Nobel House Group Pty Ltd v Medisystems Technology Corporation

[1998] APO 56

patents act 1990

decision of a delegate of the commissioner of patents

Re:Application for extension of time by MEDISYSTEMS TECHNOLOGY CORPORATION under section 223 to file statement of grounds and particulars.

background

Patent Application 683541 by Nobel House Group Pty Ltd (Nobel House) was advertised accepted on 13 November 1997. Medisystems Technology Corporation (Medisystems) filed a notice of opposition on 6 February 1998.  No statement of grounds and particulars was filed in the prescribed period (that ended 6 May 1998).  Medisystems applied on 12 May 1998 for an extension of time of one month under section 223 in order to file a statement of grounds and particulars.  Nobel House objected on 5 June 1998 to the application for an extension of time.

The hearing on the extension of time took place in Canberra on 15 July 1998.  Representing Medisystems was Peter Maxwell (patent attorney of Peter Maxwell and Associates).  Representing Nobel House was Paul A Grant (patent attorney).

The application for an extension of time

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

Due to an error on the part of our Patent Attorney, the Statement of Grounds and Particulars was not lodged by the due date of 6 May 1998.  The particulars of that error will be set forth in a declaration of Peter Francis Maxwell to be lodged as soon as it is received from America."

Evidence

The evidence supplied by Peter Maxwell and Associates in support of their application comprises two declarations by Peter Maxwell filed on 19 May 1998 and 13 July 1998.  The later declaration was accompanied by exhibits identified as:

(i)  PFM1 Copy of  the general diary for 6 May 1998.
(ii) PFM2  Copy  of the general diary for 13 May 1998.

The declaration and associated exhibits suggest to me that the following chronology of events took place:

1. Mr Maxwell's firm had lodged a Notice of Opposition on 6 February 1998 on behalf of Medisystems Technology Corporation against Patent Application 683541 of Nobel House Group Pty Ltd.

2. Mr Maxwell made the following diary entries in the general diary used by the firm for Oppositions, Opinions, Searches and the like:

6 May 1998                98-7-005 Nobel House finalise G&P due 13/5

13 May 1998              98-7-005 Nobel House LODGE S.G+P.

1. On the morning of the 7 May 1998 while checking the files prior to catching a flight to the United States of America Peter Maxwell found that the due date for filing the statement of grounds and particulars was in fact 6 May 1998.

1. Mr Maxwell phoned the Patent Office on 7 May 1998 advising that he would be seeking an extension of time in the following week.

1. Mr Maxwell filed the application for the extension of time to file the statement of grounds and particulars on 12 May 1998.

1. Mr Maxwell filed the statement of grounds and particulars on 13 May 1998.

SUBMISSIONS

I will refer to the submissions of both parties where relevant in the decision.

Decision

The provisions of section 223 relevant to the present request are as follows:

"223. (1)     ...

(2)     Where, because of:

(a)an error or omission by the person concerned or by his or her agent or attorney; or

(b)     circumstances beyond the control of the person concerned;

a relevant act that is required to be done within a certain time is not, or cannot be, done within that time, the Commissioner may, on application made by the person concerned in accordance with the regulations, extend the time for doing the act.

(3)     The time allowed for doing a relevant act may be extended, whether before or after that time has expired.

(4)     Where an application is made for an extension of time for more than 3 months, the Commissioner must advertise the application in the Official Journal.

(11) In this section:

"relevant act" means an action (other than a prescribed action) in relation to a patent, a patent application, or any proceedings under this Act (other than court proceedings), and includes the making of a Convention application within the time allowed for making such applications.

Mr Grant submitted that there is no statutory basis for the application of the remedy of a S223 extension of time in order to file a statement of grounds and particulars.  Mr Grant further argued that S223 should not apply as the provisions for obtaining an extension of time under regulation 5.10 specifically exclude from the Commissioners’ discretion the step of filing a statement of grounds and particulars. 

The statutory basis allowing an extension of time under S223 in order to file a statement of grounds and particulars has been explained in detail by S A Fergie as Deputy President of the Administrative Appeals Tribunal in Solar-Mesh Pty Ltd v Commissioner of Patents (1995) AIPC 91-138.  SA Fergie stated therein;

"In this case the step or action which has not been carried out in the time allowed under the Act of Regulations is the service of the Statement of Grounds and Particulars following the opponents' filing their notice of opposition.  As the service of the Statement of Grounds and Particulars is a step of action required under paragraph 5.4(1)(a) it is not a prescribed action within the meaning of sub-regulation 22.11(3) and so is a relevant act within the meaning of sub-section 224(11) (sic).  Consequently the Commissioner has the power to grant an extension of time in relation to that step of action provided that the criteria set out in section 223 are met."

It is clear from the Patents Act 1990 and Patent Regulations of 1991 that the Commissioner does have the power to grant an extension of time under S223 (2), for an opponent to file a statement of grounds and particulars, provided that the criteria set out in section 223 are met.

The next issue raised by Mr Grant was that the form of the application for an extension of time made by the opponent on 12 May 1998 is fatally flawed and thus should not be considered to be an application for an extension of time.  The Office had therefore acted in error in treating this document as a filed application for an extension of time and in granting an extension of time to file a supporting declaration.

The document by the opponent on 12 May was in the approved form for applying for an extension of time, but contained a statement that was not consistent with that purpose. The inconsistency was in the first paragraph which lacked a statement requesting an extension of time and instead stated that Medisystems  "give notice that we oppose the grant of a patent in respect of Australian Patent Application 683,541 (19406/95) in the name of NOBLE HOUSE GROUP PTY LIMITED."  However the title of document read "APPLICATION FOR EXTENSION OF TIME", the form used was a P00013 form used for Section 223 extensions and the application also made reference to attorney error being the basis for the application.

Having viewed the document filed 12 May 1998, I consider that the intent of the document is clear.  The document is intended to effect an application for an extension of time under S223 in order to lodge a statement of grounds and particulars.  Since the intent of the document is clear I consider it is permissible to use a purposive construction to give effect to the intention.  This approach was considered permissible the Hearing Officer in CSIRO v. H.B.H. Technological Industries 24 IPR 90 following his review of a number of High Court cases. Accordingly I find that the document of 12 May 1998 is an application form for an extension of time made by Medisystems in order lodge a statement of grounds and particulars and the Patent Office was correct in regarding the document as such.

In any case if a form is received in the Patent Office which is not in substantial compliance with Schedule 3 or in accordance with the approved form the Commissioner has the discretion under regulation 22.16 to treat the document either as; not being filed or as being filed but needing correction.  In this case the application appears to have been treated as being filed but needing correction.  The opponent was informed by the Office in a letter dated 1 June 1998, that the form filed on 12 May purporting to be an application for an extension of time was deficient as being a valid request, and a request was made in the letter that a corrected form be filed.  The corrected application was filed in the Patent Office on 13 July 1998 and served on the applicant on 15 July 1998, well within the three month deadline set by regulation 22.16 (4). 

Mr Grant has also submitted that the Patent Office has erred or acted improperly, in granting an extension of time of one month to the opponent, to allow to filing of a declaration to support the application for an extension of time. This action was improper because the applicant was not notified and so had no opportunity to oppose this extension.  Mr Grant's submission appears to be based on the letter of 18 May 1998 which the Patent Office sent to the opponent informing them of the receipt of the application for an extension of time and stating that they had one month to file a statutory declaration.

It is apparent that Mr Grant has misunderstood the significance of this letter.  The Patent Office had simply alerted the opponent that no declaration to support the application for an extension of time to file a statement of grounds and particulars had been received.  No extension of time was needed and this letter did not grant an extension of time.  Therefore there was no action which the applicant could have opposed.

In summary I have not found any procedural lapse by the opponent or by the Patent Office that could provide grounds for finding that no valid application for an extension of time has been filed by the opponent.  There is a valid application for an extension of time on file.

As the request for an extension of time relies on S223(2)(a) it must be found that there was an error or omission by the applicant, or the applicants’ agent Peter Maxwell, which resulted in the step of filing a statement of grounds and particulars not being performed within the required time.  Mr Grant submitted that this criteria has not been met as Medisystems has not established that the late filing of grounds was not due to a late decision by the opponent rather than an error or omission on the part of its attorney. 
Mr Grant also considered there was a number of indications that the late filing was due to a late decision by the opponent.  These included:

(1) No evidence or exhibits provided in support of the attorney’s account of his errors or omissions.  (At the time of preparing this submission Mr Grant had not had the opportunity to view the second declaration or exhibits of the diary entries, as Mr Maxwell did not serve these until the hearing.)

(2) The fact that the attorney’s declaration of 19 May 1998 did not indicate the intentions of his client with regard to the pursuit of the opposition.

(3) It is likely that the decision to continue with the opposition was made after the attorney travelled to the US and conferred there with the opponent.

I do not consider that the factors listed by the applicant as indicators of late decision, strongly support an argument that the decision to file a statement of grounds and particulars was deliberately delayed until after 6 May 1998, so that Mr Maxwell could discuss the case with the opponent. 

I have read the exhibited copies of relevant pages of Peter Maxwell and Associates general diary.
On the basis of annexed exhibits of the diary entries and the statements made in Mr Maxwells' declarations, I accept the submission that Peter Maxwell had selected the date of 6 May 1998 because he was under the belief that the due date for lodgement of the statement of grounds and particulars was 13 May 1998.  Mr Maxwell’s explanation that he had attained this mistaken belief by calculating the due date from the date of acceptance of the Nobel House Patent (13 November 1997) rather than from the date of the Notice of Opposition appears entirely plausible to me.

On the question of whether the opponent had intended to pursue the opposition, I accept Mr Maxwells' statements which he made in both of his declarations that it was always the intention of the opponent that the statement of grounds and particulars be lodged in a timely manner.

For these reasons I consider that Mr Maxwell's declarations and associated exhibits do support Mr Maxwell's claim that he had made a mistake in deciding that the deadline for filing the statement of grounds and particulars was 13 May rather than 6 May 1998.  In my view the late filing of the statement of grounds and particulars was a consequence of that error in judgement and that the late filing of the statement of grounds and particulars was due to an “error or omission” within the meaning of Section 223(2)(a).

Two other matters relevant to the question of whether the discretion should be exercised.

(i) Whether there has been any undue delay,

(ii) The interests of the patent applicant, the opponent, and the public.

The statement of grounds and particulars was filed 13 May 1998, within a week of Mr Maxwell discovering his error.  The application for the extension of time was filed on 12 May 1998.  A supporting statutory declaration was filed on 19 May 1998, the delay in filing this document being a consequence of Mr Maxwell travelling to the United States.  In the circumstances I consider there was no undue delay in any of these actions. 

It is in the opponent’s interest to obtain the extension of time to file the statement of grounds and particulars, as the consequence of failure is dismissal of the opposition.  The applicant has argued that the opponent should not obtain this extension because of an error made in the form filed by the opponent to apply for the extension and because the opponent delayed filing their supporting declaration.  I am not convinced that any of the errors or lapses made by the opponent were particularly serious.  Also, it is in the public interest that a serious opposition be dealt with on its merits rather than shut out through a lamentable failure in procedure: Kaiser Aluminium & Chemical Corp v. Reynolds Metal Co (1969) 120 CLR at 143.  The interests of the public and the opponent, in the circumstances of this case, outweigh the interest that the applicant has in not being delayed further in having a patent granted.

Therefore I will exercise the discretion in favour of Medisystems, and grant Medisystems an extension of time to 13 May 1998 within which to file the Statement of Grounds and Particulars to application No. 683541.

Directions

I direct that the period of one month specified in regulation 5.5 (1) within which the patent applicant may request dismissal of the opposition shall commence from the date of this decision.

Evidence in Support

The time for serving evidence-in-support commenced on 13 May 1998, the actual date that the statement of grounds and particular was filed.  Therefore the time to serve evidence-in-support ended on 13 August 1998.  No evidence has been served.  I am aware that a separate application for an extension of time under regulation 5.10 covering the period 6 August to 6 November, has been lodged by the opponent to serve evidence-in-support.  That application for an extension of time application needs to refer to 13 May 1998 the actual date that the statement of grounds and particulars was filed.  Since the application for this extension is being separately dealt with I will not make a direction on this matter. 

Costs

I have allowed the application for an extension of time.  The opponent applied for costs.  The applicant made no submissions on costs.  In these circumstances I would usually consider that costs should follow the event.  However I will also take into consideration the fact that the opponent omitted to serve the evidence of the second declaration and the exhibited diary entries on the applicant until the hearing.  It appears reasonably likely to me that an earlier service of this evidence might have led the applicant to withdraw their opposition to the extension of time.  Accordingly in these circumstances I will make no award of costs.

Ross Osborne
Delegate of the Commissioner of Patents

Patent attorneys for the applicant:  Paul A Grant.

Patent attorneys for the opponent:  Peter Maxwell and Associates