Peter Hamilton Boyle v Storm and Security Roof Tile Fixing Pty Ltd

[1996] APO 46

official notice

decision of a delegate of the commissioner of patents

Application  :          No. 663480 in the name of Peter Hamilton Boyle

Title:          Roof Tile and Sheeting Seals

Action: Application for extension of time under s.223 to file notice of opposition by Storm and Security Roof Tile Fixing Pty Ltd

Decision:          Issued            .

AbstractApplication for extension of time under section 223(2)(a) to file notice of opposition refused. Costs awarded against Storm and Security Roof Tile Fixing Pty Ltd.

Storm and Security had been carrying out a watch on the application for two years.  Following a review of the company’s patent files, Storm and Security made decisions with a view to rationalising the files and to avoid unnecessary costs.  They made a decision to discontinue any further watching on the application with a view to saving the costs involved and following advice from their attorney that it was probably unlikely that the application would be accepted, having regard to the form and content of the complete specification as filed.

The decision to cease the watch appeared to be a commercial decision based on the costs and risks involved, rather than an error of judgement in the sense referred to in Kimberly-Clark v Commissioner of Patents (No 3), 13 IPR 569.

patents act 1990

decision of a delegate of the commissioner of patents

Re:Patent Application No. 663480 by Peter Hamilton Boyle and an application for extension of time under section 223(2)(a) to file a notice of opposition by Storm and Security Roof Tile Fixing Pty Ltd.

background

Patent application 663480 (10833/92) by Peter Hamilton Boyle was advertised accepted on 12 October 1995. The time in which to file an opposition expired on 12 January 1996. Storm and Security Roof Tile Fixing Pty Ltd (Storm and Security) filed a notice of opposition on 5 February 1996. Storm and Security also filed an application for extension of time under section 223 of the Patents Act 1990 on 5 February 1996. Storm and Security filed statutory declarations in support of the extension on 9 February 1996. Peter Boyle objected to the application for extension of time. The matter was heard in Canberra on 16 August 1996. Leon Allen, patent attorney of Davies Collison Cave, appeared on behalf of Storm and Security. Mr Boyle participated by telephone.

evidence

Storm and Security filed statutory declarations by Margaret Anne Coleman and G. C. Pryor in support of their extension of time on 9 February 1996.  The Coleman declaration states that Margaret Anne Coleman has been a Director of Storm and Security for a number of years, but prior to 1 May 1994 had no real involvement in the company.  Shortly after 1 May 1994, she started going through various patent files of the company and became aware that the company had a watching service being carried out by Davies Collison Cave in respect of Boyle’s patent application no 10833/92.  She was also aware that the watch had been going on for about two years and that advice had been received that it was unlikely that the application would be accepted.  Attached to the declaration as exhibit MAC-1 is a letter from Davies Collison Cave to Storm and Security dated 2 September 1992.  The letter states:

“We refer to our recent telephone discussion and confirm your instructions that we should not take any action for the time being in relation to Boyle’s patent application.  It was agreed that we should only take action against Boyle’s application should it be accepted (which in our view is unlikely).  We have accordingly placed a watch for acceptance on the application so that we will be in a position to report lapsing or acceptance of the application.  If the application is accepted we will be able to commence opposition proceedings on your behalf.”

In paragraph 3 of her declaration, Mrs Coleman stated:

3.    By October 1994 I had completed my review of the company’s patent files.  I had made decisions with a view to rationalising the files and to avoid unnecessary costs.  In a letter dated 3 October 1994 I instructed Geoff Pryor of Davies Collison Cave to continue with some patent matters and discontinue others.  In that letter I requested Mr Pryor to discontinue any further watching on application no 10833/92.  I made that decision with a view to saving the costs involved and following oral advice from Mr Pryor that it was probably unlikely that Mr Boyle’s application would be accepted having regard to the form and content of the complete specification which had been filed.

The rest of the Coleman declaration sets out the events that occurred once it had been discovered that the application had been accepted.  These facts are also detailed in the Pryor declaration, which is as follows:

1.    I am a member of the firm Davies Collison Cave and I have acted on behalf of Storm and Security Roof Tile Fixing Pty Ltd (Storm and Security) for a number of years.

2.    In 1992 I was instructed by Storm and Security to place a watch on application no 10833/92 in the name of Peter H Boyle.  At that time I formed the view that it was unlikely that the application would mature to acceptance because of the very limited technical disclosure in the document and also the fact that there were no claims in the complete specification which had been filed.  I also know from my past experience that the majority of self-filed complete specifications tend to lapse before acceptance.

3.    In September or early October 1994 I recall having a telephone discussion with Margaret Coleman regarding various patent matters we were carrying out on behalf of the Storm and Security.  The watch on application no 10833/92 was discussed and I repeated my earlier advice that I had thought that the application would not be accepted.  In a letter dated 3 October 1994 dealing with a number of matters, I was instructed to discontinue the watch on that application.

4.    On 4 January 1996 Davies Collison Cave was served with a copy of evidence-in-support of an application under Section 32 in relation to application no 658650.  In that application, Mr Boyle is contesting ownership of an application belonging to Storm and Security.  I did not have an opportunity to review that evidence-in-support prior to my departure to the United States on 6 January 1996 and I did not return to the Office until 30 January 1996.

5.    On 5 February 1996 I commenced a review of the materials which had been served by Mr Boyle regarding the Section 32 application.  I thought that it would be appropriate to check the status of application no 10833/92.  I arranged for an appropriate status check to be made and I noted that the application had been accepted and that the opposition period had recently expired.  I immediately telephoned Margaret Coleman at Storm and Security and advised her that the application had been accepted.  I advised her that the application had surprisingly broad claims which could adversely affect Storm and Security’s business activities.  Mrs Coleman instructed me to file a Notice of Opposition together with an application for an extension of time.

AIPO issued a letter to Storm and Security on 9 April 1996.  The letter stated:

“The Delegate of the Commissioner of Patents notes that the statutory declarations filed in support of the one month extension to file a notice of opposition suggest Storm and Security:

·   were watching for acceptance of the present application in 1992, and

·   deliberately decided not to watch for acceptance of the present application in October 1994.

In a similar situation the AAT refused to extend the time to file a notice of opposition as it would cause a serious upset to the patent system (Weir Pumps Ltd v Commissioner and Stork Pompen BV 13 IPR 163 at page 166).

The delegate notes it is not clear from the Coleman declaration why Storm and Security now wishes to oppose the present application given its earlier decision not to watch for its acceptance.  For example, it is not clear to the delegate if the potential opponent is proposing to mount a serious opposition to the present application or is using the potential opposition as a defensive action to the Section 32 application.

Therefore the delegate considers the extension of time to file a notice of opposition should not be allowed.  The delegate allows you one (1) month from the date of this letter to respond to the above or request to be heard on the matter.”

In response to the letter, Storm filed submissions on 8 May 1996 together with a second statutory declaration by Margaret Anne Coleman.  The second Coleman declaration stated that Storm and Security was in possession of prior art material prior to the date of expiration of the opposition period.  The declaration also stated:

5.    I am able to say without hesitation that my company would have filed a timely Notice of Opposition by the due date, 12 January, 1996, had I been aware of the advertisement of acceptance of the application.  I could have relied upon prior art which was known to me at that time.

6.    As I have stated in my previous declaration, I had received advice that it was unlikely the application would proceed to acceptance for the reasons stated previously.  As it transpires, that advice has been shown to be incorrect because, notwithstanding the serious deficiencies of the complete specification, it did pass to acceptance.  Thus, the decision to discontinue the watch on Application No. 10833/92 was an error.  If that error had not been made, a serious opposition would have been made in a timely way.

7.    The motivation for my company opposing this application is to prevent the grant of a patent on the application which, if it proceeds, could seriously affect sales of my company’s products.  It is not a defensive action in relation to Section 32 proceedings which have been commenced by Mr Boyle.

Mr Boyle filed a copy of a statutory declaration supporting his opposition to the extension by facsimile on 14 June 1996.  The original statutory declaration was not filed.  Mr Allen also submitted at the hearing that there was no indication of the status of the witness signing the statutory declaration.

In paragraph 1 of the declaration Mr Boyle stated that he is the applicant of patent application 663480. In paragraphs 2 to 7 Mr Boyle referred to dealings he had with Mr Tom Whitelaw, the now retired Managing Director of Storm and Security. These paragraphs do not appear to be directly relevant to the section 223 application. Mr Boyle made submissions in relation to the section 223 application in paragraphs 8 to 10 and 14 to 15. In paragraphs 11 to 13, Mr Boyle made reference to a section 32 action on a patent application by Storm and Security as follows:

A.We are told in Pryor’s stat dec that he was awakened in Feb 1996 to check status of my pat application.  This is an attempt to deceive the hearing and should be treated as such.

1.Pryor and Storm and Security were awakened to my vigilance in July 1996 (sic - 1995) when they were served with the section 32 application documents against Storm and Security’s patent application.

2.Further evidence of awareness is held in that Pryor wrote to me requesting that I send or serve all future documents to or on them (the patent attorney).  AIPO was also sent copy of this request.  (To which I replied that I would act according to the Patent’s Act 1990).

B.Storm and Security could have filed an opposition within the statutory time if they wanted to (but chose not to).

1.Pryor could have made one simple phone call on 4/1/96 to Storm and Security after he was served with evidence he was aware was due but he chose not to.

2.Pryor could/should have delegated attention to the work while he was away (he chose not to).

3.Pryor has more responsibilities under the Act than the ordinary person.

4.I call on Mr Pryor to provide substantial evidence to prove that he was in fact in the US at the time stated.

C.The patents attorneys and Storm and Security knew, and was advised by AIPO of the times from start of sect 32 application in which I had to submit evidence.  (Yet he/they claim they were not activated to activate a watch).  (I believe, as I believe the Commissioner will that these claims are just too incredible to accept).

Mr Boyle also made a number of assertions that both Storm and Security and their patent attorneys tried to deceive the Commissioner regarding the section 223 application. However there is no evidence to suggest that they have acted other than in good faith in their application for extension of time.

In response to the Boyle declaration, Storm and Security filed a second declaration by G. C. Pryor. In his declaration, Mr Pryor denied that there was any attempt to rely on material not factually accurate or that there was any deception involved in the section 223 application. Mr Pryor also declared the following facts regarding the section 32 application:

3.    With regard to sub-paragraph A of paragraph 11 of Mr Boyle’s declaration, the request for a Determination under Section 32 by Mr Boyle dated 24 July, 1995 refers on page 1 to a patent application but the serial number of the application in the request cannot be identified.  There is nothing in this document which in any way gives direct or constructive notice of the fact that Application No. 663,480 had been accepted.

Mr Pryor also stated in the declaration that neither he nor the opponent were aware that application 663480 had been accepted at the expiration of the opposition period.  He also gave reasons as to why he did not review the section 32 application immediately or delegate the matter to somebody else in his absence.  In paragraphs 9 and 10 he further stated:

9.    On 5 February, 1996 I began a review of Mr. Boyle’s declaration of 18 December, 1995.  I noted that there was reference on page 2 to Application No. 10833/92.  I caused a status check to be made of the status of that application.  Now produced and shown to me marked GCP-3 is a printout of that status check.  The printout from the AIPO Patent Administration System clearly shows the date of the inquiry “05/02/96”.  This was the first notice which I and the Opponent herein had that Mr. Boyle’s application had been accepted.  A Notice of Opposition and an Application for an Extension of Time were filed on the same day.

10.I note that on the second page of Mr. Boyle’s declaration of 18 December, 1995, where reference is made to his patent application, he conspicuously chose not to mention the fact that the application had been accepted and did not identify the patent application by its six figure number.

decision

The section 32 application on patent application 658650 only appears to be relevant to the extent that Mr Pryor became aware that 663480 had been accepted while he was reviewing the section 32 matter.  I could speculate that if Mr Pryor had reviewed the section 32 action before leaving for the US, or if he had delegated the work to someone else, Storm and Security may have discovered 663480 had been accepted in time to file a notice of opposition within the specified period.  But Storm and Security have not argued that this is the error or omission.  In any case, there is nothing in the section 32 application to suggest the present application had been accepted.  Storm and Security have argued that the relevant error or omission was the instruction to cease the watch on the application based on advice received from the attorney which was later shown to be incorrect.  Storm and Security argued that this was an error of judgement that prevented them from filing the notice of opposition within the statutory period.

The definition of an error or omission in the context of section 160 of the Patents Act 1952 was expressed by Jenkinson J in Kimberly-Clark Ltd v Commissioner of Patents (No 3), 13 IPR 569 at 579 to 580 in the following terms:

"It is in my opinion difficult to suppose that only the inadvertences and accidental steps, and not errors resulting from faulty reflection, of the former class of persons were intended by the draftsman to be within s 160(1). Further, the word 'error' is not easily assigned a clear meaning restricted by reference to one or several particular categories of flawed mental function. The attempt is likely to lead to the drawing of fine and often unrealistic distinctions. And some errors of judgement by agents and attorneys may be as bizarre and as little to be anticipated as lapses of memory and accidental slips."

Jenkinson J rejected the argument that section 160(2)(a) excluded errors or omissions that were the products of deliberation. Section 223 is the equivalent of the previous section 160. Consequently, the concept of what constitutes an error should be interpreted broadly and includes an error of judgement. But Jenkinson J also made the following comments at page 580:

“By no means every judgement by the “person concerned” or by “his agent or attorney” which can be shown to have been mistaken will answer the description “error or omission” in the ordinary meaning of those words, which in their context carry, in my opinion, a connotation of obviousness in error.”

In the letter AIPO sent to Storm and Security on 9 April 1996, the delegate referred to the AAT decision of Weir Pumps Ltd v Commissioner and Stork Pompen BV 13 IPR 163. Mr Allen submitted that the facts in the present case are different to those in Weir.  In the Weir case the prospective opponent had a deliberate policy of not checking on applications and had no intention of opposing the application prior to the expiration of the time to file the notice of opposition.  Storm and Security subsequently filed further evidence addressing some of the delegate’s concerns in that letter.  It is clear from the evidence that Storm and Security at one time had the intention of opposing Mr Boyle’s application if it was accepted.  But after receiving advice from their patent attorneys on several occasions, both orally and in writing, that it was unlikely that the application would be accepted, Storm and Security decided to discontinue the watch.

In Mrs Coleman’s first declaration she stated that in 1994 she reviewed her company’s patent files.  She made decisions with a view to rationalising the files and to avoid unnecessary costs.  Mrs Coleman sent a letter to Davies Collison Cave instructing Mr Pryor to continue with some patent matters and discontinue with others.  She instructed Davies Collison Cave to discontinue any further watching on application no 10833/92.  Mrs Coleman made that decision with a view to savings the costs involved and following advice that it was “probably unlikely” that the application would be accepted, having regard to the form and content of the specification which had been filed.

At the hearing Mr Allen directed me to a number of decisions in which an extension of time to file a notice of opposition was allowed e.g. ICI  Australia Operations Pty Ltd v Dowelanco (1992) AIPC 90-884; The JM Smucker Co v Lyons (1992) AIPC 90-871; Danby Pty Ltd v Rib Loc Group Limited (1987) AIPC 90-440 (and on appeal at (1988) AIPC 90-489); and Liquid Air Australia Ltd v Commonwealth Industrial Gases Ltd 1 IPR 145. However all of these cases involved situations where the prospective opponent had given instructions to place a watch for acceptance, but the agent or attorney failed to carry out the instructions properly. In the present case, Storm and Security gave an instruction to discontinue the watch and their attorneys followed that instruction.

It appears from the evidence that Mrs Coleman made a decision to discontinue the watch after weighing up the costs and risks involved.  While this decision may, with the benefit of hindsight, have been shown to be mistaken, I do not think it involves any “error or omission” in the ordinary meaning of those words, to paraphrase Jenkinson J in Kimberly-Clark v Commissioner of Patents.  Storm and Security made a commercial decision to instruct Davies Collison Cave to discontinue the watch and Davies Collison Cave correctly followed that instruction.  Storm and Security do not appear to have put any other mechanism in place to watch for acceptance or otherwise of the application.

Mr Boyle submitted that Storm and Security had adequate time from 1991 to the cut off time after acceptance and could have made a public submission at any date but chose to attempt to seek a patent on the same process/system.  The application was advertised accepted on 12 October 1995.  Therefore the relevant time for filing an opposition was in the three months after this date, rather than from 1991.  However it is clear from the evidence that Storm and Security were aware of the application and its relevance to their business.  This is evidenced by the fact that they maintained a watching service on the application for two years prior to 1994, before deciding to discontinue the watch.

In Weir Pumps Ltd v Commissioner and Stork Pompen BV, Bannon CJ stated at page 166:

“It appears to me that it would also cause a serious upset to the patent system to permit persons who have not sought to oppose, to intervene after advertisement of acceptance and to say that although they had a policy of not checking on applications, they now wish to oppose.”

While the facts of the present case are somewhat different in that in the present case Storm and Security had a watch in place and then discontinued it, I believe the sentiment is the same.  It would also cause a serious upset to the system if someone who was aware of an application of relevance to their business, but decided to discontinue a watch on that application, could later oppose the application outside the opposition period.

As stated above, Storm and Security submitted further evidence addressing some of the concerns of the delegate outlined in the letter of 9 April 1996. Some of this evidence suggests that Storm and Security were mounting a serious opposition. However this is more relevant to the exercise of the discretionary power of section 223(2). It is a necessary condition to first establish that there was an error or omission by the person concerned or by his or her agent or attorney. In the present case I have found that there was no such error or omission. Therefore I cannot allow the extension of time under section 223(2)(a).

I realise that by refusing the application for extension of time, Storm and Security have lost the opportunity to oppose the application.  Bannon CJ, in a continuation of the above quote in Weir Pumps v Commissioner and Stork Pompen BV, made the following comments:

“Loss of opportunity to oppose is not disastrous.  A patent when granted is often not worth the paper it is written on until tested judicially, in revocation proceedings in a court of competent jurisdiction.  That opportunity remains open ...”

I also note that Storm and Security have filed part of their evidence in support of the opposition.  It is the practice of the Patent Office in such situations to consider any documents which have been identified in the statement of grounds and particulars or filed as evidence to see if the documents constitute a bar to sealing the application, to ensure a clearly invalid patent is not granted.

conclusion

I have found that the failure to file the notice of opposition within the relevant time was not due to an error or omission by the person concerned or by his or her agent or attorney. I refuse the application for extension of time under section 223.

Normally costs follow the event in decisions by the Patent Office.  I see no reason to vary this practice in the present case.  I award costs against Storm and Security Roof Tile Fixing Pty Ltd.

Brendan Bourke
Delegate of the Commissioner of Patents

Patent attorneys for the applicant  :  Davies Collison Cave, Melbourne