Mineral Deposits Limited v. Douglas Charles Wright

[1983] APO 19

In the Matter of the Patents Act 1952

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In the Matter of Patent Application No. 512356 in the Name of MINERAL DEPOSITS LIMITED

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In the Matter of Opposition thereto by DOUGLAS CHARLES WRIGHT

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In the Matter of a Request for an Extension of Time within which to Lodge Evidence‑in‑

Answer.

DECISION OF A SUPERVISING EXAMINER OF PATENTS:
         Application No. 512356 by Mineral Deposits Limited was advertised accepted on 9 October, 1980 and a Notice of Opposition was lodged on 17 December, 1980 by Douglas Charles Wright.
         The service of evidence‑in‑support was completed on 14 May, 1982, after the grant of five extensions of time, each of three months.
         The applicant has already sought and been granted three extensions of time, of three months each, in which to serve evidence‑in‑answer.   On 12 April, 1983 the applicant lodged an application for a further three months to 14 August, 1983, based on the following stated ground:

"The field of the invention is complex and opponent has filed a considerable amount of evidence.   Further time is required to complete consideration of this evidence and to prepare and serve Evidence in Answer."

On 28 April, 1983 the opponent, through his patent attorneys, G.R. Cullen and Company, Brisbane, notified his objection to the granting of this further extension, in a telex, subsequently confirmed by letter, which read as follows:

"LATEST APPLICATION BY APPLICANT FOR EXTENSION OF TIME TO AUGUST 14, 1983.   OUR CLIENT HAS INSTRUCTED US TO OBJECT TO SUCH EXTENSION.   OUR CLIENT CONSIDERS THAT HE HAS BEEN PERFECTLY REASONABLE WITH APPLICANT INSOFAR AS EXTENSIONS OF TIME TO LODGE EVIDENCE IN ANSWER ARE CONCERNED.   HE FILED HIS EVIDENCE WITHIN SIX MONTHS AND SO FAR APPLICANT HAS HAD 12 MONTHS APPROX TO FILE EVIDENCE IN ANSWER.   OUR CLIENT ALSO BELIEVES THAT IF PRESENT EXTENSION GRANTED 15 MONTHS PERIOD FOR FILING EVIDENCE IN ANSWER EXCESSIVE.   OUR CLIENT ALSO BELIEVES REASONS FOR APPLYING FOR EXTENSION ARE GROSSLY INADEQUATE AND IT IS NOTED THAT SAME REASON HAS BEEN USED FOR LAST TWO EXTENSIONS.   IT SEEMS TO IMPLY THAT PREPARATION OF EVIDENCE IN ANSWER HAS NOT EVEN COMMENCED AND THAT EVIDENCE IN SUPPORT STILL BEING CONSIDERED.   OUR CLIENT ALSO CANNOT SEE HOW THIS MATTER CAN BE CONSIDERED COMPLEX IF OUR EVIDENCE IN SUPPORT WAS FILED IN A PERIOD OF 6 MONTHS.   FOR THESE REASONS OUR CLIENT CONSIDERS CURRENT EXTENSION SHOULD BE REFUSED.   WE WILL NOT BE ATTENDING ANY HEARING ON THIS MATTER AND WILL ABIDE BY OFFICE DECISION ON THE MATTER."

A Hearing was set down for 23 May, 1983.   However the applicant, through his Patent Attorneys, Shelston Waters, Sydney, also chose not to appear but instead lodged the following written submission:

"In reply to the Official letter of 6th May, 1983 we advise that we do not presently intend to appear personally at the forthcoming Hearing on 23rd May, 1983.   However, we wish to make the following written submissions and we respectfully ask that the Hearing Officer take these into consideration when deciding the matter.

It is submitted that Applicant is entitled to an extension of time for serving Evidence in Answer, at least up to the date requested of 14th August, 1983.

As mentioned in the original application dated 11th April, 1983, the field of the invention is complex and the Opponent has filed a considerable amount of evidence.   Much work is involved in studying this material and preparing appropriate evidence in answer.   This evidence is in the course of preparation but its completion has been repeatedly delayed by the many unavoidable absences overseas of the inventor, Philip John Giffard, in the course of his employment as Technical Director of the Applicant company.

Mr. Giffard is the only officer of the applicant company with that degree of intimate knowledge of the art and this particular invention to properly reply to the Opponent's evidence.

The company has many overseas interests and it is Mr. Giffard's responsibility as Technical Director to oversee the technical aspects of these interests on a personal level.  By way of example, in the past year, Mr. Giffard has been overseas on more than six occasions and in the past three months he has been overseas for more than two months.   Mr. Giffard is currently attending to the Applicant's business in Rumania and is not expected back for some time.   Accordingly, further time is required to complete the preparation and service of evidence in answer.

Because of Mr. Giffard's present absence overseas, it has not been possible even to submit part evidence in answer before the expiry of the currently extended period to 14th May, 1983.   However, as a matter of formality, we are concurrently filing a separate application for an extension of time in which the reasons mentioned above are set out as formal grounds for the extension.   We respectfully ask the office to consider this later extension application if, for any reason, the office decides not to grant the previously sought extension.

In addition to the reasons set out above, it seems that the Opponent is being unreasonable in objecting to the current extension.   On reviewing the file, it can be seen that notice of opposition was filed on 17th December, 1980 and the Opponent himself requested and obtained (unopposed) five extensions of time totalling fifteen months before serving evidence in support on 14th May, 1982, some seventeen months after lodging the notice.

On the other hand, applicant has to date sought only four extensions of time totalling 12 months for preparing and serving evidence in answer.   This period of 12 months also includes the current extension application, the subject of dispute.   In our submission applicant should be entitled to corresponding extensions at least up to 14th November, 1983.

It should also be kept in mind that even though opponent filed his evidence in support some seventeen months after lodging his notice of opposition, he must have appreciated the need to present evidence before the original notice of opposition was lodged.   Applicant, on the other hand, could not commence preparation of evidence in answer until after opponent's evidence in support had been received.   That is to say, applicant should be entitled to at least the seventeen months taken by the opponent in serving its evidence.

In addition to the foregoing, on 21st September, 1982 we wrote to the opponent's attorney with an offer for joint settlement of two oppositions involving the same parties on this case and 512,564.   In the absence of a reply, a reminder was sent on 6th December, 1982 and it was not until 4th January, 1983 that the opponent rejected our offer of settlement.   This hiatus period in excess of three months should be added to applicant's extension entitlement.   Accordingly, on the basis of the opponents performance in this opposition, we believe that a reasonable case can be made out for current extensions up to 14th February, 1984.

Apart from the obvious inconsistency in opponent's objection to the current extension of time, it is clear that the major problem in preparing and serving Applicant's evidence in answer is the particular nature of the inventor's work which takes him out of the country for such a large part of his working time.   It would be appreciated if the extension in dispute could be granted to 14th August, 1983.   It would also be appreciated if the office could leave open the question of possible extensions beyond that date, to allow any such extension (if necessary) to be determined on its merit.   While every effort is being made to have the evidence prepared and submitted before 14th August, 1983, the unavoidable and frequently unexpected overseas absences of Mr. Giffard could still present problems.

It should also be kept in mind that opponent's actions in opposing this extension of time without warning to us has involved applicant in considerable inconvenience and expense.  It would be appreciated if consideration were given to an award of costs against the opponent should the opposition to the extension of time be determined in applicant's favour.

Favourable considerable of the extension application is respectfully requested."

As indicated in the sixth paragraph, this submission was accompanied by a formal, revised, extension application on Form 11, giving a more detailed statement of grounds than the original application, and substantially corresponding to the contents of the third, fourth and fifth paragraphs of the written submission.   I do not consider this revised application to be necessary.   The applicant's case is adequately covered by the original applic‑
ation together with the written submission, and the later Form 11 adds nothing thereto.
         The applicant's written submission, in particular the third, fourth and fifth paragraphs thereof, provides the detailed information to support the application for an extension of time.   I accept the statement that the inventor, Mr. Giffard, is the logical, preferred (or even, only) choice of person to respond to the opponent's evidence, and that his duties require frequent visits overseas.
         Against that the main thrust of the opponent's objection appears to be based on a comparison of the extensions previously granted to either side.   Since the opponent was in fact granted extensions totalling 15 months, not 6 months as he asserts, his argument is based on a faulty premise which, when corrected, rebounds against him.
         I have no difficulty in deciding in favour of the applicant, and granting the request.
         However, I believe it is appropriate to comment on certain aspects of the submissions made:

(i)Both parties appear to be preoccupied with comparisons of the extensions previously granted to each other.  Such comparisons are not directly relevant.   It may be that reasons justifying extensions for one party will in turn be considered equally appropriate to justify extensions for the other, and I would hope that Office decisions are seen to be consistent in this regard, but that is a long way from saying that each party has a right to the same extensions as the other.   The argument, in the latter half of the applicant's submission, that he is entitled to the same total time as the opponent had, plus further allowances for particular 'extra' circumstances, is not one which I would recommend him to use.

(ii)I am not impressed by references to the field of the invention being "complex".   Compared with the majority of cases which proceed to Opposition Hearings, I would regard the technology and issues involved in the present case to be of below, rather than above, average complexity.  While I appreciate the difficulties facing an applicant whose only expert is frequently unavailable, I trust that ways will be found to obtain Mr. Giffard's attention, at the earliest possible opportunity, for long enough to complete this particular task.   It is in the public interest for Section 59 Oppositions to be resolved expeditiously and this must be weighed against the provision of a reasonable opportunity for the applicant to prepare and present his case.

As I have already indicated, I allow the extension of time requested. With regard to costs, I am granting this extension on grounds not fully presented in the original application.   On the other hand there is a suspicion that the opponent may not have objected had he not mistaken the facts.   In the circumstances I believe each side should bear its own costs.

(G.R. BROWN)