Micronair (Aerial) Limited v. Waikerie Co Operative Producers Ltd.

[1986] APO 9

In the Matter of the Patents Act 1952

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In the Matter of Patent Application 538772 by MICRONAIR (AERIAL) LIMITED

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In the Matter of Opposition thereto by WAIKERIE CO‑OPERATIVE PRODUCERS LTD.

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In the Matter of an Application for Special Leave to Adduce Further Evidence.

DECISION OF A SUPERVISING EXAMINER OF PATENTS:
         By a decision dated 4 October, 1985 I granted to the opponent in this matter (Waikerie) an extension of the time for lodging evidence in support of the opposition to a date 28 days after the date of the decision.  Meanwhile, the Attorney for the opponent had lodged at the Adelaide sub‑office (on 25 September, 1985) two declarations together with a covering letter which read:

"Further to my letter dated 20 September, 1985 I enclose herewith the original declarations of DESMOND CHARLES BURKE and the writer ... which concludes Evidence‑in‑Support of opposition."

It appears that my decision and the letter from the Attorney crossed in transit.
         On 16 October, 1985 the Attorney for the opponent wrote to the Patent Office in the following terms:

"This will acknowledge receipt of and thank you for your letter of 4 October, 1985 and the accompanying Decision.

We are particularly grateful to have had a full 28 days because a large amount of evidence has been forthcoming, and the public interest would not be served if that evidence were

not submitted.  We therefore ask that the evidence already supplied along with our letter of 25 September not be regarded as all the evidence in support of the opposition, this now being supplemented by very relevant evidence."

The Attorneys for the applicant (Micronair) were invited to comment, and lodged a detailed written submission on 29 October, 1985; but declarations purporting to be further evidence in support had been lodged at the Adelaide sub‑office on 28 October, 1985.  On 31 October, 1985 the Office advised the Attorney for the opponent as follows:

"This letter is in reply to your letter of 16 October, 1985 which asks that the evidence already supplied along with the letter of 25 September, 1985 not be regarded as all the evidence in support of the opposition.

There is no provision in the Regulations which allows the Commissioner to decide when service of evidence in support of an opposition has been completed and so the Commissioner relies on the opponent to decide when the amount of evidence is sufficient.  In the present matter the letter dated 25 September, 1985 advised that the enclosed declaration "concluded Evidence‑in‑Support of the Opposition".

The completion of the service of evidence in support brings Regulation 56 into force and there is no other Regulation which would allow the Commissioner to decide that it should not apply.  In fact the parties in the present matter were informed in a letter dated 16 October, 1985 from this Office that Regulation 56 applied.

The Commissioner cannot agree to the request made in the letter dated 16 October, 1985 although the provisions of Regulation 59 could be utilized by the opponent if it has further evidence it wishes to adduce."

In response, on 5 November, 1985 the opponent lodged an application under regulation 59 for special leave to adduce further evidence.  A copy of that application for special leave to adduce further evidence was served on the attorneys for the applicant on 7 November, 1985.  By letters dated 19 November, 1985 the attorneys for the applicant notified the attorneys for the opponent and the Patent Office under sub‑regulation 59(5) that the applicant opposed the application for leave to adduce further evidence.  Sub‑regulation 59(5) would, in this case, require the notice under that sub‑regulation to be served on the attorneys for the opponent on or before 21 November, 1985.  As section 172A of the Patents Act authorizes the service of the sub‑regulation 59(5) notice by post, and as that notice was posted to the attorneys for the opponent in sufficient time to be delivered before 21 November, 1985, I must, applying section 29 of the Acts Interpretation Act, assume that the notice was served in time as the contrary has not been proved.
         The application for special leave was the subject of a hearing in Melbourne on 7 February, 1986, when the applicant was represented by Mr. R.N. Cross, Patent Attorney, of Phillips, Ormonde & Fitzpatrick, and the opponent was represented by Mr. R.K. Maddern, Patent Attorney, of R.K. Maddern & Associates.
          The cases on applications for leave to adduce further evidence establish that there are 3 matters to be considered in deciding whether leave should or should not be granted.  These are:

1.It must be shown that the evidence could not have been obtained with reasonable diligence at an earlier stage.

2.The evidence must be such that, if given, it would probably have an important influence on the result of the case.

3.The evidence must be such as is presumably to be believed, i.e. it must be apparently credible, though not necessarily incontravertible.

(Simac SpA Macchine Alimentari v. Semak Electrics Pty. Ltd., (1985) 5 IPR 281, at 282).
         The first of these considerations is not material in the present case as the "further evidence" has been lodged well before the hearing of the section 59 opposition; this consideration would be more relevant if a party sought to adduce further evidence after the close of evidence in reply or after the hearing of the opposition.  The attorney for the opponent has asserted that the further evidence would be conclusive on the question of whether the invention claimed is anticipated.  I cannot pre‑judge the issues to be argued at the opposition hearing but I do accept that the further evidence is particularly pertinent to the issue of whether the invention claimed is anticipated.  I also accept that the further evidence is apparently credible.  I am accordingly of the opinion that the opponent should be granted leave to adduce this further evidence so that the opposition may

"be dealt with on its merits, rather than ... be shut out in consequence of a failure in procedure, lamentable though the failure may be."

(See Kaiser Aluminium & Chemical Corporation v. The Reynolds Metals Company (1969) ALJR 156 at 158, per Kitto J.).
         Regulation 60 requires that the declarations constituting the further evidence be served on the applicant within one month of the opponent's receipt of this decision.  As those declarations were served on the applicant on 28 October, 1985 the opponent is now unable to comply with the requirements of regulation 60.  Similarly, if the applicant wished to adduce evidence in reply to the further evidence, regulation 60 requires it to do so within one month of its receipt of that further evidence.  As that one month time limit expired on 28 November, 1985, the applicant is now also unable to comply with the require‑
ments of regulation 60.  In these circumstances it is appropriate that I exercise the power in regulation 84 to dispense with the requirements of regulation 60 and issue directions as to an alternative procedure to be followed.
         My decision is as follows:

1.The opponent is granted special leave to adduce further evidence in the form of the declarations by ‑

CRAIG LAWRENCE VINALL,

FIONA ELAINE DODSON,

DAVID PETER LOGOS, and

RICHARD KENNETH MADDERN

which were lodged at the Adelaide sub‑office on 28 October, 1985.

2.If the applicant desired to adduce evidence in reply to that further evidence, it shall ‑

(a)within 3 months of the date of this decision, serve copies of the declarations constituting that evidence in reply on the opponent, and

(b)as soon as practicable after the copies of the declarations have been so served, lodge the declarations at the Patent Office with a written statement indicating the place at which, and the date on which, the copies of the declarations were so served.

3.The opponent is awarded its costs of the application for leave to adduce further evidence.

(A.J. EVANS)