PIZZEYS PATENT and TRADE MARK ATTORNEYS

[2001] APO 2

OFFICIAL NOTICE

DECISION OF A DEPUTY COMMISSIONER OF PATENTS

Application  :          No. 723067 in the name of Viskase Corporation

Title:          Thermoplastic C2-Alpha Olefin co-polymer blends and films

Action:          Application for an extension of time under section 223 to file a notice under section 27(1) by Pizzeys Patent and Trademark Attorneys

Decision:          Issued            .

Abstract

Section 223 to extend the time to file documents under s.27 after acceptance is refused. 

The Commissioner does not have the power to deem the application as not having been accepted, or to otherwise withdraw acceptance of the application. Accordingly, as the purpose of the s.223 request would require an action on the part of the Commissioner that is contrary to law in order for it to be given effect, discretion should operate to refuse the extension as its purpose is contrary to law.

If the application remained accepted, then there is nothing to be served by the s.223 request and discretion should operate to refuse the extension for lack of purpose.

PATENTS ACT 1990

DECISION OF A DEPUTY COMMISSIONER OF PATENTS

Re:Patent Application No. 723067 in the name of Viskase Corporation and application under section 223 for an extension of time to file a section 27(1) notice

BACKGROUND

Australian patent application 723067 was filed by Viskase Corporation on 27 January 1998 and accepted by an examiner on 22 June 2000.  Six days later (on 28 June 2000), a section 27 (1) notice (Notice of matters affecting the validity of standard patents) was filed by the patent and trade mark attorney firm of Pizzeys.  On 29 June 2000, an application for an extension of time under section 223 was filed to file the section 27(1) notice on together with a request for acceptance to be withdrawn.

Pizzeys were advised on 26 October 2000 of the Commissioner's view that the section 223 application is incapable of reversing the acceptance action undertaken by the examiner because the Commissioner became functus officio at acceptance.  In a letter dated 20 December 2000, I reiterated this view and Pizzeys were provided an opportunity to be heard on whether the application should be refused.

Pizzeys advised in a letter dated 21 December 2000 that they did not wish to be heard.  The decision below is therefore based on the material currently on file.

DECISION

With regard to the request under s.223, there are two issues of relevance. Firstly, there is the issue of whether there has been a relevant error or omission in order to enliven the provisions of s.223(2).  I have reviewed the declaration in support of the request.  I have not formed a concluded view on the matter - particularly with regard to the circumstances set out in paragraphs 11 to 14.  However, for the purpose of this discussion, I am prepared to deal with the matter on the basis that a relevant error or omission has been made out, and that the provisions of s.223 are enlivened.

The second issue is whether, given the existence of an error or omission, the extension should be granted. The request for an extension of time relates to the period prescribed for that purpose. The Act itself does not specify that the documents must be filed before acceptance. That requirement is specified in Regulation 2.5. The effect of the request under s.223 would be to extend the period to a date past the date of acceptance.

Of itself, this is not particularly noteworthy.  However, the purpose of a notice given under s.27 is given effect by way of s.27(3) together with regulation 3.18(4). That is, any notice filed under s.27 is considered with respect to the requirements of s.18(1)(b) as part of the examination. There is no other statutory basis for considering the s.27 notice. The Commissioner is required to examine an application under s.45. That examination must be in accordance with the regulations. The examination comes to a conclusion when the conditions referred to in s.49(1) have been met - that is, when the Commissioner accepts the application. I consider that the operation of s.49(1) renders the Commissioner functus officio with respect to any considerations leading up to the acceptance of the application.

Pizzeys had suggested that the Commissioner has the power to withdraw acceptance [and refer to s.38 of the Trade Marks Act].  I disagree.  In this regard, I note that s.38 of the Trade Marks Act is necessary for withdrawal of acceptance – as otherwise the Registrar would be functus to deal with the pre-acceptance issues, and any such purported withdrawal would be contrary to law.

Pizzeys also referred to the practice of the Commissioner with regard to 'bar-to-sealing' actions. I note that such actions do not involve the withdrawal of any exercised power under the Act. Rather, it is a barrier to the future exercise of a power (viz the grant of a patent if there is no opposition.)

Finally, there is the general scheme of the Act, whereby after the Commissioner has examined an application, third parties may oppose it.  S.27 is a provision that allows a third party to put material before the Commissioner to consider during examination.  However, the failure to timely file such a notice does not detract from the rights of the third party to oppose the application.  [noting the decision in Nokia Mobile Phones (UK) Ltd's Application [1996] RPC 733.] There is nothing in the Act that is inconsistent with the Commissioner being rendered functus officio upon acceptance of any pre-acceptance examination issues.

Having regard to these issues, the request under s.223 can be considered in either of the following ways:

1. A request to extend the time to file the document under s.27, understanding that the application remains accepted.

In this case there is nothing to be served by the s.223 request and discretion should operate to refuse the extension for lack of purpose.

1. A request to extend the time to file the document under s.27, on the understanding that the s.27 material would be considered during examination. For this to occur, the Commissioner would need to deem the application as not having been accepted, or to otherwise withdraw the acceptance of the application.

In this case I believe the Commissioner does not have the power to deem the application as not having been accepted, or to otherwise withdraw acceptance of the application. Accordingly, as the purpose of the S.223 request would require an action on the part of the Commissioner that is contrary to law in order for it to be given effect, discretion should operate to refuse the extension as its purpose is contrary to law.

In both of the above instances, discretion operates in favour of refusing the section 223 request.

This conclusion would not involve the exercise of any discretionary power adverse to the patent applicant. Accordingly, I can proceed to decide this matter without providing them an opportunity to be heard [see S.216(1), and Reg 22.22(1)]. Indeed, to do otherwise in the circumstances would impose an unnecessary burden on the parties.

For the reasons stated above, I refuse the section 223 request.

D Herald
Deputy Commissioner