Shane Andrew Watson v. Bristol-myers Company

[1985] APO 12

In the Matter of the Patents Act 1952 - and - In the Matter of Patent Application 42190/78 in the Name of SHANE ANDREW WATSON - and - In the Matter of an Application for Extension of Time under Section 160 - and - In the Matter of an Opposition thereto by BRISTOL-MYERS COMPANY.

 

DECISION OF A SUPERVISING EXAMINER OF PATENTS:

Background

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 42 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 prophylaxis against human cancer".

Following examination of the application and complete specification a first (adverse) examiner's report issued on 2 July, 1981. The time for acceptance of the application was extended under sub-section 54(lB) 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 . The application has not yet been accepted. On 23 December, 1983 the then attorneys for Dr. Watson lodged an application, under sub-section 160(2), for a two month extension of the time for acceptance to 23 February, 1984. On the same date Dr. Watson lodged an application for "an extension of the period of acceptance of three months from 30 December, 1983 to 30 March, 1984". On 23 March, 1984 Dr. Watson lodged a substitute application under sub-section 160(2) for "an extension of the period of acceptance of a further three months from 23 March, 1984, that is from 23 December, 1983 to 23 March, 1984 and from 23 March, 1984 to 23 June, 1984". On 17 April this Office advised Dr. Watson that your request for a second period extension of time to the 23 June, 1984 has to be considered with your first period extension to 23 March, 1984. In these circumstances, it is necessary to advertise the application under Section 160 for opposition purposes. The application will be advertised in the Official Journal of Patents, Trade Marks and Designs dated 3 May, 1984". The application for extension of time was duly advertised, and was opposed by the Bristol-Myers Company ("Bristol Myers") on 1 June, 1984. This opposition to the application for extension of time was the subject of a hearing in Melbourne on 8 March, 1985 when the applicant appeared in person and the opponent was represented by Mr. M.J. Royal, Patent Attorney, of Phillips, Ormonde & Fitzpatrick, Melbourne.

Locus Standi of the Opponent

It is necessary for an opponent to an application for extension of time to show locus standi: in this case the evidence lodged by Bristol-Myers in support of the opposition shows that Dr. Watson brought an action against them in the High Court on 31 March, 1983 for infringement of the then pending patent application. I find therefore that Bristol-Myers has sufficient interest in the fate of this patent application to give it that locus.

The Section 160 Application

Although the application for extension of time lodged by Dr. Watson on 23 March, 1984 does not refer to paragraph 160(2)(b) of the Patents Act, it is implicitly based on the ground of "circumstances beyond the control of the person concerned" set out in that paragraph. The application is on Form 11 and includes a statement sworn before a Commissioner for taking Declarations and Affidavits under the (Victorian) Evidence Act 1958. This statement establishes that Dr. Watson sustained injury to his neck and head (so-called "whip-lash type" injury) on 22 June, 1982 when his car was struck in the rear by another car driven at high speed. Dr. Watson states that "My own effects appeared gradually afterwards including aura of visual aberrations and migraine type headache, which unfortunately requires time and special measures for:

(a) avoidance of onset, and

(b) time-consuming treatment measures when it does appear."

Dr. Watson's statement and the other material put in evidence by the parties' show that:

1. On 25 August, 1982, Dr. Watson took out a High Court writ against Mr. Derek Volker in his capacity of Chairman of the Repatriation Commission and Secretary of the Department of Veterans' Affairs.

2. At some time in late 1982 Dr. Watson was both de-registered as a medical practitioner in Victoria and was defending an action in the Supreme Court of Victoria for possession of the premises occupied by his medical practice.

3. On 31 March, 1983 Dr. Watson took out a High Court writ against Sydney Drazien in his capacity as Chairman of the Board of Bristol-Myers Company Pty. Ltd. and against John Daly in his capacity as Chairman of the Board of the Cancer Institute of Victoria.

4. At all material times Dr. Watson has been preoccupied with the promoting of his method for prophylaxis against human cancer.

The Opponent's Submissions

When he is considering an application for extension of time under paragraph 160(2)(b) the Commissioner must first determine whether circumstances beyond the control of the person concerned have resulted in failure to meet a time limit. If there were circumstances beyond the control of the person concerned, the Commissioner has a discretion to grant an extension of time. In deciding whether or not to exercise that discretion the Commissioner must take into account all material considerations. At the hearing, Mr. Royal submitted that there were 5 grounds on which the application for extension of time should be refused. Those 5 grounds are as follows:

1. The extension of time from 2 April, 1983 to 23 December, 1983 granted by the Commissioner under sub-section 160(1) was invalid, with the consequence that the application lapsed on 2 April, 1983; an extension of time under sub-section 160(2) from 23 December, 1983 to 23 March, 1983 would not revive the application, and the latter extension should be refused.

2. The Form 11 request for extension of time is ineffective in that it fails to specify the provision of the Act under which the extension of time is sought and in that it is ambiguous in respect of dates.

3. None of the documents lodged by the applicant in support of the application for extension of time is a statutory declaration.

4. The extension sought is insufficient to achieve its purpose of providing sufficient time to obtain acceptance as the period has already expired, and therefore the Commissioner's discretion should be exercised against the grant of such extension.

5. The evidence lodged in support of the application for extension of time does not establish "circumstances beyond the control of the person concerned" as required by sub- section 160(2).

It is convenient to first consider whether Dr. Watson has established "circumstances beyond the control of the person concerned". I think it an accurate summary of the material which has been lodged to state that Dr. Watson was so preoccupied with other matters that, either deliberately or inadvertently, he neglected to actively prosecute his patent application. Dr. Watson's affairs were such that he was unable to give sufficient attention to every matter he had pending. It could be said - and Mr. Royal made this point - that Dr. Watson was free to abandon some or all of those other matters in order to give full attention to his patent application; but in answer it could also be said that circumstances which forced him to abandon such matters would be circumstances beyond his control. Mr. Royal referred me to the decision of the then Assistant Commissioner in the Matter of a Patent Application by Masoncraft (New Zealand) Limited (1968) 38 AOJP 345. In that case declarations by a New Zealand patent attorney established that he "was overloaded with work over a continuous and prolonged period, so much so, that the efficient working of his office was considerably impeded. He declared that he was unable to bear in mind all the work that required his attention or to cope with the physical volume of such work in its entirety. He further declared that he was subject to constant interruptions from day-today matters which were forced upon his attention". The New Zealand patent attorney was accordingly unable to issue instructions to his Australian associate regarding prosecution of the patent application. The Assistant Commissioner concluded that "The evidence establishes that Mr. Berry had too much work to do. Because Mr. Berry had too much work to do he did not give instructions in the present case before the due date for acceptance. This, in my view, is not an error or omission within the meaning of section 160(2)(a)". As the present application is based on the ground of "circumstances beyond the control of the person concerned" under paragraph 160(2)(b) and not "error or omission" under paragraph 160(2)(a), I find the cited case of no assistance.

Mr. Royal also submitted that if the facts of the present case established "circumstances beyond the control" of Dr. Watson, then those circumstances were of a permanent nature and not of a temporary or transient nature. Thus, he continued, section 160 was available to extend time only where the "circumstances beyond control" were of a temporary nature; and if the "circumstances beyond control" were of a permanent, physical nature (as are the injuries sustained by Dr. Watson in his accident) then the proper remedy is under section 165. That section is as follows:

"165. If a person is, by reason of infancy, lunacy or other disability, incapable of making a declaration, or doing anything required or permitted by this Act, the guardian or committee of the incapable person, or if there is no such guardian or committee, a person appointed by a court, or a Justice or Judge of a court, of the Commonwealth or of a State or Territory of the Commonwealth possessing jurisdiction in respect of the property of incapable persons upon the petition of a person on behalf of the incapable person or of some other person interested in the making of the declaration or the doing of the thing, may make the declaration (or a declaration as nearly corresponding to the declaration as the circumstances permit) and may do that thing, in the name and on behalf of the incapable person, and all acts so done are, for the purposes of this Act, as effectual as if they had been done by the incapable person and that person had not been incapable at the time of the making of the declaration or the doing of the thing."

Mr. Royal in effect argued that a person who was suffering from a long-term physical injury was "a person ... (who) ... by reason of ... other disability ... (was) ... incapable of ... doing anything required or permitted by this Act I do not agree with the interpretation Mr. Royal seeks to put on the expression "other disability" in section 165. In my opinion "other disability" must be read ejusdem generis with the words "infancy, lunacy".Infancy and lunacy are two categories of "legal disability", whereby the law denies various powers to persons subject to the legal disability. The expression "other disability" in section 165 must accordingly be read as limited to other legal disabilities. (For example, "Infants" and "lunatics" suffer a legal disability in that they cannot generally enter into contracts or alienate property). Even if section 165 had been available to persons suffering from physical disability it would not follow that section 160 was not available to such persons. The result would be that both sections would be available in an appropriate case. "Section 160 is a remedial section and should be applied where it appears to be applicable unless there is some clear indication to the contrary". (Scaniainventor v. Commissioner of Patents (1981) 36 ALR 101 at 105). If persons suffering a physical disability may take advantage of section 165 to delegate the conduct of their affairs to another, I cannot find in the legislation "a clear indication" that those persons should be denied the option of proceeding under section 160.

I must now consider Mr. Royal's third submission, that none of the documents lodged by the applicant in support of the application for extension of time is a statutory declaration. The effect of sub-regulation 47(2) is that a person making an application for an extension of time under sub-section 160(2) shall furnish with the application a declaration setting out the grounds upon which the application is made. Mr. Royal submitted that sub-regulation 47(2) required a declaration to be made under the Statutory Declarations Act 1959, that the documents submitted by Dr. Watson did not refer to that Act, and so those documents could not be considered by me in deciding whether to grant an extension of time. I do not agree with the submission. Section 7 of the Statutory Declarations Act is in the following terms:

"7. Where in a law of the Commonwealth or of a Territory (whether passed or made before or after the commencement of this Act) a reference is made to a statutory declaration, the reference includes a reference to a statutory declaration made by virtue of this Act, unless the contrary intention appears in that law."

Sub-regulation 47(2) makes a reference to "a declaration", not to "a statutory declaration". The sub-regulation accordingly does not make the reference necessary under section 7 of the Statutory Declarations Act to bring the latter Act into operation. Consequently, Regulation 75 is relevant.

I am of the opinion that the documents lodged by Dr. Watson on 23 March, 1984 and on 26 November, 1984 are in substantial compliance with the requirements of regulation 75. I am also of the opinion that the document lodged by Dr. Watson on 23 March, 1984 can be treated as an effective Form 11 application for extension of time, even though it incorporates a declaration.Sub-regulation 47(1) requires an application for extension of time to be in Form 11, sub-regulation 47(2) provides that "The person making the application shall furnish with the application a declaration setting out the grounds upon which the application is made". It is not a requirement of these regulations that the Form 11 and the declaration be in separate documents. Although the Form 11 application for extension of time can be criticised in that the period for which extension is sought could be more clearly specified, there is no defect in that form which could render it ineffective. The form departs from the requirements of Form 11 only in that:

1. it fails to specify whether the extension sought is of the period of acceptance or of some other time, and

2. it does not identify an address as the address for service.

However, the document must be taken in the context firstly that the application for extension of time was in respect of a patent application which was outside the period of acceptance and secondly that Dr. Watson was acting on his own behalf. Taken in this context the document adequately specifies that the extension of time sought is of the period for acceptance and that Dr. Watson's residential address (which is in the Form) is the address for service.

Mr. Royal also submitted that the application for extension of time is ambiguous in respect of dates. That document requests an extension "of a further three months from 23 March, 1984, that is from 23 December, 1983 to 23 March, 1984 and from 23 March, 1984 to 23 June, 1984". I think it perfectly clear from this that Dr. Watson is seeking a total extension of time of 6 months, that is a "further" extension of time of 3 months in addition to the 3 months extension requested in his application of 23 December, 1983.

The above findings dispose of the preliminary submissions made by Mr. Royal, in that I have determined that Dr. Watson's application for extension of time is effective, that it is supported by "declarations" and that section 160 is available to extend time where the "circumstances beyond control" include physical disability. I must now consider whether the evidence lodged establishes that failure to obtain acceptance is the result of "circumstances beyond the control" of Dr. Watson.

The examiner's first report on the application issued on 2 July, 1981, and the time for acceptance under sub-section 54(lB) expired on 2 April, 1983.Dr. Watson was injured in the motor vehicle accident on 22 June, 1982. He instituted High Court actions on 25 August, 1982 and 31 March, 1983. Late in 1982 he was involved in a Supreme Court action and in deregistration proceedings - matters affecting his reputation and his profession. In other words, Dr. Watson was injured just before expiration of the initial 12 month period for acceptance and during the ensuing 9 months was involved in 3 superior court actions and in one administrative proceeding. At all material times he was also preoccupied with promotion of his anti-cancer treatment and suffering the debilitating effects of a motor vehicle accident. In my view all these matters caused a physical condition and state of mind such that Dr. Watson was unable to take the steps required within the allowed time to gain acceptance of his application and consequently in my opinion this establishes that the failure to gain that acceptance was by reason of circumstances beyond his control. Accordingly I must now consider whether the Commissioner's discretion should be exercised in favour of the grant of an extension of time.

Mr. Royal submitted that there were two grounds justifying a refusal of the extension of time. The first of these was that the previous extension under sub-section 160(1) was invalid, so the extension under sub-section 160(2) should be refused as it would be ineffective to revive the application. The second of these was that the application for extension currently under consideration would, if granted, be insufficient to gain acceptance and so the application should be refused.

A consideration of the first of these submissions would necessitate a reconsideration of the merits of the grant of the sub-section 160(1) extension of time. That I cannot do, the extension of time under sub-section 160(1) must stand unless and until it is quashed by a court or tribunal having jurisdiction to do so. (R. v. Smith, Ex Parte Mole Enginering Pty. Ltd. (1981) 35 ALR 119). Nor should an extension of time be refused solely because that extension would be insufficient to gain acceptance. Refusal of the application currently under consideration on the ground suggested would amount to a prejudging of any further application for extension of time that Dr. Watson may make, would amount to a decision now that there are absolutely no grounds on which further applications for extension of time could be successful. As there is no evidence before me of the state of Dr. Watson's affairs since 23 June, 1984 I could not come to any conclusion as to the possibility of the grant or refusal of extensions of time for the period after that date, even if it was proper to do so. Accordingly, I could not refuse to grant an extension of time to 23 June, 1984 on the basis that that extension was insufficient to gain acceptance.

However, Dr. Watson's initial application for an extension of time under sub-section 160(2) was lodged on 23 December, 1983, the day on which the sub-section 160(1) extension of time expired. The time since that date has been occupied by the consideration of that application and by consideration of and opposition to the substitute application for extension of time lodged on 23 March, 1984. During the time that these applications for extension of time have been pending it would have been impossible for Dr. Watson to obtain acceptance of the "patent application".

As that application had lapsed and its fate would not be known until the opposition was determined this situation comes into the category of circumstances beyond the control" of the applicant.

The Act does not provide a remedy for this situation as it does in some analagous situations; for example, where an appeal has been instituted in respect of an application, sub-section 54(2) provides that the time within which the application and complete specification may be accepted is extended until the expiration of 3 months after the determination or other disposal of the appeal, or until the expiration of such further time as the court, to which the appeal was brought, allows. Obviously, it would not be just in the present instance to allow the purpose of Dr. Watson's original application to be circumvented by a circumstance which would constitute a de facto win of this opposition by the Bristol-Myers Company.

Consequently, in allowing this extension, I have to consider the purpose of the original application by Dr. Watson; therefore I allow the extension applied for, and I allow a further extension under sub-section 160(2)(b) as part of that extension up to a time expiring three months from the date of this decision.

I award costs in favour of the applicant for the extension of time. As Dr. Watson appeared on his own behalf those costs must be limited to his out-of-pocket expenses for defending the opposition.

J.L. Roveta

Supervising Examiner of Patents

13 JUN 1985