 included a statement "that an extension of time could be sought to allow us time to consider the matter", but that "we were not advised that an extension of time for lodging Notice of Opposition had to be supported by adequate grounds, and that such an extension may be opposed by in this case, the applicant." The influence which those acts and omissions exerted upon the mind which on behalf of the applicant decided to make application under s.59(1) and to refrain from lodging notice of opposition on or before 7 August 1987 is not disclosed by the material before the delegate.

2. In his reasons for his decision the delegate dealt with the question which Mr. Handley's submission raises in these terms:
   

"Firstly, in this regard I am satisfied that the failure to lodge the notice of opposition in the specified time can be attributed to the errors or omissions made by SSB. It was argued that because an extension of time had been applied for under s.59(1), this indicated there was no intention on KCL's part to lodge the notice of opposition in the initial three-month period, and that the errors or omissions that were made therefore did not relate to the failure to lodge the notice of opposition within the specified time. However I am not sympathetic to this argument, as it seems to be an unnecessarily restrictive interpretation on the wording of s.169(2). All that is required is once an error or omission has been established that there be some link between that error or omission and the failure to lodge the notice of opposition within three months. In the present circumstances, in the initial three month period, KCL had not seen the accepted specification, so there is some doubt as to their intentions with regard to lodging a notice of opposition over this period. More significantly though, and notwithstanding the prospective opponent's intentions, the evidence establishes that the errors or omissions made by SSB were linked to the failure to lodge the notice of opposition within the first three months. Similar circumstances in which there was doubt about the prospective opponent's intentions were resolved in the prospective opponent's favour in Liquid Air Australia v C.I.G. 1 IPR 145, Firmaframe Nominees v Automatic Roller Doors 4 IPR 137, Groko Maskin's Application 3 IPR 614 and Dentsply International v Bayer 7 IPR 408."

1. The notice of opposition filed on 18 September 1987 states the opposition proposed, states the interest of the applicant as "a company involved in research into non-woven fabrics and in the commercial development, manufacture and marketing of such products" and as the proprietor of Australian Patent No. 552214, and states the grounds of opposition in the terms of all the lettered paragraphs of s.59(1) (including sub-paragraph (c)(ii) thereof, which concerns petty patent applications only). This document was before the delegate. It may have been open to the delegate to have found that it was by reason of Mr. Sandercock's failure to point out to the applicant's British agents that the lodging on or before 7 August 1987 of even such a document was a wiser course than embarking on an application under s.59(1) that the lodging of such a notice was not done within that time, and open to him to have concluded that all that had happened before 20 July 1987 had made so indirect a contribution to the failure to lodge the notice within that time that that failure had not occurred "by reason of" any of those happenings. But I accept as applicable in respect of s.160(2) what Beaumont J. said in Mitty's Case, supra concerning the indirect causal relationship which is comprehended by the expression "by reason of". And, whatever other finding may have been open to the delegate, I do not consider that the finding he did make, of a sufficient causal connection between the errors and omissions which preceded 20 July 1987 and the failure to lodge notice of opposition on or before 7 August 1987, was one which on the material before him was not open to him.

2. Mr. Handley submitted that an application under s.160(2) for an extension of time could not be made until the application under s.59(1) had been heard and determined, because it could not be known until then whether the time within which the lodging of notice of opposition was required to be done was the period ending on 7 August 1987 or a period ending on a later date allowed in exercise of the power conferred by s.59(1). It may be conceded that, if the application under s.59(1) had been granted by the Commissioner's delegate, the time within which notice of opposition would have been required to have been lodged would have been the later time fixed by that delegate, not a time expiring on 7 August 1987. But that circumstance constituted no obstacle, in my opinion, to the institution or to the hearing of an application under s.160(2)(a) while a decision on the application under s.59(1) was pending. Until the latter decision was given, the time limited for the lodging of the notice was 7 August 1987, in my opinion. It is in my opinion only the decision of an application under s.160(2)(a) which should be deferred until a decision has been given on the s.59(1) application.

3. Other grounds of review are stated in the originating application and were the subject of submission. They relate to the exercise of the discretionary power which is enlivened when the introductory clause of s.160(2)(a) is satisfied. It is in the circumstances of this case inappropriate, in my opinion, that I deal with those grounds. The material placed before the Commissioner's delegate was in my opinion quite insufficient to permit exercise of the power conferred by s.160(2)(a) in favour of the applicant. The material does not disclose the identity or occupation or situation of the person by whom the decision whether to lodge notice of opposition was taken. It may be inferred that Mr. Sandercock was not that person. Nothing is clearly disclosed in the statement of the grounds of the application or in the statutory declarations of the way in which any of the circumstances specified as errors or omissions affected the mind of that person to bring about that decision. In the statutory declaration of Mr. Sandercock it is asserted that "the above detailed series of errors on my part caused this matter to go beyond the due date", and then that "because of shortness of time my client was unable to formulate its grounds of opposition to adequately support its case". When that latter assertion is considered in the light of the terms of the notice of opposition (which comprehend all the grounds of opposition afforded by s.59(1)), there may be some ground for supposing that the reference by Mr. Sandercock to formulation of grounds of opposition comprehends some process, never completed, of selection of appropriate grounds. But the case was conducted before me - and there was nothing in the material or in the submissions of counsel to suggest that it was otherwise before the Commissioner's delegate - on the footing that the only ground seriously contemplated was that afforded by s.59(1)(d). The latter two sentences of the second paragraph of the statement (which is quoted above) of the circumstances in which, and the grounds upon which the application under s.160(2)(a) was made, as well as the description of the last of the errors and omissions specified in the penultimate paragraph of that statement, suggest that it may have been a confidence on the part of the unidentified person that an extension would certainly be granted, rather than a belief related to inability "to formulate" grounds of opposition which induced his decision to refrain from causing notice of opposition to be lodged. But the material before the delegate hardly justifies more than speculation as to the mental processes by which the decision was reached. I have already indicated, when dealing with Mr. Handley's submissions concerning causation, my opinion that the material before the Commissioner's delegate would support his conclusion that the causal connection between the errors and omissions of Mr. Sandercock's firm and the failure to lodge notice of opposition on or before 7 August 1987 satisfied the requirement expressed by the words "by reason of" in s.160(2). But what may just suffice to enliven the power cannot in this case justify its exercise, in my opinion. The considerations which were identified by Bowen C.J. in Vangedal-Nielsen v. Commissioner of Patents (1980) 33 ALR 144 at 150 as relevant to the exercise of the power of extension conferred by s.59(1) will in my opinion be relevant also to the exercise of the power conferred by s.160(2)(a) in relation to the time prescribed by the former sub-section for lodging notice of opposition, although the relative weight of each consideration may well be different in the two different discretionary judgments. In order to make out the "proper case .... justifying an extension" to which Bowen C.J. referred in that case, an applicant would in my opinion have to go beyond a disclosure of the processes by which an agent's errors came to be committed, and would have to expose frankly, inter alia, all the conduct, knowledge, beliefs and mental processes of the applicant (or, in the case of corporation aggregate, of the relevant officers and other agents) relevant to an understanding of the way the failure to do the act or take the step occurred, or relevant to an evaluation of the reasonableness of that conduct. Whether or not the error or omission of the agent which enlivened the power occurred without moral fault on his part, the applicant's claim to the exercise of the power cannot be judged without the means of evaluating the applicant's moral claim to an indulgence which will, to some extent at least, work a prejudice to the efficient operation of what Bowen C.J. in that case called "the system", even if no prejudice to the applicant for a patent. In this case no material of that kind was submitted to the delegate. To take but one example, no material was placed before the delegate concerning the knowledge, or lack of knowledge, possessed by those of the applicant's officers and servants who were responsible for deciding what instructions should be given Mr. Sandercock in the last days of July and the first days of August 1987, of Australian patent law and practice. Section 160(2)(a) confers a power so conditioned that in my opinion its exercise is not lightly to be granted, and a power to be invoked only upon a prompt, frank, comprehensive and clear disclosure of all the circumstances relevant to the weighing of the discretionary considerations upon which grant or refusal of an extension of time will depend. I do not suggest that there was any intentional lack of frankness on the part of those acting for the applicant in the application for extension of time under s.160. But in each other respect the application was so seriously lacking that in my opinion the delegate could not reasonably have concluded that a proper case justifying an extension had been shown. I have given examples of omissions and lack of clarity. Although the point was not argued, except in relation to Mr. Handley's submission that application under s.160(2)(a) must be deferred until application under s.59(1) has been decided, I think I should say that, as at present advised, my opinion is that the lodging of an application under s.160(2)(a) should follow as soon as possible after discovery of the error or omission upon which reliance is to be placed, even in a case such as this was where an application has been lodged under s.59(1). It would then be for the Commissioner to decide whether to conduct the hearing of both applications together, or one after the other, or how otherwise the two applications should be dealt with.

4. In my opinion the delegate could not on the material before him have exercised the discretionary power in favour of the applicant. For that reason the application for an order of review in respect of the decision will be dismissed. The costs of both respondents will be ordered to be paid by the applicant.