Minnesota Mining and Manufacturing Company v Kimberly-Clark Limited

[1987] APO 31

In the Matter of the Patents Act 1952

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In the Matter of Application No. 561405 for a Patent by MINNESOTA MINING AND MANUFACTURING COMPANY

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In the Matter of Opposition thereto by KIMBERLY‑CLARK LIMITED

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In the Matter of an Application for Extension of Time under Section 59.

DECISION OF A SUPERVISING EXAMINER OF PATENTS:
Background
         MINNESOTA MINING AND MANUFACTURING COMPANY (3M) lodged patent application No. 561405 entitled "Sorbent Sheet Product" on 3 March, 1983.  Acceptance of the application and complete specification was notified in the Official Journal on 7 May, 1987.
         On 4 August, 1987 KIMBERLY‑CLARK LIMITED (KIMBERLY) lodged an application under s.59(1) for an extension of time from 7 August, 1987 to 7 November, 1987 in which to lodge a notice of opposition to the grant of application No. 561405.  3M objected to the extension of time and the matter was set down for hearing in Canberra on 18 September, 1987.
         At the hearing, Mr. J.G. Hinde, Patent Attorney of Spruson & Ferguson, represented 3M and Mr. R. Haliday, Patent Attorney of Sandercock, Smith & Beadle represented KIMBERLY.

The circumstances and grounds in the application for an extension of time read as follows:

"Our Australian Patent Attorneys had difficulty obtaining a copy of the complete specification, as accepted, of Australian Patent Application No. 561405 and we have only recently received a copy of same.  Further time is therefore required in order to study the specification to determine whether opposition is justified."

At the hearing, Mr. Haliday expanded on the above by stating that:

"A watch for the acceptance of the 3M application had been instituted from March, 1984 and following upon that advertisement of acceptance in the Official Journal, Sandercock, Smith & Beadle thereupon contacted a private searcher at the Melbourne Sub‑Office requesting a copy of the accepted specification.  After some period of time when the specification had not been forthcoming, a follow up telephone call was made to the searcher and assurances were given that the specification would be forwarded on immediately.  The specification still did not turn up and it was only following a third call that it was finally received."

Mr. Haliday further stated that a copy of the specification was not sent by Sandercock, Smith & Beadle to their instructing principals in Britain until 20 July, 1987.
         The notice of opposition was lodged by Mr. Haliday at the hearing.
Submissions
         Both Mr. Haliday and Mr. Hinde referred me to two decisions: Vangedal‑Nielsen & Ors v. Smith & Anor. (1980) 33 ALR 144 and Poltrock v. Ennor 8 IPR 217. Mr. Haliday submitted that from these decisions the factors to be considered before an extension of time is granted are:

(i)that some good reason existed why the prospective opponent had been unable to mount its opposition within the initial period of three months;

(ii)that a potentially serious opposition is foreshadowed;

(iii)the public interest in ensuring that worthless patents are not granted because insufficient time has been allowed for lodging a notice of opposition;

(iv)the public interest in ensuring that there are no unreasonable delays in proceedings.

Mr. Haliday then submitted that because of the circumstances which have been outlined previously, KIMBERLY did not have sufficient time to make an in depth study of the 3M specification and to decide whether an opposition should be mounted.  He also submitted that a serious opposition is foreshadowed because of the keen interest shown by KIMBERLY in the 3M application as evidenced by:

(i)a watch being placed on the application since March 1984;

(ii)KIMBERLY is a manufacturer of non‑woven cloth, the subject of the application and has a patent for similar matter which was in fact cited during the examination of the application.

On the matter of public interest, he submitted that because of the conflict between the present application and the KIMBERLY patent, it would not be in the public interest to have two patents granted for the same subject matter.  In addition, as the notice of opposition has been lodged, the extension required is in fact only for a period of approximately one month, which is an insignificant period.  Therefore, as KIMBERLY has satisfied the necessary criteria, the extension should be granted.
         In answer to this Mr. Hinde submitted that from the judgement in Vangedal‑Nielsen (supra), an extension is a privilege and should only be granted in exceptional circumstances.  He said that when the application has been advertised accepted the specification is deemed to be available to anyone who chooses to oppose: however, in this case, it appears that the Australian Patent Attorneys have not been diligent.  Patent specifications are readily available and there are a number of ways of obtaining a copy of one.  So, he submitted, the fact that difficulty was encountered in obtaining a copy could not be considered exceptional and thus the reasoning given was unacceptable.  Also Mr. Hinde made reference to Shell Internationale Research Maatschappij N.V.'s Patent 50 AOJP 968.  The extension in that case was not granted as it was decided that the prospective opponent had ample time and appeared to make no serious attempts to lodge the notice of opposition.  The circumstances in the present case are similar.  He submitted that KIMBERLY or its Patent Attorneys seemed to have made no real attempt to obtain the accepted specification within sufficient time.  On the question of serious opposition, Mr. Hinde submitted that the points raised by Mr. Haliday were directed to locus standi rather than establishing that there is a serious opposition foreshadowed.  Furthermore, there is no evidence of the overlap of technology between the present application and the KIMBERLY patent.  Mr. Hinde also disagreed on the point that if the extension is granted there would only be about one month's delay.  He submitted that it is usual for opposition proceedings to drag on over a large period of time.  It is in the public interest for a person's rights to be "determined and determined quickly".  Thus the delay that would be caused if the extension is granted would not be in the public interest.  Mr. Hinde submitted that therefore, the prospective opponent has not made out a case justifying the extension and consequently the request for an extension should be refused.
Decision
         In the Vangedal‑Nielsen case (supra), Bowen C.J. stated that:

"The right to lodge a notice of opposition within three months is clearly given mainly in the interests of the person wishing to oppose a patent on any one or more of the grounds stated in s.59(1). ... Three months has been considered by Parliament to be an appropriate period to allow for this.  But it has been recognised that cases may occur where for one reason or another three months may prove insufficient.  Accordingly, it has been provided that further time may be allowed not exceeding a further three months."

He further stated that before allowing an extension of time, the Commissioner should consider:

(i)the interests of the prospective opponent who has not been able to mount his opposition within the initial three month period for some good reason;

(ii)the interest of the public, where a serious opposition is foreshadowed (i.e. the public interest involved in ensuring that worthless patents are not granted because there has been insufficient opportunity to oppose);

(iii)the interests of the applicant for the patent and whether there will be any unreasonable delay.

Finally Bowen C.J. made the point that the Commissioner needs to be satisfied by the applicant for the extension that a proper case has been made out justifying the extension.
         With regard to the first consideration, once an application has been accepted, a copy of the accepted specification is immediately available from the Patent Office or from the State Sub‑Offices.  In this case, KIMBERLY's Patent Attorneys requested a private searcher to obtain a copy of the 3M specification.  In my opinion, this method is round about and a more direct approach to the Patent Office could have been made.  Be that as it may, it appears from the evidence, that the searcher did not supply a copy of the specification until shortly before 20 July, 1987 (i.e. approximately 2‑1/2 months after acceptance).  This time taken by the Attorneys to obtain the specification is excessive given their immediate availability (once published) from the Office.  More importantly, I consider that no real attempt was made to avoid this delay.  As stated above, there are better and more direct ways of obtaining a patent specification, but the Attorneys chose to keep following their original course and just let time pass rather than choose a quicker alternative.  Therefore, the difficulties which they encountered were clearly of their own making.  Consequently, I come to the conclusion that as no serious attempts were made to obtain the accepted specification within sufficient time, KIMBERLY has not established that it had a good reason for not being able to mount its opposition within the time provided. 
         On the second consideration, the existence of the KIMBERLY patent does not appear to be particularly relevant as that patent was considered by the examiner during processing of the application in suit.  Nor do I consider that there is any other evidence before me indicative that a serious opposition is foreshadowed.  The evidence suggests only that KIMBERLY is active in the art and has a keen interest in the present application, and in this respect is more evidence of KIMBERLY's locus standi ‑ as submitted by Mr. Hinde ‑ than of anything else.  Therefore I consider that the public interest would not be adversely affected if the extension is not granted.  In view of my conclusions above, I need not consider the final point.
         Accordingly, I am not satisfied that the applicant for the extension has made out a proper case justifying the extension.
         Consequently I refuse to grant the extension and I award costs against KIMBERLY.

(L.J. O'KEEFFE)

Patent Attorneys for the applicant:  Spruson & Ferguson

Patent Attorneys for the applicant for extension: