Renton Dawson Newbury v Peter George Sutherland

[1991] APO 59

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Patent Application No 602930 by RENTON DAWSON NEWBURY, Opposition by PETER GEORGE SUTHERLAND and Objection to Extension of Time to Lodge Evidence-in-Support

Background

Patent application no 602930 for an invention entitled "Treating Jaw Muscle Imbalance" was advertised as accepted on 1 November 1990. On 30 January 1991 Peter George Sutherland lodged notice of opposition under section 59 of the Patents Act 1952 to the grant of a patent on the application.

Mr Newbury, through his patent attorney Mr Greg Munt of Griffith Hack & Co, advised on 14 February 1991 he proposed to object to any extensions of time for serving evidence-in-support lodged by Mr Sutherland.  On 24 April 1991 a form was lodged seeking a 3 month extension to 30 July 1991.  Receipt of this form by the Patent Office was acknowledged on 24 July 1991 and on 7 August 1991 Mr Munt for Mr Newbury gave notice of his objection to the application for extension being granted.

A hearing on the matter was set down for 18 September 1991.  On 17 September 1991 a copy of a statutory declaration by Peter George Sutherland, constituting part of the evidence-in-support of the opposition, was served on Mr Newbury's attorneys.  Mr Munt advised that he could not obtain instructions from Mr Newbury, who was overseas, as to whether the objection to the extension of time was to be maintained.  The hearing was therefore adjourned on the agreement of both parties until instructions were received from Mr Newbury.

On 23 September 1991 Mr Munt advised that Mr Newbury had instructed him to contact Mr Sutherland's attorneys to offer to withdraw the objection to the extension of time provided Mr Sutherland "provides an assurance that the remainder of the evidence-in-support of the opposition would be served within 3 weeks".  In a letter dated 1 October 1991 from the patent attorneys for Mr Sutherland, Mr Newbury was advised this offer was rejected.

The matter was set down for a hearing on 16 October 1991 in Canberra.  Mr Newbury indicated he did not wish to present oral submissions but would rely on written submissions from his patent attorney in letters dated 7 August 1991 and 11 October 1991.  Mr Sutherland was represented at the hearing by Mr Michael Squires of Phillips Ormonde & Fitzpatrick.

The Application for Extension

The circumstances and grounds given in the application for extension of time are as follows:

"Collection of evidence is underway.  Additional time is required to compile appropriate information, to collate it and to prepare appropriate declarations and have same executed."

The form 11 as originally lodged was headed "Application for extension of period of acceptance" and did not mention the opponent's name.  A replacement application for extension of time form was filed on 20 August 1991.

The application for extension is supported by a statutory declaration and 5 exhibits by Michael Peter Squires, a registered patent attorney employed by Messrs Phillips Ormonde & Fitzpatrick.  The declaration explains the circumstances leading to the delay in notifying Mr Newbury of the application for extension of time to lodge evidence-in-support.  Mr Squires states:

"5.  On 26 June, 1991 I received a letter from the Patent Office dated 24 June, 1991 headed "In the matter of an objection to an extension of time".  The letter stated that a hearing in this matter had been listed.  As the patent Applicant's attorneys Messrs. Griffith Hack & Co. had advised that the patent Applicant would object to any extension of time for lodgement of evidence, I assumed that the hearing was an objection to our application for an extension of time to lodge evidence in support. ...

6.   On 12 July, 1991 I received a telephone call from Mr. Greg Munt of Griffith Hack & Co. who had informed me that he was the patent attorney acting for the patent Applicant.  He asked if we wished to proceed with the opposition given that we had not lodged any evidence in support and had not lodged an application for extension of time to lodge evidence in support.  I informed him that to the best of my knowledge we had lodged an application for extension of time to lodge evidence-in-support and immediately checked the records of my firm to confirm this.  The records of my firm indicated that a form identical to the form attached as Exhibit MPS2 had been lodged and the appropriate fee paid. ..."

Mr Munt's submissions explain further the reasons why Mr Newbury thought no application for extension of time had been lodged.  He states:

"... we directed a series of telephone enquiries to the Opposition Section of the Patent Office after April 30, 1991 to determine whether the opponent had lodged an application for an extension of time.  The consistent advice that we received from the Opposition Section was that no such application for an extension of time had been lodged, and it was in these circumstances that we applied by letter dated May 20, 1991 for the opposition to be set down for a Hearing.  We recall being advised subsequently by the Opposition Section that there had been a delay in the form reaching the Opposition Section, and we presume that this was due to the errors in the form ..."

It appears the form seeking the 3 month extension of time was misfiled by the Patent Office and receipt of the form was therefore not acknowledged until 24 July 1991.

Submissions

Both parties made submissions on two issues.  The first concerned errors in the form applying for the extension.  At the hearing Mr Squires for Mr Sutherland referred to exhibit MPS4 which is a copy of a letter from the Patent Office acknowledging receipt on 24 April 1991 of an application for extension of time to serve evidence-in-support.  Mr Squires submitted this letter clearly showed the Patent Office considered the original form to be an application for extension of time to lodge evidence-in-support, and in any event there was no power to revoke the letter now and treat the form as bad.  He conceded the original form contained errors but submitted it contained sufficient information and was substantially in accordance with form 11 as required by regulation 55 of the 1952 Act.

Mr Munt, in written submissions for Mr Newbury, submitted the form was fatally flawed because of the heading, the reference to section 54(1B) and the lack of mention of the opponent.  In Mr Munt's view the form therefore did not support an application for extension of time for serving evidence-in-support.

The second issue concerned whether, irrespective of the errors in the form, the Commissioner should grant the extension of time.  Mr Squires submitted Mr Sutherland had made out a proper case to justify the extension since the application for extension correctly stated the grounds relied on.  He referred to the decision of Beaumont J in Lyons v Registrar of Trade Marks 1 IPR 416 to support his contention that the initial 3 month period for serving evidence was generally regarded as insufficient, and requests for extensions of this period were the rule rather than the exception. He also pointed out it was only at acceptance of an application that an opponent could know what there was to oppose, and an opponent should not be expected to start preparation of an opposition when an application was first published. Mr Squires contended that, as this was a first extension of time the grounds relied on do not have to be too voluminous. He supported his contention by reference to the decision in British American Tobacco Co Ltd v Phillip Morris Ltd (1991) AIPC 90-739 where the Delegate of the Commissioner thought that "the amount of detailed explanation in the grounds should be somewhat proportional to the total amount of extended time".

Mr Munt submitted that the reasons supporting the extension were insufficient for Mr Newbury to assess whether the opposition was being progressed, leaving him with "the clear impression that very little progress, if any, has been made".  Mr Munt noted Mr Newbury had a petty patent divisional of the present application and there was a corresponding US patent so it was surprising the opponent had difficulty collecting evidence.  Also in Mr Munt's view the opponent should have been aware of the application for some time since the technology "has been the subject of considerable debate within the dental industry in Victoria since the lodgement of the patent application".

Mr Squires agreed it was a contentious application but argued this demonstrated the opposition was serious.  He referred to the evidence-in-support filed to date, comprising a statutory declaration by Peter George Sutherland served on 18 September 1991, as an indication of the seriousness of the opposition.  He submitted that it was clear a considerable amount of work had gone into the preparation of the declaration.  Although this declaration had been served after the expiry of the first extension of time sought Mr Squires submitted that to shut it out by refusing to grant the extension would be directly against the public interest.  He also submitted that the grant of the extension would in no way prejudice the applicant's rights.

On the question of public interest Mr Munt pointed out: "details of the patent application have been widely disseminated throughout the dental profession" and yet the application had been opposed by only a single individual.  The public interest therefore "resolves to the interest of one individual against another individual" and in Mr Munt's submission the onus of progressing the opposition diligently had not been discharged by the opponent.

Decision

I will deal first with the question of whether, in view of the errors in the original form 11, that form supports an application for extension of time to serve evidence-in-support.  I note form 11 as prescribed by the 1952 Act could be used both for applying for an extension of time to serve evidence and for applying for an extension of the period of acceptance.  The form as lodged correctly identifies the application number, the applicant and the period of extension sought.  It also states the circumstances and grounds relied on for the extension and was accompanied by the correct fee ($135) for a 3 month extension to lodge evidence-in-support.  While it is regrettable that any errors occur in what ought to be a simple matter of completing a form, nevertheless I believe the form does contain sufficient information to indicate an extension of time is being sought.  It is possible the errors in the form contributed partly to the delay in this matter coming to a hearing but there is no evidence to show Mr Newbury was disadvantaged by any delay.  Overall, following the decision in Kaiser Aluminium & Chemical Corporation v Reynolds Metal Co 120 CLR 136, I believe Mr Sutherland should not be barred from having his application for extension of time considered merely because a form contained errors, even though the errors could have been avoided by paying a little more attention to detail.

The law regarding extensions of time has been established by a number of decisions (see, for example, Vangedal-Nielsen and Others v Commissioner of Patents and Another 33 ALR 144 and Lyons v Registrar of Trade Marks op.cit.).

Stated simply, before allowing an extension the Commissioner:

.must be satisfied a serious opposition is in train;

.must be satisfied the party seeking the extension has made out a proper case; and

.must consider the interests of the parties as well as the public interest, by ensuring invalid patents are not granted and the proceedings are not unduly protracted.

I will deal first with the question of whether the opposition is serious.  Mr Munt submitted the opposition was "no more than an attempt to inconvenience Mr Newbury".  Mr Squires placed heavy reliance on the declaration by Mr Sutherland, which constitutes part of the evidence-in-support, to show the opposition is serious.  This declaration was served on 18 September 1991 which is after the extension period under consideration.  Nevertheless I believe the contents of this declaration may assist my determination of whether the opposition has been diligently progressed, so I will consider it in some detail.

The declaration is divided into 4 parts entitled "Qualifications", "Newbury Specification", "Production and Use of Splints" and "Comments on Newbury Specification" and is accompanied by one exhibit which is a copy of the accepted Newbury application.  Part 1 of the declaration details Mr Sutherland's academic qualifications and experience in the dental field.  Part 2 sets out parts of claims 1 and 9 of the Newbury specification and explains some of the terms used.  Part 3 details Mr Sutherland's own production and use of occlusal splints.  Part 4 deals with each of the claims of the Newbury specification in turn and compares them to his own production and use of splints.

While I acknowledge Mr Sutherland has gone to some trouble to present the material in the form of a declaration, it seems to me that all the material included would have been within his own knowledge and did not involve any searching of other documents or any extensive research.  As Mr Sutherland is the opponent in this matter I am at a loss to see why the declaration was not lodged within the initial 3 month period allowed for service of evidence-in-support.  I agree with Mr Squires it is only at acceptance that a prospective opponent can confidently start preparing evidence.  I note also Mr Squires did not disagree with Mr Munt's submission concerning the technology of the application being the subject of considerable debate.  Therefore I believe a diligent opponent would have commenced the preparation of evidence at acceptance and would have been able to prepare a declaration like Mr Sutherland's within 3 months. 

However I believe Mr Sutherland's declaration does indicate that a serious opposition is in train.  The material in parts 3 and 4 of the declaration appears to go to the ground of prior use and may also relate to the question of obviousness.  Prior use and obviousness are both important grounds of opposition.  My conclusion is therefore that, while Mr Sutherland may not have been diligent, his declaration is sufficient to establish the opposition is serious.

Concerning the interests of the parties and the public interest I do not agree with Mr Munt's submission that I should merely consider the separate interests of the applicant and the opponent in this matter.  The submissions of both parties indicate considerable interest in this patent application throughout the dental profession.  It therefore seems to me that it is in both the public and the applicant's interest that any patent granted on the application be valid.  Mr Sutherland's declaration suggests that the patent may not be valid because of prior use.  Therefore it is better to delay the granting of a potentially invalid patent by granting the extension of time so that I do not preclude the possibility of Mr Sutherland's declaration being considered by the Commissioner in opposition proceedings.

I realise that the grant of the present extension of time does not necessarily mean that this declaration will constitute part of the evidence-in-support in this opposition.  However I note that a second application for extension of time to 30 September 1991 was filed on 29 July 1991, and that this application mentions a declaration.  I also note that Mr Sutherland's declaration was filed on 18 September 1991, which falls within that second extension period.  If I refuse the present application for extension of time, this will not allow consideration of the second application for extension of time.  If I grant the present application this will at least allow that second application to be considered on its merits.    On balance I believe it is in both the applicant's and the public interest that I grant the present extension since I have indicated there appears to be a serious opposition in train.

I must now consider the question as to whether the opponent has made out a proper case.  Mr Squires appeared to rely on the fact that the grounds relied on in the application for extension were correct, that for a first extension these grounds did not have to be too voluminous and that it was Patent Office practice not to refuse an extension of time in similar circumstances.  I agree it is unusual for a first application for extension of time to be refused but I do not believe I should grant the present extension merely because other applications for extension have not been refused.   Before granting the extension of time I must be satisfied that it is justified (see reg. 83A of the 1952 Act). While the grounds relied on do not have to be voluminous, in the present matter the grounds are rather brief and also somewhat vague.  At the hearing Mr Squires did not indicate what evidence was being collected or what "appropriate information" was being compiled, and referred only to Mr Sutherland's declaration.  I note when Mr Sutherland's declaration was served, the opponent indicated he wished to lodge further evidence-in-support but there is no indication of the form or content of this evidence.  Mr Squires also indicated Mr Sutherland's declaration was the
head declaration, but I cannot tell from the contents of this declaration what other evidence or "appropriate information" is being collected.

In Lyons v Registrar of Trade Marks op. cit. Beaumont J (ALR at 150) considered the "rather bald statement of the ground for the request" sufficient to justify the grant of an extension.  However he referred to the "notorious fact that opposition proceedings usually involve the gathering of evidence from third parties and this usually takes considerable time".  He also indicated there was evidence before the delegate to justify the grant of an extension.  In the present matter there is nothing to indicate to me that the opponent is gathering evidence from a third party or even that the opponent has conducted a search of the prior art.  I have also indicated previously that the opponent may not have been diligent in serving his evidence.  I therefore consider the opponent has not made out a proper case to justify the extension.

Therefore I am faced with a situation where there is a serious opposition but the opponent has not made out a proper case to justify the extension of time.  In other words prima facie not all of the criteria derived from the Vangedal-Nielsen decision (op. cit.) have been met.  The Delegate of the Commissioner in the British-American Tobacco case (op. cit.) dealt with a similar problem.  He indicated that he doubted Bowen C.J. implied that all criteria are essential and must be met in order to allow the extension.  The Delegate considered that, taking all matters into account it was in the public interest to allow the extension.  Similarly I believe that in the present case, since I have found that the opposition is serious and that it is in the public interest to grant the extension, I should grant the extension.  In reaching this conclusion I also note that there is no evidence before me that the applicant is suffering from any immediate effects of the delay in opposition proceedings.  In fact Mr Newbury did offer to withdraw the objection to the present extension if the opponent agreed to certain conditions.  Therefore I allow the extension of time to 30 July 1991 to serve evidence-in-support.

Costs

Both parties made submissions regarding costs.  In most actions of this nature costs follow the event.  However in some cases no award of costs has been made because it was found that there was some justification for the objection to the extension of time because the grounds stated on the application were inadequate.  (See, for example, British-American Tobacco op.cit.).  In the present case I believe the statement of circumstances on the application for extension is insufficient proof of a serious opposition being foreshadowed.  I have already indicated that I do not consider the opponent has made out a proper case to justify the extension, and to determine the seriousness of the opposition I have had to rely on a declaration filed after the present extension period.  In these circumstances I believe Mr Newbury had some justification for objecting to the extension and therefore I do not consider Mr Sutherland is entitled to his

costs.  As Mr Newbury did not appear at the hearing, there are no costs to be awarded in his favour.  Accordingly I make no award of costs.

Conclusion

I have granted the extension of time to serve evidence-in-support to 30 July 1991.  I note there are 2 further applications on file to extend the time for serving evidence-in-support.  I therefore allow Mr Newbury 14 days from the date of this decision to state if he wishes to oppose the applications for extension of time to 30 September 1991 and 30 November 1991 respectively.

(JANET WERNER)
  Delegate of the Commissioner of Patents

Patent attorney for the applicant: Griffith Hack & Co, Melbourne
Patent attorney for the opponent : Phillips, Ormonde &
   Fitzpatrick, Melbourne