SHANE ANDREW WATSON

[1986] APO 47

In the Matter of the Patents Act 1952

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In the Matter of Patent Application 42190/78 in the Name of SHANE ANDREW WATSON

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In the Matter of an Application for Extension of time under Section 160.

STATEMENT OF THE REASONS FOR A DECISION OF A SUPERVISING EXAMINER OF PATENTS:
          Patent application 31301/77 in the name of Dr. Shane Watson was lodged on 7 December, 1977, accompanied by a complete specification.  Following a request under section 52 that the complete specification be treated as a provisional specification, a further complete specification was lodged on 30 November, 1978, at which time the present application number was allotted to the application.  The claims of that complete specification are directed to "a method for prophyloxis against human cancer".
         Following examination a first (adverse) examiner's report issued on 2 July, 1981.  The time for acceptance of the application was extended under sub‑
section 54(1B) to 2 April, 1983 ‑ the maximum extension allowable under that sub‑section.  On 15 December, 1983 the time for acceptance was extended under sub‑section 160(1) to 23 December, 1983.  On a later (opposed) application under sub‑section 160(2), the time for acceptance was extended to 15 September, 1985; and following further extensions of time under section 160 the date for acceptance is now 18 January, 1986.  A fifth (adverse) report issued on 30 September, 1985.  That report maintained 2 objections.  The first of these was to the effect that the claims included admitted prior art.  The second of these was to the effect that the claims as proposed to be amended included "matter

not in substance disclosed in the specification as lodged".  Dr. Watson has not yet lodged any response to that report.
         On 8 January, 1986 Dr. Watson lodged an application under sub‑section 160(2) for a further one month extension of time from "15 January, 1986"; and I will treat that application as being for a one month extension from 18 January, 1986.  I accept, from the material lodged by Dr. Watson, that he wishes to lodge evidence in rebuttal of the "not in substance disclosed" objection.  I also accept that Dr. Watson is suffering continuing medical conditions which severely impair his ability to work; and that the recent Christmas and New Year holidays have to some extent impeded his access to reference material held in university and public libraries and to research workers.  I accordingly accept that circumstances beyond Dr. Watson's control will prevent him obtaining acceptance of the application by 18 January, 1986.  Dr. Watson has accordingly established the pre‑condition to the exercise of the Commissioner's discretion‑
ary powers under sub‑section 160(2).
         The Commissioner does, however, have a true discretionary power under that sub‑section, and extension of time should not and cannot automatically be granted once "circumstances beyond control" have been established.  In deciding how to exercise the discretionary power to extend time the Commissioner must take all relevant considerations, and no others, into account.  (Michigan Technological University v. Deputy Commissioner of Patents (1982) 40 ALR 577 and Lehtovaara v. Commissioner of Patents (1981‑82) 39 ALR 103). I am of the opinion that one relevant consideration is the public interest in the expeditious finalisation of administrative proceedings. The time normally allowed for acceptance of a patent application is 21 months; the applicant in this case has already been allowed extensions of that time totalling 2 years 9 months. It is a matter of public record that this application has already been the subject of an infringement action in the High Court, and the continuing uncertainty as to whether or not the application will be accepted must be to the detriment of the defendant in that action. Another relevant consideration is the continuing nature of Dr. Watson's medical conditions, it may well be that if the requested extension of time is granted then his medical conditions will again prevent him obtaining acceptance by 18 February, 1986.
         However the present application for extension of time is not based solely on Dr. Watson's medical condition, it is based in part on his expressed wish to locate material to be used in rebuttal of a "not in substance disclosed" objection.  On balance I am of the opinion that the extension of time should be granted, although if the application was based on medical grounds only I would refuse it.  I cannot pre‑judge any further applications for extension of time, although I think it would be extremely difficult to obtain any further extension unless Dr. Watson proved both that he had a substantial prospect of rebutting the outstanding objections and that he had made substantial progress in doing so.  I extend the time for acceptance to 18 February, 1986.

(A.J. EVANS)