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Oz Technology v Boral Energy

Oz Technology v Boral Energy

Case [1999] APO 18 2 March 1999

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OFFICIAL NOTICE

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Application : No.690074 in the name of OZ TECHNOLOGY, INC

Title: Process Utilizing a Propane and Butane Refrigerant Mixture

Action: Objection by the patent applicant to a request by Boral Energy Ltd for an extension of time under Section 223(2)(a) to file a notice of opposition

Decision: Issued
Abstract
Boral Energy sought advice from Watermark on the patent application by OZ Technology, Inc.
The advice suggested that it would be difficult for the patent applicant to obtain a grant on its application. The letter of advice did not contain any recommendation about placing a watch on the application. This was contrary to the firm’s policy of recommending to clients, who had expressed concerns about the possibility of patent applications interfering with their operations, to maintain a watch on the progress of such patent applications. Watermark made a further error in not following up on its advice to Boral Energy. Acting on this advice, Boral Energy terminated the licencing negotiations with the patent applicant’s representatives and no more thought was given to the patent application.

Boral Energy made an error in not instructing that a watch should be placed upon the patent application. The evidence established that opponent would have intended to oppose the application if it were not for these errors and omissions. There is no evidence to suggest that Boral Energy took a “calculated risk” with regard to the patent application or had “lost interest” in the patent application.
The link between the error made by the attorney and the error made by the officer in opponent company was sufficiently established to be causally related.

A proper case for the extension was made out.

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Patent Application No. 690074 by OZ TECHNOLOGY, INC and objection by the patent applicant to a request by Boral Energy Ltd for an extension of time under Section 223(2)(a) to file a notice of opposition.

BACKGROUND

Patent application 690074 was advertised as accepted on 23 April 1998. The time for filing a notice of opposition expired 23 July 1998. On the 18 September 1998, Boral Energy filed a notice of opposition accompanied with a request under s 223 for an extension of time of two months to 23 September in which to file the notice of opposition. Supporting evidence for the application for the extension was filed on 30 September 1998 and on 12 November 1998.

This supporting evidence consisted of three statutory declarations. Declarations by J.A Christian Schieber, patent attorney for the s223 applicant and by John Johnstone (also known as Ian Johnstone) an officer of Boral Energy were filed on 30 September 1998. A declaration by Laurence J Dyson, the then attorney responsible for Boral Energy, was filed on 12 November 1998.

The patent applicant objected to the s223 extension of time. A hearing on the matter was held in Canberra on 18 November 1998. Mr…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

Continue reading Oz Technology v Boral Energy

Details

AGLC: Oz Technology v Boral Energy [1999] APO 18
Case: [1999] APO 18
Decision Date: 2 March 1999

CaseChat Overview and Summary

The decision of a delegate of the Commissioner of Patents concerns the granting of an extension of time for Boral Energy Ltd to file a notice of opposition against a patent application by OZ Technology Inc. Boral Energy sought advice from Watermark, a patent attorney firm, regarding the patent application. The advice suggested that it would be difficult for the patent applicant to obtain a grant on its application. However, the advice did not contain any recommendation to place a watch on the application, contrary to Watermark's policy of recommending a watch on patent applications that may interfere with its client's operations. Watermark also failed to follow up on its advice to Boral Energy. Based on this advice, Boral Energy terminated the licensing negotiations with OZ Technology and did not consider the patent application further. OZ Technology objected to the request for an extension of time, arguing that there was no proper case for the extension and that Boral Energy had not demonstrated an intention to oppose the patent application within the required time. The delegate of the Commissioner of Patents found that Boral Energy had made out a proper case justifying the extension of time, as there was an error or omission by both the patent attorney and Boral Energy that resulted in the failure to file the notice of opposition within the prescribed period. The delegate also found that there was no undue delay in making the application for the extension and that the public interest was best served by allowing the extension. The delegate granted the extension of time for Boral Energy to file its notice of opposition.

In conclusion, the delegate of the Commissioner of Patents allowed the extension of time for Boral Energy to file its notice of opposition against the patent application by OZ Technology Inc. The decision highlights the importance of following proper procedures and recommendations by patent attorneys to ensure that potential patent applications are monitored and that oppositions are filed within the required time. The delegate found that the errors and omissions made by both the patent attorney and Boral Energy were causally linked and that a proper case for the extension was made out. The decision also emphasises the need for patent applicants to demonstrate an intention to oppose a patent application within the required time, and that the public interest is best served by allowing extensions of time in appropriate cases.

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