Rgc Mineral Sands Limited v Wimmera Industrial Minerals Pty Ltd

[1998] APO 43

official notice

decision of a delegate of the commissioner of patents

Application  :          No. 676682 in the name of RGC MINERAL SANDS LIMITED

Title:          Treatment of Titaniferous Materials

Action  :          Opposition by WIMMERA INDUSTRIAL MINERALS

PTY LTD, and objections to an application under Regulation

5.10(2) for an extension of time in which to serve evidence in

answer, and an application under Regulation 5.10(1) for

directions to defer the service of that evidence

Decision:          Issued            .

Abstract

The applicant applied for an extension of time in which to serve the evidence in answer, followed

by a request to defer the service of that evidence until after the conclusion of concurrent

proceedings in the Federal Court.

Although the court proceedings could potentially embrace the sole ground of opposition pursued

by the opponent, and were therefore directly relevant to the opposition in that sense, the deferral

sought was premature at this relatively early stage of proceedings and was not appropriate having

regard to the interests of the opponent and the public interest.

The applicant had, however, made out a proper case to justify the need for an extension.  The

opposition depended solely on the ground of obtaining and raised non-routine issues of

unauthorised use of confidential information by one or more third parties.  The interests of the

applicant, together with those of the public, also supported the grant of the extension of time.

patents act 1990

decision of a delegate of the commissioner of patents

Re:Patent Application No. 676682 by RGC MINERAL SANDS LIMITED, opposition thereto by WIMMERA INDUSTRIAL MINERALS PTY LTD, and objections to an application under Regulation 5.10(2) for an extension of time in which to serve evidence in answer, and an application under Regulation 5.10(1) for directions to defer the service of that evidence

background

Patent application 676682 in the name of RGC Mineral Sands Limited (RGC) was filed on 28 July 1993 as PCT/AU93/00381 claiming priority from a number of provisional applications, the earliest of which was filed on 31 July 1992.  The present application was advertised accepted on 20 March 1997.

Wimmera Industrial Minerals Pty Ltd (Wimmera) filed a notice of opposition to the grant of a patent on 19 June 1997 followed by a statement of grounds and particulars on 19 September 1997.  Service of the evidence in support was completed on 19 February 1998 after Wimmera had been granted two extensions of time unopposed.

On 19 May 1998 RGC applied for an extension of time until 19 July 1998 in which to serve the evidence in answer.  Wimmera objected to the extension sought and the matter was set for hearing in Canberra on 24 June 1998.

In a letter dated 22 June 1998 Mr G Noonan of Freehills Patent Attorneys advised that RGC had commenced proceedings in the Federal Court against Wimmera.  In light of this, Mr Noonan requested that the Commissioner:

“pursuant to Patents Regulation 5.10(1), directs that evidence-in-answer will be due to be served three months after the final determination of the proceedings in the Federal Court.”

Wimmera objected to this request and the matter was heard jointly with the application for extension of time.

RGC was represented by Mr D Catterns of counsel, assisted by Mr Noonan.   Mr P Collinson of counsel and Mr G Munt of Griffith Hack represented Wimmera.

relevant provisions

The Commissioner is empowered under regulation 5.10 to issue directions relating to the conduct of opposition proceedings, and to extend the time within which a party may take a step prescribed by Chapter 5, including the service of evidence in answer.  Regulation 5.10 relevantly reads as follows:

(1)  The Commissioner may, on his or her own motion or on the application
of a party:
(a)  give a direction that is not inconsistent with the Act or these Regulations
     for the conduct of proceedings to which this Chapter applies;
......
(2)  The Commissioner may:
(a)  on the application of a party in the approved form; and
(b)  on such reasonable terms (if any) as the Commissioner specifies;
extend the time within which the party may take a step prescribed in this chapter, not being a step that is taken under regulation 5.3 or paragraph 5.4(1)(a).

These powers are subject to the requirements of subregulation 5.10(5):

(5)  The Commissioner must not give a direction under subregulation (1) or grant
an application under subregulation (2) ... unless the Commissioner:
(a) if he or she proposes to grant an application by a party - is  reasonably
     satisfied that the other party has been notified of the application;
 ......
(c)   ...

(i)   gives the parties a reasonable opportunity to make 
      representations concerning the application ...; and

(ii)   is reasonably satisfied that a direction, an extension of time ...
      is appropriate in all the circumstances.

For the sake of completeness I note that there is no dispute as to whether Wimmera has been notified of the applications made by RGC pursuant to regulation 5.10, or whether the parties have had a reasonable opportunity to make representations concerning them.

matters for consideration

There are two applications under regulation 5.10 before me.  The first in time is the application for extension.  However, as pointed out by Mr Noonan, the grant of the extension sought would be rendered unnecessary if I were to direct that the service of evidence in answer be deferred as requested.  In the circumstances, the extension application will, if required, be dealt with following the application for directions.

application for directions

On 18 June 1998 RGC commenced proceedings in the Federal Court (NG 598 of 1998) against Wimmera, and now seeks a direction from the Commissioner the effect of which would be to defer the service of evidence in answer until 3 months after the court proceedings have been finally determined.

I note at the outset that there is no provision in the Act or Regulations concerning the procedure to adopt regarding the service of evidence in opposition proceedings where a court action is co-pending.  However, I consider it appropriate to seek guidance from the decisions relied upon at the hearing since in each of these the question of whether matters before the Commissioner should be deferred where judicial proceedings are pending was considered.

In Ferocem Pty Ltd v High Tech Auto Tools Pty Ltd (1993) 29 IPR 144 the delegate of the Commissioner had to determine whether to defer the hearing of an opposition to an extension of term of a petty patent pending the outcome of concurrent Federal Court proceedings for revocation of the patent.

The delegate accepted that, as a general proposition, the Commissioner will preferably defer a matter until a pending relevant court action has been concluded.  However, where the dispute between the parties raises issues of significant public interest it may be desirable for the Commissioner to determine the matter before him or her as expeditiously as possible.  Until the extension had been determined by the Commissioner, third parties would be forced to assume that the patent was valid and conduct their affairs accordingly.  This, in the delegate’s view, would be contrary to the public interest.  The opposition was therefore set down for hearing.

There are a number of other cases in which extension of term proceedings were heard despite the fact that court proceedings remained undecided: see Re Application by Yamazaki Mazak Corp (1992) 24 IPR 321 and Queensland Metal Frames Pty Ltd v Lakecroft (1987) APOR 8 where  commercial interests were again held to prevail.

In an action more closely related to the present case (Genelabs Technologies Inc v Murex Diagnostics (1996) 36 IPR 54), the delegate considered whether the time for serving evidence in support of an opposition to grant should be deferred pending the outcome of court proceedings. The delegate was of the view that the matter before the court was not directly related to the opposition and therefore such deferral was unjustified.

It is clear from my observations above that there is no direct authority to support a particular course of action in the present circumstances.  Nevertheless, what does emerge from the decisions to which I have referred is that there is no insistence upon imperative compliance with the “general proposition” espoused in Ferocem v High Tech Auto Tools (supra) which is of course consistent with the broad discretion conferred by regulation 5.10(5)(c)(ii) that a direction can only be given if the Commissioner is reasonably satisfied that it is appropriate in all the circumstances.

From these decisions, the factors to be considered before deciding whether or not to issue a direction to defer proceedings can in my opinion be stated generally as follows:

• whether the court proceedings are directly relevant to the proceedings before the Commissioner; and

• whether a deferral would clearly disadvantage one of the parties or the public interest

I will now consider each of these factors in turn.
Relevance of the court proceedings

In its application to the Federal Court, RGC claims inter alia:

“1. A declaration that the invention described in Patent Application No 676,682 (45513/93) (“the Patent Application”) was not obtained by the Applicant from the Respondent by the unauthorised use of information which was confidential in character and which was disclosed on a confidential basis by the Respondent to various research organisations, including to the Commonwealth Scientific & Industrial Research Organisation (“CSIRO”) or Australian Nuclear Science and Technology Organisation (“ANSTO”), or to any other person.”

2. A Declaration pursuant to s.15(1) of the Patents Act 1990 that the Applicant is the person to whom the patent which is the subject of the Patent Application may be granted, in terms of s.15(1) of the Patents Act 1990.

3. A Declaration that neither the Applicant’s Synthetic Rutile Enhancement Process nor any part of it was obtained by the Applicant from the Respondent by the unauthorised use of information which was confidential in character and which was disclosed on a confidential basis by the Respondent to various research organisations, including to the CSIRO or ANSTO, or to any other person.

4. An order that the Respondent by itself, its servants or agents be restrained from, in trade or commerce, representing to any person, including but without limitation the Commissioner of Patents,

(a) that the invention as described in the Patent Application was obtained by the

Applicant from the Respondent by the unauthorised use of information which

was confidential in character and which was disclosed on a confidential

basis by the Respondent to various research organisations, including to the

CSIRO or ANSTO, or to any other person;

(b) that the Applicant is not the person to whom the patent which is the subject
of the Patent Application may be granted in terms of s.15(1) of the PatentsAct
     1990; or

(c) that the Applicant’s Synthetic Rutile Enhancement Process or any part of it
     was obtained by the Applicant from the Respondent by the unauthorised use
     of information which was confidential in character and which was disclosed
     on a confidential basis by the Respondent to various research organisations,
     including to the CSIRO or ANSTO, or to any other person.”

Mr Catterns submitted that this statement of claim subsumes the present opposition in which the only ground relied on is that of obtaining.  Before considering this submission further, it is necessary to look to the statement of grounds and particulars filed by Wimmera to ascertain the circumstances in which obtaining is alleged to have occurred.

By way of background information, the statement refers to the research activities of Wimmera which were on occasion contracted under an obligation of confidence to various third parties including CSIRO and ANSTO.  A number of instances where confidential information was  exchanged between Wimmera and the third parties during the period 1989 to December 1992 are then identified.  Specifically, this information derived from research projects concerning a process for the removal of radioactive components from zircon minerals that were undertaken by CSIRO, ANSTO and two other named third parties on behalf of Wimmera.  The statement of grounds and particulars continues as follows:

“4. Prior to 31 July 1992 (but on a date not presently known to the Opponent), one or more of the Third Parties in circumstances and on a basis not presently known to the Opponent commenced work for the Applicant on a project which was in substance concerned with the removal of radioactive impurities from mineral deposits.

5. The project referred to at paragraph 4 involved one or more of the Third Parties in work for the Applicant which was in substance the same as the research project which such Third Party until then had been conducting for the Opponent.

6. In circumstances not presently known to the Opponent, information confidential to and the property of the Opponent, including the whole or part of the invention in the possession of the one or more Third Parties and concerned with and derived or resulting from the Opponent’s said research projects came to be in the possession of, or was used for the purposes of, the Applicant.

7. Further, employees of the First Third Party [viz. CSIRO] who had access to the whole or part of the confidential information of the Opponent ... assisted the Applicant in the making of the invention allegedly made by the Applicant being the subject of the opposed application and contributed to that invention as nominated inventors ...

......

9. In circumstances not presently known to the Opponent the aforesaid confidential information of the Opponent ...was, without permission of the Opponent, used by or on behalf of the Applicant ... for the opposed specification.”

These material facts all point to the suggestion that CSIRO or one or other of the third parties in question has been involved in some way or another in the improper disclosure to RGC of confidential information belonging to Wimmera, and thus would appear to support the position for which Mr Catterns contends.

For his part Mr Collinson drew my attention to RGC’s statement of claim in which it is alleged that Wimmera’s representation to the Commissioner, and to the third parties in question, that the invention described in the present application was obtained by the unauthorised use of confidential information amounted to misleading and deceptive conduct under the Trade Practices Act 1974. Mr Collinson submitted that as the primary issue raised in the court proceedings concerns the conduct of Wimmera in making a number of alleged representations, the court may find that no such representations were made irrespective of whether there has been wrongful obtaining of the invention.

Having regard to the nature of the court proceedings, I do not consider Mr Collison's argument to be persuasive. This is not to say that in my opinion it is unreasonable to suggest that the court could simply find that the representations alleged were never made by Wimmera which, as intimated by Mr Collinson, would put an end to the matter without the need to determine the veracity or otherwise of such representations. However, it seems from the material before me that the court is as least as likely to be required to go beyond this basic line of enquiry and look to the substance of the representations allegedly made. I note in this regard that the relief sought by RGC is entirely in respect of an alleged contravention by Wimmera of the Trade Practices Act. While one may speculate on the approach which the court would ultimately adopt in this situation, it is conceivable that in order to determine whether the representations (if made) constituted conduct in trade or commerce which was misleading or deceptive, the court would be obliged to firstly consider if RGC had obtained the invention from Wimmera in the circumstances alleged.

On the basis of the foregoing, I find myself in agreement with Mr Catterns that the court action commenced by RGC is directly relevant to the opposition in the sense that the findings of the court potentially could encompass the issue of obtaining which is central to the present proceedings.

Private and public interests

The competing interests inherent in this consideration were referred to in Genelabs v Murex (supra) at page 60 where it was said:

"The interests of the applicant for a patent are usually best served if the delay in proceeding to patent grant is minimised.  The interests of the opponent are, of course, best realised on the basis of obtaining indefinitely extending periods of extension whereby to facilitate obtaining the maximum amount of evidence to demonstrate the invalidity of any patent that might be granted on the application.  The public interest overrides the private interests only to the extent that it resides in the requirement for a balance between the state of uncertainty in which the application can exist given delay in the action, and the risk inherent in rapid, superficial or incomplete proceedings which might lead to the grant of an invalid patent.  Unreasonable delays in the action will generally not be in the public interest in view of "the desirability of operating the [opposition] system efficiently.""

Although of some relevance, this statement does not fully mirror the private interests to be taken into account in the present case.  Normally, the interests of an applicant are best served by having a patent granted for its invention as expeditiously as possible.  However, Mr Catterns submitted that as the applicant here is the party seeking a deferral of the opposition, it would not be prejudiced by any delay in proceedings. 

As already mentioned, the opposition by Wimmera relates solely to the ground of obtaining.  The result of a successful obtaining action is not simply to prevent the grant of a patent in respect of the invention obtained, but to cause a patent to be granted under section 33 to the opponent.  Although the question of ownership remains unheard and undecided in the present case, I am inclined to agree with Mr Collinson that any legitimate claim by Wimmera to the invention could be significantly compromised if the opposition proceedings were deferred until after the decision of the court had been handed down (which, as alluded to earlier, may not even have regard to the issue of obtaining).  Clearly, Wimmera would in this event be precluded for an indefinite period from taking full advantage of the relief available to it under section 33.  To this I would add that a prompt determination of the question of ownership also appears critical to finalising the opposition by RGC to Wimmera's patent application 678375 in which the present application has been cited as relevant prior art.

The public interest in determining an opposition based solely on obtaining is different to the situation where a patent should otherwise not be granted on the basis of, for example, want of novelty.  However, there remains a public interest in ensuring that patents are only granted to those with whom entitlement resides.  In my view it is undesirable in the public interest that the question of obtaining should be subject to possibly extensive and unreasonable delay; until this question has been determined the public (including potentially interested third parties) will be left in a state of uncertainty both as regards the fate of the application and its ownership.

Mr Catterns further submitted that the court and the Commissioner might reach contrary views on similar issues if the request for deferral is not granted, and to proceed with the opposition could well lead to wasted effort and resources.  On the other hand, so the argument runs, to defer the opposition until after the court action has been concluded may simplify matters to be determined by the Commissioner.

I am not convinced by Mr Cattern's line of argument.  As a preliminary observation I note that this is not a case where hearings are pending in the near future in the court and before the Commissioner (cf. Yamazaki (supra)).  The request for directions merely seeks to defer the service of evidence in answer, not the hearing of the substantive opposition, and thus it seems premature for the Commissioner to issue the direction sought for these reasons alone.  In any event, I do not consider the possibility that the hearing before the Commissioner may be a waste of effort or resources if the court comes to a different finding, to be persuasive.

Firstly, there is of course an equal probability that the outcomes of the two proceedings will not be inconsistent.  Secondly, even though the issues before the court may be somewhat different to those on which the Commissioner must decide, the supporting material filed in each of the proceedings to date suggests considerable overlap between the evidence on which these issues are to be contested.  And to the extent that there are differences in this material, I note here the comments of Kitto J in Kaiser Aluminium andChemical Corporation v Reynolds Metal Co (1969) 120 CLR 136 that it would nonetheless generally be beneficial to the court for the Commissioner to hear and determine the matter. Thirdly, and in response to Mr Catterns' assertion that the Patent Office is not the most appropriate forum in which to deal with "matters of credit", I note that evidence put before the Commissioner in an opposition can be tested by means of direct cross-examination. Fourthly, the present circumstances do not justify a deferral on the basis that the court action relates to an area of uncertainty in the law (cf. Thornton v RepatriationCommission (1981) 35 ALR 485). Finally, it may be that, following the decision by the Commissioner, the parties will not proceed with the court action, thus saving time and money.

I note here the statement made by Heerey J in F A Faulding and Co Ltd v Bristol-Myers Squibb Co (Butterworths Unreported Judgements, BC9705254, dated 8 October 1997) that

"The main ground relied on as to inconvenience necessarily assumes … that the Court and the parties will be engaged in the trouble and expense of litigating the same or very similar issues … I am not prepared to accept that this would necessarily be so or that a Court today would not be astute to avoid wasteful procedures."

Thus even if the parties do proceed with the court action, this statement is supportive of the view that the potential duplication of proceedings would not necessarily lead to the inconvenience alleged, or intrude on the court process.

Conclusion

I have found that the issues to be decided by the Federal Court are directly relevant to the present opposition.  However, for the reasons given, I consider this to be outweighed by the interests of both Wimmera and the public.  In short, these interests strongly favour an expeditious resolution of the fate of the present application in terms of its rightful ownership.  Accordingly, I conclude that it would not be appropriate in all the circumstances to defer the service of evidence in answer pending the outcome of the court proceedings, and I therefore refuse to give a direction to that effect.  Given that conclusion, I now need to decide whether to grant the extension sought in which to serve evidence in answer.

application for extension of time

The circumstances and grounds on which the application is made are stated as being:

“The sole ground of this opposition is that the applicant is not entitled to the invention.  The opponent has filed evidence in support in which allegations are made involving several third parties, one in particular, and one or more of their employees.  The applicant has sought to carefully investigate all of the circumstances surrounding the making of the invention ... It first reviewed documents in its own possession or in the possession of its solicitors and patent attorneys.  This process was complete some time ago.  The second step, which it was considered should be carried out after the first step, was to seek the recollections of the RGC co-inventor Harold Robert Hams [sic: Harris].  A draft of a declaration by Mr Hams [sic: Harris] has been prepared.  Additional time is respectfully sought to allow this declaration to be further reviewed, settled and executed.

The third, and separate, step has been to seek the co-operation and comments of the particular third party, CSIRO.  CSIRO has informed us that internal investigations have been completed and draft declarations by all of the other seven co-inventors, all CSIRO employees, have been prepared.  We are hopeful that these will shortly be in our hands for review, though of course CSIRO is an independent party not subject to our control.  Additional time is respectfully sought to allow us to receive those seven draft declarations, to review and settle them in discussions with CSIRO, and to have them executed.

It is possible that a draft declaration may be provided by another party, to be executed by a person not yet finally identified.  This declaration would be specific to certain aspects of the matter.  Further time is respectfully requested to determine whether this evidence would be helpful to the Commissioner, in the light of the CSIRO declarations, and if so to have the declaration prepared and executed.

We also respectfully seek the extension of time to allow other personnel of the applicant or CSIRO to provide one or more additional declarations if the present CSIRO declarations, when seen, require augmentation to relate all pertinent facts concerning the making of the invention.”

Mr Catterns advised at the hearing that RGC no longer wished to rely on the circumstances and grounds set out in the third and fourth paragraphs above.

The operation of the extension of time provisions was considered by Burchett J in Ferocem Pty Ltd v Commissioner of Patents (1994) 28 IPR 243 and Sackville J in A Goninan & Co Ltd v Commissioner of Patents (1997) 38 IPR 213. From these decisions it is clear that the principles that govern extensions of time in which to serve evidence are:

• The power is discretionary: Regulation 5.10 confers a broad discretion, which cannot be reduced to an imperative compliance with particular requirements.  On the contrary, it is necessary to give genuine and proper consideration to all relevant considerations.

• Explanation of delay: The reasons why the evidence was not served in time are a relevant consideration, but a satisfactory explanation is not a mandatory requirement.

• The public interest: The public interest in determining a serious opposition on its merits is a relevant consideration. There is also the efficient and orderly administration of matters before the Patent Office to consider.

• The interests of the parties involved in the opposition: Disadvantages to either the applicant or opponent are relevant considerations.

If I am to be satisfied that an extension of time is appropriate in all the circumstances, then I must take into account all matters relating to the above principles when deciding the issue.

The provision of an explanation or justification for the delay

Mr Munt said that there was nothing in the application for an extension of time which indicates that RGC and its attorneys have moved expeditiously to complete its evidence in answer.  In taking this argument further, Mr Munt drew my attention to the following:

- Wimmera's statement of grounds and particulars was served on 19 September 1997 which
  meant that at the time it filed the application for extension RGC had for 8 months been aware
  of the details of the allegation of obtaining made against it.

- Mr Harris is an employee of RGC and is listed as a co-inventor in the present application.  No
  details as to the amount of time dedicated to the preparation of the evidence of Mr Harris is
  supplied in the extension application.  There is no description of anything more than a routine
  delay incurred during the preparation of this evidence.

- the extension application provides no details as to when CSIRO was first approached by RGC
  in relation to the preparation of the declarations by the other seven co-inventors.

- RGC states that CSIRO is an "independent party not subject to our control", yet on receipt
  of the seven draft declarations, RGC intends to "review and settle them in discussions with
  CSIRO" before having the declarations executed.  The extension application contains no
  details as to why declarations prepared by a party stated to be independent require review
  and settling by RGC.

- by its own statement of claim filed in the Federal Court the task of locating and reviewing
  documents in the possession of RGC had been completed in 1993.  The scale of the review
  exercise required for the opposition would be substantially reduced due to the earlier
  review process undertaken and should have been able to be completed soon after Wimmera's
  statement of grounds and particulars was served.

- the issue of the provenance of the present invention is not new to CSIRO either: in light of
  previous review exercise mentioned above, the preparation of the co-inventor declarations
  would not be a particularly onerous task and should have been comfortably completed
  within the time allowed.

I think it appropriate to deal with the last two submissions first.  The statement of claim filed in the Federal Court by RGC raises the following points regarding the alleged conduct of Wimmera:

- at various times between 23 July and 22 November 1993 Wimmera made allegations to RGC
  and CSIRO to the effect that the invention described in the present application was obtained
  by the unauthorised use by RGC of information which was disclosed by Wimmera on a
  confidential basis to CSIRO;

- by way of letter dated 22 November 1993 in reply to these allegations, CSIRO said:

“Should WIM [viz. Wimmera] be in possession of information which suggests to you that contrary to the results of our own enquiries an unauthorised disclosure of information has taken place then we believe that it is incumbent on WIM to make known the facts and matters on which you rely so that further enquiries can, if necessary, be made and directed towards the more specific areas identified by you (i.e. the information involved, to whom at CSIRO it was disclosed and in what circumstances.)”;

- this letter was intended by CSIRO and RGC to be a joint response to the allegations;

- between 22 November 1993 and 19 September 1997 Wimmera did not respond to this
  letter; nor did it make any information known which suggested that there was disclosure of
  information by CSIRO to RGC or which otherwise supported the allegations; and

- by reason of the above Wimmera had represented to RGC, in trade or commerce, that as
  from 22 November 1993 it no longer regarded the allegations as true, and would in future
  refrain from making such allegations.

The material before me indicates that Wimmera and CSIRO first corresponded on the issue during the second half of 1993.  The letter of 22 November referred to above additionally states:

"In the absence of any particular evidence from WIM of any improper disclosure of WIM confidential information, we felt obliged to conduct our own enquiries with a view to establishing whether there may have been a disclosure of information from CSIRO personnel undertaking work sponsored by WIM to any member of the CSIRO team working on a project for RGC …"

The enquiries were made initially of the only CSIRO staff member involved in undertaking research work for both Wimmera and RGC, and thereafter were extended to the members of both research teams.  Importantly, what this material does not establish is whether enquiries were made of any or all of the CSIRO co-inventors named in the present application, and whether RGC was at all involved with the conduct of these investigations.  Moreover, it seems that while Wimmera first raised allegations of obtaining as early as 1993, the facts on which it relies to support such allegations were not made known to RGC until service of the statement of grounds and particulars was effected some 4 years later.  Consequently, I do not agree with Mr Munt that the circumstances brought to notice by him point to a lack of diligence on the part of RGC.

Furthermore, although I share Mr Munt's concerns regarding the absence of information about the progress made by RGC in preparing its evidence in answer (see eg. Minproc Technology Pty Ltd v CSIRO (1996) AIPC 91-244), I accept the advice given by Mr Catterns at the hearing that the declaration of Mr Harris is at an advanced stage of completion. The preparation of the balance of the evidence in answer is according to the extension application in the hands of CSIRO which is not subject to the control of RGC. I do not think that too much significance attaches to this arrangement in terms of the objections advanced by Mr Munt.

It is true that the present application has been opposed on the ground that the invention it discloses was allegedly obtained by RGC from Wimmera.  However, this allegation is at least partly based on the further allegation that RGC is the beneficiary of a breach of confidence by CSIRO, and thus it is not altogether surprising that CSIRO has as a matter of cooperation agreed to obtain evidence from the co-inventors named in addition to Mr Harris, who it must be remembered are all employees of CSIRO, in an effort to "clear its name".  Clearly, the suggestion that CSIRO has to some extent been involved in the unauthorised disclosure of confidential information is one, which is potentially damaging to the integrity of CSIRO as an independent and reputable research organisation.  It is also apparent why the finalisation of the evidence from these declarants would require the input of RGC since it alone must defend its prima facie entitlement to the invention to the satisfaction of the Commissioner.

Mr Munt also submitted that:

"The case of an opposition involving solely obtaining is unusual in that the Applicant can begin to prepare its evidence in answer immediately after the Statement of Grounds and Particulars in support of opposition has been served because most, if not all, of the material facts relating to the issue of obtaining will be in the knowledge of the Applicant rather than the Opponent"

Aside from the fact that there is nothing to indicate that RGC did not begin the preparation of its evidence immediately following service of the statement of grounds and particulars, I fail to see how RGC could in the first instance be said to be more cognisant of the relevant facts than Wimmera.

Firstly, it is manifestly clear from its statement of claim that RGC strenuously denies the allegation of obtaining.  And secondly, the issue of obtaining is a legally complex one that relies heavily on declaratory evidence.  This position is exacerbated in the present case by the particular circumstances under which obtaining is alleged to have taken place.  As noted earlier, it seems that these circumstances were not revealed to RGC until Wimmera had served its statement of grounds and particulars.  This is itself a document of some 17 pages which sets out the basis of Wimmera's case in considerable detail.  Moreover, the evidence in support is voluminous, and at a superficial level looks substantial.  I also believe it pertinent to again mention that, due to the alleged lack of a response by Wimmera to the CSIRO letter of 22 November 1993, RGC was lead to believe that the obtaining issue would not be further pursued.  For these reasons I do not accept Mr Munt's suggestion that RGC has already had sufficient time in which to prepare its evidence in answer.

On balance I believe RGC has shown that it has encountered difficulties of a kind which justify the need for the extension of time.  The unique nature and circumstances surrounding the ground of opposition raised by Wimmera outweigh considerations regarding the adequacy of disclosure concerning the progress made by or on behalf of RGC in preparing evidence from its declarants.

Private and public interests

The considerations involved here were addressed in Ferocem v The Commissioner of Patents (supra) as follows:

"The determination of an application for an extension of time under Regulation 5.10(2) involves a balancing exercise, in which competing considerations must be taken into account.  There are the interests of the persons directly concerned in the application and opposition in question.  There are also the public interests, which are not necessarily all ranged on the same side.  They include the expeditious disposal of matters in the Patents Office, and questions of cost, of efficiency, and of insistence upon proper professional standards being maintained by those who deal with the office.  But they also include, as Kitto J pointed out in Kaiser Aluminium& Chemical Corporation v The Reynolds Metal Company (1969) 120 CLR 136 at 143, "the public interest that a serious opposition by a person entitled in fact to oppose the grant of a patent should be dealt with on the merits, rather than that it should be shut out in consequence of a failure in procedure, lamentable though the failure may be.""

Regarding the interests of the opposing parties, Mr Catterns submitted that RGC's interests would be best served by granting an extension of time to allow its case to be presented in full.  On the other hand, I accept that Wimmera could be disadvantaged by a protraction of proceedings if I grant the extension now sought, particularly in view of its claim to ownership.  Nonetheless, there is nothing before me to suggest that such protraction would have the same undue effect on Wimmera as the effect on RGC if it was denied the opportunity to fully state its case.  Indeed, if no extension were to be granted RGC would be prevented from presenting any evidence and thus be exposed to the possibility of forfeiting its prima facie eligibility status.

Turning now to the public interest, the Kaiser Aluminium (supra) case states that a serious opposition should be dealt with on its merits and not shut out because of a failure in procedure.  While that case discusses the risk of shutting out an opponent, it is clear from SDS Digger Tools Pty Ltd v Pasdonnay Pty Ltd (unpublished office decision on application 638571, dated 1 February 1995) that the public similarly has an interest in an applicant being able to mount a defence of what may be a worthwhile invention rather than have the defence shut out because of a failure in procedure.  The essential prerequisite here, of course, is that the applicant is mounting a serious defence to the opposition.

In the present case the commercial significance of the invention is not in issue, and to my mind the pursuit of a number of declarants the majority of whom are independent of RGC prima facie attests to a serious undertaking by RGC to defend its patent application.  Certainly, there is nothing to confirm that RGC has instigated court proceedings in lieu of mounting a serious defence to the opposition as Mr Munt appeared to suggest.

It is also against the public interest to grant an invalid patent and to unnecessarily delay opposition proceedings.  Opponents, and particularly their statements of grounds and particulars and evidence in support, are an important source for reducing the risk of granting invalid patents.  In this light it could be suggested that an applicant's evidence in answer has little effect on this public interest consideration.  On the other hand it is equally against the public interest to deny the grant of a valid patent.  This means that the evidence from the applicant is as important to the public interest as the opponent's evidence, and I think that this point carries more weight in the present circumstances than the likely delay if I were to grant the extension of time.  It is clear from what I have said beforehand that the opposition could not be justly determined in the absence of the evidence in answer. 

Conclusion

I have found that on balance RGC has made out a proper case for the need for an extension of time.  The private interests of RGC, together with the public interest, also support the granting of an extension.  Accordingly, I conclude that an extension is appropriate in all the circumstances.  As the 2 months period of extension sought does not seem to me to be excessive in the circumstances, I grant an extension of time until 19 July 1998 in which serve the evidence in answer.

Costs

The power of the Commissioner to award costs is discretionary, so I must take into account all relevant considerations.

I have found that the extension of time sought by RGC in which to serve its evidence in answer is appropriate in all the circumstances, but only after finding that circumstances did not favour the deferral of such service pending the outcome of concurrent proceedings in the Federal Court.  In this situation it would seem appropriate for each party to bear its own costs.

Accordingly, I make no award of costs.

O L Haggar
Delegate of the Commissioner of Patents

Patent attorneys for the applicant  : Freehills Patent Attorneys, Melbourne

Patent attorneys for the opponent : Arthur Robinson & Hedderwicks, Melbourne