Nautical Services Pty Ltd v Hitech Distillation (Australia) Pty Ltd - [1986] APO 37

In the Matter of the Patents Act 1952
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In the Matter of Patent Application No. 549841 in the Name of NAUTICAL SERVICES PTY. LTD.
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In the Matter of an Opposition by HITECH DISTILLATION (AUSTRALIA) PTY. LTD.
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In the Matter of an Objection to an Application for an Extension of Time to Serve Evidence in Support.

DECISION OF A SUPERVISING EXAMINER OF PATENTS:
Background
         Patent application No. 549841, entitled, "De‑Salinator For Brackish or Salt Water", was advertised accepted on 13 February, 1986, and Notice of Opposition was lodged on 9 May, 1986 by HITECH DISTILLATION (AUSTRALIA) PTY. LTD.
         On 8 August, 1986 the opponent applied for an extension of time until 9 November, 1986 in which to serve evidence‑in‑support of its opposition. The applicant objected to this application for an extension of time.
         A hearing was set down in Canberra on 26 September, 1986 to enable both parties to be heard. Dr. I Ernst, patent attorney of Shelston Waters, appeared for HITECH, and Mr. W.L. Thomson, patent

attorney of W.L. Thomson and Associates, appeared for Grant Adams and Company, the attorneys representing NAUTICAL SERVICES.
The circumstances and the grounds referred to in the application for extension of time are as follows:

"More time is required in which to gather, sift, collate and formalise evidence."

However, on 24 September, 1986 the opponent lodged what purported to be an amended application for extension of time in which to lodge evidence in support. The grounds and circumstances referred to in this document read as follows:

"The opponent has been actively and diligently engaged in acquisition of formal evidence in support.

It believes it now has strong prima facie evidence of lack of Novelty and additional relevant raw evidence is still coming to hand or promised as a result of enquiries initiated months ago of third parties.

Time so far allowed has not been sufficient to finalize detailed evidence because some potentially material evidence relates to matters which took place up to 15 years ago and in other states. As such, it has proved difficult to locate and interview material witnesses and find relevant documents.

Some material evidence is believed to be obtainable from desalinator manufacturers no longer in business and it has been difficult to locate those witnesses.

The opponent cannot control the speed of response by third parties to enquiries made and diligently followed up.

Formal evidence that certain facts were common general knowledge, which may or may not be required, involves collection of evidence from a wide range of relevant sources and this, together with other evidentiary requirements, has required more time than has hitherto been reasonably available to the opponent's employees."

Prior to the hearing the applicant lodged written submissions explaining the reasons for its objection to the extension of time and these submissions read as follows:
1.The applicant opposes any extension of time for the Opponent to lodge its evidence‑in‑answer (sic).

2.The Opponent has been aware of the existence of…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

AGLC: Nautical Services Pty Ltd v Hitech Distillation (Australia) Pty Ltd [1986] APO 37
Case: [1986] APO 37
Decision Date: 28 October 1986

CaseChat Overview and Summary

In the case of Nautical Services Pty Ltd v Hitech Distillation (Australia) Pty Ltd, the dispute centred on the patent application No. 549841, titled "De-Salinator For Brackish or Salt Water." Hitech Distillation (Australia) Pty Ltd lodged an opposition to the patent application, which was advertised as accepted on 13 February 1986. Hitech subsequently applied for an extension of time to serve evidence in support of its opposition, which Nautical Services Pty Ltd objected to. The Supervising Examiner of Patents was tasked with deciding the legal issues surrounding the granting of this extension.

The primary legal issue was whether Hitech's application for an extension of time should be granted, considering the circumstances and grounds provided. The court needed to determine if the reasons provided by Hitech were sufficient to justify an extension and whether the extension would be in the public interest. Additionally, the court had to address the procedural aspects of Hitech's purported amended application for an extension and the locus standi of Hitech as an interested party.

The court considered the evidence and declarations provided by Hitech, particularly the challenges in gathering evidence due to the long time span and geographical dispersion of relevant information. The court noted that while Hitech had been aware of the patent application since June 1985, it had only filed its notice of opposition shortly before the deadline, making the request for an extension of time appear opportunistic. However, the court found that Hitech had made a proper case for an extension, as the evidence collection process was inherently time-consuming, and Hitech was engaged in a serious opposition. Given the public interest in ensuring that patents are not granted without sufficient scrutiny and considering the complexity of the evidence required, the court granted the extension of time until 9 November 1986. The court also awarded costs against Hitech, considering that Nautical Services had ample time to respond to the detailed grounds provided by Hitech.

In conclusion, the Supervising Examiner granted the extension of time to Hitech, allowing it until 9 November 1986 to serve the evidence in support of its opposition, and ordered that costs be awarded against Hitech.

Orders