Kingsford Ross Heylen v Balsam Pacific Pty Limited

[1997] APO 66

official notice

decision of a delegate of the commissioner of patents

Application  :          No. 664427 in the name of KINGSFORD ROSS HEYLEN

Title:          Synthetic Bowling Green

Action:          Opposition by BALSAM PACIFIC PTY. LIMITED under s.59, and an objection to an application for an extension of time under regulation 5.10(2) to serve evidence in answer.

Decision:          Issued            .

Abstract

Extension of time under regulation 5.10(2) to serve evidence in answer granted for the period requested.

The following factors were taken into consideration:

The applicant had provided sufficient reasons to establish a proper case justifying the extension, though this is not a mandatory requirement.

The interests of the applicant in this matter clearly favoured a grant of the extension of time sought to file evidence in answer, while the interests of the opponent favoured a refusal.

In the matter of the public interest:

a) The need for the Commissioner to ensure that invalid patents are not granted supported the grant of an extension of time to enable the applicant to file evidence in answer.

b) The need for the Commissioner to ensure that proceedings are not unduly protracted did not, on the facts of the case, favour a refusal of the extension sought.

c) Consideration of the nature of the evidence sought to be adduced and the significance of the evidence for opposition proceedings clearly supported a grant of the extension sought.

Taking all the factors into account a grant of the extension of time sought to file evidence in answer was found to be appropriate in all the circumstances.

Costs were awarded in favour of the applicant (Kingsford Ross Heylen).

patents act 1990

decision of a delegate of the commissioner of patents

Re:Patent Application No. 664427 by KINGSFORD ROSS HEYLEN, Opposition by BALSAM PACIFIC PTY. LIMITED, and Objection to an application for extension of time under Regulation 5.10(2) to serve evidence in answer.

background

Patent Application No. 664427 in the name of KINGSFORD ROSS HEYLEN (HEYLEN) was advertised accepted on 16 November 1995.  BALSAM PACIFIC PTY. LIMITED (BALSAM) served a notice of opposition on 16 February 1996 and a statement of grounds and particulars on 15 May 1996.

Patent application 664427 is a further application derived from application 54901/90, which had an earliest priority date of 10 May 1989.  Thus application 664427 prima facie also has an earliest priority date of 10 May 1989.

Evidence in support was served by BALSAM in part on 10 February 1997 and completed on 26 February 1997.  Due to the inadvertent placement of Patent Application No. 664427 in a “state of lapse”, the final date for service of evidence in support was set as 25 October 1996 (the initial date set was 26 May 1996 but this was changed to 25 July 1996 after the application was “restored”).  This final date was set after removal of the patent application from a “state of lapse”.  Thereafter BALSAM sought and received two extensions of time to 25 January 1997 and 25 February 1997 respectively to allow them to complete service of the evidence in support.

HEYLEN was due to complete service of evidence in answer on 26 May 1997.  HEYLEN applied for and received an extension of time up to 25 August 1997 to complete service of evidence in answer.  Subsequently (25 August 1997) HEYLEN applied for a further extension of time to 25 November 1997 for service of evidence in answer.  BALSAM objected to this application and the matter was set down for a hearing.

The matter was heard in Canberra on 19 November 1997.  The applicant (HEYLEN) appeared in person, representing himself.  The opponent (BALSAM) did not appear at the hearing but filed written submissions through its attorney Halford & Co., Sydney.

THE APPLICATION FOR EXTENSION

The applicant’s submissions in the application may be summarised as follows:

• At the time of the application for extension of time dated 23 May 1997 three affidavits had been prepared but now two of them have been rewritten after receiving advice from the applicant’s solicitor.

• In response to evidence filed by the opponent two statutory declarations are nearing completion.

• Three draft declarations have been prepared in response to evidence filed by the opponent.

• A draft of the applicant’s own declaration has been prepared but much work has to be completed after all the other supporting evidence has been collected.

• Evidence in the form of photographs and declarations has been/is being collected from various clubs and bowling greens across Australia.

• Some evidence/declaration(s) has to be collected from England but no trip has yet been arranged for the same, though assurances of assistance have been received from relevant parties in that country.

• In summary, progress, although slow, has been quite reasonable and substantial progress should be made by the end of September 1997.

SUBMISSIONS

I have summarised submissions from both parties and the summaries are as set out below.

The applicant made the following submissions at the hearing:

• Had to cover a lot of territory to gather supporting information.

• Own personal declaration most important aspect of the evidence, where the information in the declaration is governed largely by the supporting evidence gathered.

• Haven’t been able to satisfactorily complete my personal declaration as I have had to travel far and wide to pick up supporting evidence.

• Have at this stage prepared and will be presenting some evidence based on my personal declaration and some supporting evidence.  But there is still more supporting evidence available and I don’t have all the evidence together.  Hence I don’t feel that my personal declaration is to the standard that I would like.  Hence I need more time.

• Submitting my evidence which comprises, personal declaration, several supporting declarations and two exhibits.

• With reference to my time I am surprised at the opponent objecting to further time, because to provide satisfactory evidence in answer I’ve needed to address every claim that the opposition has made and that includes bowling greens in New South Wales, Northern Territory, South Australia, Tasmania and one in England.

• I’ve found that it takes three visits to a club/town to find the evidence I’m looking for.

• Takes a long time because of the distances involved and unavailability of people you need to interview.

• I am in my ninth month I believe, but I am nearing completion.

• Comparing the opposition evidence to my evidence I do believe (after inquiring at the various clubs) that when the opposition prepared their evidence they did not speak to the various clubs or certainly most of them.  I have not found one that they did speak to.  They basically nominated clubs around Australia and England and it took them eight months to prepare their evidence.  They had an extra five weeks as the application had inadvertently been placed in a state of lapse for that period.

• The opposition had 7 to 8 months to prepare their evidence which did not involve a lot of travelling or seeing people.  As against that I’m nearing my ninth month and I’ve had to travel everywhere except England and one club in New South Wales to pick up my evidence.

• I feel fairly on that comparison that I could really expect to take twice as long to prepare my evidence as the opposition has taken to prepare theirs.

• In the last thirty years of my life I have been involved in preparing contractual documents and time limits to complete contracts.  Consequently based on this experience, I feel that the objection to my application for extension of time really was quite unfair.

• When I say that a lot of my evidence is based on supporting evidence, perhaps I should clarify how I collected the supporting evidence.  Where a green had been nominated by the opposition evidence that I was not totally familiar with, then in all such cases I have endeavoured to find the men who looked after the green.  They might be the president/secretary of the club, notable bowlers or one or all of these individuals wherever available.  The relevant date for the evidence is some ten years ago.  The priority date of my application goes back to 1989 and some of the greens were built in 1987.  Consequently the people connected with the greens are hard to find and some have passed on.  After pursuing one person I find that they are no longer available and hence I have to contact other people.  This has been a contributory factor in my application for extension of time.  After I have collected statements from these people I combine my knowledge with these statements to produce my declaration.  As I am unable to get some statements I feel my evidence is not as good as it could be so I do feel I need some more time.

• The opponent’s submissions seem to address what I have not completed.  In my defence I would like to state that I had initially prepared declarations in the form of affidavits. Based on advice from a solicitor I have rewritten them as declarations.  Some clubs nominated as evidence have ceased to operate, hence it is difficult to contact the people who worked there.

• The opponent has set the scene with their opposition evidence and I’ve been forced to fall in line into that scene to provide what I believe to be satisfactory answers.  So it has just taken a really long time.

The opponent made the following submissions in writing:

• It is now almost three months since the applicant requested the present extension of time, and it is noteworthy that no evidence has been served.

• While a superficial reading of the applicant’s letter of 22 August 1997 might suggest diligent activity on the part of the applicant in the collection of evidence, the fact that no evidence has transpired, and a comparison of the detailed content of the applicant’s 22 August 1997 letter with the content of his letter of 23 May 1997 in which he sought a previous extension of time, in our submission clearly indicates otherwise (a table of the comparison is enclosed).

• In May, Mr. Heylen said that he had prepared three affidavits and twenty pages of evidence.  Three months later in August he had partially re-written two of these.  Six months after these affidavits and the twenty pages of evidence were prepared, nothing has been served.

• In relation to Tasmania, Mr. Heylen said in May that he had arranged to visit in July, and in August he stated that he had received signed declaration and that another declaration was coming but the declarant was overseas until the end of September.  It is now more than three months since these declarations were allegedly signed, and nothing has been served.

• In May Mr. Heylen stated that he had visited and inspected Meadowvale Village.  Three months later he had taken one statutory declaration, which was awaiting signature, and he was awaiting identification of the photos.  After a further three months nothing has been served.

• In May the applicant had contacted Broken Hill and intended to visit and take statements and photographs.  Three months later the statements were yet to be collected and the photographs yet to be taken.  After a further three months no evidence has appeared.  A similar fate has befallen the plans for Port Germein.

• In May Mr. Heylen was preparing an account of his research and development during 1987-1989 and three months later had prepared a draft of his declaration.  No evidence has been served.

• After taking statements from two South Australian builders, by May Mr. Heylen had collected two declarations and photos and these were awaiting signatures in August.  After a further three months no evidence has been served.

• In August, Mr. Heylen had prepared or prepared drafts of answers to the evidence of Isaacs, Halford, Coles, Laybutt and Wright, but after a further three months no evidence has been served.

• Potential sources of evidence appeared for the first time in the applicant’s 22 August 1997 letter, these being from Brisbane and Roxby Downs, and England.  In August the applicant had “not yet organised” travel to England and provided no information as to when this was in fact proposed to occur.

• The opponent therefore believes that the applicant’s grounds for seeking the present extension of time do not stand up to detailed examination.

• The opponent is also concerned that a major portion of the activity of the applicant appears to be directed to the production of evidence which is not evidence-in-answer, as many of the bowling green sites from which Mr. Heylen alleges that he is seeking evidence, are not the subject of evidence-in-support.

• The applicant’s letters of 23 May and 22 August 1997 show that he is largely involved in a speculative exercise, with no real prospect of completion.

• For these reasons we believe that the extension should be refused.  In view of the lack of credible information in the applicant’s application for extension of time, and in view of the absence of any evidence notwithstanding the passage of many months since declarations were allegedly executed, we also believe that the opponent is entitled to costs in relation to this hearing regardless of its outcome.

DECISION

The requirements for granting an extension of time to serve evidence are set out in Regulation 5.10 of the Patents Regulations in force under the Patents Act 1990. In particular, subregulation 5 requires:

The Commissioner must not give a direction under subregulation (1) or grant an application under subregulation (2) or (4) unless the Commissioner:

(a)       if he or she proposes to grant an application by a party - is reasonably satisfied that          the other party has been notified of the application; and

(b)       if he or she proposes to act on his or her own motion - ensures that the parties are notified of the proposed action; and

(c)       in either case:

(i)        gives the parties a reasonable opportunity to make representations concerning the application or proposed action; and

(ii)       is reasonably satisfied that a direction, an extension of time or the serving of            further evidence is appropriate in all the circumstances.

From this I conclude that before I can grant an extension of time I must be reasonably satisfied that the extension of time is appropriate in all the circumstances.

Regarding the factors that must be considered some guidance is provided in the Federal Court decision of Ferocem Pty. Ltd. v Commissioner of Patents 28 IPR 243. In this decision Burchett J. said:

“The determination of an application for an extension of time under reg. 5.10(2) involves a balancing exercise, in which competing considerations must be taken into account.  There are interests of the persons directly concerned in the application and opposition in question.  There are also public interests, which are not necessarily ranged on the same side.  They include the expeditious disposal of matters in the Patents Office, and questions of costs, of efficiency, and of insistence upon proper professional standards being maintained by those who deal with the office.  But they also include, as Kitto J. pointed out in Kaiser Aluminum & Chemical Corporation v The Reynolds Metal Co (1969) 120 CLR 136 at 143, “the public interest that a serious opposition by a person entitled in fact to oppose the grant of a patent should be dealt with on the merits, rather than it should be shut out in consequence of a failure of procedure, lamentable though the failure may be”. This proposition was cited by Bowen C.J. in Vangedal-Nielsen v Smith (Commissioner of Patents) (1980) 33 ALR 144 (at 150), where he also set out some of the considerations involved upon an application for an extension of time.”

Considerations arising from this judgement which are relevant to an extension of time are:

a)        The Commissioner, before allowing an extension, must consider whether the person            seeking the extension has made a proper case justifying the extension (though lack          of a proper case does not necessarily mean that an extension will be refused); and

b)        The Commissioner must consider not only the private interests of applicants for    patents and opponents, but also the public interest, by ensuring that invalid patents      are not granted, and that proceedings are not unduly protracted.

These considerations were also raised in A Goninan & Co Ltd v Commissioner of Patents (1997) 38 IPR 213. In that judgement, with regard to the public interest, Sackville J. stated:

“The decision-maker still has to consider whether an extension to allow further evidence is appropriate, having regard to the public interest in having a serious opposition determined on the merits.  Of course, that aspect of the public interest must be weighed with and against other relevant considerations, including the absence of any satisfactory explanation for the failure (or failures) to comply with the time limits specified in the Regulations.

In order for the Commissioner or his delegate to give proper, genuine and realistic consideration to the aspect of public interest I have identified, it is necessary to consider the nature of the evidence the opponent seeks to adduce and the significance of that evidence for the opposition proceedings. I do not mean to suggest that the evidence has to be scrutinised in the same way as would occur at a hearing on the merits. But unless the delegate forms a view as to the issues addressed by the proposed evidence, and whether that evidence is likely to be important in the opposition proceedings, it is difficult to see how proper consideration can be given to the public interest in having such proceedings being determined on its merits.”

All relevant matters must be taken into consideration.  The absence of a satisfactory explanation of the delay does not preclude an extension of time being granted if an extension is appropriate in the circumstances (Ferocem).

A Proper Case Justifying The Extension

In the application for extension the applicant has indicated that continuing efforts are being made to collect evidence and that of three affidavits prepared by the applicant two are being rewritten on the advice of the applicant’s solicitor.  The applicant has clearly indicated what is being done with regard to collection of evidence and its state of progress.  The applicant provided further details in submissions at the hearing.

Having regard to the applicant’s submissions at the hearing and in the application for extension as well as the opponent’s written submissions I am satisfied that the applicant has, as the sole individual collecting the evidence, made genuine efforts to do so within the time limits but has faced difficulties in meeting the deadline.  These difficulties related to extensive travel required as the bowling greens are located in various states and the time required to locate the individuals involved in the installation and use of the greens (all of which were set up about ten years ago).

I note that the opponent received a total time of seven months from 25 July 1996 to 26 February 1997 to serve their evidence in support.  If I grant the applicant’s request for an extension they will have received nine months to serve their evidence in answer.  On giving due consideration to the large distances to be covered and the difficulties involved in meeting relevant people to collect evidence I do not consider the applicant’s request for an extension to be unreasonable.

I note that in some instances no progress has been made in the collection of evidence as compared with the submissions made by the applicant in the first request for an extension of time dated 23 May 1977, but that overall some progress has been made.  However no evidence was actually filed until this hearing, that is, evidence was served on 19 November 1997.  Evidence was also filed on 25 November 1997.

Taking all the above factors into consideration I am satisfied that, under this criterion, the applicant has provided sufficient reasons which would justify an extension.  However I also need to consider the private interests of the parties in this matter as well as the public interests before deciding whether or not an extension of time is appropriate in all the circumstances.

The Private Interests Of Applicants For Patents And Opponents

The private interests of the applicant in this matter will best be served when he is able to defend his patent application.  A proper determination of the opposition (either a grant/refusal/suggested amendments to the specification) will help him with determining his future with respect to this patent application.  He is fully aware of the case he has to answer but he has not provided evidence in answer to the opponent’s evidence , prior to this hearing.  Hence the applicant’s interests will best be served if he is granted an extension of time to serve evidence in answer.

In this case the opponent has served its evidence in support and there is no indication to date that it wishes to serve any further evidence with regard to the evidence in support stage.  Hence the opponent’s interests clearly lie in (i) a timely completion of the service of evidence in answer (by the applicant) and evidence in reply (by the opponent); and (ii) a proper determination of the validity or otherwise of the patent application and the monopoly ground if any that they cannot encroach upon.  Thus in this case the opponent’s interests clearly favour a refusal of the extension of time sought by the applicant.

The Public Interest

The first issue in this matter is for the Commissioner to ensure that invalid patents are not granted.  This can best be done when both parties have had the opportunity to provide evidence supporting their case.  The opponent has filed its evidence in support but the applicant had not filed any evidence in answer prior to this hearing.  The public interest relating to this first issue would clearly favour a grant of an extension of time to enable the applicant to file evidence in answer.

Against this the other issue I must consider deals with ensuring that proceedings are not unduly protracted.  The applicant has previously had an extension of time for three months.  They are seeking a further three months, but up until 6 days before the deadline they had not filed any evidence.  The applicant’s submissions in this matter indicate that they have made some progress in the preparation of evidence but there seems to be some delay in the submission of the same.  I consider that this delay in filing the evidence will protract the proceedings as the applicant has to wait till the filing of evidence in answer is completed.  Further the opponent has to prepare and serve their evidence in reply which will consequently delay the final determination of the opposition.  I agree that there will be some protraction of the proceedings but there is no evidence before me to convince me that this protraction will be undue.  Therefore I do not consider that the resulting protraction in proceedings is clearly is against the public interest and favours a refusal of the request for an extension of time.

Another aspect of the public interest I have to cover (arising from the teaching of A Goninan & Co Ltd v Commissioner of Patents (supra)) lies in a consideration of the nature of the evidence the applicant seeks to adduce and the significance of that evidence for opposition proceedings.  The applicant has filed a number of declarations and exhibits on 19 November 1997.  Having examined this evidence I note that prima facie they have addressed most of the issues raised in the statement of grounds and particulars. The evidence has also addressed (either on a one-to-one basis or in general) some of the matters raised by the six statutory declarations which formed part of the evidence in support  The applicant’s evidence has provided submissions arguing against lack of novelty and inventive step.  It also tackles the issue of common general knowledge at the relevant date which issue is a consideration for both novelty as well as inventive step.  Clearly the evidence filed is directed to the issues raised in the statement of grounds and particulars and the declarations constituting the evidence in support.

In its submissions the opponent states that “...a major portion of the activity of the applicant appears to be directed to the production of evidence which is not evidence-in-answer, as many of the bowling green sites from which Mr. Heylen alleges that he is seeking evidence, are not the subject of evidence-in-support.”  I note that the opponent did not specify the exact number of greens (allegedly constituting a majority of those visited) or identify the greens in question.  Having had a look at the evidence filed by the applicant I am satisfied that some of the greens (referred to in the evidence in answer but not referred to in the evidence in support) are referred to for the purposes of establishing the defects of the prior art and the state of the art at the relevant date.

Regarding the significance of this evidence; as no evidence has previously been filed and as this evidence is directed to addressing the opponent’s case; I consider that this evidence is clearly of significance for a proper determination of the opposition and therefore definitely in the public interest.

Is The Extension Of Time Appropriate In All The Circumstances?

I shall now consider the various factors and how they impact on a final decision in this matter.  I had found that the applicant has made a proper case justifying an extension to file evidence in answer. In the matter of the private interests of the parties, the applicant’s interests were best served by the grant of an extension, whereas the opponent’s interests were best served by a refusal of the extension.  Regarding the public interest three different aspects had been considered.  In the matter of the need for the Commissioner to ensure that invalid patents are not granted, the public interest would clearly favour a grant of an extension of time.  Against this the need to ensure that proceedings are not unduly protracted would require that the request for an extension be refused but as the protraction has not been shown to be undue I do not consider that a refusal is warranted in this case.  Finally in the consideration of the nature of the evidence the applicant seeks to adduce and the significance of that evidence for opposition proceedings, I found that an extension of time would clearly be in the public interest.

Having looked at the above, I find that there is only a single issue that favours a refusal of the extension of time to file evidence in answer and this is outweighed by the other issues.  Consequently, having regard to all the circumstances I grant an extension of time to the applicant till 25 November 1997 to file evidence in answer.

COSTS

The applicant has not made any submissions with regard to costs.  The opponent submitted that “In view of the lack of credible information in the applicant’s application for extension of time, and in view of the absence of any evidence notwithstanding the passage of many months since declarations were allegedly executed, we also believe that the opponent is entitled to costs in relation to this hearing regardless of its outcome.”

Usually in such actions costs follow the event.  I do not have any evidence before me that would persuade me to depart from this convention in the present case.  I award costs against the opponent Balsam Pacific Pty. Limited and in favour of the applicant Kingsford Ross Heylen.

Jacob P. Elijah
Delegate of the Commissioner of Patents

Patent attorneys for the applicant  :  none

Patent attorneys for the opponent   :  Halford & Co., Sydney