New Clear Water Pty Ltd v Atlantis Corporation Pty Ltd

[2001] APO 59

OFFICIAL NOTICE

DECISION OF A DEPUTY COMMISSIONER OF PATENTS

Application  :          No. 728958 in the name of New Clear Water Pty Ltd

Title:          Apparatus for use as a disposal field

Action:          Request under s.223 by the opponent Atlantis Corporation Pty Ltd for an extension of time to serve the Statement of Grounds and Particulars

Decision:          Issued  30 October 2001

Abstract

In an earlier decision [2001] APOR 48, the requested grant of an extension of time under s.223 to serve a Statement of Grounds and Particulars was deferred pending service of the evidence in support of the opposition.

Material apparently constituting the evidence in support of the opposition was provided to the patent applicant's attorney by the due date.

The extension of time under s.223(2)(a) was granted. The grant of the extension was explicitly on the basis that the material received by applicant's attorney [including the form in which it was provided – specifically, unsigned statutory declarations] constituted the entire evidence in support of the opposition.

PATENTS ACT 1990

DECISION OF A DEPUTY COMMISSIONER OF PATENTS

Re:Patent Application No. 728958 by New Clear Water Pty Ltd, opposition thereto by Atlantis Corporation Pty Ltd, and a request under s.223 for an extension of time to serve the Statement of Grounds and Particulars.

The opponent in this matter requested an extension of time under s.223 to serve its statement of grounds and particulars. On 21 September I issued a decision in this matter [2001] APOR 48. I did not, at that time, either grant or refuse the request. Rather, I stated:

"In exercising my discretion in this matter, while the material before me can be subject to great criticism, no single issue can give rise to an imperative to either grant or refuse the extension. I need to have regard to all the relevant circumstances. In my mind, the most significant elements in this case are:

• A plausible causative error or omission has been asserted;

• The extension has not been justified;

• I am not satisfied that the opponent is aware of what has happened;

• If the opponent is so unaware, the consequence of them being excluded from the opposition is relatively severe (although they could seek revocation, that would be far more expensive than opposition proceedings before the Commissioner);

• On the evidence, the opponent’s attorney has had little regard to the interests of his client;

• That if the opposition proceeds, the applicant may be faced with interminable delays caused by the conduct of the opponent;

• A serious opposition should be dealt with on its merits;

• Assuming the credibility of Mr Taylor's second declaration, the evidence in support of the opposition will be ready to be served by 24^th October 2001 – and such service would be suggestive of there being a serious opposition; and

• If I were to grant the extension now, I cannot dictate the future exercise of the Commissioner’s discretion to grant or refuse extensions of time under Regulation 5.10.

"Accordingly, I exercise my discretion with respect to the request under s.223 in the following manner:

• If the evidence in support of the opposition – in its entirety – is served on the applicant by the otherwise due date of 26 October 2001, I shall grant the requested extension of time under s.223 to serve the statement of Grounds and Particulars.

• If the evidence is not served by that date – I shall refuse the requested s.223 extension of time. The only excuse for non-service by that date that I am prepared to entertain is a force majeur that is unrelated to Mr Taylor, his family, or his business concerns."

I have now received the following advice from the patent attorney for the patent applicant:

"… we confirm that on 26 October, we received the following documents in relation to the opposition to Australian patent Application 728958 by Atlantis Corporation Pty Ltd:

(i)         Statutory declaration by Paul Robert Taylor (8 pages) dated 26 October (unsigned);

(ii)       Statutory declaration by Humberto Urriola (7 pages), dated 26 October (unsigned);

(iii)      Exhibits PRT 1 to PRT 11 to the declaration by Paul Robert Taylor; and

(iv)       Exhibits HU 1, to HU 12 to the declaration by Humberto Urriola."

It would appear that this material is the evidence in support of the opposition, and has been served in compliance with my condition above for the granting of the extension of time under s.223.

Accordingly, and explicitly conditioned on the basis that the material received by Wray & Associates on 26 October 2001 [including the form in which it was provided – specifically, unsigned statutory declarations] constitutes the entire evidence in support of the opposition, I now grant the requested extension of time under s.223(2)(a) to serve the statement of grounds and particulars.

Since the entire evidence in support of the opposition has now been served, regulation 5.8(2) applies. That is, the next step in the proceedings is service of evidence in answer. As the ongoing status of the opposition has been indeterminate prior to the grant of this extension, it would seem appropriate that the time for serving evidence in answer should run from the date of this decision (ie 30 October 2001) rather than the date of service of the evidence in support of the opposition (ie 26 October) – and I so direct.

D Herald
Deputy Commissioner of Patents

Patent attorneys for the applicant  : Wray & Associates, Perth

Patent attorneys for the opponent   :  Paul R Taylor & Associates, Sydney