Riga'l Universal Loaders Pty. Ltd. v. Forbes Engineering Holdings Pty. Ltd.

[1988] APO 23

In the Matter of the Patents Act 1952 and - In the Matter of Application No. 561758 for a Patent by RIGA'L UNIVERSAL LOADERS PTY. LTD. - and In the Matter of opposition thereto by FORBES ENGINEERING HOLDINGS PTY. LTD. - and - In the Matter of an Application for Extension of Time within which to Serve Evidence in Support.

 

DECISION OF A SUPERVISING EXAMINER OF PATENTS:

Patent application 561758 for an invention entitled "Earth-Working Machine" was advertised accepted in the Official Journal of Patents on 14 May, 1987. A notice of opposition to the grant of a patent on the application was lodged by FORBES ENGINEERING HOLDINGS PTY. LTD. (FORBES) on 13 July, 1987 and thus evidence in support was due by 13 October, 1987.

FORBES has been granted two unopposed extensions of time in which to serve its evidence in support - such extensions firstly extended the time to 13 January, 1988 and secondly to 13 April, 1988.

On 28 April, 1988, a third extension of time was sought to extend the period for lodging evidence for a further period of 3 months (viz. until 13 July, 1988). As this application was lodged out of time, the provisions of sub-regulation 82(b) became applicable. The applicant RIGA'L, through its Patent Attorneys Grant Adams & Company, notified the Commissioner that it objected to the extension being granted, lodged written submissions in support of its objection and provided a copy of same to the opponent's Patent Attorneys G.R. Cullen & Co. RIGA'L also advised that it did not wish to be heard on the matter. In view of the objection to the extension application and in accordance with practice, FORBES were afforded an opportunity to be heard. In response thereto, on 29 June, 1988, the attorneys for FORBES declined to be heard in person but provided written submissions and further evidence in support of its extension application.

The Application for Extension

With respect to the granting of extensions of time in opposition proceedings, regulation 83A of the Patents Act requires that "... the Commissioner shall not grant the extension of time unless he is satisfied that the extension is justified having regard to all the circumstances of the case". Furthermore, as the application for the extension in this case was lodged after the expiration of the time sought to be extended, the provisions of paragraph (b) of regulation 82 become applicable - thus the Commissioner must be "satisfied that special circumstances existed which prevented the application being made" before the time expired.

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

"Further time is required to complete the collection of Evidence-in-Support of the opposition. In particular, further time is required to confirm the dates of publication in Australia of prior art documents and devices located by the searches conducted by the opponent or its agents."

In support of its extension application under regulation 55 and the requirements of sub-regulation 82(b), the opponent has lodged (i) statutory declarations by Mark Forbes, who is General Manager of FORBES, and Samuel Everett Lyttle, an agent assisting the opponent, and (ii) written submissions by its Patent Attorneys. It is first necessary to consider the regulation 82 conditions and whether "special circumstances existed" which prevented the extension application being made before 13 April, 1988.

Regulation 82

An extensive consideration of regulation 82 and its operation is set out in a decision by the Commissioner's delegate in Genentech Inc. v. The Wellcome Foundation Limited (decision dated 16 May, 1988 - as yet unreported). In that decision the delegate, after considering the Federal Court judgement in Jess v. Scott and Others 70 ALR 185, considered that errors made by the Patent Attorneys in failing to make appropriate diary entries qualified as special circumstances.

The evidence of Messrs. Forbes and Lyttle establish that Mr.Lyttle of Adelaide, South Australia, had been engaged as an agent by the Queensland-based opponent to assist it with the task of collecting evidence, including the identification of pertinent prior art, and the establishment of the publication date of such art in Australia. Mr. Forbes had known of Mr. Lyttle's experience and expertise concerning equipment to which the invention relates. Mr. Lyttle, it seems, was engaged by the opponent in late October 1987.

It seems that when the January 1988 deadline for filing evidence approached, Mr. Lyttle, realising that he needed more time to finalise his investigations, notified his own Patent Attorneys in Adelaide to inform FORBES' Brisbane Patent Attorneys of that fact and that he was prepared to stand the cost of requesting an extension of time. From Mr. Lyttle's declaration (para 7) it seems that he believed FORBES would be informed of the circumstances and would be ultimately responsible for instructing its Patent Attorneys to seek the extension of time. It eventuated that an extension of time was requested by the opponent's Patent Attorneys G.R. Cullen & Co., which request was subsequently granted, thus resulting in the time for lodging evidence being extended to 13 April, 1988.

The present extension request seeks to extend the time from 13 April to 13 July, 1988. Mr. Lyttle states in his declaration that he expected FORBES to instruct its Patent Attorneys to seek a further extension of time when the need for more time became evident - presumably he believed FORBES would take that action in the absence of receipt of evidence from him concerning the opposition by the new deadline of 13 April, 1988. However, Mr. Forbes states that he presumed that if the collection of evidence could not be finalised by the new deadline and if a further extension was needed, Mr. Lyttle would again advise FORBES' attorneys accordingly. Only after the deadline of 13 April, 1988 had passed did Mr. Forbes become aware that a further request for an extension of time had not been made. Thus, as the opponent's Patent Attorneys state in their submissions:

"a misunderstanding arose between Mark Forbes of the opponent and Mr. Lyttle as to who would instruct this firm to request the further extension of time before the deadline of 13th April, 1988, each party believing that the other would attend to the extension of time."

It seems to me that FORBES, being the opponent, ultimately carries the responsibility of prosecuting all actions concerning its opposition. The involvement of its agent Mr. Lyttle has, however, introduced a third party resulting in some communication difficulties between FORBES, its Attorneys and Mr. Lyttle. I am satisfied that a misunderstanding between Messrs. Forbes and Lyttle led to the failure of FORBES, or Lyttle on FORBES' behalf, instructing G.R. Cullen & Co. to request a further extension of time before the expiration of the period sought to be extended. In my opinion this misunderstanding falls within the class of circumstances designated in the regulation as "special circumstances".

Regulation 55

It remains to be decided whether RIGA'L has made out grounds justifying an extension. The present extension request, its third, is for a further three months to enlarge the nine months already made available to it. The circumstances and grounds for the extension have been stated earlier herein: I note that these are rather similar to those given when requesting the previous extension.

From the evidence, it is clear that the opponent, either itself or through its agent Mr. Lyttle, has identified a number of machines of similar type to the present invention and has been investigating their origin and dates of availability in Australia with a view to using those disclosures in their opposition. They are also aware of a granted US Patent concerning a machine similar to that of the present invention. It appears that this base material has been known to the opponent since at least January 1988 (when the previous extension was sought). Exactly what progress has been made by Mr. Lyttle, the opponent or its attorneys in seeking to confirm the dates of publication in Australia of the prior art documents and devices so far located is not entirely clear from the evidence. However, Mr. Lyttle specifically indicates that he has communicated with overseas manufacturers both by letter and telephone searching for details, and otherwise has "continued searching for evidence but to this stage without success".

Prior to seeking the present extension, the opponent has already had available to it a period of nine months in which to prepare and serve its evidence in this opposition. Given this time period and noting Mr. Lyttle's experience and expertise in the art concerning the invention, I am somewhat surprised that the "collection" of evidence has not yet been completed let alone put in an appropriate form for serving in the opposition. Furthermore there is no indication from the material before me when the opponent expects to serve its evidence in support. Thus, on the basis only of the evidence of Messrs. Forbes and Lyttle, and the attorney's submissions, I am not completely satisfied that the opponent has made out a proper case justifying the extension.

However in deciding whether the extension should be granted I need also to consider the interests of the parties and the public interest. In lodging notice of opposition and pursuing the collection of evidence the opponent no doubt is concerned that if a patent is granted on the application its business interests may be unjustly affected by a patent which may be of questionable validity. The opponent has identified some prior art, including a prior US patent, which it is still investigating for use as evidence in its opposition. Thus despite suggestions to the contrary in submissions lodged on behalf of the applicant, I am of the view that the opponent is serious in its opposition action. On the other hand, the applicant's interests are of course not being advanced due to the opposition process which is at the moment, preventing the application from proceeding to sealing. The public interest is essentially concerned with ensuring that invalid patents are not granted, and that proceedings are not unreasonably protracted.

Presently I am of the view that the aspect of the public interest concerning ensuring that invalid patents are not granted predominates, since I consider that there has not been significant protraction of the proceedings to this stage. The public interest would therefore be best served if the extension were granted. Accordingly I grant the extension of time sought.

Finally, I would add that my view of the balance between the public interest aspects may well change if the present proceedings become unnecessarily protracted, although of course further requests for extensions of time will be considered on their merits given the prevailing circumstances.

Conclusion

The time within which evidence in support may now be served has been extended to 13 July, 1988.

As the Scale of Costs in Opposition Proceedings makes no provision for costs in matters of this nature where parties do not attend a hearing, I therefore make no award of costs in this matter.

(T.R. BRUHN)

Supervising Examiner of Patents

7 JUL 1988

Patent Attorneys for the patent applicant: Grant Adams & Company

Patent Attorneys for the patent opponent : G.R. Cullen & Co.