Smith and Commissioner of Patents
[2012] AATA 60
•3 February 2012
[2012] AATA 60
Division GENERAL ADMINISTRATIVE DIVISION File Number
2011/3872
Re
DAMIEN PAUL SMITH
APPLICANT
And
COMMISSIONER OF PATENTS
RESPONDENT
ORDER
Tribunal Deputy President S D Hotop
Date 3 February 2012 Place Perth Application for extension of time for lodging application for review refused.
..........[sgd]........
S D Hotop
Deputy President
CATCHWORDS
PRACTICE AND PROCEDURE – application for extension of time to lodge application for review – application for review lodged almost seven months after expiration of prescribed time – applicant did not give satisfactory explanation for delay – applicant rested on rights – apparent lack of merit of applicant’s application for review – Tribunal not satisfied that reasonable in all the circumstances to grant extension of time – application for extension of time refused
LEGISLATION
Administrative Appeals Tribunal Act 1975 (Cth), s 29
CASES
Comcare v A’Hearn (1993) 45 FCR 441
Hunter Valley Developments Pty Ltd v Cohen (1984) 3 FCR 344
Re Johnson and Commonwealth of Australia [1990] AATA 1
REASONS FOR ORDER
Deputy President S D Hotop
3 February 2012
INTRODUCTION
On 12 September 2011 Damien Paul Smith (“the applicant”) applied to the Tribunal for an extension of time until 10 October 2011 for lodging an application for review of a decision of a delegate of the Commissioner of Patents (“the respondent”) dated 24 January 2011. On 13 September 2011, however, the applicant lodged with the Tribunal an application for review of that decision, together with a request for a stay order relating to that decision.
An interlocutory hearing was held before the Tribunal on 3 October 2011 at which each of the parties provided documents and made preliminary oral submissions. At a subsequent directions hearing on 10 November 2011 the Tribunal made directions to the parties for the filing and serving of written submissions in respect of the applicant’s application for an extension of time.
At a further directions hearing on 16 January 2012, by which date all of the abovementioned written submissions had been filed and served, the parties requested that the Tribunal determine the applicant’s application for an extension of time “on the papers” without holding a resumed interlocutory hearing.
RELEVANT BACKGROUND
The following relevant background facts appear from documents lodged with the Tribunal by the parties and are not in dispute.
On 24 January 2011 a delegate of the respondent made the following decision under the Patents Act 1990 (Cth):
“ DECISION
The inventive concept of application 2007221850 was invented by Mr Smith while he was still employed by Austal Ships Pty Ltd, and while he was still bound by an implied contract of employment giving Austal Ships Pty Ltd entitlement to the invention.
Austal Ships Pty Ltd has entitlement to the inventive concept disclosed in application 2007221850.
I declare under section 36(1) that Austal Ships Pty Ltd is the eligible person in respect to all patentable matter common to patent application 2007221850 and drawing D01286-018. Drawing D01286-018 is Annexure NAA 7 to the statutory declaration dated 14 May 2010 by Neville Anthony Armstrong in the evidence of these proceedings. Mr Smith remains the eligible person in respect of the residual matter disclosed in patent application 2007221850.
The effect of the above declaration is to give Austal Ships Pty Ltd the right to file a separate application under section 29 of the Patents Act, for the patentable matter for which it is the eligible person, within three months of the declaration.
Furthermore, I direct under section 32 of the Patents Act that if after three months Austal Ships Pty Ltd has chosen not to avail itself of the right to file a separate application, then application 2007221850 is to proceed jointly in the names of Austal Ships Pty Ltd and Damien Smith.
Given that decisions under section 32 are reviewable by the Administrative Appeals Tribunal (AAT), I state that this direction will not come into effect until the time period for seeking review before the AAT has expired and no application for review of this decision has been made.
I note that decisions under section 36 are appellable to the Federal Court under section 36(5). The effect of any appeal under section 36(5) would be to stay any action that Austal Ships Pty Ltd might take under section 36(4) until the appeal is determined.
Costs according to Schedule 8 are awarded against Damien Smith.”
That decision was accompanied by a statement of “REASONS FOR DECISION” comprising paras 1–48.
A letter, dated 24 January 2011, from an officer of IP Australia to Watermark Patent and Trade Marks Attorneys (“Watermark”) (who were then representing the applicant) states as follows:
“ …
Re: Patent Application No 2007221850
in the name of Damien Smith
and
Notices under Section 32 & Section 36 by Austal Ships Pty LtdDear Madam/Sir
Please find attached a copy of a Decision of a Delegate of the Commissioner of Patents.
With reference to the Section 32 matter only, I advise you that, subject to the Administrative Tribunal (sic) Act 1975, application may be made to the Tribunal for review of this decision. Please note Section 224 of the Patent (sic) Act 1990, and regulation 22.26, which set out the matters over which the Tribunal has jurisdiction.
…”
A letter, dated 15 February 2011, from the respondent to Watermark states as follows:
“ …
RE: Patent Application number 2007221850
In the name(s) of Damien SmithDIRECTION TO REQUEST EXAMINATION
Dear Madam/Sir
Under the provisions of Section 44(2) of the Patents Act 1990, I direct the above named applicant to request examination of the above patent application and complete specification relating to that application.
I have issued this direction on the grounds specified in Regulation 3.16(1)(a) & (b) in that I consider it expedient to do so due to the progress made in the examination of applications filed before the filing date of this application and/or it is in the public interest. Please note that examination must be requested within 6 months from the date of this direction and within 5 years from the filing date of the complete application or the application will lapse under the provisions of Section 142(2)(a) of the Patents Act 1990.
…”
A letter, dated 5 September 2011, from IP Australia to Watermark states as follows:
“ …
RE: Patent Application number 2007221850
In the name(s) of Austal Ships Pty Ltd and Damien SmithDear Madam/Sir
The above patent application has lapsed because of failure to request examination as directed in the Direction to request examination dated 15 February 2011.
Should you wish to reinstate this application you may, depending upon the circumstances, apply under Section 223 of the Patents Act 1990 for an extension of time within which to request examination.
…”
In the meantime, by letter dated 16 March 2011, Kevin Restrick of IP Australia wrote to the applicant as follows:
“ …
Examination Requested by: Damien Paul Smith
Examiner’s first report of Innovation Patent No 2010100448 by Damien Paul Smith
…
Dear Sir,
I have examined your Innovation Patent and I believe there are lawful grounds for revocation of the patent. Before discussing the objections against your innovation patent I need to draw your attention to the entitlement issues with regard to your patent.
As you will know innovation patent AU 2010100448 is a divisional application with standard complete application AU 2007221850 as its parent. Patent application 2007221850 has been the subject of a Section 32 and Section 36 hearing decision (Austal Ships Pty Ltd v Damien Smith [2011] APO 04) whereby the Delegate of the Commissioner found that you are not the eligible person entitled to the application in your own right. The effect of this decision is that you are also not the eligible person entitled to divisional application AU 2010100448.
During examination of a standard complete application I am able to raise an objection based upon entitlement; however entitlement is not a grounds (sic) of examination for innovation patents and so I am unable to raise such an objection with regards to this patent. While entitlement is not a ground of objection to an innovation patent, you should be aware that it is a ground of opposition or revocation by a court once the innovation patent has been certified, ie once the following objections, and any subsequent objections, have been overcome. Consequently it is a serious matter, and you should consider obtaining professional advice to ensure you make decisions that protect your interests. Please also note that you cannot rectify entitlement by amending the patent request after grant (see regulation 10.3(9); however sections 33–35 may be relevant).
Notwithstanding the above I am required to examine your innovation patent, and I believe there are lawful grounds for revocation of the patent. These grounds of revocation are:
1.The specification does not comply with Section 40(4) because the claims do not relate to one invention only. I have found different inventions based on the following features that distinguish the claims from each other:
·Claims 1 – 3 are directed to a cross deck structure made up of a plurality of decking members including an upper deck, a lower deck, a forward edge, a rearward edge, and a hollow structural beam portion having a sloped forward face.
·Claim 4 is directed to a multi-hull vessel incorporating the cross deck structure of claim 1.
·Claim 5 is directed to an extruded decking member including an upper deck, a lower deck, a forward edge, a rearward edge, and a hollow structural beam portion having a sloped forward face.
Unity of invention is only fulfilled when there is at least one ‘special technical feature’ present in the claims. This is a feature that both:
·provides a technical relationship among all the claims; and
·makes a contribution over the prior art.
In the above group of claims, the identified distinguishing features may have the potential to make a contribution over the prior art but are not common to all the claims and therefore cannot provide the required technical relationship. The only feature common to all of the claims and which provides a technical relationship among them is that of a decking member as defined by claim 5. However this feature does not make a contribution over the prior art because it is disclosed in each of D1, D2, and D3 as discussed in objection 3.
Therefore in the light of this document there is no common special technical feature present in the claims and the requirements for unity of invention are consequently not satisfied a posteriori.
2.Claim 2 is not clear because I cannot find an antecedent to the ‘hollow stiffener’ when the claim is appended to claim 1, and neither is it clear whether this is an obvious error and that you had intended to make reference to ‘hollow structural beam portion’ as defined in claim 1.
3.The invention defined in claims 1, 2, 3, and 5 is not novel (and does not involve an innovative step) when compared with the following prior art documents:
D1:US 3172508 A (DOERING et al) 9 March 1965
D2:US 5819491 A (DAVIS) 13 October 1998
D3:US 6637163 B2 (THIBAULT et al) 28 October 2003
Copies of these citations have been included for your convenience.
D1 discloses (column 2 line 19 – column 3 line 27, and figure 2) a cross deck structure comprising a plurality of elongate decking members (30) manufactured from aluminium and welded together (19) to form an integral deck structure. Each elongate decking member includes an upper surface, a lower surface, a forward edge (33) for connection to the rearward edge (22) of an adjacent decking member, and a hollow section having a forward face (52) sloped at an angle to the deck surface that from inspection of figure 2 is between 40 and 50 degrees. The lowermost section of the hollow portion has been construed as the intersection of the three webs (52) and the lower surface , and which from inspection of figure 2 has thickness greater than that of the upper surface.
Whilst D1 does not disclose the cross deck structure applied to a marine vessel, the structure does posses (sic) all the features being claimed in claim 1 and furthermore the deck structure of D1 is considered suitable for use as a deck structure that extends in part or across the transverse beam of one or more buoyant hulls of a vessel. Therefore D1 discloses all the essential features of claims 1, 2, 3 and 5 and therefore these claims are not novel.
D2 discloses (column 2 line 64 – column 4 line 27, and figures 2, 3, and 13) a further example of a cross deck structure. The deck structure is made up a (sic) plurality of extruded decking members (20) having a hollow structural beam portion with a sloped forward face (23) at 70 degrees to the deck. Adjacent decking members are connected to one another (43, 44) to form an integral deck structure. As D2 discloses all the essential features of claims 1 and 5, and is suitable for use in connecting together hulls of multi-hull vessel (sic) these claims are considered not novel.
D3 discloses (column 2 line 39 – column 4 line 69, and figures 4 and 8) a further example of a cross deck structure. The deck structure is made up a (sic) plurality of extruded decking members (12) having a hollow structural beam portion with a forward face (30) sloped at an angle to the deck surface that from inspection of figure 4 is between 40 and 50 degrees. Adjacent decking members are connected to one another and can be fastened together (figure 8) to form an integral deck structure. As D3 discloses all the essential features of claims 1, 2 and 5, and is suitable for use in connecting together hulls of multi-hull vessel (sic) these claims are considered not novel.
Further to the above citations my search of the prior art has found the following document that you may find relevant as it discloses all the features of claims 1 – 5, except for the angled forward face of the hollow portion:
D4: US 2006/0021561 A1 (BOGARD et al) 2 February 2006
Please consider whether you wish to proceed with your innovation patent recognising that once it has been certified it will immediately be at risk of being revoked. Should you wish to proceed with your Innovation Patent then you have 6 months from the date of this report to remove all grounds of revocation otherwise your Innovation Patent will cease.
To overcome the objections that I have raised above you may amend your specification. To do this you will need to file an itemised statement of the changes that you would like to make to the text of the specification. To help you I have enclosed a copy of the guide ‘Responding to a Patent Examination Report’. This tells you more about the examination process and how to amend your patent application.
…”
By letter dated 18 August 2011 the applicant wrote to the respondent as follows:
“ …
Re: Innovation Patent No 2010100448
Sir/Madam
I refer to the examiners first report of 10th (sic) of March 2011, and I seek leave to amend my innovation patent under section 104 according to the statement of proposed amendments attached.
Entitlement
With respect to the examiners comments regarding entitlement, it is my opinion that section 33 (4) is relevant in this matter. The effect of this section of the Patents Act is that an opposition under section 101M is required in order for the Commissioner of Patents to grant this innovation patent jointly. Referring to the details of the decision of the Delegate of the Commissioner, the conclusions of which states;
‘ Thus Austal Ships Pty Ltd is the eligible person in respect to all patentable matter common to patent application 2007221850 and drawing D01286-018. Drawing D01286-018 is Annexure NAA 7 to the statutory declaration dated 14 May 2010 by Neville Anthony Armstrong in the evidence of these proceedings. Mr Smith remains the eligible person in respect of the residual matter disclosed in patent application 2007221850.’
In light of the examiner’s report, which included for information prior art identified in D4: US2006/0021561 A1, it would seem that the inventive concept as claimed by Austal Ships Pty Ltd: and affirmed by the delegate in his decision, being;
‘the inventive concept of the invention disclosed in the application is the cross deck structure of a multihull vessel comprising transverse orientated adjacent decking members being integrally joined together to form the cross-deck structure’,
is disclosed in the aforementioned prior art, and therefore in the public domain and hence not patentable. It is my opinion that any patentable material in Innovation Patent No 2010100448, is the ‘residual matter’ identified by the Delegate of Commissioner Patents (sic) in the conclusion to his decision, to which I remain the eligible person.
As such it is my opinion that there is a reasonable basis for concluding the (sic) innovation patent 2010100448, with the proposed amendments, should remain in the name of Damien Smith.
In the absence of a successful opposition under section 101M, I believe there are no grounds for revocation of the innovation patent on the basis of entitlement.
Proposed Amendments to Innovation Patent Number 2010100448
·I have deleted claims 4 and 5 and rewritten claims 1, 2 and 3 so that these claims correspond with the original claim 4.
·Claim 1 is rewritten for clarity, to expressly show that the elongate members are intended to be orientated transversely.
·Claim 1 is rewritten for clarity, to show the forward face of the hollow structural beam portion is intended to be exposed.
·Claim 2 is rewritten to correct the error identified by the examiner, with the words ‘hollow stiffener’ replaced by ‘hollow structural beam portion’.
With respect to the grounds for revocation identified in the report,
I submit the proposed amendments resolve the first ground identified relating to the unity of invention. Specifically the multi-hull vessel incorporating a cross deck structure of the original claim 4, is now included in the revised claim 1, as a result special technical features of the invention, are included in the revised claims 1, 2 and 3.
I submit that, with respect to the second ground identified, claim 2 is now clear due to the correction of the error with respect to the use of the words ‘the hollow stiffener’ rather than ‘hollow structural beam portion’.
I submit that, with respect to the third ground identified, the invention as defined by the rewritten claims is novel when compared to the prior art. I note this ground applied only to the original claims 1, 2, 3 and 5 and that claim 4 was found to be novel. As the claims have now been rewritten to correspond with the original claim 4 and claim 5 has been deleted, this ground may now be overcome.
…”
On 12 September 2011 the applicant applied to the Tribunal for an extension of time until 10 October 2011 for lodging an application for review of the abovementioned decision of a delegate of the respondent, dated 24 January 2011. In the application form the applicant stated his reasons for applying for that extension of time as follows:
“ I seek an extension of time for lodging application for review of decision because of further and fresh evidence that has come to light since expiration of the time limit specifically:
1.Fresh evidence by way of examiners reports number 1 and 2 on divisional Innovation Patent No 2010100448.
2.Further evidence by way of a verbal statement made to me by an employee representing Austal Ships Pty Ltd indicating that relevant material explicitly sought prior to the hearing may not have been provided. It is probable this material would have affected the outcome of the hearing if it had been available.
In addition it is my opinion that this decision interprets the law with respect to employee inventions in Australia in a manner contrary to the Patents Act 1990 and the general law and is in error. It is therefore in the public interest for the matter to be heard.
In addition it is my opinion that as a result of this decision, and other factors surrounding this matter, that (sic) further litigation is probable. It is therefore in the public interest to expeditiously correct the original errors of fact and law in this decision.”
The applicant in fact lodged with the Tribunal an application for review of the delegate’s decision the next day, 13 September 2011. In the application form he stated his reasons for that application as follows:
“ I seek review of this decision because it contains errors of fact and law specifically: The hearing officer, accepting a submission made by counsel for Austal Ships Pty Ltd, has ruled that only prior art recited in the specification may be used to determine the bounds of the inventive concept. I respectfully submit this ruling is in error because it fails to give effect to Section 15(1)b (sic) of the Patents Act 1990. This section permits grant of a patent to a person who ‘would on the grant of a patent for the invention, be entitled to have the patent assigned to the person’. For a patent to be granted, it must be patentable under Section 18 of the Act including, be novel with respect to the prior art as defined by Section 7 of the Act. I respectfully submit that any prior art can be used to define what the invention is not, irrespective of whether it is recited in the application (sic), because prior art, from whatever source, will irrevocably define the bounds of the invention on the grant of a patent under the Patents Act 1990.
It is my opinion that further and fresh evidence available would show the prior art includes examples of the inventive concept as found by the hearing officer. I respectfully submit the hearing officer has made an error of fact, because any definition of an ‘inventive concept’ which describes prior art will not meet the requirements of the Act with respect to patentability, and therefore not be able to define any invention on grant of patent, and hence cannot be the basis for entitlement to grant of patent under section 15(1)b (sic) of the Act.
I respectfully submit that if the decision were free from error, the inventive concept describing patent application 2007221850 could only be defined in terms that exclude any work undertaken by myself in the course of employment at Austal Ships Pty Ltd including, material shown in drawing D01286-018, and as a result Austal Ships Pty Ltd would not be a person entitled to grant a (sic) patent with respect to patent application 2007221850.” (original emphasis)
RELEVANT LEGISLATION
Patents Act 1990 (Cth)
The Patents Act 1990 (Cth) relevantly provides:
“ …
15 Who may be granted a patent?
(1) Subject to this Act, a patent for an invention may only be granted to a person who:
(a)is the inventor; or
(b)would, on the grant of a patent for the invention, be entitled to have the patent assigned to the person; or
(c)derives title to the invention from the inventor or a person mentioned in paragraph (b); or
(d)is the legal representative of a deceased person mentioned in paragraph (a), (b) or (c).
(2)A patent may be granted to a person whether or not he or she is an Australian citizen.
…
29Application for patent
(1)A person may apply for a patent for an invention by filing, in accordance with the regulations, a patent request and such other documents as are prescribed.
(2)An application may be a provisional application or a complete application.
(3)A patent request in relation to a provisional application must be in the approved form and accompanied by a provisional specification.
(4)A patent request in relation to a complete application must be in the approved form and accompanied by a complete specification.
(5)In this section:
person includes a body of persons, whether incorporated or not.
…
32Disputes between applicants etc
If a dispute arises between any 2 or more interested parties in relation to a patent application whether, or in what manner, the application should proceed, the Commissioner may, on a request made in accordance with the regulations by any of those parties, make any determinations the Commissioner thinks fit for enabling the application to proceed in the name of one or more of the parties alone, or for regulating the manner in which it is to proceed, or both, as the case requires.
…
36 Other applications by eligible persons
(1) If:
(a)a patent application has been made and, in the case of a complete application, the patent request and complete specification have not been accepted; and
(b)an application for a declaration by the Commissioner is made by one or more persons (the section 36 applicants ) in accordance with the regulations; and
(c)the Commissioner is satisfied, in relation to an invention disclosed in the specification filed in relation to the application for the patent:
(i)that the nominated person is not an eligible person, but that the section 36 applicants are eligible persons; or
(ii) that the nominated person is an eligible person, but that the section 36 applicants are also eligible persons;
the Commissioner may declare in writing that the persons who the Commissioner is satisfied are eligible persons are eligible persons in relation to the invention as so disclosed.
(2)The Commissioner may make a declaration under subsection (1) whether or not the patent application lapses or is withdrawn.
…
(5)An appeal lies to the Federal Court against a decision by the Commissioner under this section
…
44Request for examination
(1)Where a complete application for a standard patent has been made, the applicant may, within the prescribed period and in accordance with the regulations, ask for an examination of the patent request and specification relating to the application.
(2)Where a complete application has been made for a standard patent, the Commissioner may, on one or more of the prescribed grounds and in accordance with the regulations, direct the applicant to ask, within the prescribed period, for an examination of the patent request and complete specification relating to the application.
…
142Lapsing of applications
(1)A provisional application for a patent lapses at the end of the period prescribed for the purpose of section 38 or, if that period is extended, at the end of the period as so extended.
(2)A complete application for a standard patent lapses if:
(a) the applicant does not ask for an examination of the patent request and complete specification within the relevant period prescribed for the purposes of subsection 44(1), (2) or (3), as the case requires; or
…
224Review of decisions
(1)Application may be made to the Administrative Appeals Tribunal for review of:
(a) a decision of the Commissioner under section 10, 17, 32, 33, 52 or 66, subsection 74(3) or 103(2), section 113, subsection 137(3), paragraph 142(2)(b), subsection 150(2), 151(2), 152(2) or 152(3), or section 173, 215 or 223; or
…
Schedule 1 — Dictionary
In this Act, unless the contrary intention appears:
…
eligible person, in relation to an invention, means a person to whom a patent for the invention may be granted under section 15.
…
Federal Court means the Federal Court of Australia.
…
interested party, in relation to a patent application, means the applicant or a joint applicant, or a person who claims to be entitled to the grant of a patent on the application, either alone or jointly with another person.
…”
Administrative Appeals Tribunal Act 1975 (Cth)
Section 29 of the Administrative Appeals Tribunal Act 1975 (Cth) (“AAT Act”) deals with the manner of applying to the Tribunal for a review of a decision. Paragraph (d) of s 29(1) provides that, in a case where “the terms of the decision were recorded in writing and set out in a document that was given to the applicant”, an application to the Tribunal for a review of that decision ”shall be lodged with the Tribunal within the prescribed time”.
Section 29(2) of the AAT Act relevantly provides:
“ … the prescribed time for the purposes of paragraph (1)(d) is the period commencing on the day on which the decision is made and ending on the twenty-eighth day after:
(a)if the decision sets out the findings on material questions of fact and the reasons for the decision – the day on which a document setting out the terms of the decision is given to the applicant;”.
The Tribunal’s power to extend the time for the making of an application for review is conferred by subss (7) and (8) of s 29 of the AAT Act as follows:
“(7) The Tribunal may, upon application in writing by a person, extend the time for the making by that person of an application to the Tribunal for a review of a decision (including a decision made before the commencement of this section) if the Tribunal is satisfied that it is reasonable in all the circumstances to do so.
(8)The time for making an application to the Tribunal for a review of a decision may be extended under subsection (7) although that time has expired.”
CONSIDERATION
The applicant filed written submissions, in support of his application for an extension of time, on 3 October 2011, 30 November 2011 and 12 January 2012. The respondent filed written submissions, in opposition to the applicant’s application for an extension of time, on 22 December 2011. The Tribunal has carefully considered those submissions for the purpose of determining this application.
Section 29(7) of the AAT Act confers on the Tribunal a broad discretionary power to grant an extension of time for the making of an application for a review of a decision if it is “satisfied that it is reasonable in all the circumstances to do so”.
As noted by the Tribunal (Deputy President R K Todd) in Re Johnson and Commonwealth of Australia [1990] AATA 1, it has been customary for the Tribunal, in determining applications for an extension of time for making an application for review, to be guided by the principles enunciated by the Federal Court of Australia (Wilcox J) in Hunter Valley Developments Pty Ltd v Cohen (1984) 3 FCR 344 at 348–350. Those general principles were summarised in Re Johnson (at para 19) as follows:
“(i) It is a prima facie rule that proceedings commenced outside the prescribed period will not be entertained. An extension of time will, however, be granted if it is proper to do so.
(ii)Consideration is to be given to the action taken by the applicant. Did he or she ‘rest on his or her rights’ so as to lead the decision maker to believe that the matter was concluded, or did he or she continue to make the decision maker aware that the decision was being contested?
(iii)Consideration should be given to whether any prejudice to the respondent would be caused by the grant of an extension.
(iv)There being no real prejudice to the respondent, consideration must be given to whether there will nevertheless be a wider prejudice to the public in terms of disruption to established practices …
(v)Consideration of the merits of the substantial application should be made to see if these indicate that an extension of time should be granted.
(vi)Finally, consideration should be given to whether it is fair as between the applicant and other persons in a like position to grant the extension of time.”
In his application for an extension of time the applicant indicated that he received the relevant decision of the delegate of the respondent on 24 January 2011. That being the case, pursuant to s 29(2)(a) of the AAT Act, the prescribed period, within which the applicant was required by s 29(1)(d) of the AAT Act to lodge his application for review of the delegate’s decision, expired on 21 February 2011. Thus, the applicant’s application for review, which he lodged with the Tribunal on 13 September 2011, was lodged about six months and 23 days after the expiration of the relevant prescribed period.
Although, as held by the Full Federal Court in Comcare v A’Hearn (1993) 45 FCR 441, the giving of an acceptable explanation for delay in lodging an application for review is not an essential pre-condition of the favourable exercise of the discretion to grant an extension of time for the lodging of such an application, the Full Court said (at 444) that “it is to be expected that such an explanation will normally be given, as a relevant matter to be considered”.
The applicant’s explanation for the delay in lodging the application for review
The applicant’s explanation (as set out in his application for an extension of time and in his written submissions) for his failure to lodge the relevant application for review within the prescribed period of 28 days from 24 January 2011 and his delay until 13 September 2011 in lodging that application may be summarised as follows:
·he initially accepted the delegate’s decision of 24 January 2011, having regard to the “poor drafting” of the specification claims in Patent Application 2007221850 and the facts and circumstances of which he was then aware;
·after the expiration of the prescribed period he became aware of “further and fresh evidence” in relation to “prior art” which, had it been placed before the delegate, would probably have resulted in a different decision by the delegate;
·that “further and fresh evidence” comprises:
- the Examiner’s first report on Innovation Patent No 2010100448, dated 16 March 2011, and, in particular, the following statement in that report:
“ … my search of the prior art has found the following document that you may find relevant as it discloses all the features of claims 1 – 5, except for the angled forward face of the hollow portion …” (see paragraph 9 above);
-a statement made to him by a (named) employee of Austal Ships Pty Ltd in a telephone conversation subsequent to the delegate’s decision of 24 January 2011 as follows:
“ I don’t know if you’re aware, but we thought all the features of your patent except for the sloping forward face were used in the Solent class catamaran”;
·having regard to that “further and fresh evidence”, he formed the opinion that:
-“ Austal Ships Pty Ltd was in possession of material that would indicate the invention as defined by Austal Ships, was part of the prior art, and as such Austal Ships Pty Ltd claim to entitlement to grant of patent, is falsely made”; and
-“ Austal Ships Pty Ltd expressly withheld this material which had been requested”;
·it was not until mid-August 2011 when he “revisited” the Examiner’s first report dated 16 March 2011 “in order to make a decision regarding the future” of Innovation Patent No 2010100448 that “the implications of the aforementioned evidence became apparent” and he “realised that evidence existed showing that, as a result of prior art material, no common patentable material existed between patent application 2007221850 and drawing D01286-018, irrespective of the manner in which the claims were drafted”;
·he has “limited resources” and there is “complexity associated with this comparatively unexplored area of the law”.
The applicant also submitted:
“ It is my position that until I was advised in a telephone conversation with Mr Kevin Restrick of IP Australia in September 2011 that following amendments submitted pursuant to section 104 of the Patents Act 1990, that (sic) all lawful grounds for revocation of Innovation Patent AU210100448 (sic) had been removed, was I unable with reasonable certainty to determine if valid grounds for a successful appeal existed, and that this is the principal cause of the delay in seeking a request (sic) for review of the Decision.”
Although the Tribunal accepts the applicant’s explanation for his failure to lodge an application for review of the delegate’s decision within the prescribed period of 28 days from 24 January 2011 – namely, that, as then advised, he did not believe that there were meritorious grounds for seeking a review of that decision – the Tribunal is of the opinion that the applicant has not satisfactorily explained his delay, until 13 September 2011, in lodging such application for review. His explanation for that delay essentially relates to “further and fresh evidence” of which he became aware after the expiration of the prescribed period, namely:
·the Examiner’s first report on Innovation Patent No 2010100448, dated 16 March 2011; and
·a “subsequent” telephone conversation between him and an employee (whom he named) of Austal Ships Pty Ltd in which the employee made a statement which led him to form the opinion that, prior to the hearing before the delegate, Austal Ships Pty Ltd was in possession of, and withheld, material relating to “prior art” which effectively deprived Austal Ships Pty Ltd of any entitlement in respect of Patent Application 2007221850.
The Tribunal notes, however, that the applicant has not:
·indicated the date on which the abovementioned asserted telephone conversation occurred;
·provided any corroborating material in relation to that asserted telephone conversation; or
·satisfactorily explained his substantial delay of approximately five months, until mid-August 2011, in “revisiting” the Examiner’s first report of 16 March 2011.
In the absence of corroborating material in relation to the applicant’s abovementioned assertion regarding a telephone conversation with an employee of Austal Ships Pty Ltd, the Tribunal is not prepared to accept that assertion.
The Tribunal notes, furthermore, that the applicant submitted that “the principal cause” of his delay in lodging an application for review of the delegate’s decision of 24 January 2011 was that it was not until September 2011, when he was “advised in a telephone conversation with Mr Kevin Restrick of IP Australia … that … all lawful grounds for revocation of Innovation Patent AU210100448 (sic) had been removed”, that he was able “with reasonable certainty to determine if valid grounds for a successful appeal existed”. The applicant, however, has not provided any corroborating material in relation to that asserted telephone conversation with Mr Restrick – who, the Tribunal notes, is the author of the Examiner’s first report on Innovation Patent No 2010100448, dated 16 March 2011, which specified three “lawful grounds for revocation of the patent” (see paragraph 9 above) – and, in those circumstances, the Tribunal is not prepared to accept his abovementioned assertion regarding a telephone conversation with Mr Restrick in September 2011.
Did the applicant “rest on his rights” in respect of the delegate’s decision of 24 January 2011?
The applicant submitted that he has not “rested on his rights in this matter”, relying on his pursuit of “certification of Divisional Innovation Patent AU2010100448” and his letter of 18 August 2011 to the respondent in response to the Examiner’s first report on Innovation Patent No 2010100448 dated 16 March 2011 (see paragraph 10 above).
The material before the Tribunal, however, provides no indication that, in the period between the delegate’s decision of 24 January 2011 and the applicant’s application to the Tribunal on 12 September 2011 for an extension of time to lodge an application for review of that decision, the applicant took any action that might have made the respondent, or Austal Ships Pty Ltd, aware that he was contesting, or proposing to contest, that decision (which expressly related only to Patent Application 2007221850). The Tribunal notes, in this connection:
·the respondent’s letter of 15 February 2011 to the applicant’s representatives directing the applicant, pursuant to s 44(2) of the Patents Act 1990 (Cth), to request an examination of Patent Application 2007221850 and complete specification relating to that application; and
·IP Australia’s letter of 5 September 2011 to the applicant’s representatives informing them that Patent Application 2007221850 had “lapsed because of failure to request examination as directed in the Direction to request examination dated 15 February 2011” (see paragraphs 7 and 8 above).
The Tribunal does not accept that the applicant’s abovementioned letter of 18 August 2011 to the respondent, regarding Innovation Patent No 2010100448, was sufficient to put the respondent on notice that he was contesting the delegate’s decision of 24 January 2011 in respect of Patent Application 2007221850.
Accordingly, the Tribunal is not satisfied that the applicant took any action, in the period from 24 January 2011 (when he was notified of the delegate’s decision) until 12 September 2011 (when he applied to the Tribunal for an extension of time to lodge an application for review of that decision), to make the respondent or Austal Ships Pty Ltd aware that he was contesting, or proposing to contest, the delegate’s decision of 24 January 2011. In the Tribunal’s opinion, the applicant did “rest on his rights” in relation to the delegate’s decision.
The merits of the applicant’s application for review
Although it would be inappropriate for the Tribunal to attempt to undertake a merits review of the delegate’s decision of 24 January 2011 at this interlocutory stage of the proceeding, it is nevertheless appropriate for the Tribunal to consider the merits of the applicant’s substantive application for a review of that decision in determining whether his application for an extension of time for lodging that substantive application should be granted: Hunter Valley Developments; Re Johnson (above). In the Tribunal’s opinion, the delegate’s statement of Reasons for Decision contains a comprehensive discussion of the relevant legal principles and a conscientious application of those principles to the facts of the case. In short, the delegate’s decision does not appear to the Tribunal to contain any obvious flaws.
Although the applicant initially acquiesced in the delegate’s decision, he now asserts that the delegate’s reasons for decision contain errors of law and fact. As regards the applicant’s assertions regarding error of law, the Tribunal is not prepared to go further than merely to acknowledge that they may be arguable and it expresses no opinion regarding their merit. As regards the applicant’s assertions of factual error, in particular, his abovementioned assertion relating to “further and fresh evidence” regarding the existence of “prior art”, the Tribunal, as presently advised, regards such assertions as unsubstantiated and it is not prepared to accept that they have any merit.
Accordingly, the Tribunal, having regard to the material before it, is not satisfied that the applicant’s application for review of the delegate’s decision of 24 January 2011, were it to proceed, would have good prospects of success. In the Tribunal’s opinion, the merits of that application for review are not such as to indicate that his application for an extension of time for lodging that application should be granted in the interests of justice.
Other relevant factors
The respondent’s submissions do not refer to the factor of prejudice to the respondent that would, or might, result from the grant of the applicant’s application for an extension of time. Nor do the respondent’s submissions refer to the broader considerations of prejudice to the public and fairness as between the applicant and other persons in a like position. The applicant, on the other hand, sought to rely on his personal circumstances and public interest considerations in support of his submission that the grant of his application for an extension of time would be “fair and equitable in all the circumstances”. The Tribunal, however, is not satisfied that the circumstances and considerations relied on by the applicant militate in favour of the grant of his application for an extension of time.
CONCLUSION
Having regard to the circumstances of this case and the relevant considerations discussed in paragraphs 22–32 above, the conclusion of the Tribunal is that none of those circumstances and considerations militates in favour of the grant of the applicant’s application for an extension of time, but that several of those circumstances and considerations militate against the grant of that application, namely:
· the substantial delay (of almost seven months after the expiration of the prescribed period of 28 days) on the part of the applicant in lodging with the Tribunal his application for review of the delegate’s decision of 24 January 2011;
· the applicant’s failure to provide a satisfactory explanation for that delay;
· the applicant’s failure to take any action, until 12 September 2011, which might have made the respondent or Austal Ships Pty Ltd aware that he proposed to contest the delegate’s decision of 24 January 2011; and
· the apparent lack of merit of the applicant’s application for review.
On balance, therefore, the Tribunal is not satisfied that it would be proper or reasonable in all the circumstances to extend the time for the making by the applicant of an application for review of the delegate’s decision of 24 January 2011 until 13 September 2011.
ORDER
For the above reasons, the applicant’s application for an extension of time for lodging an application for review of the decision of a delegate of the respondent, dated 24 January 2011, is refused.
I certify that the preceding 34 (thirty four) paragraphs are a true copy of the reasons for the decision herein of Deputy President S D Hotop.
.....[sgd DBrodie..........................
Administrative Assistant
Dated 3 February 2012
Date of hearing 3 October 2011 Date final submissions received 12 January 2012 Representative of the Applicant Self-represented Representatives of the Respondent
Mr J Jacobson, Mr A Gerrard Solicitors for the Respondent Australian Government Solicitor
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