Marissa Pty Ltd v EPM Concrete Pty Ltd

[1990] APO 31

PATENTS ACT 1952

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Application for a patent number 579968 in the name of MARISSA PTY LTD

‑ and ‑

Application for extension of time to serve evidence‑in‑reply by the opponent EPM CONCRETE PTY LTD

Background

The Office advertised acceptance of 579968 on 15 December 1988.  EPM opposed the grant of a patent and subsequently served its evidence‑in‑support on 28 November 1989.  The patent applicant, Marissa, served evidence‑in‑answer on 14 March 1990 and hence evidence‑in‑reply was due on 14 June 1990.  On 13 June EPM applied for an extension of time to 14 September 1990 to serve evidence‑in‑
reply.  The grounds upon which the application for extension of time was made are:

"Following receipt of the "evidence in answer" and due to the matters raised in the six declarations, further investigations have been undertaken, and advise that further time is required to prepare, execute and serve declarations as "evidence in reply"."

Marissa objected to the grant of extension and the matter was heard in Canberra on 6 July.  Mr P.R. Taylor, patent attorney of Arthur S. Cave & Co, represented EPM at the hearing whereas Grant Adams & Company, Marissa's attorneys, relied on written submissions which they lodged on 5 July.

Submissions
         Grant Adams & Co made the following written submission on behalf of Marissa:

"The Opponent has had considerable time to prepare and serve its Evidence‑in‑Support of the Opposition and it now alleges that further investigations have been undertaken as a result of the Applicant's Evidence‑in‑

Answer.This strongly indicates that the Opponent did not collect all its evidence when the Evidence‑in‑

Support was served but that it has gone on a further fishing expedition for new evidence.

If such new evidence does exist, the applicant will be unfairly disadantaged as it will not be able to respond thereto except at the formal Opposition Hearing and it will be placed at an unfair disadvantage

In effect, the Opponent is saying ‑ we let you reply to some of the Evidence, now we want time to show the rest of the evidence to you without the right for written reply.  Any new evidence filed by the Opponent should be strictly in reply to the Evidence‑in‑Answer, and it should not take more than three months to prepare and serve such evidence.

For example, the Applicant was able to prepare and serve its Evidence‑in‑Answer in 3‑1/2 months, and the extension was only due to the non‑availability of declarants to execute the declarations forwarded to them before the initial deadline.

Finally, the continual delays are of considerable commercial disadvantage to the Applicant, but of advantage to the Opponent, and this must be weighed against the public interest in rejecting the extension sought."

Mr Taylor on behalf of EPM submitted that:

1.Contrary to the above statement, the opponent is not seeking to adduce new evidence which is not in reply to the evidence and comments made in the declarations‑in‑

answer.The declarants for the patent applicant referred to extruded or machine cast hollow cores which were not disclosed in the specification.  The opponent therefore is obtaining the services of a further declarant who has experience in this area.

In this regard Mr Taylor showed me a draft declaration which he said will be lodged in a few weeks.  In addition, he said, the US patent corresponding to the present application, which is mentioned in Grant Adams' declaration, was only issued in April 1990.  The opponent is evaluating this patent and its cited prior art.

2.The opponent is not seeking to frustrate the patent applicant.  Considerable time is necessary to fully evaluate the large number of declarations‑in‑answer and associated material.  The opponent expects to serve the evidence‑in‑reply within this extension period.

3.The opponent is mounting a legitimate opposition so as not to grant an invalid patent.

Decision
         The law on extension of time in this type of action is well established.  In deciding whether an extension of time should be allowed, the Commissioner:

(i)must be satisfied that an applicant who seeks such an extension has made out a proper case justifying the extension, and

(ii)must consider not only the respective interests of applicants and opponents, but also those of the public by ensuring that worthless patents are not granted and that there are no unreasonable delays in the proceedings.

I accept Mr Taylor's explanation about the need for the extension.  The evidence before me indicates that the opponent is engaged in a serious opposition.  Mr Taylor showed me a draft declaration and indicated that the evidence‑in‑reply including this declaration will be served during this extension period.  Further, I do not consider that a delay of three months, which is only the first extension period requested for serving the evidence‑in‑reply, is unreasonable considering the nature and amount of evidence‑in‑
answer.  Accordingly, I am satisfied that the extension is justified.
         Regarding the patent applicant's interest I do not think it will be prejudiced by allowing this extension because:

‑there is no evidence that the opponent is adducing material which is not in reply;

‑there are procedures which the applicant may utilize if it should transpire that the evidence‑in‑reply is not strictly in reply; and

‑there is no evidence that this extension would cause such disadvantage to the applicant that would outweigh the public interest.

Having regard to the above reasons and considering all the circumstances of this case I am satisfied that the extension should be granted.  Accordingly, I allow the extension of time to 14 September 1990 to serve evidence‑in‑reply.

(R.H. EL‑KILANY)

Attorneys for patent applicant: Arthur S. Cave & Co, Sydney