Mitsubishi Chemical Industries Limited v. Asahi Kasei Kogyo Kabushiki Kaisha

[1986] APO 28

In the Matter of the Patents Act 1952

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In the Matter of Patent Application No. 542274 by MITSUBISHI CHEMICAL INDUSTRIES LIMITED

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In the Matter of Opposition thereto by ASAHI KASEI KOGYO KABUSHIKI KAISHA

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In the Matter of Objection to Application for Extension of Time to Serve Evidence‑in‑Answer.

DECISION OF A SUPERVISING EXAMINER OF PATENTS:
Background
         Patent application No. 542274 (75780/81) was advertised as accepted on 14 February, 1985, and on 13 May, 1985 Asahi Kasei Kogyo Kabushiki Kaisha ("Asahi") lodged a notice of opposition under section 59 to the grant of a patent on the application.   Asahi served evidence‑in‑support on 4 October, 1985 after allowance of an extension of time of three months for doing so.
         The period for serving evidence‑in‑answer therefore expired on 4 January, 1986. However, the applicant, Mitsubishi Chemical Industries Ltd. ("Mitsubishi"), applied for and was granted two further three month periods up to 4 July, 1986 within which to serve that evidence.  Mitsubishi has currently applied for a further extension of time of three months to 4 October, 1986 within which to serve evidence‑in‑answer and Asahi has objected to this application.  The matter was heard in Sydney on 5 August, 1986.

Mr. J.D. O'Connor, patent attorney, assisted by Dr. J.F. McCann, both of Spruson & Ferguson, Patent Attorneys of Sydney, appeared for the opponent, Asahi.  Dr. M.G. Horner, Patent Attorney, assisted by Ms. V.N. Vegar, both of Griffith, Hassel & Frazer, Patent Attorneys, also of Sydney, appeared for the applicant, Mitsubishi.
Application
         With respect to the granting of extensions of time in opposition proceedings, regulation 83A of the Patents Act requires that "... the Commissioner shall not grant the extension of time unless he is satisfied that the extension is justified having regard to all the circumstances of the case".
         The circumstances of the present case can be summarised as follows:

(i)In its earlier application for extension of time, Mitsubishi gave the reason for requiring the extension in the following terms ‑

"Further time is required for evaluation of the Evidence‑in‑

Support and preparation of our Evidence‑in‑Answer."

1. In letters dated 15 May, 1986, Asahi informed both the applicant and the Patent Office that it would object to the granting of any further extension of time beyond 4 July, 1986, presumably irrespective of the reasons given for requiring such an extension of time.

(iii)The current application for extension of time, lodged on 1 July, 1986, lists the circumstances in which and grounds upon which the application is made as being:

"Detailed correspondence has occurred between ourselves (in Japan) and our Australian Patent Attorneys concerning the Evidence‑in‑Support.  Further time is required to consider the issues raised by the opponent, resolutions of these issues, preparation of Evidence‑in‑Answer and presentation in the prescribed format."

At the hearing, Dr. Horner elaborated on the reasons for requiring the extension by making a number of submissions which I have summarised in items 1 to 4, below:

1.Much of the time already elapsed had been necessary for the translation into Japanese of not only the evidence‑in‑support but also various correspondence between the Australian attorneys, the Japanese associates, and Mitsubishi, on how the evidence‑in‑answer should be presented.

2.Time had also been taken to draft an amended set of claims which was put to the opponent in the hope of settling the matter.  However, this settlement attempt was rejected by the opponent.

3.Further time is now required to locate expert witnesses to give evidence on the question of obviousness.

4.The opponent had about eight months from the date of acceptance of the complete specification to the date on which the evidence‑in‑support was served to prepare evidence.  Thus, nine months is not an unreasonable amount of time for the applicant to use in preparing evidence‑in‑answer.

In response, Mr. O'Connor submitted that Asahi had similar problems to Mitsubishi with respect to the matters listed above in items 1 and 3, and yet evidence‑in‑support was served within 5 months of the lodgement of the notice of opposition.  Regarding item 3, he suggested that the time to start seeking a local expert was on receipt of the notice of opposition.
         Mr. O'Connor also submitted that the reasons given in the present application were insufficient and were not markedly different from those provided in the previous two granted applications for extension of time.  He
argued that it was not until the hearing, that the true extent of the preparation of the evidence‑in‑answer was made known.  Dr. Horner replied that the details raised at the hearing were merely elaborations of the reasonably explicit grounds set out in the application for extension of time.
Decision
The law on extension of time in this class of action has been comprehensively reviewed in Lyons v. Registrar of Trade Marks 1 IPR 416. It is apparent therefrom that the Commissioner must consider not only the 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. Additionally, it is important ‑ respecting evidence‑in‑
answer ‑ that applicants should not lose the benefit of protection of what may be a meritorious invention merely because they have had insufficient time to bring all the material evidence before the Commissioner.  Nevertheless, the Commissioner must be satisfied that an applicant has made out a proper case justifying an extension, and is not generating or contributing to unreasonable delays in the proceedings.
          In considering the present circumstances,I do not think it is a relevant consideration that one party should necessarily be restricted to the same amount of time as that taken by the other party to prepare evidence.  Further, with respect to searching for local expert witnesses, I do not think it is reasonable to suggest that an applicant should begin this procedure when notice of opposition is received.  It might be argued that such a search should be started when the evidence‑in‑support is served.  However, I think it is not unreasonable for the Australian attorneys to correspond with the applicant before deciding what form the evidence‑in‑answer should take including whether or not expert witnesses should be sought.
         It seems to me inevitable that some delay will occur in the preparation of evidence where the party involved resides in a country the major language of which is not English, thus necessitating the translation of correspondence and other documents.  In the present circumstances, I do not think that the amount of time already taken is unreasonable bearing in mind that the Australian attorneys have been dealing with Japanese associates and not directly with the applicant ‑ a problem, incidentally, not experienced by Spruson & Ferguson who have been able to deal directly with Asahi.  Within this time, I note that the applicant has attempted to settle the matter by submitting a proposed amended set of claims to the opponent.  Such an action, in my opinion is not indicative of an applicant wishing to unnecessarily delay matters.
         Thus I am of the opinion that the reasons provided by the applicant at the hearing have established justification for the extension of time sought.  I therefore allow the extension of time to 4 October, 1986.  I note also that Dr. Horner has estimated that the evidence‑in‑answer should be completed by this date.
         While no circumstances, of which the opponent was unaware, were raised at the hearing, I consider that the applicant should have provided more detailed reasons than the bare minimum which were actually provided in its application.  However, as I mentioned previously, the opponent had indicated an intention to object to any further application for extension of time, presumably irrespective of any reasons relied on in any such application.
         Thus, I make no award of costs.

(J.L. ROVETA)