Razmik Abnoos v CSR Building Products Limited
[2008] APO 5
•29 January 2008
ABSTRACTS OF DECISIONS
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No. 2006903538 in the name of CSR Building Products Limited
Title: Interleave Assembly & Method for Manufacturing Fibre Cement Panels
Action: Sections 32 and 36 requests by Mr Razmik Abnoos and an objection by Mr Razmik Abnoos to an application by CSR Building Products Limited for an extension of time to serve evidence in response
Decision: Issued 29 January 2008.
Abstract
Extension of time refused.
The appropriate test for determining whether an extension of time is allowable under regulation 22.24 is the same as that applicable under regulation 5.10 that the Commissioner must be reasonably satisfied that an extension of time is appropriate in all the circumstances.
CSR have not demonstrated diligence, and have not provided an explanation of the delay in completing the declaration of Mr Talbert. It is not apparent what interest CSR have in filing the Talbert declaration. The interests of CSR appear to be far outweighed by the public interest, the interests of the Patent Office and of Mr Abnoos. There is no suggestion that the evidence will lead to a more just and correct determination of the sections 32 and 36 matters. I am not satisfied that a case for an extension of time has been made out. It is appropriate to refuse the extension of time.
An extension of 7 days from the date of the decision given to enable the applicant to file any remaining evidence in response they have at hand.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Sections 32 and 36 requests by Mr Razmik Abnoos regarding provisional patent application 2006903538 and an objection by Mr Razmik Abnoos to an application by CSR Building Products Limited for an extension of time to serve evidence in response.
BACKGROUND
Provisional patent application 2006903538 directed to an Interleave Assembly & Method for Manufacturing Fibre Cement Panels was filed on 29 June 2006 by CSR Building Products Limited (hereinafter referred to as CSR). On 27 November 2006, Mr Razmik Abnoos filed applications under section 32 and section 36(1).
Mr Abnoos filed his evidence in support on 4 April 2007 within the time limit advised by the Patent Office. On 11 April 2007, CSR was provided with a copy of the evidence in support with a deadline of 4 June 2007 to complete their evidence in response.
CSR filed five applications (dated 4 June 2007, 4 July 2007, 3 August 2007, 4 September 2007 and 5 November 2007) for extension of time which were granted. Mr Abnoos did not formally object to these applications, but provided written comments in relation to the last three extensions.
CSR filed part evidence in response on 8 October 2007 and 5 November 2007. On 4 December 2007, CSR filed a further application for an extension of time to 4 January 2008 to serve evidence in response. This was opposed by Mr Abnoos. On 21 December 2007, the Patent Office advised CSR and Mr Abnoos that a hearing was set down for 15 January 2008 in relation to the above application for extension of time to serve evidence in response.
On 4 January 2008, CSR filed an application for extension of time to 4 February 2008 to serve evidence in response. The Office advised the parties that this would also be considered at the hearing set for 15 January 2008.
The matter was heard in Canberra on 15 January 2008. Mr Abnoos was represented by Mr Leonard Mancini, patent attorney of Peter Maxwell and Associates, Sydney, who attended the hearing by telephone. CSR advised that they did not wish to appear at the hearing, and provided written submissions through their patent attorney Mr Glen Gordon of Hodgkinson Mcinnes Patents, Sydney.
THE LAW ON EXTENSIONS OF TIME
The Commissioner’s power to determine the practice and procedure under sections 32 and 36 derives from regulation 22.24 which states:
22.24Practice and procedure other than for opposition proceedings
(1)Subject to these Regulations:
(a)if the Act or these Regulations authorise the Commissioner to hear and decide an application or matter that is not an opposition; or
(b)in a matter being decided on the motion of the Commissioner;
the practice and procedure to be followed for the purposes of enabling the application or matter to be decided is to be determined by him or her.
Where the law confers such a broad discretion, paragraphs 5(2)(b) and (f) of the Administrative Decisions (Judicial Review) Act set the expectation that the decision maker must not fail to take a relevant consideration into account, or follow a rule or policy without regard to the merits of the particular case.
Regulation 22.24 confers a broad discretion similar to the one in regulation 5.10. The established practice of the Commissioner is to apply similar considerations to those applying under regulation 5.10 (ERG R&D Pty Ltd v Octopus Cards Ltd [2006] APO 21). Thus, I consider that the appropriate test for determining whether an extension of time is allowable under regulation 22.24 is the same as that applicable under regulation 5.10, that the Commissioner must be reasonably satisfied that an extension of time is appropriate in all the circumstances.
10. In exercising the discretion, the Commissioner is guided by the decisions of Burchett J in Ferocem Pty Ltd v Commissioner of Patents (1994) AIPC 91-057; 28 IPR 243, Sackville J in A Goninan & Co Ltd v Commissioner of Patents (1997) AIPC 91-330; 38 IPR 213 and Goldberg J in National Starch & Chemical Co v Commissioner of Patents (2001) AIPC 91-697, 50 IPR 398. It is clear from these judgments that where there is a broad discretion to allow an extension of time, this cannot be reduced to an imperative compliance with particular requirements. On the contrary, it is necessary to give proper, genuine and realistic consideration to all relevant aspects of the case.
11. These decisions further establish that:
a) The power is discretionary.
b) The reasons why the evidence was not served in time are a relevant consideration, but a satisfactory explanation is not a mandatory requirement.
c) The interests of the party seeking the extension are a relevant consideration.
d) It is relevant to consider the disadvantage to the other party of delays in determining the opposition.
e) The public interest in determining a serious opposition on its merits is a relevant consideration.
* In order to do this, it is necessary for the Commissioner to form a view as to the nature of the evidence that it is sought to adduce, and the significance of that evidence for the opposition proceedings.
* The significance of the evidence is assessed having regard to any relevant material available, not just the evidence itself.
* The public interest is not protected merely because some evidence has already been served.
f) The effect of delays on the efficient and orderly administration of the patent office is a relevant consideration.
g) The Commissioner must also consider whether a short extension should be given to permit the filing of any evidence which is immediately available. Logically, this is only relevant if the Commissioner determines that the extension sought is not justified.
12. I will apply the above principles to the determination of the current extension of time applications.
DECISION
The application for extension of time
13. CSR’s application for extension of time filed on 4 December 2007 states:
“We have previously made in November 2007 an offer to settle this matter to Mr Abnoos. Mr Abnoos has since rejected this offer. The patent applicant has been reviewing this matter. A further period of 1 month is required to arrange for the execution of a declaration by David Talbert. Once the declaration is served, then our evidence will be complete.”
The extension of time dated 4 January 2008 states:
“A further period of 1 month is required to arrange for the execution of a declaration by David Talbert, who has been difficult to contact due to his movements, and the holiday period. Once that declaration is executed and served, then our evidence will be complete.”
14. I will discuss the submissions of the parties as necessary in the reasons for my decision.
Explanation of the delay
15. In their application for extension of time dated 4 December 2007, CSR have indicated that they made an offer to Mr Abnoos to settle this matter in November 2007. Following the rejection of the offer by Mr Abnoos, they are reviewing the matter, and time was required to arrange the execution of a declaration by Mr Talbert. In a subsequent application for extension of time filed on 4 January 2008, CSR stated that a 1 month extension was required to arrange for the execution of a declaration by Mr Talbert, who had been difficult to contact due to his movements, and the holiday period. No details have been provided as to the effort made by CSR to get the signature of Mr Talbert so far. Mr Gordon further submitted that the time that has elapsed is not excessive and that CSR does not wish to be forced to commit unnecessary costs and the time of its staff to the present action beyond what is strictly necessary. He also stated that CSR is treating the matters as seriously as they deserve.
16. Mr Mancini submitted that the only reason it would seem that this declaration was not executed and filed before was to wait and see what the results of the settlement offer were. The settlement offer was made on 6 November 2007 and Mr Abnoos rejected the offer on 15 November 2007. There would have been ample opportunity in the subsequent 17 days before the due date of 4 December 2007 to obtain the signature of Mr Talbert. Mr Mancini stated that it is difficult to conceive that Mr Talbert has been unavailable everyday from 15 November 2007 to present. Mr Mancini further argued that CSR have not identified in any detail the efforts made to obtain the signature of Mr Talbert. Mr Mancini submitted that according to CSR the declaration of Mr Talbert was ready to be executed and then subsequently filed on 4 September 2007.
17. I note that CSR, in their application for extension of time dated 4 September 2007, indicated that the final version of the statutory declaration by Mr Talbert was ready and awaiting signature. Given that the declaration was ready, I can not understand why CSR have been unable to get the signature of Mr Talbert since 4 September 2007. In the absence of any details of the effort made by CSR to get the signature of Mr Talbert, I can only conclude that CSR have not shown due diligence in the matter. I am not satisfied that CSR have provided a satisfactory explanation of the delay in the present case.
18. Mr Gordon’s submissions state that CSR have made inconsistent statements in their requests for extension of time:
”We also note that the reasons provided in the past for requesting extensions have sometimes been inconsistent, and occasionally in error, and we apologise to the Office and to Mr Abnoos for this.”
However, Mr Gordon did not go on to explain what errors have been made. A party who admits having placed erroneous information before the Commissioner has an obligation to correct the record at the earliest opportunity. In choosing not to correct the record, CSR have not shown good faith.
The interests of CSR
19. CSR appear to have an interest in submitting the declaration of Mr Talbert in support of their case. However, the significance of that declaration is not clear. CSR has failed to provide any material to establish the relevance of Mr Talbert’s declaration. Therefore, I do not know whether CSR would be disadvantaged in any manner if the sections 32 and 36 matters were decided without Mr Talbert’s declaration. It has not been established that CSR have a significant interest in having the Talbert declaration included in the evidence.
The interests of the Mr Abnoos
20. Mr Abnoos has an interest in having the sections 32 and 36 matter resolved quickly. I do not agree with Mr Gordon’s argument that Mr Abnoos is not being disadvantaged by any delay. Clearly, Mr Abnoos would not like the matters to be dragged out longer than necessary. This is also evident from the fact that Mr Abnoos filed his evidence in support within the time limit advised by the Patent Office.
Public interest
21. The public interest lies in a serious ownership dispute being dealt with on its merits. There is nothing on file to indicate the nature of the evidence that Mr Talbert will give. There is no evidence before me to suggest that Mr Talbert’s declaration is likely to lead to a more just and correct determination of the sections 32 and 36 matters. Therefore, I believe that the public interest does not support an extension of time.
Interests of the Patent Office
22. Mr. Gordon argued that sections 32 and 36 matters have less serious consequences to other disputes, and should therefore be treated accordingly. He further stated that the Patent Office’s interest is to deal with these matters during the appropriate time period, namely, during the pendency of the complete application associated with the present provisional application. I can not agree with the above suggestion. In my view, the Patent Office’s interests, although of no major significance, can not be served by having the proceedings under sections 32 and 36 unduly protracted. Such delays lead to uncertainty in ownership of rights and loss of efficiency at the Patent Office.
The balance of considerations
23. CSR have not demonstrated diligence, and have not provided an explanation of the delay in completing the declaration of Mr Talbert. It is not apparent what interest CSR have in filing the Talbert declaration. The interests of CSR appear to be far outweighed by the public interest, the interests of the Patent Office and of Mr Abnoos. There is no suggestion that the evidence will lead to a more just and correct determination of the sections 32 and 36 matters. I am not satisfied that a case for an extension of time has been made out. It is appropriate to refuse the extension of time.
Other Matters
24. Mr Gordon raised matters regarding the legality of sections 32 and 36 matters at present. His main concerns have been that the matters were raised in regard to a provisional patent application, which has now lapsed. Mr Gordon argued that Mr Abnoos should amend his sections 32 and 36 requests to relate instead to a complete application, namely Australian Patent Application WO 2008/000033 (PCT/AU2007/000898). Until this is done, the present matter should be struck out, or placed in abeyance. In response to above, Mr Mancini indicated that they have existing instructions from Mr Abnoos to amend the requests and it was left to this week to complete this task.
25. In my view, the issues regarding the legality of sections 32 and 36 matters are appropriate for a substantive hearing, rather than during the consideration of an application for extension of time to file evidence in response, which I have to decide. Therefore, I will not go into this matter any further.
Conclusion
26. I am satisfied that the extension of time is not appropriate in all the circumstances.
27. I do not wish to shut out CSR entirely from filing any evidence that may be immediately available. Consistent with the approach taken in Ferocem, I allow 7 days from the date of this decision for CSR to file any evidence they have at hand.
Costs
28. It is normal practice for costs to follow the event. In the present case, CSR’s application for an extension of time to file evidence in response has been unsuccessful, and I can see no reason to depart from the normal practice. I award costs according to Schedule 8 against CSR.
Dr S. D. Barker
Delegate of the Commissioner of Patents
29 January 2008Patent attorneys for the applicant: Hodgkinson Mcinnes Patents, Sydney
Patent attorneys for the sections 32 and 36 requester: Peter Maxwell and Associates, Sydney