Nomad Structures International Ltd v Heyring Pty Ltd

[1990] APO 36

PATENTS ACT 1952

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Application No. 575494 by NOMAD STRUCTURES INTERNATIONAL LTD, Opposition by HEYRING PTY LTD under S.59, and an Application for an Extension of Time to Serve Evidence‑in‑Answer.

Background  
         Application No. 575494 by Nomad Structures International Ltd (NOMAD) was advertised accepted in the Official Journal on 28 July 1988.  The opponent, Heyring Pty Ltd (HEYRING), completed serving evidence‑in‑support of its opposition on 26 September 1989, after five extensions of time were granted.  NOMAD requested and was granted three extensions of time in which to serve evidence‑in‑answer.  These extensions totalled 11 months to 26 June 1990.
         On 5 January 1990, the opponent gave notice that it would object to any application for an extension of time for lodging evidence‑in‑answer.  The opponent confirmed that it wished to object to the extension of time applied for to 26 March 1990 in a letter dated 15 January 1990 but received in the Office on 22 January 1990.  This was outside the 14 days allowed for an objection to the application for an extension of time and after the extension had been granted.

In a letter received in the Office on 7 February 1990, the opponent formally advised that it objected to the granting of any further extensions of time for lodging evidence‑in‑answer beyond that already granted to 26 March 1990.
         In a letter received in the Office on 23 April 1990, the opponent stated that it would not object to the extension of time for lodging evidence‑in‑answer to 26 May 1990 but would object to any further extension.
         On 24 May 1990, NOMAD served part of its evidence‑in‑answer and on 28 May 1990 and on 26 June 1990, requested extensions of time to 26 June 1990 and 26 August 1990, respectively, for serving the remainder of its evidence‑in‑answer.
         On 6 July 1990 HEYRING objected to the application for extension of time to 26 August 1990 and the matter was set down for hearing on 17 August 1990.  NOMAD was represented at the hearing by Mr Alan Duncan, patent attorney, of Davies and Collison.  HEYRING made only written submissions, through Mr Tom Barnes, patent attorney, of WATERMARK.
The Application
         The circumstances in which and grounds upon which NOMAD has made application for extension of time to lodge evidence‑in‑answer in the present case are:

"We have forwarded papers to a proposed declarant of a further declaration.  He has reviewed these papers but we are awaiting advice of his detailed views.  The declarant is the principal of a business and we understand that business matters have occupied a large part of his time in recent weeks.  As soon as we are in a position to do so, we will expedite preparation, review and execution of a declaration.

The materials on which the proposed declarant will be relying and with respect to which we are seeking his opinion include exhibits to the declaration already served."

The grounds stated for the previous applications may be summarised as follows:

i)In its first application made on 22 December 1989, NOMAD stated:

"... more time is required to complete a full assessment of events from our records and of technical aspects of the opponent's case, and to assemble the assessment into declaration form."

ii)In its second application made on 26 March 1990, NOMAD stated:

"More time is ... sought to complete this checking, prepare the final declaration and exhibits, and have them executed.  Having completed this work, it is now believed that the overall position might be further clarified for the Commissioner's assistance by having a supporting declaration executed by a person resident in Australia.  More time is respectfully sought to further investigate this aspect of the matter and, if necessary, to prepare a supporting declaration and have it executed."

iii)In its third application made on 28 May 1990, 4 days after

the first part of its evidence‑in‑answer had been served,

NOMAD stated:

"The possible supporting declaration, also mentioned in the previous extension application, is now considered necessary and an expert has been engaged.  More time is respectfully sought to allow the expert to complete his detailed review of the issues and for his declaration to be settled and executed."

The opponent's submissions
         Mr Barnes lodged a letter on 16 August 1990 setting out HEYRING's submissions.  The points raised to support its objection to the extension of time may be summarised as follows:

i)The "delays in finalising the further declaration are not reasonable ... when it is considered that the applicant first recognised the potential need for a further supporting declaration in March 1990, and apparently took little action in regard to having that declaration prepared until late June 1990, and now some seven weeks later, has still not had the declaration completed."

ii)Extensions of time totalling six months were required to serve the first part of the evidence‑in‑answer "notwithstanding that that evidence was by the alleged inventor and therefore ... readily available to the applicant."

iii)Because the technology is "relatively basic engineering", a further expert could and should have been located and briefed at a much earlier stage so that "preparation of his evidence could run concurrently with the preparation of the evidence of the alleged inventor."

iv)The delays giving rise to the current application for extension of time are due to lack of diligence by a reluctant expert and are thus unreasonable, as held in Stord Bartz v The Dupps Co and The Dupps Co v Stord Bartz cases, AIPC 90‑656‑7.

The applicant's submissions
         At the hearing, Mr Duncan lodged a letter which served as the basis for his submissions.  He also lodged a declaration forming a further part of the evidence‑in‑answer.  The main points made by Mr Duncan can be summarised as follows:

i)The further declarations are in support of and based on the events set out in the first declaration and the material presented in the accompanying exhibits.  The first declaration provides the context against which the further declarations are set.

This course of action is similar to that of the opponent.  The evidence‑in‑support "comprised extensive recollection material concerning a sequence of events and various prior structures, and the relationship between the principals of the respective parties, and further material relevant to issues of novelty and obviousness".  The first declaration was served 9 months after the notice of opposition and the second, which refers to the content and exhibits of the first, two months later.

ii)The applicant's first declarant is a principal of the applicant company and is resident in the UK.  The applicant is a UK company with communication being through a UK patent agent.  Thus communication necessarily entails additional time compared with a domestic party.

iii)The applicant does not have authority over the proposed expert declarant.  However, the declarant appreciates the desired urgency and is in no way "reluctant".  Despite the pressure of his business, he has "responded to our questions and offered his views ... and is presently reviewing the draft in detail".

iv)The opposition to grant of the patent in question is serious.  Thus it would be improper not to allow the applicant time to serve the balance of the evidence‑in‑answer so that the issues may be fully canvassed before the opposition to grant of the patent is decided.  This matter is relevant to both the interests of the public and those of the applicant.

v)While it is desirable for opposition proceedings to be resolved expeditiously, the interests of both parties as well as of the public must be considered.  In the present case the opponent will not be disadvantaged as it will actually have more time available to prepare its foreshadowed evidence‑in‑reply, at least in response to the already served declaration.

vi)The opponent required extensions of time in which to serve its evidence‑in‑support but has sought from the very beginning to prevent the applicant getting any extension of time.  This indicates that its opposition to these extensions was not serious but purely to cause inconvenience to the applicant.  Thus the applicant seeks to have costs awarded against the opponent.

Decision

The law on extension of time in this class of action has been comprehensively reviewed by the Federal Court in Lyons v Registrar of Trademarks 50 ALR 496 and in Vangedal‑Nielsen v Smith and Gelphen Nominees 33 ALR 144 and may be summarised as follows:

.The Commissioner must be satisfied that the person seeking the extension has made out a proper case justifying the extension.

.The Commissioner must consider not only the private interests of the applicants for patents, and opponents, but also the public interst, by ensuring that invalid patents are not granted, and that proceedings are not unreasonably protracted.

In the present case the evidence, both for the opponent and for the applicant, is taking the form of a first declaration setting out a sequence of events with accompanying exhibits and further declaration(s) which support the first and rely to a significant extent both on the events set out in the first declarations and on the accompanying exhibits.
I think that the fact that both the applicant and the first declarant for the applicant are resident in the UK provides grounds for the length of time taken to serve the first declaration.  Communication from the UK of both the content of the first declaration and instructions from the applicant is liable to be delayed compared to the situation of a local party.  And this is likely to be true even when as in the present case the declarant is the alleged inventor, and as argued by the opponent "readily available to the applicant".

Considering also the nature of the evidence‑in‑support, I find that the time taken to serve the first part of the evidence‑in‑answer was not unreasonable.
         The same delays inherent in overseas communication would also tend to delay final selection of a further local declarant.
         Further, in the present case where matters in contention include the relative dates at which particular structures were first constructed the selection of an expert is not merely dependent on "relatively basic engineering" as submitted by the opponent.  If the dates at which various structures were first produced were not in question this might be the case.  However, I think, in this case the areas on which corroboration might have been desirable would not have been apparent until at least the substance, if not the final form, of the first declaration was known.
         Thus final selection of the expert declarant could not be made before this.  Even had an appropriate expert already been selected, it would not be reasonable to expect significant progress to be made in preparing supporting declarations before the substance of the first declaration was decided.
         In considering whether there has been "lack of diligence by a reluctant expert" with regard to the third declaration, I find no evidence to support this assertion.  The earlier declarations on which it appears this expert is required to comment encompass a complex set of circumstances.  From the submissions made by Mr Duncan, the expert despite the pressure of his business has "responded to our questions and offered his views ... and is presently reviewing the draft in detail".  I consider that this is quite a different situation from that in Stord Bartz v The Dupps
Co., referred to above, in which the intended declarant had not responded to communications from Stord Bartz's attorneys for a period of over four months, and in which in addition no evidence‑in‑answer had been lodged even after 18 months extension of time had been allowed.
         Since no lack of diligence has been shown, it would be unreasonable and prejudicial to the applicant's interests not to allow this extension on these grounds.
         With regard to the interests of the opponent, what appears to be a significant part of the evidence‑in‑answer was served on 24 May 1990.  This should assist its foreshadowed intention to serve evidence‑in‑reply.
         Thus I consider that the applicant has made out an appropriate case to justify the extension of time sought.  I therefore allow the extension of time to 26 August 1990.
Costs
         The opponent's expressed intention at every stage has been to oppose any extension of time.  However, the earlier objections were withdrawn for whatever reasons.  At the hearing, the applicant's submissions did little more than restate the grounds set down in the extension application together with an assessment of the similarity between the evidence‑in‑answer and the evidence‑in‑support; and a review of what was considered to be the relevant law.
         I award costs, as following the event, against HEYRING.

(WANDA GUNAWARDANA)
  Delegate of the Commissioner of Patents

Attorneys for the applicant:  Davies & Collison, Melbourne