Ronald David Conry v. Atlas Air Australia Pty Limited

[1990] APO 4

In the Matter of the Patents Act 1952

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In the Matter of Patent Application No. 589132 in the Name of RONALD DAVID CONRY

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In the Matter of Proposed Opposition thereto under Section 59 by ATLAS AIR AUSTRALIA PTY LIMITED

DECISION OF AN ASSISTANT COMMISSIONER OF PATENTS:
Background
         The Office advertised acceptance of 589132 in the Official Journal of 5 October 1989.  Consequently, 5 January 1990 became the last day upon which notice of opposition could be lodged under s.59, in the absence of grant of an extension of time.
         On that day, Luke Limited, a company located in Melbourne, lodged notice of opposition.  Five days later, on 10 January 1990 Atlas Air Australia Pty Limited lodged a document purporting to be a notice of opposition, accompanied by an application under s.160 for an extension of time.  No declaration (as required by r.47) accompanied the s.160 application.
         The applicant for the patent objected to the grant of any extension under s.160; consequently, the Office set the matter down to be heard.
         The hearing took place in Canberra on 9 March 1990.  Mr D. Carter, patent attorney, of Cowie Carter and Hendy appeared for the

applicant (Conry) and Mr C. Owens, patent attorney, of F.B. Rice & Co appeared for the prospective opponent (Atlas).
The S.160 Application
         On 31 January 1990, F.B. Rice & Co lodged a statutory declaration as required by r.47(2) to complete the s.160 application.  Evidence in support of the proposed opposition, together with a covering letter, accompanied the declaration.
         The form 11 comprising the s.160 application as lodged on 10 January merely specifies the time sought to be extended without setting out ‑ as provided for by the form ‑ the circumstances in which, and grounds upon which, the application was based.  There is also a statement on the form to the effect that a declaration setting out the grounds would follow in the near future.

The declaration makes it clear that the Conry application first came to the knowledge of Atlas on, or shortly after, 10 July 1987, as the result of a search report commissioned from F.B. Rice & Co by Mr Lewis Marton, of Atlas.  Atlas requested that a watch be kept on the application, and as a result, the watching service noted that acceptance took place on 1 August 1989 and was to be advertised in the Official Journal of 5 October 1989.  This latter date set the clock running for the purposes of s.59(1).  According to Mr Owens, he had diary entries made in the firm's electronic system "with reminders monthly and later fortnightly leading up to the opposition due date".  The electronic system has two components : the one used here was the Miscellaneous Reminder System, which allow the entry of variable reminder messages against a case.  Mr Owens reported verbally on the scope and effect of claim 1 as accepted to Mr Marton on 3 November.  He then went overseas and on his return after 21 November he had discussions with Mr Marton about the case.  At this time as Mr Marton   "felt that the accepted claims would restrict the future marketing plans of Atlas Air he instructed me to file an opposition in respect of this application."

Messrs Owens and Marton agreed to file the opposition close to the due date in order to maximise the time available for preparation of evidence.  Further, Mr Owens took steps to obtain the US File Wrapper of the US application corresponding to the Conry application.  Subsequently, possibly due to a misunderstanding by the person producing the reminder messages, it seems that the miscellaneous reminder report was not run for at least some part of the period from 18 to 27 December 1989, and in particular, a miscellaneous reminder report which was due 22 December and would have listed the Conry application was not produced.
         Mr Owens states that he recalls that:

"I queried the fact that a miscellaneous reminder report was not produced with data entry staff and requested that the missing report be produced but I have no further recollection of the matter and can only assume that the production of this report was overlooked."

On 2 January 1990 the US File Wrapper arrived in the offices of F.B. Rice & Co and was given to Mr Owens unaccompanied by the file for which it was intended.  As Mr Owens was unaware of the critical date because he had not received the December 22 reminder report, he did not follow this matter up at the time.
         On the day by which notice of opposition was due (i.e. 5 January 1990) Mr Owens noted a miscellaneous reminder report, including reference to the Conry application, in his in tray.  He has annexed a copy of that report to his declaration as Exhibit CO‑A.  Despite recalling that his secretary was looking for the Conry file in his office on that day, Mr Owens apparently had other tasks on his mind which he was eager to finish as a prelude to going on leave.  Thus the due date passed.  Mr Owens deposes about this that:

"I believe that when looking at the reminder earlier on the morning of 5 January I had simply not appreciated the due date on the reminder because in my mind I had already established that this case was not urgent."

Submissions
         Mr Carter's chief points can be summarised as follows:

(i)the s.160 application as per the form 11 is incomplete in that it does not set out any grounds or circumstances which caused the due date for opposition to be missed;

(ii)the s.160 application could not be said to be made until the declaration as required by r.47(2) was lodged, 3 weeks after the form 11 ‑ this delay appears to be undue;

(iii)in Kimberly‑Clark Ltd v Commissioner of Patents and Minnesota Mining and Manufacturing Company 13 IPR 569, Jenkinson J made it clear that a s.160 extension of time should be granted only upon a prompt, frank, comprehensive and clear disclosure of all the circumstances relevant to the discretionary consider‑

ions upon which grant or refusal depend; in the present case some matters do not appear to have come to light;

(iv)it appears from the discernible circumstances in the present case having regard to the decision of the AAT in Re Weir Pumps Ltd v Commissioner of Patents and Stork Pompen BV, 13 IPR 163, that s.160 is not applicable.

Mr Owens addressed each of the above points in order.  His responses may be summarised thus:

(i)firstly, substantial compliance with the forms of the First Schedule to the regulations is sufficient (see regulation 90); secondly, I should have regard to the comments of Kitto J in Kaiser Aluminum & Chemical Corporation v Reynolds Metal Co 1972 RPC 648 that:

"... it is in 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."

(ii)the 3 weeks delay was the result of the decision to prepare and lodge evidence in support at the same time as the r.47(2) declaration, to demonstrate that there was a serious opposition contemplated : unfortunately, a combination of circumstances ‑ not the least of which included having to use unreliable copying equipment ‑ caused a greater delay than was foreseen;

(iii)there were no relevant circumstances other than those set out in the declaration forming part of the s.160 application;

(iv)on this point reliance is placed on the comments of Jenkinson J. in the Kimberly‑Clark case (supra) to the effect that s.160 clearly applies where a decision to oppose has been made before the due date; further in Scaniainventor v Commissioner of Patents, 36 ALR 101, the Federal Court made it clear that s.160 is a

"remedial section and should be applied where it appears to be applicable unless there is some clear indication to the contrary."

Decision
         The relevant portion of s.160 reads as follows:

"(2)  Where, by reason of ‑

(a)an error or omission on the part of the person concerned or of his agent or attorney; or

(b)circumstances beyond the control of the person concerned,

an act or step in relation to an application for a patent or in proceedings under this Act (not being proceedings in a court) required to be done or taken within a certain time has not been so done or taken, the Commissioner may, upon application by the person concerned, but subject to this section, extend the time for doing the act or taking the step."

The applicant's point (i) as put by Mr Carter amounts to a concern that the requirement of the expression "upon application by the person concerned" appearing in s.160(2) has not been met by Atlas.  I agree entirely with Mr Owens' response to this point; and I would go further : in my view it is the substance and not the form of the application which is important, and as Mr Carter rightly submitted, the s.160 application was not complete until the lodgement of the statutory declaration.  Yet that declaration makes clear what are the grounds and circumstances upon which the application depends, that is, the very matters which Mr Carter said were missing from the application form.
         Consequently, this point is of no relevance in the present action.
         I will now consider the requirements of s.160, insofar as relevant here.  Broadly, I must consider three matters:

.is s.160 applicable to extend time where the due date for lodgement of notice of opposition has passed?

.if s.160 is applicable, have the Attorneys for Atlas made an error or omission which caused the failure to meet that due date?

.if there is such an error or omission, should I exercise my discretion favourably to Atlas or is there some hindrance which ought cause me to do otherwise?

In my view, the answer to the first point is an unqualified yes. However, I think it profitable to refer to three recent cases, each dealing with this point, before proceeding. In Re Weir Pumps Ltd v Commissioner of Patents and Stork Pompen BV, 13 IPR 163, the applicant (Stork) submitted to the AAT that the wording of s.160(2)(a) was such that there was no power to make an order in favour of a person who is not an applicant for a patent or a party to opposition proceedings. In his decision the Deputy President commented:

"... I am prepared to assume for the purposes of this application, that s.160 of the Act applies to give power to extend time, even in the case of "Code" sections with their own inbuilt time limits.

However, I prefer Mr Hinde's submission that regardless of the alleged independence of s.160 of the Act from other provisions thereof, s.160(2) is not sufficiently wide to enable a person who is not a party concerned as being an applicant for a patent, or a party concerned as being a party to existing proceedings under the Act (not being proceedings in a court), to apply for an extension of time."

It is my opinion that this particular submission is of no relevance having regard to two judgements of the Federal Court. In the first judgement, Danby Pty Ltd v Commissioner of Patents and Another, 12 IPR 151, the Court dismissed an application to review a decision of a Supervising Examiner of Patents allowing an extension of time under s.160 for late lodgement of notice of opposition. In doing so, Pincus J commented:

"... it appears to me that I should follow the trend of these authorities and hold that s.160(2) applies, at least where the possibility of applying under s.59 for further time to lodge notice of opposition is gone.  That is, s.160(2), in my opinion, allows the Commissioner to extend time, at least after the expiration of three months from insertion of the advertisement of acceptance referred to in s.59(1)."

The second judgement of the Federal Court (see Kimberly‑Clark Ltd v Commissioner of Patents and Minnesota Mining and Manufacturing Company 13 IPR 569) deals with a situation somewhat different from that in the Weir Pumps and Danby cases. Here, Kimberly‑Clark Ltd had applied to the Commissioner of Patents under s.59(1) for an extension of time in which to lodge notice of opposition. The applicant for the patent had objected to the granting of any such extension. Subsequently the delegate of the Commissioner heard the matter and refused the extension. By the time the matter was heard and decided, the due date for lodgement of notice of opposition had passed. Kimberly‑Clark then applied under s.160(2)(a) for an extension of time for the same purpose. The delegate again refused, and Kimberly‑Clark applied to the Federal Court for an order of review of this refusal. The Court refused the application, but held that the lodging of notice of opposition pursuant to s.59 was comprehended within the words "act or step in relation to an application for a patent".
         In his submissions, Mr Carter distinguished the two situations as exemplified by the Weir Pumps and Kimberly‑Clark cases.  Thus in the Weir Pumps case, he said, the situation was similar to that in the present case in that the due date had passed before any action* was taken by the potential opponent, whereas in the Kimberly‑Clark case, it was clear ‑ pursuant to its application under s.59(1) ‑ that Kimberly‑Clark was contemplating mounting ____________________________________________________________________

*In fact the AAT held that as the potential opponent had a deliberate policy not to maintain a watch on pending patent applications or their acceptance in the particular technology involved, its actions did not constitute an "error or omission" or "circumstances beyond the control" within s.160(2).

opposition proceedings well before the final date for lodgement of the notice.  I agree with Mr Carter's comments on the Weir Pumps and Kimberly‑Clark cases ‑ however I believe that the situation in the present action is akin to the latter case, and not the former.  My belief arises from the following points, which appear in the declaration:

.the Conry application came to the notice of Atlas well before the due date for lodgement of notice of opposition as a result of a search commissioned by Mr Lewis Marton, of Atlas;

.Mr Marton requested that a watch be kept on the Conry application;

.Mr Marton felt that the accepted claims of the Conry application would restrict the future marketing plans of Atlas, so he instructed Mr Owens to file notice of opposition.

Aside from Mr Owens' deposition, there is no evidence on these matters.  At the hearing, Mr Owens stated that his communication with Mr Marton in relation to this case had been mainly by telephone, and the instructions to oppose were made orally.  It is my considered view that in these circumstances Mr Owens should have supported his application for extension with a deposition from Mr Marton.  That he did not, amounts ‑ in his own words ‑ to simply another error in a sequence of errors made by himself.  Nevertheless, on the face of the evidence before me, I am satisfied that the attorneys for Atlas made errors or omissions which led to their failure to lodge notice of opposition by the due date.
I must now decide whether or not to exercise my discretionary powers favourably, to allow the extension. Mr Carter raised two matters which are relevant here. The first relates to the requirement set out in the Kimberly‑Clark case (supra) that extension of time under s.160 should be granted only upon a frank, comprehensive and clear disclosure of all the relevant circumstances; the second concerns undue delay. After considering the declaration in the light of Mr Owens' submissions at the hearing, I am satisfied that he has disclosed all the relevant circumstances, albeit, as I mentioned above, he should have filed a deposition made by Mr Marton. Passing to the second matter, I first make the point that there was delay by Mr Owens, as rightly pointed out by Mr Carter. However, I do not equate "delay" with "undue delay". To determine whether the delay was "undue", I must consider it in relation to the particular circumstances here. Thus the delay could be undue if it interfered with the reasonable right of Conry to obtain his patent with despatch, or if it resulted in the public being left in doubt for an unwarranted period of time as to the status of the application and its ultimate fate as a patent, if granted. Here, in my view neither of those points is relevant, as Luke Limited has already mounted opposition to the Conry application, which will delay issuance of any patent that might be granted, and the public is aware of this, pursuant to information published in the Official Journal. There is another way in which to consider whether delay is undue. This involves a consideration of the actual delay in relation to the time periods provided by the Act for the actions under consideration. S.59(1) provides for a period of 3 months from the date of advertisement of acceptance during which a person interested has an absolute right to lodge notice of opposition. The sub‑section also provides for a discretionary extension of that period for a further 3 months upon request being made within the first mentioned period. That is, there is a period of 6 months following advertisement of acceptance during which it is possible to mount opposition without recourse to s.160. Furthermore, I note that s.66 provides for an application to be sealed normally within 6 months of advertisement of acceptance. In the context, "normally" means in the absence of opposition and without recourse to extension under the terms of the section itself or s.160. In the present instance the notice of opposition itself was lodged only 5 days outside the period provided for in s.59(1) as of right ‑ the application for extension being completed some 3 weeks later. Having regard to these time limits I fail to see that there has been any undue delay. Furthermore, I feel confirmed in this view when I consider this aspect of the matter in the light of the fact that Luke Limited has already mounted opposition, so that the Conry application is not presently eligible for sealing. There is one final matter which the Courts have considered in actions of this class, that is, the question of "serious opposition". (See for example Vangedal‑Nielsen v Commissioner of Patents and Gelphen Nominees 33 ALR 144.) I think the very fact that Atlas lodged material with the s.160 application which is to comprise at least part of the evidence in support of the proposed opposition indicates that its proposal is serious. Even if I did not grant the extension, a delegate of the Commissioner would be required to consider that material on the basis of whether or not it would invalidate the patent, if granted. This being the case, it is in the public interest that Atlas be allowed to complete their evidence, and that both parties be allowed to argue the matter in due course at a hearing.
         Thus I am in no doubt whatever that it is right and proper for me to exercise my discretionary powers favourably to Atlas.
Conclusion
         I have found that the Attorneys for Atlas made errors or omissions which resulted in their failure to lodge notice of opposition by the due date, and that there are no reasons why I should otherwise not allow the extension.  Consequently, I allow the s.160 extension, and validate the notice of opposition lodged on 10 January by Atlas.  Because Atlas cannot be aware of this until I issue this decision, I determine that the time for lodging evidence in support pursuant to r.55 is to commence on the date of this decision.
         Finally, I shall consider the matter of costs.  Normally, costs follow the event.  However I refer back to my earlier comments that Mr Owens should have provided evidence from Mr Marton of Atlas ‑ a matter which he conceded at the hearing.  Had he done so, the full circumstances leading to the requirement for the s.160 application would have been rather clearer to the applicant, and it is likely that the applicant would not have objected to the extension.

         Consequently, I award costs of this action in favour of Conry.

(J.L. ROVETA)

Patent attorneys for the applicant: Cowie Carter & Hendy, Melbourne 
Patent attorneys for the