Marcal Paper Mills Inc v Grantek Inc

[1998] APO 66

OFFICIAL NOTICE

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Application  :          No. 685158 in the name of MARCAL PAPER MILLS, INC

Title:          Process and Apparatus for Manufacturing Absorbent Granular Material

Action:          Application for an extension of time to serve evidence-in support of an opposition by GRANTEK INC, and objection thereto by MARCAL PAPER MILLS, INC

Decision:          Issued            .

Abstract

Adequate reasons for extension not provided at the time of the request. Reasons provided in the written submission sufficient to justify the extension considering all the circumstances. Extension allowed until 14 January 1999. Costs awarded against opponent.

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:      Patent Application No. 685158 by Marcal Paper Mills, Inc, an application for an extension of time to serve evidence-in support of an opposition by Grantek Inc, and objection thereto by Marcal Paper Mills, Inc

background

Patent Application number 685158 was filed on 26 August 1994 by Marcal Paper Mills Inc (hereinafter referred to as Marcal). The application was advertised accepted on 7 May 1998. A notice of opposition to the grant of a patent was filed by Grantek Inc (hereinafter referred to as Grantek) on 15 April 1998, and a statement of grounds and particulars was served on 14 July 1998.

Evidence in support was due to be completed on 14 October 1998. On 13 October, Grantek filed an application for an extension of time of three months from 14 October 1998 to 14 January 1999 to serve evidence in support. Marcal objected to the extension on 30 October 1998, but stated that as the time for filing evidence in support had passed they were willing to agree to a one month extension to 14 November 1998.

Marcal was initially represented by John Walsh of H.R Hodgkinson & Co, patent attorneys, Sydney. Which attorney from this firm currently represents them is now a little unclear. Grantek was represented by Greg Turner of Spruson and Ferguson, patent attorneys, Sydney.

The application for extension was set down for hearing in Canberra on 18 November 1998. In the event neither party appeared in person both relying on written submissions.

THE APPLICATION FOR EXTENSION OF TIME

The application, which was filed on 30 October 1998, includes the following statement relevant to the need for an extension of time of three months from 14 October 1998 to 14 January 1999 in order to serve evidence-in-support:

"Evidence-in Support has been prepared in final draft form for lodgement in the very near future in the patent office. This material is approximately 2cm thick and requires a final revision before execution by the proposed declarant David Kraske, professor and chairman of the Department of Chemical Engineering at the University of Maine. Further time is required to complete and formalise the evidence"

SUBMISSIONS

Both parties provided me with written submissions only. I will refer to them where relevant.

DECISION

The law on extensions of time under regulation 5.10

The time for serving evidence-in-support of an opposition is three months from the date of serving the statement of grounds and particulars under regulation5.8. This time may be extended under regulation 5.10.

(2)      The Commissioner may:
(a)      on the application of a party in the approved form; and
(b)      on such reasonable terms (if any) as the Commissioner specifies;
           extend the time within which the party may take a step prescribed in this chapter,
           not being a step that is taken under regulation 5.3 or paragraph 5.4(1)(a).

Regulation 5.10(5) provides:

(5)      The Commissioner must not…grant an application under subregulation (2)

…unless the commissioner:

…
           …
(c)       …

(i)   gives the parties a reasonable opportunity to make representations concerning the application…; and
(ii)  is reasonably satisfied that… an extension of time or the serving of further evidence is appropriate in all the circumstances.

The law on extension of time provisions, and more specifically the law on regulation 5.10 of the Patents regulations 1991,has been considered and summarised by Burchett J in Ferrocem Pty Ltd v Commissioner of Patents (1994) 28 IPR 243 and more recently by Sackville J in A Goninan & Co Ltd v Commissioner Of Patents (1997) 38 IPR 213. In both of these decisions it was stated that regulation 5.10 confers a broad discretion, which cannot be reduced to an imperative compliance with particular requirements. On the contrary it is necessary to give proper, genuine and realistic consideration to all relevant aspects of the case. Relevant aspects include:

(a) Reasons provided on why an extension of time to lodge evidence-in-support is needed

Relevant reasons include explanations on any delays in filing evidence to date. The reasons why the evidence was not served in time are a relevant consideration, but a satisfactory explanation is not a mandatory requirement.

(b) The public interest

The public interest in determining a serious opposition on its merits is a relevant consideration. There is also the efficient and orderly administration of matters before the Patent Office to consider.

(c) The interests of the parties involved in the opposition

Disadvantages to either the applicant or the opponent are relevant considerations.

Reasons on why an extension of time to lodge evidence-in-support is needed

Accompanying the original request for an extension was an explanation that the opponent needed further time to complete and formalise the evidence. There was also reference to the need for the signature of a particular declarant Professor David Kraske of the University of Maine.

The applicant opposed the request  and pointed out that the matter was also being litigated in the United States. Consequently the opponent should already have its evidence in order. The applicant submitted that the request for further time was therefore merely a delaying tactic and that I should not grant it. However the applicant did not wish to be unreasonable. If the opponent were to file its evidence prior to the date set down for the hearing, the applicant would withdraw its objection.

In the formal submissions presented by Marcal Mr Pearson, of H.R.Hodgkinson, supplied further information which can be summarised as follows:

• Although the case was being litigated in the United States the expertise of an Australian practicioner was still required due to the differences in law between the two jurisdictions.

• Mr Walsh had been dealing with the case but had now left their employ;

• Mr Hodgkinson himself had taken over the case;

• He had been unwell and had to have surgery, and was now convalescing.

• Further time was still needed to allow Mr Hodgkinson to recover before considering the material, and it was not reasonable for a third Australian attorney to start consideration of the material.

Mr Turner's formal submissions reiterated their opposition to the extension of time. In particular they referred to Marcal's original explanation where reference was made to the need to "complete and formalise" a declaration which the opponents had stated was in "final draft form". They had understood that to mean that all that was required was a signature. This they submitted could be done in minutes rather than months. This was why they were prepared not to oppose an extension up to the hearing date. However they were unclear why, if Professor Kraske was involved as a witness in the litigation in the United States, his evidence was not immediately available for signature.

As a result of these submissions, I am myself still a little unclear as to why the evidence was not ready for filing prior to Mr Walsh's departure. Also if the explanation supplied by Grantek, regarding the unavailability of attorneys, had been supplied at the outset, perhaps Marcal may not have felt the need to oppose the extension. On balance I am of the view that this later explanation probably in itself justifies the extension.

The public interest

The significance of public interest in cases where there has been a lapse in procedure was recently considered by Sackville J at p222 in A Goninan & Co Ltd v Commissioner Of Patents (supra)

"The Commissioner must take into account the public interest in determining a serious opposition on its merits. The Commissioner must give consideration to that aspect of the public interest even where the party has failed to comply with the procedural requirements specified in the regulations. However as Burchett J made clear in Ferocem, the public interest must be weighed with and against other considerations. It is not the only factor considered."

This has been well summarised in the Office decision on Patent 675388, Nippon Steel Corp v. BHP Steel (JLA) Pty Ltd, issued 26 February 1998. As the hearing officer so succinctly put it:

"On the issue of the public interest I am guided by the reasons of Burchett J in the Ferocem case and reiterated by Sackville J in Goninan (supra). In short , the public interests are not all ranged on the same side. On the one hand are the expeditious disposal of matters in the Patent Office, and questions of costs, efficiency, and of insistence of standards maintained. On the other hand are the words of Kitto J in Kaiser Aluminium & Chemical v. The Reynolds Metal Company (1969) 120 CLR 136 at 143, viz a serious opposition should be dealt with on its merits rather than be shut out as a consequence of a failure of procedure."

In relation to the expeditious disposal of matters in the Patent Office, it is a relevant circumstance that this is the first extension requested. No evidence has yet been filed. The opponent  in their submissions make reference to the fact that it will be difficult enough to meet the extended deadline requested. Clearly any extension of time granted has the potential to cause further protraction of the case past 14 January 1999.

On the question of whether the opposition is a serious one, Mr Pearson submitted that Grantek has already received a considerable volume of evidentiary material from the opponent's US attorneys. The statement of grounds and particulars alleges want of novelty compared with several US patents, most of which were not originally cited by the examiner, and also want of novelty compared with 5 journal articles.

Reference has been made by both the opponent and the applicant that the equivalent patent in the United States is the subject of litigation.

I clearly cannot comment on the quality of the evidence, since none has as yet been filed. However based on the information in the Statement of Grounds and Particulars, and the comment from both parties that the equivalent case is being litigated in other jurisdictions, I am satisfied that a serious opposition is in train.

The interests of the parties involved in the opposition

The interests of the applicant (Marcal) are clearly in not having the opposition unduly delay the granting of the patent. I am not aware of any other special circumstances, apart from this general consideration, which would specially disadvantage the applicant.

The interests of Grantek (the opponent) are clearly in obtaining an extension of time in order to file evidence-in -support. If I were not to grant the extension, the opponents would not have any evidence at all on file. It is difficult to imagine how an opponent can proceed with an opposition without evidence.

CONCLUSION

As of the date set down for the hearing the opponent had not lodged any evidence at all. The statement of Grounds and Particulars clearly indicates that a serious opposition is on foot. It is in the public interest that this opposition is heard on its merits. The opponent would be severely disadvantaged if I did not grant the extension and without any evidence the public interest would not be served.

Since no evidence has been filed I am not in any position to comment on its possible relevance to the substantive opposition. All I can determine is that given what is contained in the Statement Of Grounds and Particulars it is very likely to be relevant, and should in all probability be admitted.

The strongest argument against granting an extension is that the reasons accompanying the original request for an extension were unsatisfactory. They lead the applicant to believe that the evidence was in an advanced state of preparation, and would in all probability be filed prior to the hearing date. The applicants were sure enough of this to indicate that if the evidence had been filed prior to the hearing they would have withdrawn their objection to the extension-of-time.

The reasons for delay in the opponent's written submissions just prior to the hearing were far more convincing. Staff losses and attorney illness are beyond the control of the opponent. I am however a little concerned about the delay that will be caused if I grant the extension. Normally ,since this is the first extension requested, I would be of the view that a three month delay was not excessive. However the opponent in its submission has alluded to the possibility of a further delay. If this were to occur this further delay could extend the proceeding unduly.

Overall I do not consider that this lapse in procedure by Grantek outweighs the public interest in having a serious opposition dealt with on its merits. Accordingly having considered all relevant circumstances I will allow the extension of time to serve evidence-in-support to 14 January 1999

COSTS

Costs normally follow the event. In their submission the applicant asked for their costs , the opponent made no such request.

However in this case I do not believe that the reasons given by the opponent  with their initial request were adequate. If they had been more frank about their attorney's staffing difficulties perhaps Marcal would not have felt the need to oppose the extension.

In the circumstances, although I have granted the opponents extension, I do not believe they were as diligent as they might have been in giving the true reason for the request. Consequently I award costs against Grantek

R.A.Melvin
Delegate of the Commissioner of Patents

Patent attorneys for the applicant  : Spruson and Ferguson Sydney

Patent attorneys for the opponent   : H.R.Hodgkinson & Co Sydney