Ray Sue and Annette Marie Sue v Arthur Charles Carpenter

[1990] APO 29

PATENTS ACT 1952

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Patent Application No. 560731 by RAY SUE and ANNETTE MARIE SUE, Opposition by ARTHUR CHARLES CARPENTER under Section 59 and an Application for Special Leave to Adduce Further Evidence under Regulation 59 lodged by the Opponent

Background

Patent application 560731 for an invention entitled "Tool to remove meat from shells" was advertised accepted in the AOJP on 16 April 1987.  Arthur Charles Carpenter (Carpenter) lodged a notice of opposition to the application on 15 July 1987.  The time for serving evidence in support was extended for a total of two years following a series of applications for extensions of time.  Evidence in support was in fact served on 14 June 1989.  This evidence comprised a single statutory declaration by Carpenter consisting of 3 pages with 2 exhibits.  One exhibit is a copy of the opposed application and complete specification, the other is a copy of Carpenter's patent specification 83242/82 as was made OPI on 19 May 1983, being a date before the earliest priority date for the opposed application.
         The applicants were granted extensions of time up to 14 June 1990 in which to serve answering evidence.  On 7 June 1990 the patent attorneys representing the applicants gave notice under reg 57A that the applicants did not intend to lodge evidence and also applied to the Commissioner to set the opposition down for hearing;

the request for a hearing was allegedly sought pursuant to reg 61,
although under the regulation the applicants were not so entitled to apply at that time.
         On 20 June 1990 Carpenter made application pursuant to reg 59 for special leave to adduce further evidence.  The application was accompanied by a statutory declaration by Kenneth Ross Hamilton, the patent attorney responsible for the prosecution of the opposition on behalf of Carpenter.  On 22 June 1990 the applicants advised that they did not wish to be heard on the special leave application although they enclosed written submissions to be considered by the Commissioner when exercising his discretionary powers in the matter.  The patent attorneys for Carpenter asked to be heard and so a hearing was set in Canberra for 19 July 1990.  Mr Paul Jones, patent attorney of Phillips, Ormonde & Fitzpatrick, represented Carpenter.
Application for Special Leave
         The declaration by Hamilton indicates the grounds on which the application is made and the nature of the further evidence sought to be adduced in these terms:

1. THAT on 14 June 1989 I served on the attorneys for Applicant evidence‑in‑support of the Sue opposition.

3.THAT on 12 June 1990 I received written advice from the attorneys for Applicant that no evidence‑in‑answer was to be served.

4.THAT it was intended to lodge further evidence to substantiate the state of the prior art and to substantiate the publication and use of the main citation relied on in the evidence‑in‑support, however, in the absence of Applicant filing evidence‑in‑answer, this has not been possible.

5.THAT pursuant to the above I am now in the process of preparing a further declaration by Arthur Charles Carpenter to substantiate the publication and use of the apparatus described and claimed in Australian Patent Application No. 83242/82.  Further, to establish the state of the prior art it is my intention to exhibit copies of the declarations made by Raymond Sue and Tony Irelandes in the opposition to Australian Patent Application No. 534141 in the name of Arthur Charles Carpenter.

6.THAT I consider it is important to include this further evidence to clarify the state of the art in Australia as of the priority date of Australian Patent Application No. 560731, as this may have a significant bearing on the outcome of the opposition."

Patent application 83242/82 mentioned in clause 5 on acceptance was allocated serial number 534141.
Submissions lodged on behalf of the patent applicants
         The applicants' patent attorneys Griffith Hack & Co lodged submissions in these terms:

"The Opponent served evidence‑in‑support on the Applicants on 14 June 1989.  By his own admission (paragraph 4 of Declaration of Hamilton dated 20 June 1990) the Opponent intended to lodge further evidence in this matter.

The Opponent has known of that further evidence and has had it in his possession since the date on which the evidence‑in‑support was served and could easily and properly have lodged that further evidence with his evidence‑in‑support.  The opponent has had nearly 12 months in which to lodge that further evidence but has apparently deliberately chosen not to do so.

The Applicants can only assume that the Opponent intended to abuse the practice and procedure set down in Regulations 53‑58 of the Patents Regulations by filing this further evidence as part of the Opponent's evidence‑in‑reply under Regulation 57, thus depriving the Applicants of an opportunity to lodge evidence‑in‑

answer relating to that further evidence.

We submit that the filing of evidence in this manner is contrary to the rights of the Applicants and that it is not in the public interest that the procedure set down for the filing of evidence in patent opposition matters be abused in this manner.

The Applicants therefore request that the Commissioner exercise his discretion and refuse to grant special leave to the Opponent under Regulation 59."

Submissions at the Hearing
         Mr Jones, for Carpenter, made detailed submissions at the hearing in support of the application for special leave.  A summary of the main points of those submissions follow, which for convenience I have grouped into three headings.
(i)  Reasons for special leave application
         Mr Jones indicated that when the reg 57A notice had been received by his firm in June 1990, he, as the partner in the firm with overall charge of the opposition, had reviewed the file.  Apart from reviewing the evidence filed by Carpenter, he noted some references to matters concerning the alleged prior use of devices similar to the invention in the earlier extension of time applications filed by the applicants.  After making enquiries with Carpenter, Mr Jones concluded that further evidence was warranted in the circumstances.  The evidence thought necessary concerned: (a) material to establish that the tool according to the opponent's own patent application 534141 had been used prior to the priority date of the opposed specification; and (b) evidence independent of Carpenter as to the state of the prior art at the priority date.  The further evidence would comprise a further declaration by Carpenter and material from the opposition to Carpenter's application 534141, as indicated in para 5 of the Hamilton declaration.
         Mr Jones submitted that in his view the material sought to be lodged as further evidence was highly relevant to the opposition and would be of direct assistance to the Commissioner in his determination of the opposition.
         He also submitted that the further evidence would merely support and supplement the evidence already on file concerning the Carpenter tool and other prior art tools, and in that sense, it was hardly new evidence per se or evidence likely to take the applicants by surprise.  Furthermore, the evidence was not directed to a new ground of attack on the opposed application.
(ii)  Comment on applicant's submissions
         Mr Jones submitted that the applicants' arguments were not apposite to the determination of the application for special leave.  In any event, he said that the opponent had not deliberately withheld evidence.  The decision to seek to adduce further evidence was only made in June 1990 and was in part influenced by comments made in applicants' extension of time applications under reg 56.  Furthermore, Mr Jones drew attention to the fact that once the decision to adduce further evidence was made, steps were immediately taken to make application under reg 59, obtain the evidence, and seek to be heard at an early date on the application for special leave.
         As to applicants' comments about the opponent abusing the opposition procedure, Mr Jones rejected this entirely.  He said that reg 59 allowed an application for special leave to be made at virtually any time in opposition proceedings (except for the exclusion in reg 59(8) which clearly did not apply to Carpenter in this case).  He added the comment that whether the application is granted is a matter for the Commissioner to decide given the circumstances of the case.  Furthermore Mr Jones pointed out that if special leave is granted, then pursuant to reg 59(6) the patent applicants will be fully entitled to file any evidence in reply to the further evidence.
(iii)  Criteria for granting applications for special leave
Mr Jones summarized the Patent Office practice in relation to applications for special leave and referred to the factors the Commissioner needs to consider in determining the application. He submitted that a highly important consideration was whether the further evidence, if introduced, would assist the Commissioner in determining the opposition matter, and in this case he believed the further evidence would be highly relevant and the evidence itself was credible. He referred to a number of Office decisions and other authorities to support the special leave application in the course of his submissions including: Peuren Agencies Pty Limited v Anthony Michael Barker [1984] APOR 23, Kaiser Aluminium and Chemical Corporation v The Reynolds Metal Co 120 CLR 136, Micronair (Aerial) Limited v Waikerie Co‑operative Producers Ltd (1986) AIPC 90‑325, Paragini Footwear Pty Ltd v Paragon Shoes Pty Ltd (1987) AIPC 90‑453, and Acushnet Co v Spalding Australia Pty Ltd 11 IPR 349. Mr Jones indicated that the circumstances of the present application for special leave are very similar to those of the Peuren Agencies v Barker case.
Decision
         The decisions or authorities referred to by Mr Jones indicate that there are a number of factors that the Commissioner needs to consider when assessing an application for special leave.  The Patent Office Hearings Manual (September 1988) expresses these factors in these terms:

(i)Is the evidence which it is proposed to adduce, based on the nature thereof and grounds as set out in the declaration, relevant to the action, in the sense that it would contribute to a more correct, just, or expeditious result?

(ii)If the application for special leave were to be allowed would this cause unnecessary protraction of the opposition?

(iii)Would there be any injustice done to the other party, if the application were to be allowed?

(iv)Has the party seeking to adduce the further evidence been diligent in prosecuting the opposition action?

I propose to consider the present application against each of these factors in turn.
         Firstly, I consider that the evidence sought to be adduced is indeed relevant to the action.  The nature of the evidence, as has already been indicated, concerns material which will address the state of the relevant art at the priority date.  I agree with Mr Jones that the evidence must be viewed as being credible since, on the one hand, it is to come from Carpenter (who is to provide evidence about use of the tool he developed) and, on the other hand, it is to include copies of declarations by Raymond Sue (one of the applicants) and an independent witness Tony Irelandes.  Furthermore Mr Jones indicated that the evidence would support and supplement evidence already on file.  Thus I am satisfied that the evidence to be adduced is likely to greatly contribute to the determination of the s.59 opposition by leading to a more correct or just result.
         Secondly, I consider that allowance of the special leave application will not cause any unnecessary protraction of the opposition.  I understand that the further evidence has been prepared and thus, if the application is allowed, can be served promptly.  A hearing date for the s.59 opposition has not been determined at this stage : in this regard, the Commissioner can not of his own motion fix a hearing date until either the opponent, pursuant to reg 61(1)(ba), requests a hearing or the time prescribed in reg 61(4) expires.  Thus the Commissioner is unlikely to be able to set a hearing date, which I might add is normally arranged after discussions with the parties, until about the time any reply evidence from the applicants would fall due (see reg 60(2)).  Accordingly I do not forsee any unnecessary delay in the opposition proceedings.
         Thirdly I need to consider whether any injustice would be done to the applicants if the application were allowed.  In my view no such injustice is likely to arise.  According to Mr Jones, the evidence to be adduced merely supports and supplements evidence already on file, and moreover relates to some matters of which the applicants would be well aware.  I thus agree with Mr Jones that the applicants could hardly be taken by surprise with the evidence or be faced for the first time with evidence which attacks their application on completely new grounds.  Furthermore, if special leave is granted, the applicants have available to them an opportunity to adduce reply evidence pursuant to reg 59(6).
         Finally I need to consider whether the opponent who seeks to adduce the further evidence, has been diligent in prosecuting the opposition action.  I view some of the applicants' submissions pertinent to this question.
         Mr Jones explained that the opponent Carpenter, was a professional fisherman who for much of the year was engaged in his trade operating from islands adjacent the northern Queensland coast.  Due to Carpenter's frequent absence from the mainland, communication problems had arisen between Carpenter and his patent attorneys in Melbourne which meant that some two years had elapsed before evidence in support could be served.  Mr Jones also explained how he had reviewed the opposition file when the reg 57A notice had been received and after deciding that some further evidence was warranted, immediately sought to have it formally adduced.  That further evidence is said to support and supplement particular evidence filed as evidence in support.
         I can appreciate the communication problems experienced between Carpenter and his patent attorneys and the difficulties this must have caused when compiling evidence in support.  However notwithstanding such difficulties, I am unable to conclude otherwise than that the opponent has been less than diligent in its overall prosecution of the opposition action.  I arrive at that conclusion given the fact that despite having some two years to prepare and serve evidence in support, the only evidence lodged comprised a short declaration, which evidence the opponent has subsequently concluded warrants support or elaboration by way of further evidence.  It is however in the opponent's favour that once further evidence was felt warranted, which I accept was in June 1990, immediate steps were taken to apply for special leave and thus the seeking of special leave, of itself, has not delayed the opposition proceedings.
         Having regard to all the circumstances of this case and my conclusions on the various factors which I have mentioned above, I consider that a case has been made out justifying the allowance of the application for special leave.  In my view, any lack of diligence by the opponent in the overall prosecution of the opposition is far outweighed by the likely benefit of a more correct and just determination of the opposition if the further evidence were admitted.  Accordingly I allow the reg 59 application.  The procedure to be followed is that provided for under reg. 60.
         On the question of costs there are several points of note.  It seems clear to me that the applicants felt that the opponent was seeking to introduce evidence into the proceedings at a late stage even though the opponent "has had it in his possession since the date on which evidence‑in‑support was served", and thus they believed the opponent was abusing the system.  The submissions by the opponent at the hearing elaborated on the background to the application for special leave, the nature of the evidence sought to be adduced and its likely benefit to the opposition proceedings.  In the face of the applicants' objection to the special leave application, these submissions by the opponent have helped to satisfy me that special leave should be allowed.  Thus, although the opponent has been successful in its special leave application, in the circumstances of this case I feel that it is appropriate that the parties should bear their own costs in this matter.  I therefore make no award of costs.

(T.R. BRUHN)

Patent attorneys for the applicants: Griffith Hack & Co, Sydney
Patent attorneys for the opponent  : Phillips, Ormonde &