Multistack International Pty. Ltd. v. Atlas Air Australia Pty Limited

[1991] APO 14

PATENTS ACT 1952

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re: Application No. 589132 by MULTISTACK INTERNATIONAL PTY. LTD.,
     opposition by ATLAS AIR AUSTRALIA PTY LIMITED and objection to
     extension of time under Reg. 55 to serve Evidence-in-Support.

Background.

Application No. 589132 was advertised as being accepted in the Official  Journal of 5 October 1989 and, as a consequence, 5 January 1990 became the  last day upon which a S59 notice of opposition could be lodged in the  absence of grant of an extension of time. 

Luke Limited lodged notice of opposition on 5 January 1990 and on 10  January 1990, Atlas Air Australia Pty. Limited (Atlas) lodged a document
purporting to be a notice of opposition accompanied by an application  under S160 for an extension of time.  The applicant for the patent  objected to the grant of any extension under S160 and the matter was set  down for hearing.  Following the Hearing, the S160 extension was allowed  thus validating the notice of opposition lodged on 10 January 1990 by  Atlas. 

Extensions of time to lodge Evidence-in-Support were allowed to 10 January  1991 and on 9 January 1991 Atlas made a further application for an  extension of time to 10 April 1991 within which to serve  Evidence-in-Support.  Multistack International Pty. Ltd. (Multistack)  objected to this further extension and the matter was set down for  hearing.  Prior to the Hearing both Multistack and Atlas advised that they  would not be represented and would rely instead on written submissions.

Application for extension of time.

The circumstances and grounds given in the present application for an  extension of time are as follows:

The Statutory Declaration by Mr. Geoffrey Beeche requires some
        amendments prior to signature by Mr. Beeche.  Further time is 
        required to make these amendments and obtain Mr. Beeche's
        signature.

Further time is also required to complete the collection of
        evidence relating to the state of the common general knowledge in
        the art before the priority date of the abovementioned
        application, and to place this evidence in the form of Statutory
        Declarations.
  2

Submissions and Evidence.

The main points upon which Atlas bases the latest application for  extension of time are contained in written submissions to the Patent  Office by Mr. F.L. Schilling, Patent Attorney, of F.B.Rice & Co. and which  are as follows:

1. A number of revisions were required to a second Statutory Declaration
   by Mr. Beeche prior to execution.

2. Further time is required to obtain corroborating evidence relating to
   the state of the common general knowledge in the art and draft the
   evidence in the form of Statutory Declarations.

3. Following agreement by Luke Limited to forward copies of their
   Evidence-in-Support, further time is required to review this material
   with a view to incorporating it in Atlas's Evidence-in-Support.

Additionally Atlas:

(a) has advised that it is aware the applicant has filed part of its
    Evidence-in-Answer to the opposition by Luke Limited,

(b) claims it is clear a serious opposition is envisaged as shown by the
    Evidence-in-Support of the present Opposition already lodged by both
    opponents and the steps presently being undertaken by Atlas to collect
    further Evidence-in-Support,

(c) states in its submission that when further information from Mr.
    Beeche mentioned in the request for an extension of time lodged on the
    10 July 1990 was received, it was clear that what was originally
    thought of as rather simple considerations in establishing
    anticipation of the invention were in fact quite complex,

(d) submits that the circumstances of the present application for
    extension of time are virtually on all fours with that in the case of
    British-American Tobacco Co. Ltd. v  Philip Morris Ltd.
    (18 IPR p.655) except for the fact that diligent efforts have been
    made to collect and finalise the evidence of Mr.Beeche and two other
    persons also referred to in the submission as having agreed to act as
    declarants in support of the Opposition and,

(e) also submits as can be seen from the further Beeche Declaration
    (lodged with the submission), there has been considerable complexity
    in arriving at an interpretation of the claimed invention and then
    attempting to simplify the assessment of lack of novelty of the
    claims.

In summary Atlas submits:

1. a proper case justifying the present extension of time has been made
        out;

ii)  in light of the second Opposition by Luke Limited, neither the
     applicant nor the public are inconvenienced by the granting of this
     extension; and,

iii) the proceedings will not be unreasonably protracted by the granting
     of this extension.
  3

The reasons why the applicant objects to the latest application for  extension of time are contained in written submissions to the Patent  Office by Mr. D.C.Carter, patent attorney, of Cowie, Carter & Hendy and  may be summarised as follows:

1) No endeavour to file Evidence-in-Support of the Opposition has been
   made since April 1990.

2) In the opponent's application for extension of time dated 10 July 1990,
   the alleged further Declaration by Mr. Beeche was stated to be "at
   hand".  Some six (6) months later Atlas advises that amendments are
   necessary.

3) In the extension application of 10 October 1990 it was stated that
   further time was required to obtain evidence from other persons skilled
   in the art, yet the other opponent, Luke Limited, had completed its
   evidence in July 1990.

4) The opponent has been aware of applicant's patent application since
   July 1987 and has had all this time to put in train all the
   investigative actions needed to determine the evidence it may require
   to support an opposition, and therefore the statement of reasons in the
   extension application dated 9 January 1991 clearly shows the opponent
   has been exceedingly dilatory.

5) The necessary invesigations which the opponent apparently now requires
   to be made should have been completed and evidence prepared well before
   now.

6) The delays in this matter caused through the failure of Atlas Air to
   complete its Evidence-in-Support has resulted in the applicant being
   disadvantaged in the preparation of its Evidence-in-Answer.

7) In summary, the applicant has had sufficient time to date to complete
   its evidence and no further extension ought to be allowed.

Decision.

The law in relation to this type of extension has been established by a
number of decisions see e.g.

Vangedal-Nielsen v. Commisioner of Patents and Gelphen Nominees (1980)
33 ALR 144,

Lyons v. Registrar of Trade Marks (1983) I IPR 416 and,

Nautical Services v. Hitech Distillation 7 IPR 567.

Simply put, before allowing an extension the Commissioner:

(a) has to be satisfied that the party seeking the extension has made out
    a proper case,
(b) has to be satisfied that there is a serious opposition in train and,
(c) must not only consider the private interests of applicants for patents
    and opponents but also the public interest by making sure invalid
    patents are not granted and that patent proceedings are not
    unreasonably protracted.

4

I deal first with the submissions made by Mr. Carter on behalf of  Multistack.

Regarding some of the points raised i.e. no endeavour to file
Evidence-in-Support since April 1990 and the non-lodgement of the further
Declaration by Mr.Beeche, I do not feel these points are significant. I  think that it is clear the opponent was pursuing the collection and  preparation of additional evidence since April 1990 and the second Beeche
declaration lodged with Atlas' submissions is one end product of these  endeavours.

In relation to those points relating to the fact that Atlas has not yet  completed their Evidence-in-Support, I note that Atlas' application for  extension of time dated 10 October 1990 gave as a ground upon which the
application was made "Additional time is also required to obtain evidence
from other skilled persons in  the art relating to the state of common  general knowledge in the art and to place this evidence in the form of
Statutory Declarations."  I further note in the written submission  supporting their latest application dated 12 March 1991 that information  regarding the subject application and the present Opposition has been  forwarded  to other skilled persons and both have agreed to act as
declarants in support of the Opposition.  I presume that the contact with  the other skilled persons took place before the 10 October 1990 extension
application since in Atlas' earlier extension application dated 10 July  1990 a ground given for that extension was "Enquiries have also been made  with others skilled in the art in Australia at the priority date in the
field but further time is required to collect their evidence and so  complete Evidence-in-Support."

Since nine months have elapsed between the July 1990 application and the
March 1991 submission, I have no reason to believe that the evidence by  other persons skilled in the art is not ready for imminent lodgement.
If on the other hand the information contained in Atlas' March 1991  submission means that the skilled persons have just been engaged to draft  their evidence in the form of Statutory Declarations, then, I would have
to agree with Mr. Carter that Atlas has been dilatory.

With regard to the point that the applicant is being disadvantaged in not  being able to prepare its Evidence-in-Answer, I note that this relates to  evidence in respect of Luke's opposition.  I can appreciate the point that  where an applicant is faced with two oppositions to its application, some  duplication of effort by the applicant may be avoided if the evidence from  both opponents could be considered at the same time.  In this case, I do  not consider that delay in Atlas completing its evidence is a matter  causing the applicant to be unduly disadvantaged in preparing evidence to  Luke's opposition.

I turn now to the Atlas submissions.  Bearing in mind the  Evidence-in-Support lodged by Atlas to date, I agree that a serious  opposition is in train.
  5

Reference has been made in the submissions to the British-American   Tobacco v. Philip Morris (supra) case and there are certain similarities  but, in that case, at the time of granting the extension, all the evidence  had been collected and evaluated and was ostensibly in the final stages of  preparation. In the present situation, according to the Atlas March '91  submission, evidence is still being collected from the other persons  skilled in the art and the progress towards drafting the evidence in the  form of Statutory Declarations is not clear.  From the submissions, the  reasons why the time so far has proved insufficient are based on  complexity of the task in interpreting the claimed invention and assessing  the evidence needed to establish the opposition grounds. The exact nature  of this complexity has not been explained.  In the absence of detailed  explanation concerning opponents efforts seeking evidence from the skilled  persons, I am inclined to the view that further time for pursuing that  line of evidence does not seem justified.

One final matter I need to consider concerns the interests of the  respective parties and the public interest.  In my view the respective  interests of the applicant and opponent are evenly balanced.  On the one  hand, if the extension is not granted, the opponent would be prevented  from presenting its best case if its efforts in preparing and serving  evidence were curtailed, if such evidence is about to be finalised. On the  other hand, any unnecessary delays in finalising the Evidence-in-Support  is a factor which may affect the interests of the applicant.  However, the  public interest is best served if all the available evidence is considered  thereby ensuing that an invalid patent is not granted, provided there are  no unreasonable delays in providing that evidence.

I am satisfied that the opponent has a serious opposition in train.   Furthermore, while I am in some doubt whether the opponent has acted with  all due diligence in addressing the evidence in this matter, I accept that
evidence from experts has been investigated, and that in the public
interest I should allow the opponent an opportunity to finalise and file  this evidence. 

I therefore allow the extension of time to 10 April 1991.

(MIKE SELLARS)
  Delegate of the Commissioner of Patents

Patent attorneys for applicant     :     Cowie, Carter & Hendy, Melbourne.
Patent attorneys for opponent     :     F.B. Rice & Co., Sydney.