NKK Corporation v CRA Services Limited

[1991] APO 43

PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re: Patent Application No. 606457 by NKK CORPORATION, Opposition thereto by CRA SERVICES LIMITED, and Objection to an Application for an Extension of Time to Lodge Evidence-in-Support of the Opposition.

Background
         Application number 606457 (22560/88) in the name of NKK Corporation (NKK) was advertised accepted in the Official Journal of 7 February 1991.
         On 7 May 1991 a notice of opposition under section 59 of the 1952 Act was lodged by CRA Services Limited (CRA).  That notice listed all the grounds listed in section 59.
         On 6 August 1991 CRA applied for an extension of time of three months from 7 August 1991 to 7 November 1991 within which to serve evidence in support.
         On 27 August NKK, through their patent attorneys Carter Smith and Beadle, lodged an objection to the application for extension of time, presented their reasons in a written submission, and indicated their wish not to be represented at a hearing.  A hearing was set down for 19 September 1991: Mr Paul Kildea, on behalf of Phillips Ormonde and Fitzpatrick, represented CRA.
The Application for Extension
         In its application for extension, CRA made the following statement:

"The circumstances in which, and the grounds upon which this application is made are as follows:

Prior to 7 May 1991, we briefed our initially appointed attorneys in the matter of the opposed application. 

However, shortly before 6 May 1991, we ascertained that those attorneys represented applicant in the prosecution of another closely related application.  The resultant conflict of interest for those attorneys has necessitated us identifying other attorneys able to act for us in the present opposition, resulting in our present attorneys being appointed.  We have briefed our present attorneys in the matter and we now are awaiting a report from them on how best to present our evidence in support.  A similar change has been arranged in respect of our opposition to application 604589 and, given the closely related subject matters of the two oppositions, consideration is being given to whether overall evidence on the two matters can be integrated and, as a consequence, simplified overall.  In the period to date, we also have had conducted a patent search, and a relevant review of literature in the art.  The results of this search and review have been transferred to our present attorneys, although their consideration of this material is not yet completed.  Further time is required to enable completion of the above matters in hand by our present attorneys, for our consideration of their report and for formal preparation and service of our evidence in support."

Submissions
         NKK's arguments as to why an extension of time should not be granted are contained in a written submission lodged through their attorneys Carter Smith and Beadle.  Their arguments can be summarised as follows:

1. The opponent's change of attorneys provides little cause for the collation and service of the evidence-in-support to be greatly delayed.  The opponent is an Australian Company resident in Australia, in fact in the same city as its present attorneys.

2. Since lodging the Notice of Opposition the opponent had conducted patent searches and a relevant review of literature in the art.  Furthermore the Notice of opposition lists all possible grounds of opposition.  Each of these points suggests that at the time of filing the Notice a serious opposition was not contemplated.

3. Progress in this Opposition should not be delayed as a consequence of delays which have occurred in opposition proceedings in an allegedly related case.  Despite the opponent's desire to "integrate" evidence in support of both oppositions the two patent applications are not linked by a common priority and the two oppositions are in fact separate proceedings.

At the hearing Mr Kildea reiterated and amplified the opponent's reasons for seeking the extension of time and referred to the relevant law governing such extensions.  In particular he submitted that:

1. The opponent had discharged its onus to show that the application was justified.  The opponent must be allowed sufficient time to prepare its evidence.  The preparation of evidence in opposition cases was notoriously time-consuming, and unlikely to be accomplished within three months.  The subject matter was such that the area of search was large and it was a complex and close art.  It was difficult to obtain independent Australian experts to declare as to the state of the art in Australia.  The change of attorneys had also caused time to be lost: the familiarity with the technology acquired by the relationship between CRA and their previous attorneys could not be automatically transferred to their present attorneys.  A first extension of time did not represent great delay.

2. It was wrong to suppose that the conduct of a search implied that the opponent had insufficient evidence or that a serious opposition was not contemplated.  The opponent was entitled to investigate thoroughly the art to which the invention relates.  It was common practice for Notices of Opposition to list all grounds.  In this case there was a particular reason for doing so: the opponent's previous attorneys knew they were relinquishing their involvement and listed all grounds in the Notice of Opposition so as not to prejudice dealings between CRA and their new attorneys.

3. With reference to CRA's copending opposition to NKK's application 604589 it was irrelevant that the two applications were not linked by common priority. What mattered was the subject matters were related and therefore there was some prospect of integration of the evidence,not just evidence to substantiate a specific ground of opposition, but evidence of the background in the art.  There was nothing to suggest that CRA's attempts to integrate evidence in the two oppositions had caused any delay.

4. In addition to application 604589, CRA have also lodged Notices of Opposition against two other related NKK applications, 607807 and 608089, and intended to oppose  two other applications, 23055/88 and 23058/88 if and when they  were advertised accepted.  This provided a further indication that CRA were mounting a serious opposition.

Decision
         The law in relation to extensions of time in opposition proceedings has been comprehensively reviewed by the Federal Court in  Vangedal-Nielsen v Smith and Gelphen Nominees (1980) 33 ALR 144 and in Lyons v Registrar of Trade Marks 1 IPR 416. These decisions establish that before allowing the extension, the Commissioner:

(i)must be satisfied that the person seeking the extension has made out a proper case justifying the extension;

(ii) must be satisfied that there is a serious opposition in train;

(iii) must consider not only the private interests of applicants  for patents, and opponents, but also the public interest, by ensuring that invalid patents are not granted, and that proceedings are not unreasonably protracted.

On the information I have before me it appears that CRA has conducted a search and passed the results to their attorneys for consideration.  It appears to be widely accepted that the preparation of evidence in opposition cases is a time-consuming task.  Mr Kildea has argued that the search in this particular subject matter was  complex.  No evidence has yet been lodged but I do not think this unreasonable, especially when circumstances have dictated a change of attorneys to represent the applicant.  NKK have submitted that the change of attorneys does not justify a long delay, but I do not equate a first application for extension with a "long" delay.
         On similar reasoning I am prepared to accept that prima facie the opponent is mounting a serious opposition.  I am not impressed by Mr Kildea's argument that the lodgement of Notices of Opposition against a plurality of allegedly related applications demonstrates that any one of them is serious.  Nor am I impressed by NKK's arguments that because the Notice listed all grounds of opposition, and because the opponent has found it necessary to conduct a search, that no serious opposition was contemplated.  What seems to me to be significant is the fact that a search has been conducted.  The fact that no specific indication has yet emerged regarding the real nature of the opposition does not at this relatively early stage in proceedings cause me to doubt the intentions of the opponent.
         Regarding the respective interests of the parties, NKK have not suggested that the grant of an extension would seriously affect their interests adversely.  On the other hand, the opponent should be allowed a reasonable opportunity to prepare their case, and it is in the public interest too that they be allowed to do so.
         On the question of oppositions to allegedly related applications, I am not convinced that the opponent's desire to "integrate" evidence would justify an extension of time, but I consider that for the other reasons indicated above the extension sought is justified.
         Accordingly, I grant the extension of time to 7 November 1991.
Costs
         On behalf of CRA, Mr Kildea asked for costs.  In an action of this nature costs normally follow the event, unless the decision is based on information revealed only at the hearing.  In the present instance my decision is substantially based on the pre-hearing information already on file; consequently I award costs in favour of CRA.

(G.R. BROWN)
  Supervising Examiner of Patents

Patent attorneys for the applicant: Carter Smith and Beadle,
  Melbourne
Patent attorneys for the opponent : Phillips Ormonde & Fitzpatrick,  Melbourne