Ocean Farm Seafoods Pty. Ltd. v. State of Victoria and the Minister for Conservation Forests and Lands, Victoria

[1985] APO 6

In the Matter of the Patents Act 1952 - and - In the Matter of an Application under Section 68B for an Extension of the Term of Petty Patent No. 533828 in the Name of OCEAN FARM SEAFOODS PTY. LTD. - and - In the Matter of an Application under Sub-Section 160(2) by the STATE OF VICTORIA and the MINISTER FOR CONSERVATION FORESTS AND LANDS, VICTORIA for an Extension of the Time in which to Lodge a Notice under Sub-Section 683(3).

 

DECISION OF A SUPERVISING EXAMINER OF PATENTS:

Petty patent No. 533,828, entitled "Apparatus for Underwater Farming", was sealed on 5 January, 1984 and a notification of the sealing of the petty patent was published in the Official Journal on that date. On 5 December, 1984 the patentee lodged an application under sub-section 68B(1) for the granting of an extension of the term of the petty parent. On 21 January, 1985 the Crown Solicitor for the State of Victoria, acting for that State and for the Minister for Conservation Forests and Lands, Victoria, lodged a notice under sub-section 68H(3). That notice informed the Commissioner of certain facts and asserts that those facts establish, in respect of the petty patent, the grounds set out in paragraphs 100(1)(a), (d), (e) and (g) of the Act. On 4 February, 1985 the informants lodged an application under sub-section 160(2) for an extension of the time (from 4 December, 1984 to 4 February, 1985) within which to lodge the notice under sub-section 68B(3). That application for an extension of time was the subject of a hearing in Canberra on 1 May, 1985, when the applicant was represented by Mr. MaCaw of Counsel. The patentee was not represented.

The claim of the petty patent is directed to apparatus for forming mussels. I am informed that the second informant, the Minister for Conservation Forests and Lands, is the Minister responsible for fisheries in Victoria. I an also informed that the Minister's decision to lodge the sub-section 6BB(3) notice was partly influenced by representations from the mussel culture industry in Victoria. The Minister is accordingly qualified to represent the interests of the relevant sector of the public, a matter to which I advert in more detail below.

Before considering the merits of the Minister's application for extension of the time in which to lodge the sub-section 68B(A) notice it is convenient to examine the procedure for consideration and acceptance of a petty patent application under section 49A and the procedure for extension of term of a petty patent under section 689. Section 49A sets out a procedure which, in comparison with the procedure for examination of a standard patent application under section 48, should be relatively quick and cheap. However, the consideration of a petty patent application under section 49A way not include a search for anticipation of the claim, nor can the sealing of a petty patent on an accepted application be opposed. To compensate for the possibility of the absence of a search and for, the absence of opposition proceedings, section 68B provides for a form of "belated opposition". The provisions of that section which are material to the present proceedings are as follows:

"68B. (1) A patentee of a petty patent may make an application in accordance with sub-section (2) for the grant of an extension of the term of the petty patent.

(2) An application under sub-section (1) -

(a) shall be made at least I month before the expiration of the period mentioned in paragraph 68A(a);

(b) shall be made in the prescribed manner; and

(c) shall be accompanied by the prescribed fee.

(3) A person may, at any time within 11 months after the sealing of a petty patent, by notice in writing lodged at the Patent Office and accompanied by such documents (if any) as are prescribed, inform the Commissioner of any facts that the person asserts establish, in relation to the petty patent, any of the grounds set out in paragraphs 100(1)(a), (b), (c), (d), (e). (f) and (g).

(4) Where an application for an extension of the term of a petty patent has been made under sub-section (1), the following provisions of this section apply in relation to the application.

(5) Subject to this section, if the Commissioner is not satisfied of the existence, in relation to the petty patent, of any of the grounds set out in paragraphs 100(1)(a), (b), (c), (d), (e), (f) and (g), the Commissioner shall grant an extension of the term of the petty patent.

(6) If the Commissioner is satisfied of the existence, in relation to the petty patent, of any of the grounds mentioned in paragraphs 100(l)(a), (b), (c), (d), (e), (f) and (g), the Commissioner may refuse to grant an extension of the term of the petty patent.

(7) If the Commissioner has been informed by a notice or notices lodged in relation to the petty patent under sub- section (3). or the Commissioner has otherwise become aware, of facts that may establish, in relation to the petty patent, any of the grounds set out in paragraphs 100(1)(b), (c), (d),(e), (f) and (g), the Commissioner shall forthwith -

(a) notify the patentee of Chose facts; and

(b) where a notice has been lodged or notices have been lodged in relation to the petty patent under sub-section (3) - furnish to the Patentee a copy of each document that was lodged with the notice or notices, as the case may be.

(8) Where a notice has been lodged, or notices have been lodged, under sub-section (3) inrelation to the petty patent, the Commissioner shall not grant an extension of the term of the petty patent unless he! has given to the person who lodged the notice, or each of the persons who lodged the notices, as the case mat be, an opportunity of being heard,

(9) .....

Sub-section 68B(3) provides a time limit within which any notice under that sub-section must be lodged. The notice in this case was lodged well outside that time limit and the Minister has applied under sub-section 160(2) for an extension of time. That sub-section is as follows:

"160(2) Where, by reason of -

(a) an error or omission on the part of the person concerned or of his agent or attorney; or

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

an act or step in relation to an application for a patent or in proceedings under this Act (not being proceedings in a court) required to be done or taken within a certain time has not been so done or taken, the Commissioner may, upon application by the person concerned, but subject to this section, extend the time for doing the act or taking the step.

I am of the opinion that sub-section 160(2) is available to extend the time limit set by sub-section 68B(3). I think it is well established that in deciding whether or not to grant an extension of time under sub-section 160(2) there are two matters to be considered. The first of these is whether the applicant for extension of time has established that failure to meet the time limit is due Lo either "error- or omission" or "circumstances beyond the control of the person concerned". Once either of these tests has been satisfied the Commissioner does have jurisdiction to grant an extension of time. This then raises the second matter which must be considered, and which is that the Commissioner has a true discretion whether to grant or refuse the extension of time. The Commissioner must take all relevant considerations into account in deciding how to exercise this discretion, (Michiqan Technological University v. Deputy Commissioner of Patents (1982) 40 ALR 517 and Lehtovaara v. Commissioner of Patents (1981-2) 39 ALR 103).

In my view the informants have established the "error or omission on the part of the person concerned or of his agent or attorney" which attracts the jurisdiction of the Commissioner. The reasons for the informants failure to lodge the sub-section 68B( 3) notice in time are set out in the form 11 application for extension of time and are verified by a statutory declaration by Mr. Janson, a solicitor employed by the Acting Crown Solicitor for the State of Victoria. The material part of the application reads as follows:

1. On 3rd October, 1984 instructions were provided by the Acting Assistant Director, Commercial Fisheries, Department of Conservation to the Acting Crown solicitor, to challenge the Petty Patent.

2. On 16th October, 1984 a brief was delivered to counsel to draw appropriate documentation for that purpose.

3. Counsel advised on 2lst December, 1984 that the appropriate course was to lodge a notice pursuant to section 63B(3) of the Act and he returned a form of notice for that purpose. He advised that it was necessary to ascertain the date upon which sealing of the Petty Patent had occurred.

4. On or about 17th January, 1985 a search conducted at the Patent Office disclosed that sealing had occurred on 5^th January, 1984. No one within the Department of Conservation or the Acting Crown Solicitor's office had previously adverted to or realised the significance of the sealing date of the Petty Patent which was, however, believed to have occurred in approximately March 1984.

5. On 21st January, 1985 a notice of objection was lodged at the Patent Office on behalf of the State of Victoria and the Minister for Conservation Forests & Lands, Victoria.

6. Serious concern exists within the Department Of Conservation and throughout the marine farming industry in Victoria and in other States at the possibility of an extension of the term of the Petty Patent.

This evidence shows that officers of the Department and of the Acting Crown Solicitor's Office first were unaware of the significance Of the sealing date of the petty patent and secondly were under a misapprehension as to the date on which the petty patent was sealed. There was accordingly "error or omission" on the part of the responsible officers in that they failed to ascertain all the relevant law. There was also "error or omission" in that the responsible officers failed to ascertain the correct sealing date. (Had the sealing date indeed been some time "in approximately March 1984" as had been thought by the agents of the Minister, then the sub-section 68B(3) notice, as it was lodged on 21 January, 1985, would have been well within time).

I must now consider whether the Commissioner's discretion should be exercised in favour of the applicant for extension of time. One consideration material to the exercise of discretion is the fact that the failure to lodge the sub-section 68B(3) notice in time is in part attributable to an error of law in the office of the Crown's professional legal adviser. It is widely accepted that the procedural provisions of the Patents Act are complex and confusing. I think it would clearly be reasonable to excuse a layman's ignorance of the time limit in sub-section 68B(3). It would be far more difficult to excuse such ignorance on the part of a registered patent attorney or of a legal practitioner who specialised in the industrial property matters. I do however think that it would be unreasonable to exercise the Commissioner's discretion against the Minister solely on the basis of error of law in the office of the Acting Crown Solicitor.

Some guidance as to other considerations relevant to the exercise of the Commissioner's discretion in this case can be had by reference to the decisions of the opposition provisions of the Patents Act and Regulations.

Sub-section 59(1) of the Patents Act provides as follows:

"The Minister or a person interested may, at any time within 3 months after the date of the advertisement of the acceptance of an application for a standard patent and complete specification, or within such further period, not exceeding 3 months, as the Commissioner, on an application made to him within the first-mentioned period, allows, by notice in writing lodged at the Patent Office, oppose the grant of the patent on one or more of the following grounds"

It will be seen that sub-section 59(1) includes an express provision allowing extension of the time in which to lodge notice of opposition. This provision was considered by the Chief Judge of the Federal Court in Vangedal- Nielsen v Smith (1980) 33 ARL 144. In the paragraphs bridging pages 149 and 150 of the report the Chief Judge observed:

"I am of opinion that ... an applicant before the Commissioner seeking the allowance of an extension carries the burden of establishing an appropriate case to justify that allowance ...

The right to lodge a notice of opposition within three months is clearly given mainly in the interest of the person wishing to oppose a patent on any one or more of the grounds stated in s.59(1). No doubt there is also a public interest involved in ensuring that worthless patents are not granted because insufficient opportunity has been afforded of raising those grounds (Kaiser Aluminium and Chemical Corporation v. Reynolds Metals Co. (1969) 120 CLR 136).Three months has been considered by Parliament to be an appropriate period to allow for this. But it has been recognised that cases may occur where, for one reason or another, three months may prove insufficient. Accordingly, it has been provided that further time may be allowed not exceeding a further three months. The Commissioner is interposed as the arbiter whether such an extension should be allowed and how long it should be. Clearly, the Commissioner will have to consider the interests of the prospective opponent who, for some good reason, has not been able to mount his opposition within the initial period of three months. The Commissioner will further have to have in mind, where a serious opposition is foreshadowed, the public interest which has been mentioned, but he will have to require to be satisfied by an applicant for an extension that a proper case has been made out justifying an extension. It would be wrong if he granted an extension simply because no one had raised rather exceptional circumstances why it should not be granted. Reasons why this is so include the desirability of operating the system efficiently and without unreasonable delays and also the interests of the applicant for a patent which are also clearly involved."

The Chief Judge in the passage quoted above identified two considerations relevant to the exercise of the discretion to extend time under sub-section 59(1):

"Firstly, the interest of a prospective opponent who, for some good reason, was not able to mount his opposition within the initial period of three months.Secondly, where a serious opposition is foreshadowed by a prospective opponent, the interest of the public in ensuring that worthless patents are not granted because insufficient time has been afforded in raising the grounds of opposition specified in sec.59(1)."

(Per Deputy Commissioner Friemann in Groko Maskin AB v Sebastian Engineering (1981) Pty. Ltd. (1984) AIPC 329 at39, 333).

Applications for extension of time to lodge notice of opposition under sub-section 59(1) are sufficiently analogous to applications for extension of time to lodge notices under sub-section 68B(3) to similarly give effect to the above (or analogous) considerations when exercising the discretion under the latter sub-section, I will accordingly consider the interest of the "prospective informant", the Minister. I will also consider the interest of the public that the term of worthless petty patents should not be extended. I am of the opinion that these interests should be given greater weight than would be the corresponding interests in an opposition to a standard patent application. They should be given greater weight because, first, petty patent applications are not necessarily subject to a rigorous search before grant and to that extent the public interest and the interest of potential infringers have not been safeguarded to the same extent as they are in the case of standard patents. They should secondly be given greater weight because section 6BB(3) is available to "any person", in contrast with sub-section 59(1) which is available only to "The Minister or a person interested". I see this difference between the two provisions as indicating a greater concern with the public interest in the case of sub-section 68B(3). Of course, the interests of the patentee must also be considered.

In considering the interest of the informant I cannot prejudge the evidence which has been lodged but I must observe that that evidence is specific and detailed and does raise substantial issues. In considering the interest of the public I note that the Minister has a statutory responsibility for the fishing industry in Victoria and that, to some extent, he is also acting in a representative capacity on behalf of operators in that industry. In considering the interest of the patentee I am of the opinion that no prejudice other than further delay would be caused to the patentee by allowance of the extension of time.

In the light of the above considerations I am of the opinion that the extension of time should be granted. I accordingly allow the applicants an extension of time to 4 February, 1985 in which to lodge the sub-section 68B(3) notice.

At the hearing Mr. Macaw applied under regulations 72 and 83 for suitable procedural directions. Mr. Macaw pointed out that the declaration required by regulation 19C has not been lodged and submitted that a direction could issue, directing the Minister and the State of Victoria to lodge such a declaration within one month. He also suggested that a direction could issue allowing the patentee time in which to lodge evidence in answer to the sub-section 68B(3) notice. (The established Office procedure with section 68B proceedings is as follows. When the patentee applies for extension of the term of the Patent a copy of any sub-section 68B(3) notice and a copy of the accompanying documents are sent to the patentee. The hearing that sub-section 68B(8) allows to the person lodging the notice, and the hearing that regulation 85 allows to the patentee, are combined. There have been occasions where the parties have not wished to be heard, and have instead lodged written submissions).

I must also put the patentee on notice that there is now some doubt as to whether or not its application for extension of the term of the patent was lodged in time. The informant's application for extension of time seeks an extension from 4 December, 1984 to 4 February, 1985. It thus refers to a time period which is calculated without reference to sub-section 36(1) of the Acts Interpretation Act. I sought clarification from Mr. Macaw as to whether he was raising the issue of the applicability of sub-section 36(1) of the Acts Interpretation Act to the time limits set in sub-sections 68B(2) and 68B(3) of the Patents Act. (If sub-section 36(1) of the Acts Interpretation Act does apply the Patentee's application for extension of term was lodged in time. If sub-section 36(1) does not apply the patentee's application for extension of term was lodged one day out of time). Mr. Macaw confirmed that in his opinion there was some doubt as to whether or not the application for extension of term was lodged in time, and relied on this doubt as one consideration which should be taken into account in deciding whether to grant to the informant the extension of time under sub-section 160(2). It was not necessary to consider this submission in deciding whether to grant the extension of time, and I refrain from expressing any opinion on the question of the applicability of the Acts Interpretation Act.

As the patentee has not had notice of these matters, it must be given an opportunity to make submissions as to what directions, if any, should issue. The substantive matter under sub-section 68B(8) shall be set down for hearing as soon as possible, but not earlier than 28 days after this decision is furnished to the parties. The patentee may, before the hearing, make submissions as to what directions should issue under regulations 72 and 83.

As the matter of costs was not the subject of full argument at the hearing, I further reserve my decision on the question of costs.

(A.J. EVANS)

Supervising Examiner of Patents

4 MAY l985