Lumenyte International Corporation v Light Transmission Cables Pty Limited
[1990] APO 46
•20 December 1990
PATENTS ACT 1952
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Application No. 592654 by LUMENYTE INTERNATIONAL CORPORATION, Opposition under S.59 by LIGHT TRANSMISSION CABLES PTY. LIMITED and an Objection to an Application for an Extension of Time under Reg 55 in which to serve evidence-in-support.
Background
Patent application No 592654 for an invention entitled "Method, apparatus and composition of matter for a high temperature plastic light conduit" was lodged on 8 July 1987. The application was advertised accepted on 18 January 1990 and on 12 April 1990 LIGHT TRANSMISSION CABLES PTY LIMITED ("LTC") lodged opposition under s.59.
Evidence-in-support was initially due by 12 July 1990 but the opponent sought an extension of time to 12 October 1990. The applicant LUMENYTE INTERNATIONAL CORPORATION ("LUMENYTE") did not object and so the extension of time was granted. On 12 October the opponent sought a further extension of time, to 12 January 1991. LUMENYTE objected to this extension of time being granted and the matter was set down for hearing in Canberra on 23 November 1990. Mr G. Halford, patent attorney of Halford & Co represented LTC and Mr G. Turner patent attorney of Spruson & Ferguson represented LUMENYTE.
The circumstances and grounds given in the present application for extension of time are as follows:
"Collection of evidence is continuing, and further time is required to complete collection of evidence and compile the evidence into a form suitable for service as Evidence-in-Support."
Opponent's submissions
In his submissions on behalf of the opponent, Mr Halford firstly referred to the specification and claims of the application under opposition and indicated the difficulties this presented to the opponent in preparing its evidence. Secondly, he outlined the efforts taken so far by the opponent to prepare its evidence. A summary of the main points of Mr Halford's submissions follow.
The specification under opposition contains a total of 60 claims, 11 of which are independent and which are variously directed to a polymerization reactor, a method of polymerizing a monomer mixture, a composition of matter, an optic pipe, etc. The opponent views the claims as being directed to 6 separate inventions and thus is confronted with opposing the application on six fronts.
With the assistance of a consultant to the opponent company, an analysis of the specification and claims was undertaken. As part of this analysis, an assessment needed to be made of the requirement to engage an appropriate expert witness in the matter. The consultant studied the matters during June and July 1990.
In early July, the opponent approached the University of New South Wales for the purposes of engaging a suitable witness and for pursuing the collection of materials concerning polymer products known in Australia before the priority date with properties as recited in the various independent claims.
[On 10 July 1990, opponent sought its first extension of time to serve evidence-in-support.]
The opponent received an initial report from the University on 24 August 1990 and during September and October the material collected up until that time was analysed by the opponent. Publication dates for some of that material were pursued in that period.
The nature of the claims, including the number of seemingly different inventions defined together with the breadth of the claims, has created difficulties for the opponent in finding an expert witness who is across all aspects of the matter.
A major part of the opponent's evidence will be based on the prior use of a product in Australia before the priority date, being a product manufactured by the applicant. Negotiations with a former supplier of the product had taken place, and some relevant material had only recently been obtained by the opponent. Analysis of that material was still to be completed and assistance from a person involved with the supplier was still being negotiated.
The opponent is engaged in business in the field of technology covered by the opposed application and is in fact the successor in business of people previously under threat by the applicant with respect to the application. The opponent was seriously pursuing the opposition and not only was it in the interest of the opponent but also in the public interest that the opponent be allowed more time to further pursue and finalize its investigations and serve its evidence.
Mr Turner's submissions on behalf of the applicant objecting to the extension of time sought, can be summarised as follows:
From the date of advertisement of acceptance of the application, some ten months have been available to the opponent to consider the application and prepare its evidence in support of its opposition. As indicated by the submissions on behalf of the opponent, the matter has been in the hands of consultants or expert witnesses for some time but still there is no hard evidence to show for these efforts and no indication when evidence will be served.
The applicant's interests are being affected by delay in obtaining the patent grant. The applicant maintains that "infringement" is occurring in respect of the invention. Delay in initiating proceedings against any such "infringers" can cause uncalculated damage to the applicant, damage which may not be recoverable in monetary terms in due course.
Up to the time of the hearing the applicant was not aware of any reason why opponent's evidence had not been finalised. The applicant did not agree with points raised by the opponent concerning the claims and difficulties this posed in evidence preparation. The specification could not be said to involve complex technology, claims if broad in scope should be easier not harder to assess regarding prior art, and plurality of invention was not a ground of opposition.
Regarding the opponent's interests, it has already had a fair time in which to serve its evidence. There is no evidence put forward to the effect that any claim of the application is clearly invalid and hence the public interest has not been shown to be of great import. The delay in the proceedings are however affecting applicant's interests.
Decision
Both parties acknowledged at the hearing the law and practice in relation to actions such as this. That is, before granting an extension of time the Commissioner needs to be satisfied that the party seeking the extension has made out a proper case. Furthermore, the interests of the respective parties and the public also need to be considered.
Having considered all the submissions presented at the hearing I am of the view that the opponent has indeed made out a case justifying the allowance of more time in which to finalize and serve its evidence. Whilst the technology the subject of the patent application may not be of a complex nature, the opponent is confronted with a somewhat unusual specification to analyse and address by way of evidence. Even if the opponent be incorrect in its assessment of the number of distinct inventions claimed, it seems to me that the task of analysing many claims and investigating the need for, and addressing, evidence in relation to those many claims would indeed involve some significant time period. In matters such as this, there will always be varying views as to what time period ought to be reasonable in order for a party to prepare and serve its evidence. In this case the opponent has indicated the steps it has taken and matters it has pursued so far in relation to its evidence-in-support and it seems to me that in those actions it has proceeded with due diligence. I am satisfied that the opponent has had insufficient time in which to prepare and serve its evidence.
Regarding the interests of the parties and the public interest I make the following comments. The opponent, by its submissions has indicated that it is seriously pursuing opposition and that it has opposition grounds under consideration which go to the issue of novelty of the claims. Given its efforts to date, the interests of the opponent would be affected if it is unable to obtain more time in which to complete and serve its evidence. For its part, the applicant alleges that delay in obtaining a patent on its application is affecting its interests namely by delaying action it may wish to initiate regarding alleged infringing actions. The public interest is essentially concerned with ensuring that invalid patents are not granted, and that proceedings are not unreasonably protracted.
It seems to me that the respective interests of the applicant and opponent are balanced. As to the public interest, the submissions by the opponent cast doubts in my mind regarding the likely validity of a patent granted on the application and its accepted specification. Consequently the public interest will, in my view, be well served if the opponent is able to place material before the Commissioner to enable a review of the application before sealing. Finally, I do not consider that the opposition proceedings have been unreasonably protracted to this stage. Overall, consideration of these interests provides support for the extension sought.
Conclusion
I have decided that in the present circumstances an extension of time is justified. Accordingly I grant an extension of time for serving evidence in support to 12 January 1991.
On the question of costs, the opponent has been successful in its application for extension of time. Its success resulted predominantly from the elaboration provided by Mr Halford at the hearing of its reason for the extension including its efforts to date in collecting and preparing evidence. It seems to me that the applicant was justified in pursuing its objection to a hearing based only on the circumstances and grounds stated in the extension application. I gained the impression from Mr Turner's submissions that had the applicant, prior to the hearing, been provided with more detail of the reasons for the extension and given some indication of when evidence would be finalized, the applicant may have withdrawn its objection. Thus even though the opponent has been successful, I feel that it ought to bear the costs associated with the action and hearing. Accordingly I award costs against the opponent.
(T.R. BRUHN) Supervising Examiner of Patents
Patent Attorneys for the applicant: Spruson & Ferguson, Sydney Patent Attorneys for the opponent : Halford & Co, Sydney
0
0
0