Machinery Developments Limited v Sastek Pty Ltd

[2002] APO 9

OFFICIAL NOTICE

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Application  :          No. 730709 in the name of Machinery Developments Limited

Title:          Apparatus and process for meat packing

Action: Request under s.223 by the opponent Sastek Pty Ltd for an extension of time to serve the Statement of Grounds and Particulars

Decision:          Issued           

Abstract

The statement of grounds and particulars was not timely served.  The statement was filed some three weeks after the due date together with an application for an extension of time.

The opponent only provided a brief declaration in support of the extension application.  The evidence was not only brief but insufficiently precise to know exactly why the statement was not served in time.  Whilst the evidence implied a possible link between the absence of some unspecified person overseas on recreation leave and the unavailability of information to complete the statement, this was not explained.

The extension of time was not justified and was refused.

As a consequence of the refusal there was nothing validly filed to support the opposition filed by Sastek Pty Ltd.  Given those circumstances, the opposition by Sastek Pty Ltd to patent application 730709 was dismissed.

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Patent Application No. 730709 by Machinery Developments Limited, opposition thereto under s.59 by Sastek Pty Ltd, and a request under s.223 for an extension of time to serve the Statement of Grounds and Particulars.

BACKGROUND

Patent application No. 730709 by Machinery Developments Limited was advertised accepted on 15 March 2001. On 14 June 2001 Sastek Pty Ltd filed a notice of opposition, under s.59 of the Patents Act 1990 ("the Act"), opposing the grant of a patent on the application. In accordance with reg. 5.4 of the Patent Regulations, the opponent had until 14 September 2001 to serve on the applicant a statement of Grounds and Particulars for its opposition ("the Statement"). On 21 September 2001 the Senior Opposition Officer advised the parties that as no Statement had been filed action to dismiss the opposition would be taken. However on 5 October 2001 the opponent filed the Statement together with an application for an extension of time under s.223 of the Act seeking an extension of time of one month within which the Statement could be served.

Although there was no objection to the application for extension of time being granted from the patent applicant, the Commissioner set the matter for hearing.  The hearing was set for 31 January 2002 in Canberra.  Neither the patent applicant nor the opponent, who was seeking the extension of time, appeared at the hearing.  No written submissions were provided by either party.

THE APPLICATION FOR EXTENSION OF TIME

As indicated above the Statement was due to be served by 14 September 2001.  A letter to the opponent from the Senior Opposition Officer, on 21 June 2001, acknowledged its notice of opposition and indicated that the provisions of regulation 5.4 applied.

The opponent's application for extension of time consisted of a completed application form (form P/00/013) and a single sheet statutory declaration by Bruce McKenzie Williams dated 5 October 2001.  From the Statement filed with the extension application, Mr Williams appears to be the Executive Director of the opponent company.

The application form indicates that the extension of time is for the purpose of "filing statement of grounds and particulars" and further indicates that the circumstances in which and the grounds upon which this application is made are "as indicated in attached statutory declaration".  The statutory declaration is very brief.  Mr Williams declares:

"All the information needed to complete the attached statement of grounds and particulars was not available at the time stated for lodgement because abscence (sic) on recreation leave overseas."

In a letter to the opponent from the Senior Opposition Officer, on 1 November 2001, the opponent was informed that to meet the requirements of s.223 there needed to be an error or omission by the person concerned and that the reason "absence on recreation leave" did not meet the statutory requirements. The opponent was invited to provide further evidence to explain that an error occurred - a period of 21 days from the date of the letter was allowed to provide such evidence. The opponent was also advised that in the absence of such evidence the matter would be set for hearing with a view to refuse the extension application, and that such a refusal would also, most likely, result in failure of the opposition. The opponent did not file any further evidence or explanation.

DECISION

The relevant law for the present purposes of seeking an extension of time for serving a Statement under reg. 5.4 is that in s.223(2). This provides as follows:

"(2)  Where, because of:

(a)an error or omission by the person concerned or by his or her agent or attorney; or

(b)  circumstances beyond the control of the person concerned;

a relevant act that is required to be done within a certain time is not, or cannot be, done within that time, the Commissioner may, on application made by the person concerned in accordance with the regulations, extend the time for doing the act."

Given the meaning of "relevant act" as in s.223(11) together with the prescribed actions listed in reg. 22.11, it is clear that s.223 can apply to the action specified in reg. 5.4.

As the wording indicates, s.223(2) is available in this case to extend the time to serve the Statement where the failure to serve the Statement on time is caused by either an error or omission by the person concerned or their agent or attorney, or because of circumstances beyond the control of the person concerned. This is a discretionary provision and in deciding whether to grant the extension, I need to have regard to all the relevant facts and issues. The relevant facts before me are limited to those contained in the statutory declaration provided by Mr Williams.

The evidence by Mr Williams is not only brief but insufficiently precise to know exactly why the Statement was not served in time.  It is not clear who had the responsibility for preparing the Statement and whether it was that person or someone else who was absent on recreation leave overseas.  The link between the absence of someone overseas and the unavailability of information to complete the Statement is also not explained.  There is no evidence or explanation before me of the arrangements the opponent had in place, if any, to address the preparation of the Statement and to ensure its timely service on the patent applicant and filing at the Patent Office.

It is clear from decided cases that in order to make out a proper case justifying an extension of time, the onus rests with a party seeking an extension of time.  For example in Kimberly-Clark v Commissioner of Patents 13 IPR 569, Jenkinson J (at 583) expressed the opinion that an applicant for an extension of time:

"… 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 a reasonableness of that conduct."

In the present case there simply is not that information. From the brief information available there is no identifiable "error or omission" which can be seen to have caused the Statement not to have been served in time. There is also nothing to suggest or establish the existence of "circumstances beyond the control of the person concerned" leading to the failure to serve the Statement in time. The mere fact that some unspecified person was absent on recreation leave does not, of itself, establish circumstances meeting the requirements of either paragraph (a) or (b) of s.223(2). Thus, prima facie, the opponent has not made out a case justifying the extension sought.

As I have indicated, soon after the application for extension of time was filed, the opponent was given an opportunity to file further material to support its extension of time application.  No additional evidence or material was filed.  I also observe that the opponent could not have been unaware of the possibility that the extension may not be granted.

I have decided that the extension of time is not justified.  No causative error or omission, or circumstances beyond control, have been provided by the opponent to establish a link to the failure to serve the Statement by the due time.  I refuse the application for extension of time.

The effect of the above decision is that the Statement provided by the opponent is not validly served or filed in the opposition.  As a consequence there is nothing validly filed to support the opposition filed by Sastek Pty Ltd.  Given those circumstances and the provisions of reg. 5.5 which enable the Commissioner to dismiss an opposition, dismissal of the opposition is appropriate.  Accordingly, I dismiss the opposition by Sastek Pty Ltd to patent application No. 730709.

Trevor Bruhn
Delegate of the Commissioner of Patents

Patent attorneys for the applicant  :  BALDWIN SHELSTON WATERS, Sydney
Address of the opponent  :  5 Hercules St, Hamilton, Qld