Liquid Retaining Structures (Aust.) Pty Ltd v Delta Corporation Ltd

[1988] APO 45

In the Matter of the Patents Act 1952 - and - In the Matter of Application No. 565757 by LIQUID RETAINING STRUCTURES (AUST.) PTY. LTD. - and - In the Matter of Objection by the Applicant to an Extension of Time under Regulation 55 to Lodge Evidence-in- Support of Opposition by DELTA CORPORATION LTD.

 

DECISION OF A SUPERVISING EXAMINER OF PATENTS:

Background

Application No. 20739/83 was lodged on 5 October, 1983 by Pool Fabrications (Singapore) Pte. Ltd. for a patent for an invention relating to building structural members. Subsequently the Commissioner directed that the application should proceed in the name of Liquid Retaining Structures (Aust.) Pty. Ltd. pursuant to a request under sub-section 34(4). The application was advertised as accepted on 24 September, 1987 and was given the Serial No. 565757. A notice of opposition was lodged on 23 December, 1987 by Delta Corporation Ltd. Two extensions of time of 3 months each were granted to the opponent to lodge evidence-in-support of the opposition. On a third application for a further 3 month period, ending 23 December, 1988, the applicant objected. A hearing was set down for 15 November, 1988 to resolve the matter, but both parties chose to lodge written submissions instead.

After the opponent applied for the second extension of time to lodge evidence-in-support, the applicant initially objected but then withdrew its objection on an agreement or "understanding" between the parties that the opponent would lodge a significant portion of the evidence by 27 July, 1988 and that every effort would be made to complete the evidence by 27.September, 1988. A letter dated 27 July, 1988, from the opponent's patent attorneys to the applicant's patent attorneys, reads as follows:

"Further to our recent telephone conversations we wish to confirm our verbal undertaking given that a significant portion of the above opponents evidence in support will be filed with the Patent Office this day. In addition every effort shall be made to complete the filing of the evidence in support in respect of the above mentioned opposition by the 27th September 1988, in the event that no unforeseen difficulties in filing the evidence by that date are encountered."

What I consider to be a "significant portion" of the evidence was lodged on 27 July, 1988 and further portions were lodged on 28 August, 1988 and 21 September, 1988. On that latter date the application for the third extension of time was also lodged. The circumstances upon which that application was made are as follows:

"A draft declaration has been prepared as a result of evidence received from a Mr. Peter Carl Bruechle however, finalisation of the declaration has been prevented due to Mr. Bruechle's absence overseas. On return of Mr. Bruechle from overseas the declaration will be finalised. In addition as a result of the evidence which has been submitted to this point in time a significant question has been raised regarding the entitlement of the applicant to claim priority in respect of the invention as claimed at claim 1 to the filing date of the provisional specification which was filed with the application. In the light of such it has been necessary for the opponent to determine the extent of use of the invention which is the subject of the above application as accepted. Such inquiries are currently being made by the opponent."

In a letter dated 13 October, 1988 the patent applicant's attorneys wrote to the opponent's attorneys and stated, inter alia:

"Our instructing principal has advised us that in the absence of a definite undertaking by you to the effect that all evidence in support will be completed by October 31 1988 we are to lodge an objection to the grant of a further extension of time."

The opponent's attorneys replied on 17 October, 1988 as follows:

"Further to your letter of the 13th October, 1988 we hereby provide an undertaking that the further declaration by Mr. P.C. Bruechle will be filed in respect of the above mentioned opposition proceedings by the 31st October, 1988.

As indicated to you in our letter of 21st September, 1988 the collection of evidence in respect of the above mentioned opposition has not been completed due to the need for the opponent to establish the extent of use of the invention of the above application and in this regard inquiries are currently being made.

Provided the applicant will not object to the opponent subsequently filing further evidence by leave of the Commissioner, the opponent is willing to agree to the undertaking requested in the letter of the 13th October, 1988."

The applicant's attorneys replied to this letter in two letters on 26 October, 1988 and 28 October, 1988. They acknowledge receipt on 19 October, 1988 of the P.C. Breuchle declaration and indicate that no objection is taken to the late service of that declaration, but the letter goes on:

"What is objected to is the grant of a further extension of time beyond October 19 1988 within which to adduce further evidence"

Submissions

In a letter dated 10 November, 1988, the opponent's attorneys made submissions in support of the extension of time, summarised or cited as follows:

1. Time is required to allow for lodging the P.C. Bruechle declaration on 17 October 1988.

2. Evidence has recently come to light that the complete specification as accepted is significantly different from the provisional specification and the complete specification as lodged; the emphasis of the invention has changed.

3. Thus, claims 1 and 10 are not entitled to the priority date of the provisional specification, i.e. 5 October 1982, or the priority date of lodgement of the complete specification, "but rather [are] entitled to the priority date on which the amendments were incorporated into the specification". [If the claims are not entitled to the earlier priority dates, the provisions of sub-section 159A(l) would be applicable. Amendments were lodged under section 49 on 14 July 1987 and 29 July 1987 and were incorporated into the complete specification as accepted).

4. Thus, it is important "that consideration be made of the extent of use of the invention ... subsequent to the filing of the provisional specification".

5. The opponent was approached by the inventor of the applicant's invention early in 1988 "who indicated that he was willing to assist the opponents", but recently it has been established that he is "no longer able to assist".

6. The inventor informed the opponent that several installations had been built by the applicants in 1983 and 1984 "which fell within the scope of the claim of the complete specification as accepted".

7. Further time is required to inspect these installations and obtain reports from people associated with their construction, to review the reports and prepare evidence.

In a letter dated 14 November, 1988, the applicant's attorneys made submissions in support of the objection to the extension of time. The submissions were in the form of a declaration by Mr. R.A. Barber of Price Waterhouse, Brisbane, and are summarised or cited as follows:

1. Mr. Barber is acting as an "agent for Queensland Industry Development Corporation as Mortgagee in Possession of the Property of Cellate Industries (Australia) Pty. Ltd. (In Liquidation), formerly known as Liquid Retaining Structures (Aust.) Pty. Ltd".

2. The liquidators are disposing of the assets of Cellate Industries (Australia) Pty. Ltd. and "there have been numerous proposals by interested parties for acquisition of Australian Patent Application No. 565757".

3. The question of entitlement to priority of the accepted claims "is a fundamental issue which should have been considered hitherto" by the opponent, since the specifications as lodged and as accepted were available since the date of advertisement of acceptance.

4. Negotiations for sale of the Patent Application are being frustrated by prolongation of the opposition proceedings. The applicant's attorneys "are unable to provide a final report on the likely success of the opposition proceedings until service of Evidence in Support has been completed".

5. The liquidator currently is unable to obtain funds from a potential purchaser to commit to costs of the applicant's attorneys and to maintain corresponding overseas patent applications. Also, possible loss of overseas applications due to lack of funding is likely to be detrimental to sale negotiations.

Decision

In consideration of the matter of extension of time under Regulation 55 I am required to have regard to the respective interests of the applicant, the opponent and the public; the opponent carries the burden of establishing a case to justify the extension, there should be a good reason why the evidence has not been lodged within the time allowed under the Regulations, there should be some indication that a serious opposition is foreshadowed and there should be no unreasonable delays.

In this case I have no doubt that a serious opposition is foreshadowed; such is apparent from the evidence-in-support already lodged. The circumstances surrounding the negotiations between the inventor and the opponent and the discovery of potential additional evidence arising from those negotiations I consider to be a good reason why the opponent has not been able to lodge all the evidence within the time allowed under Regulation 55. Regarding the matter of delay, I agree with Mr. Barber that the opponent could have dealt with the issue of priority dates at an earlier stage since all the specifications were available. However, an opponent should not be expected, as a matter of course, to check whether accepted claims are fairly based on provisional specifications, unless the circumstances of the case suggest that such a check should be made. In this case the matter was first considered only after the negotiations between the opponent and the inventor and I am satisfied that the opponent has been diligent in pursuing the matter since the time it was first considered. With regard to the period of extension, the applicant has stated that it has no objection to a first portion of the extension period (i.e. the period to 19 October, 1988 in which the P.C. Bruechle was lodged); also, if this third extension was granted, the total period of extension of time to lodge evidence-in-support would be 9 months: such extensions are not uncommon. Thus I am satisfied that there would be no unreasonable delay if the third extension was granted.

Considering the matter of the sale of the patent application, it could be argued that it is in the public interest that sales negotiations are based on a report which takes into account all the relevant evidence-in-support of opposition, since such a report would give an accurate indication of the real value of the patent application. However, it is understandable that the liquidators want to dispose of the application as quickly as possible, and I am sympathetic to their argument that negotiations for sale are being frustrated by delay due to the opposition. In this light, I would consider that any further extension of time to lodge evidence-in-support beyond 23 December, 1988 would be unlikely if an application for such an extension was based on circumstances similar to the present circumstances.

I am of the opinion that Delta Corporation Ltd. have established a case to justify the extension of time; accordingly, I allow the extension of time to 23 December, 1988 in which to lodge evidence-in-support of opposition.

(J.I. WELSH)

Supervising Examiner of Patents

30 NOV 1988

Patent attorneys for the applicant: G. R. Cullen & Co. Brisbane

Patent attorneys for the opponent : Wray & Associates, Perth