Ronald Neville Langford - David Gerard Clark
[2009] APO 5
•16 March 2009
ABSTRACTS OF DECISIONS
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Patent: No. 755035 in the name of Ronald Neville Langford
Title: Method of Locating Web-Pages by Utilising Visual Images
Action: Request under Regulation 5.5(1) by Ronald Neville Langford for dismissal of an opposition by David Gerard Clark to an application for extension of time under Section 223
Decision: Issued 16 March 2009.
Abstract
The applicant sought dismissal of the opposition to his application for extension of time to pay a renewal fee on a patent. An assessment of the three grounds of opposition and the accompanying particulars did not provide a basis to conclude that the opponent has no reasonable prospects of success in the opposition that he has filed. The applicant was unsuccessful in this instance. Regarding the particulars raised against the three grounds of opposition, it was found that particulars were defective for two grounds of opposition. The opponent was directed to provide further and better particulars in relation to grounds 1 and 2.
The opponent has been successful in that the opposition has not been dismissed. However particularisation of two of three grounds raised was found to be defective wherein further and better particulars are being sought. Accordingly no award of costs was made and each party directed to bear their own costs in this matter.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent No. 755035 by Ronald Neville Langford and a Request under Regulation 5.5(1) by Ronald Neville Langford for dismissal of an opposition by David Gerard Clark to an application for extension of time under Section 223
BACKGROUND
Patent application 755035 was filed under the provisions of the PCT on 3 October 2001 by Goldspirit Investments Pty Ltd. The application was advertised accepted on 28 November 2002. Ownership of the application was transferred to Ronald Neville Langford (henceforth Langford) on 23 December 2002. The application was subsequently sealed as a patent on 13 March 2003. The patent was advertised as ceased/expired on 5 June 2008.
Langford by a letter dated 30 May 2008 filed an application for extension of time (under section 223(2) of the Act) for the purpose of payment of the outstanding 6th year renewal fee beyond the 6 months grace period fee in respect of Patent No 755035. The application for extension of time was advertised in the Official Journal on 24 July 2008.
On 25 August 2008, David Gerard Clark (henceforth Clark) filed a Notice of opposition to the application for extension of time. A statement of grounds and particulars in support of the opposition was subsequently filed on 25 November 2008.
On 8 December 2008, Langford filed a request to dismiss the opposition under regulation 5.5 of the Patents Regulations 1991.
The hearing to deal with the dismissal was held in Canberra on 17 February 2009. Langford filed written submissions via his patent attorney, Davies Collison Cave, Sydney, prior to the hearing but chose not to appear at the hearing. The opponent Mr David Clark, patent attorney, of Blake Dawson, Sydney appeared at the hearing (via telephone) accompanied by Joe Mok, trainee patent attorney, of Blake Dawson, Sydney. Mr Clark provided written submissions prior to the hearing.
The law on dismissal of an opposition
As the following opposition relates to an application for extension of time to pay a renewal fee I shall refer to the relevant portions of the Regulations. Regulation 5.1 states:
This Chapter applies if a notice of opposition has been filed for the purposes of:
(a) the following provisions of the Act:…(v) subsection 223 (6) (extensions of time); or…
Reg 5.3. Filing of opposition (except under section 101M of the Act) states:
…(5) A person who intends to oppose the grant of an application for an extension of time under subsection 223 (6) of the Act must file a notice of opposition in the approved form within 1 month of the advertisement of the application in the Official Journal.
Dismissal of an opposition is provided for by regulation 5.5 of the Patents Regulations as follows:
5.5 (1) An applicant may:
(a) within 1 month of being served with a copy of a statement by an opponent under paragraph 5.4(a); or
(b) if the complete specification in relation to an opposed application is re-examined under subsection 97(1) of the Act -- within 1 month from the day when the re-examination is completed under regulation 9.5;
request the Commissioner in the approved form to dismiss the opposition.
(2) As soon as practicable after a request is made, the Commissioner must inform the opponent of the request having been made.
(3) The Commissioner may dismiss the opposition whether or not the applicant has requested dismissal of the opposition.
Clark served the statement of grounds and particulars in support of his opposition on 25 November 2008. The request for dismissal was made by Langford on 8 December 2008, this being within one month of being served with a copy of a statement by Clark. The Commissioner informed Clark of the request on 19 December 2008. Consequently the procedural prerequisites for dismissal have been satisfied.
The request for dismissal of the opposition
Langford provided reasons in support of his request for dismissal which I have summarised below:
Grounds 1 and 2
The opponent has failed to support these grounds with a sufficient statement of particulars relevant to these grounds. The statement of particulars provided is a mere restatement of the requirements of s 223(2)(a) and s 223(2)(b).
Ground 3
The opponent has failed to support ground 3 of the opposition with a sufficient statement of particulars relevant to that ground. The statement of particulars provided is a mere restatement of the requirements of sections of the Patents Act 1990 and Reg 22.11(3) of the Patents Regulations 1991. The request for extension of time was clearly and explicitly made under s 223(2).
SUBMISSIONS
Both parties provided me with written submissions prior to the hearing. I shall make reference to those submissions wherever relevant in my decision.
DECISION
Clark sought to distinguish L’Air Liquide v The Commonwealth Industrial Gases Ltd (1991) 24 IPR 77 from the present case. He submitted that in the L’Air Liquide case the decision was in relation to dismissal of an opposition to the grant of a patent wherein the opponent has the onus to prove the invalidity of the patent, such as by the submission of prior art; wherein this onus on the opponent follows from the fact that there is a “presumption of validity” of a patent for an invention.
Clark contended that:-
“To request restoration of a patent by requesting an extension of time within which to pay a renewal fee, there is no presumption that the extension of time is to be granted. The patentee has the onus to provide proof or facts that the extension of time is due to an error or omission as prescribed.
In an opposition to a restoration request, the opponent cannot possibly uncover any further facts, other than those provided by the patentee, as to whether there is or is not an error or omission as prescribed……The opponent would have to rely on the facts provided by the patentee, and prepare the statement of particulars based on these provided facts.
…the two types of opposition discussed above are fundamentally different in that the party bearing the onus of proof is different. This leads to different standards required for a sufficient statement of particulars for these two types of opposition.
….L’Air Liquide should be distinguished from the present case.”
Clark refers to different standards required for a sufficient statement of particulars without indicating what the different standards are that should apply. The teaching of the Court regarding dismissal of an opposition has been set out in Stack v Commissioner of Patents [1999] FCA 148, where the Federal Court approved the use of the approach laid down in General Steel Industries Inc v Commissioner for Railways (NSW) (1964) 112 CLR 125 at 129:
"[T]he plaintiff ought not to be denied access to the customary tribunal which deals with actions of the kind he brings, unless his lack of a cause of action - if that be the ground on which the court is invited, as in this case, to exercise its powers of summary dismissal - is clearly demonstrated. The test to be applied has been variously expressed; 'so obviously untenable that it cannot possibly succeed'; 'manifestly groundless'; 'so manifestly faulty that it does not admit of argument'; 'discloses a case which the Court is satisfied cannot succeed'; 'under no possibility can there be a good cause of action'; 'be manifest that to allow them' (the pleadings) 'to stand would involve useless expense'."
It follows that an opposition to the extension of time to pay a renewal fee can be dismissed if it is clear that the opposition cannot succeed. Recently this has been altered to the “no reasonable prospect of success” test as set out in Les Laboratoires Servier v Apotex Pty Ltd [2008] APO 11(infra). It is the established practice of the Commissioner that an opposition can be dismissed either in whole or in part (see L'Air Liquide, Societe Anonyme pour l'Etude et l'Exploitation des Procedes Georges Claude v Commonwealth Industrial Gases Ltd (1991) 24 IPR 77).
The question of when an opposition cannot succeed is determined by considering the statement of grounds and particulars, which briefly outlines and circumscribes the case for the opponent. This was considered in Mobay Corporation v The Dow Chemical Company (1992) 24 IPR 379, which teaches that, “The statement identifies the material facts necessary for the particular grounds of opposition. Where the statement of grounds and particulars does not disclose an arguable ground of opposition, then it may be appropriate to dismiss the opposition”. I do not see why there is a requirement to distinguish L’Air Liquide as the issue at hand is an assessment of the statement of grounds and particulars with a view to determining if the opposition action can be dismissed.
The present matter may also raise the issue of the relationship between dismissal and further and better particulars. As was pointed out in Mobay v Dow, supra at 394, where a material fact is specified but with insufficient detail, that may be remedied with further and better particulars. However, when a material fact is not specified at all, then it is appropriate to dismiss the ground.
Changes to section 31A of the Federal court of Australia Act have initiated changes in the approach used by delegates of the Commissioner of Patents to the issue of dismissal (see Les Laboratoires Servier v Apotex Pty Ltd [2008] APO 11). This was recently reinforced in Plant Research International B.V. v William John Pickering [2008] APO 29. The delegate in the Plant Research decision provided the background and basis on which a Federal Tribunal should adopt the changes set out for the Federal Court. In particular that delegate found:
“The relevant change to section 31A of the Federal Court of Australia Act was introduced in 2005 by the Migration Litigation Reform Act. The Second Reading speech (Commonwealth, Parliamentary Debates, House of Representatives, 10 March 2005, 2 - 4 at 3 (Philip Ruddock, Attorney-General)) relevantly states:
“The bill also strengthens the power of the courts to deal with unmeritorious matters, by broadening the grounds on which federal courts can summarily dispose of unsustainable cases. It is appropriate that this provision is of general application. It will be a useful addition to the court’s powers in dealing with any unsustainable case.”
It appears that the change to the summary disposal rules was apparently in a context far broader than just migration cases. The Explanatory Memorandum, Migration Litigation Reform Bill 2005 (Cth) states:
“23. Section 31A will allow the Court greater flexibility in giving summary judgement and will therefore be a useful addition to the Court’s powers in dealing with unmeritorious proceedings.
25. An identical amendment is inserted into the Judiciary Act 1903 (item 9, Schedule 1) and the Federal Magistrates Act 1999 (item 8, Schedule 1) to provide a uniform approach to summary judgment in the High Court, Federal Court and FMC.”
As noted in the Servier decision, a similar approach is also applied in England and Queensland. It seems clear that Parliament has decided that the approach to summary judgment in all federal courts should be the same, and that the same approach applies to all matters (not just to migration cases).
The Stack case was explicit in approving the adoption of court practices when considering dismissal. The practice of all federal courts has been altered by Parliament, and it would be strange indeed if Parliament intended that a different approach should apply in federal tribunals. I consider that it is undeniable that the Commissioner should follow the clear shift that applies in all federal courts, and apply the practice in section 31A of the Federal Court of Australia Act.
The effect of section 31A is that the previous test of whether an opposition is obviously or manifestly groundless or untenable has been relaxed slightly, and instead the question is whether there is no reasonable prospect of success (see the cases cited in the Servier decision)”.
I will be applying this approach in the present case
Ground 1
Ground 1 states, “Section 223(2)(a) cannot be relied upon by the applicant for the extension of time within which to pay a renewal fee”. Clark’s particulars for ground 1 said, “There is no or insufficient evidence to suggest that there was an error or omission by the person concerned or by his or her agent or attorney, such that a relevant act that was required to be done within a certain time was not, or could not be, done within that time”.
I have to determine if the particularisation provided is “a mere restatement of sections and a regulation of the Patents 1990 and Patents Regulations 1991” as submitted by Langford or if a material fact has been specified as asserted by Clark.
Clark drew attention to the Patent Office Manual 3.11.2.3 (Requirements for the Statement of Particulars) which defines that;
“A material fact is a fact which is necessary for the purpose of formulating a complete ground of opposition. The opponent is not required to state the legal effect of the facts on which they rely; they are only required to state the facts themselves.”
Clark’s Ground 1 stated, “Section 223(2)(a) cannot be relied upon by the applicant for the extension of time within which to pay a renewal fee”. In support of this ground the particularisation referred to the non-existence of or insufficiency of evidence to suggest that there was an error or omission by the relevant party such that a relevant act could not be done within a certain time. Section 223(2)(a) states:
“Where, because of an error or omission by the person concerned or by his or her agent or attorney; a relevant act that is required to be done within a certain time is not, or cannot be, done within that time, the Commissioner may, on application made by the person concerned in accordance with the regulations, extend the time for doing the act.
The particularisation provided is more than just a restatement of the ground of opposition as it identifies specifically the matter of “non-existence or insufficiency of evidence provided”. There is no statement by Clark to the effect that there was no error or omission by Langford or by his agent which justified the request for an extension of time. Thus I cannot conclude that Clark’s particulars are a mere restatement of the requirements of s 223(2)(a). I now have to determine if the particulars are such that Langford is fully aware of the case it has to answer. Clark has asserted the non-existence or insufficiency of evidence but no details have been provided as to the basis for this conclusion. Thus all Langford has been told is that the evidence filed by him is non-existent or insufficient but no details or specifics have been provided as a basis for this statement. Without this detail, Langford will not be able to fully prepare his case as he unaware of the precise nature and extent of the defect that is asserted against him. In this case I find that Clark needs to provide further and better particulars.
Ground 2
Ground 2 states, “Section 223(2)(b) cannot be relied upon by the applicant for the extension of time within which to pay a renewal fee”. In support of this ground the particularisation states, “There is no or insufficient evidence to suggest that there were circumstances beyond the control of the person concerned, such that a relevant act that was required to be done within a certain time was not, or could not be, done within that time”. Section 223(2)(b) states:
“Where, because of circumstances beyond the control of the person concerned; a relevant act that is required to be done within a certain time is not, or cannot be, done within that time, the Commissioner may, on application made by the person concerned in accordance with the regulations, extend the time for doing the act.”
The particular in this instance specifies a defect of “no or insufficient evidence”. There is no statement to the effect that there were no circumstances beyond the control of Langford which justified the request for an extension of time. Thus I cannot conclude that Clark’s particulars are a mere restatement of the requirements of s 223(2)(b). I now have to determine if the particulars are such that Langford is fully aware of the case he has to answer. Clark has asserted the non-existence or insufficiency of evidence but no details have been provided as to the basis for this conclusion. Thus all Langford has been told is that the evidence is non-existent or insufficient but no details or specifics have been provided as a basis for this statement. Without this Langford will not be able to fully prepare his case as he is unaware of the precise nature and extent of the defect that is asserted against him. In this case I find that Clark needs to provide further and better particulars.
Ground 3
Ground 3 states, “Regulation 22.11(3) cannot be relied upon by the applicant for the extension of time within which to pay a renewal fee”. The particulars in support of the ground states:
“The applicant relied upon Regulation 22.11(3) which regulates what a prescribed relevant act is and what the prescribed circumstances are for the purposes of sections 223(4) and 223(9)(b).
Section 223(4) merely sets out that the Commissioner must advertise in the Official Journal an application made for an extension of time under specific circumstances. This provision does not provide for any basis on which an extension of time may be applied.
Section 223(9)(b) merely sets out the effects of section 223(4) where an extension is granted. The extension has not yet been granted and section 223(9)(b) therefore cannot operate.”
Langford in the application for extension of time had stated:
“The circumstances in which, and the grounds upon which, this application is made are as follows:
Section 223(2) and Regulation 22.11(3) are relied upon, and the circumstances are given in a Statutory Declaration that will follow.”
Thus Clark has questioned the reliance placed on Regulation 22.11(3) and therefore I consider that he has clearly specified a ground of opposition.
Langford countered that:
“The opponent has failed to support ground 3 of the opposition with a sufficient statement of particulars relevant to that ground. The statement of particulars provided is a mere restatement of the requirements of sections of the Patents Act 1990 and reg. 22.11(3) of the Patents Regulations 1991. Alleged ground 3 cannot succeed based on the particulars outlined by the opponent.
…The opponent has not provided any factual material in the particulars to support alleged ground 3 of the opposition. The request for extension of time was clearly and explicitly made under s223(2).”
Clark’s ground 3 has clearly stated that Langford cannot rely on Reg 22.11(3) to apply for an extension of time. He is not challenging the reliance placed on s223(2) by Langford when seeking an extension of time. The particulars provide details challenging the relevance of Reg 22.11(3) when seeking an extension of time and detail what Clark considers to be relevant portions of the Act and Regulations in support of his ground of opposition. I do not find the particulars to be a mere restatement of the ground of opposition. I do not consider that any further and better particulars are required in this instance nor is there any justification to dismiss this ground of opposition.
CONCLUSION
Following Langford’s request for dismissal I determined that Grounds 1 and 2 should not be dismissed but found that their particularisation was deficient. For Ground 3 I determined that the particularisation was sufficient and that dismissal of the ground was not justified. I cannot conclude in this case that Clark has no reasonable prospects of success in the opposition that he has filed. Thus Langford has been unsuccessful in his request for dismissal.
At the hearing Clark requested a direction regarding the deadline for filing evidence in support of an opposition to the extension of time sought by Langford. I had stated at the hearing that the matter of timelines for filing evidence in support would be addressed in my decision on the dismissal. As the deadline for filing of evidence was 25 February 2009, I directed that the date for filing of evidence in support of the opposition be extended to the date when the decision issues on the dismissal of the opposition. I had further stated that on such date I would, either:
(a) Issue a further direction regarding a suitable deadline for filing of evidence in support in respect of either all grounds (if they are not dismissed) or only those grounds which are not dismissed. I may also seek further and better particulars if I find that any of the particulars are inadequate; or
(b) Dismiss the opposition in its entirety wherein the filing of evidence in support of the opposition would therefore not be required.Regarding the above matters of further and better particulars and timeline for filing evidence in support of the opposition, I direct that :
- Further and better particulars be provided in relation to Ground 1 which details how the material provided by the applicant (a) fails to provide evidence or (b) provides insufficient evidence to suggest that there was “an error or omission by the person concerned or by his or her agent or attorney, such that a relevant act that was required to be done within a certain time was not, or could not be, done within that time”.
- Further and better particulars be provided in relation to Ground 2 which details how the material provided by the applicant (a) fails to provide evidence or (b) provides insufficient evidence to suggest that there were “circumstances beyond the control of the person concerned, such that a relevant act that was required to be done within a certain time was not, or could not be, done within that time”.
- I allow Clark 21 days from the date of this decision, subject to any appeal, to provide further and better particulars in relation to grounds 1 and 2. These further and better particulars can be provided by amending the statement under regulation 5.9 by filing a new statement incorporating the amendments, a copy of which is to be served on Langford. If a satisfactory response is not provided within this time, I will direct that the relevant particulars are not to be available to be relied upon at the substantive opposition.
- Since I have not dismissed the opposition, I direct that the time limit for serving evidence in support of the opposition expires 3 months from the date of this decision.
COSTS
Langford in his written submissions made no statement regarding costs. Clark submitted that costs should follow the event.
The power of the Commissioner to award costs is based on section 210 and regulation 22.8. Clark has been successful in that the opposition has not been dismissed. However I found that particularisation of two of three grounds raised was defective wherein further and better particulars are being sought. Accordingly I make no award of costs and direct that each party bear their own costs in this matter.
Jacob Elijah
Delegate of the Commissioner of Patents16 March 2009
Patent attorneys for the applicant : Davies Collison Cave, Sydney
Patent attorneys for the opponent : Blake Dawson, Sydney
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