Micronair (Aerial) Limited v Waikerie Cooperative Producers Ltd

[1985] APO 27

In the Matter of the Patents Act 1952 - and - In the Matter of Patent Application No. 538772 by MICRONAIR (AERIAL) LIMITED and - In the Matter of Opposition thereto hy WAIKERIE COOPERATIVE PRODUCERS LTD. - and - In the Matter of an Objection to an Extension of Time to Serve Evidence-in-Support.

DECISION OF A SUPERVISING EXAMINER OF PATENTS:

Patent application No. 538772 (56147/80) was advertised accepted on 30 August, 1984. Notice of opposition to the application was lodged on 27 February, 1985 by Waikerie Cooperative Producers Ltd. ("Waikerie") following a three months extension of time to do so. The period for serving Evidence-in- Support expired on 27 May, 1985. On 24 May, 1985, Waikerie applied for an extension of time of three months (to 27 August, 1985) within which to serve Evidence-in-Support. This extension was allowed without objection from the applicant.

On 7 August, 1985, Waikerie applied for a further extension of time of three months from 27 August, 1985 to 27 November, 1985 within which to lodge Evidence-in-Support. The applicant Micronair (Aerial) Limited ("Micronair") objected to the extension of time being granted.

The application for extension of time was heard in Canberra on Tuesday, 10 September, 1985 when Micronair was represented by Mr. R. N. Cross, patent attorney of Phillips, Ormonde & Fitzpatrick and Waikerie was represented by Mr. W.L. Thomson, patent attorney as agent for R.K. Maddern & Associates, patent attorneys of Adelaide.

The grounds stated by Waikerie in its application for extension of time are as follows:

"1. The basic prior art upon which the opponent will rely has already been made available to the applicant and no doubt further time is required hy the applicant to consider such prior art. No response has been received from the applicant to the disclosure which was made, which is a complete and full disclosure of the subject matter of the application completely anticipating all claims.

2. The writer will be absent overseas until September 1985."

The provisions of the industrial property legislation material to extensions of time in opposition proceedings have been considered by the Federal Court in Vangedal-Nielsen v. Smith (1980) 33 ALR 144 and in Lyons v. Registrar of Trade Marks (1983) 50 ALR 496, 1 IPR 416. These decisions show that:

• The applicant seeking the allowance of an extension of time carries the burden of establishing an appropriate case to justify that allowance. That is the applicant for extension of time carries the onus of proof; an extension cannot be granted merely because the other party has been unable to show that an extension should not be granted.

• The applicant for extension of time must make out a "proper case justifying extension".

• In deciding whether the applicant for extension has made out a proper case Justifying extension, the Commissioner must take all relevant considerations (and no others) into account.

These cases also show that in meeting the onus upon it, the applicant for the extension of time is not limited to reliance upon facts proved by formal evidence adduced by it. It may be able to point to background material or to material publicly available or even to facts proved by the other party's evidence. Factors to be considered in deciding whether an extension of time should be granted in opposition proceedings include:

• the public interest in ensuring that worthless patents are not granted because sufficient time has not been allowed to raise an objection or to prepare and serve evidence in support of an objection,

• the applicant's interest in having sufficient time to prepare an adequate defence of its application, and

• the opponent's interest in expeditiously preventing the grant of a patent which will curtail its activities.

At the hearing Mr. Thomson submitted that the extension of time should be granted to enable Waikerie to locate evidence of prior use known to exist in the Riverland area of South Australia. Difficulty had been encountered in locating the evidence as not many of the products had been made. Mr. Thomson further submitted that it was in the public interest that all evidence be placed on file before the opposition is heard.

Mr. Thomson also suggested that the applicant's attorneys were made aware of the existence of such products in the Riverland area at an early stage and well before the lodging of the present application for extension of time.

In his reply, Mr. Cross confirmed that Micronair had been made aware of the possibility of such products in use in the Riverland area by a letter of 7 December, 1984 from the opponent's attorneys. A copy of a drawing of the product was also provided.

Mr. Cross indicated that a letter of 17 January, 1985 from the opponent's attorneys inquired about Micronair's intentions in the light of the disclosure of the Riverland area product.

The applicant's reasons for objecting to the extension of time can be summarised as follows:

1. The reason given in the previous application for extension of time viz. "Further time is required to assemble the evidence in this matter", suggests that all that is required to complete the evidence is to put together the evidence that Waikerie already has. There is no suggestion that time is needed to gather further evidence although this now appears to be the main reason for the present application for extension of time.

2. The grounds given in the present application for extension of time are inadequate. With regard to the first ground in the application, there is no requirement for Micronair to inform Waikerie of what its intentions are and what it thinks about purported evidence. With regard to the second ground, Mr. Maddern, the opponent's attorney, is not a lone practitioner. Official decisions indicate that the absence of one person acting in a matter is not a sufficient reason for an extension of time within which to lodge Evidence-in-Support. Other persons could take up the matter.

3. The grounds given in the present application for extension of time are misleading. There is no reference, in the grounds given, to the location of evidence of prior use.

4. There is nothing to indicate that a serious opposition is being conducted.

I do not accept Mr. Cross' first submission, as the ground given in the earlier application for extension of time is not inconsistent with the opponent then requiring further time to gather evidence of use in the Riverland.

I do agree with Mr. Cross' second and third submissions concerning the grounds for extension of time as set out in the present application. As, however, at the hearing the opponent did not seek to rely on those grounds I will not set out a detailed consideration of them. If the opponent had relied on those grounds the application for extension of time would have to be refused.

Turning to Mr. Cross' fourth submission, I do not agree that there is nothing to indicate that a serious opposition is being conducted, Waikerie has attempted to reach agreement with Micronair but, after receiving no response, proceeded to the stage of opposing the application. The opponents have, at all stages, referred to the Riverland area products. The possibility of prior use has not only been brought to the applicant's attention at an early stage but Mr. Cross has Corroborated that this possibility is not a recent development.

I must also consider other factors in deciding whether the extension of time should be granted. Principal among these factors is the public interest in ensuring that worthless patents are not granted and another factor is that sufficient time should be allowed in which to prepare and serve evidence. Therefore, on the balance of interests, I believe that the opponents should be given the opportunity to locate the evidence they believe to exist of prior use in the Riverland area. Since the hearing the opponent has, on 20 September, 1985 lodged part of its evidence in support under cover of a letter which states:

"The remainder of the evidence we anticipate having in hand before the end of next week and will be forwarded at that time."

The evidence which has been lodged is evidence of use of apparatus in the Riverland area of South Australia. In the light of the statement quoted above it appears that Waikerie does not now require the full extension of time for which it applied. I accordingly extend the time for lodging evidence in support of the opposition to a date 28 days after the date of this decision.

Because my decision to grant an extension of time is based on grounds other than those relied on in the application for extension of time, I award costs in favour of Micronair.

(A.J. EVANS)
Supervising Examiner of Patents
4 0CT 1985