Solar-Mesh Pty Ltd v Phifer Wire Products Inc, Windsor Products Pty Ltd and Cyclone Hardware Pty Ltd
[1994] APO 49
•29 August 1994
official notice
decision of a delegate of the commissioner of patents
Application : No. 639894 in the name of Solar-Mesh Pty Ltd
Title: Improved Mesh Material and Methods of Use
Action: Applications for extensions of time to serve copies of statements of grounds and particulars, by Phifer Wire Products Inc, Windsor Products Pty Ltd and Cyclone Hardware Pty Ltd.
Decision: Issued .
Abstract: Extensions of time granted. Copies of statements of grounds and particulars already served. Periods for requesting dismissal of oppositions and for serving copies of evidence-in-support re-set.
patents act 1990
decision of a DEPUTY commissioner of patents
Re:Patent Application No. 639894 in the name of Solar-Mesh Pty Ltd, and applications for extensions of time to serve copies of statements of grounds and particulars, by Phifer Wire Products Inc, Windsor Products Pty Ltd and Cyclone Hardware Pty Ltd.
background
Acceptance of application 639894 was advertised on 12 August 1993. On 12 November 1993 the three opponents filed notices of opposition. Therefore, in accordance with sub-regulation 5.4(1), the time for filing statements of grounds and particulars ended on 12 February 1994. But, since 12 February 1994 was a Saturday, the final date was 14 February 1994 - Acts Interpretation Act, section 36(2).
The applicant has contended that the opponents failed to serve copies of statements of grounds and particulars within this time. The opponents, while not conceding failure to serve copies of statements within the 3 month period prescribed by sub-regulation 5.4(1), have nevertheless applied under section 223 of the Act for an extension of time to serve the copies.
The applicant has advised the Commissioner that it objects to the requested extension of time.
The matter was heard in Canberra on 1 August 1994. Mr K Ivory, managing-director of Solar-Mesh Pty Ltd represented the applicant. Mr Stuart Smith, patent attorney of Shelston Waters, represented the three opponents.
At the hearing, two preliminary issues arose. Firstly, Mr Ivory argued that I should not hear Cyclone Hardware Pty Ltd's application for extension of time. His argument, as I understand it, was that up to the end of the time for filing a notice of opposition "Boral Cyclone", not Cyclone Hardware Pty Ltd, had the right to oppose, since, according to Mr Ivory, Cyclone Hardware Pty Ltd did not exist at that time. However, I note that Cyclone Hardware Pty Ltd, one of the applicants for an extension of time, is the name which appeared on a notice of opposition filed on 12 November 1993. In these circumstances, while the question of Cyclone Hardware Pty Ltd's right to oppose might be an issue in dismissal proceedings or in proceedings to determine the Section 59 opposition, I do not see its relevance to the application for extension of time.
The second preliminary issue was a request from Mr Ivory that I clarify whether the hearing was concerned only with the applications for extension of time, or was also concerned with whether copies of statements of grounds and particulars had been served within the initial period prescribed by sub-regulation 5.4(1). I indicated that the hearing was concerned with the applications for extension of time.
I have not overlooked that there is disagreement between the parties as to whether the opponents served copies of statements of grounds and particulars within the prescribed period. However, for the purpose of deciding whether to grant the requested extensions of time, I will assume the copies were not served in time. I will subsequently deal with the consequences of this assumption possibly being incorrect.
THE EVIDENCE
The evidence filed in support of the application for extension of time comprised a statutory declaration by Mr Stuart Smith.
In support of its opposition to the extension of time, Solar-Mesh Pty Ltd filed a statutory declaration by Mr Ivory.
The evidence from these declarations and from AIPO's case file records establishes that:
.Under separate covering letters, dated 10 February, 1994, the opponents' attorneys sent copies of statements of grounds and particulars to the following address:
Australian Solar-Mesh Pty Ltd
PO Box 694
Archerfield Qld 4108
The copies of the three statements of grounds and particulars (one in the name of each opponent) were sent in the same envelope by "Express Post".
.The applicant's address for service as indicated by AIPO's computerised "patent administration system" on 10 February was:
Australian Solar-Mesh Pty Ltd
PO Box 694
Archerfield Qld 4108
On that date the system also showed the applicant's name and address (as distinct from address for service) as:
Solar-Mesh Pty Ltd
49 Boyland Avenue
Coopers Plains Queensland 4108
Australia
.The express post letter containing the copies of the statements of grounds and particulars was received at the Archerfield Post Office on 11 February, 1994.
[While the evidence establishes that the initial copies of statements of grounds and particulars were received at Archerfield Post Office on 11 February 1994, it is not evident when the copies were placed in the applicant's PO Box 694.]
.Mr Ivory returned the three copies of statements of grounds and particulars to the opponents' attorneys. The returned statements and a covering letter were received by the opponents' attorneys on 4 March 1994. That covering letter, in part, stated:
"We are not the named Legal identity or company as stated by you in your 3 covering letters that are all dated 10th February 1994. These goods were received by us late on Wednesday the 16th February 1994 in an envelope which was actually addressed to a company that I am the Managing Director of, and I did not have time to read the contents until today, nor were we aware of who the contents of that envelope was addressed to prior to sitting down today to read same.
We noticed on removing the contents that they are actually addressed to a different entity. Who (sic) is not known to us, nor does any person at this address know of any such company by the name of Australian Solar-Mesh Pty Ltd.
Accordingly we have not read the contents as no one at this address is a (sic) duly authorised by the said company Australian Solar-Mesh Pty Ltd to do so.
Herein enclosed are the original goods, returned to your firm for re-direction to the rightful identity."
.Following a request from Mr Ivory, which AIPO received on 15 March 1994, the applicant's address for service was changed to:
The Managing Director
Solar-Mesh Pty Ltd
49 Boyland Avenue
COOPERS PLAINS Qld 4108
.In a letter to Shelston Waters dated 20 April 1994 AIPO's opposition clerk stated that "material filed by Mr Ivory includes a declaration by an employee of Archerfield Post Office which apparently supports the contention that the statement of Grounds and Particulars was not received at the address for service by the due date." The AIPO letter went on to state:
" Please be advised that if you fail to take appropriate action to address the apparent failure to timely serve the statement of Grounds and Particulars by 4 May 1994, the Commissioner will initiate action under Regulation 5.5(3) to dismiss the opposition.
I also draw your attention to the reasons for Mr Ivory returning the Statement of Grounds and Particulars, and invite you to consider whether this has any effect on any action that you propose to take."
.On 27 April 1994, Shelston Waters, on behalf of the opponents, sent a further copy of each of the statements of grounds and particulars, under covering letters, to the applicant at its newly recorded address for service.
Shelston Waters sent these copies and covering letters by "Certified AR Mail", which requires the addressee to sign a receipt slip upon delivery. The applicant received the copies on 9 May 1994, but subsequently returned them to Shelston Waters.
The opponents filed the corresponding statements with AIPO on 4 May 1994.
APPLICATION FOR SECTION 223 EXTENSION OF TIME
On 4 May 1994, each of the three opponents filed an application, under section 223 of the Act, for an extension of time within which to serve a statement of grounds and particulars. The period of extension sought is from 12 February 1994 to 12 May 1994.
Relevant provisions of Section 223 of the Act are:
(2) Where, because of:
(a)an error or omission by the person concerned or by his or her agent or attorney; or
(b)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.
...
(3)The time allowed for doing a relevant act may be extended, whether before or after that time has expired.
...
(6)A person may, as prescribed, oppose the granting of the application
...
(11) In this section:
"relevant act" means an action (other than a prescribed action) in relation to a patent, a patent application, or any proceedings under this Act (other than court proceedings), and includes the making of a Convention application within the time allowed for making such applications.
Sub-regulation 22.11(3) states:
"For the purposes of the definition of "relevant act" in subsection 223(11), each of the following actions is prescribed:
(a)an action or step prescribed in Chapter 5("opposition"), not being an action or step taken under regulation 5.3 ("filing of opposition") or regulation 5.4(1) (filing of statement);"
Therefore, the filing of a statement of grounds and particulars is not a prescribed action for the purposes of the definition of "relevant act". It follows that the filing of a statement of grounds and particulars qualifies as a "relevant act" for the purposes of section 223.
SUBMISSIONS
The opponents have argued that, if there was a failure to serve the statements of grounds and particulars within time, then that was due to circumstances beyond their control.
In support of this position, Mr Smith noted at the hearing that:
-the copies of statements of grounds and particulars had been sent on 10 February 1994 by express post, which guaranteed next day delivery and the final date for service was not until 14 February 1994.
-the copies were sent to the address for service as indicated on AIPO's computerised patent administration system on 10 February 1994.
At the hearing Mr Ivory argued that the period for serving the copies of statements of grounds and particulars should not be extended because:
serving a copy of a statement of grounds and particulars is not a "relevant act" for the purposes of section 223;
ii.the opponents' failure to serve copies of statements of grounds and particulars was not due to circumstances beyond their control. In particular the opponents' attorneys should have noted the different names and addresses in the 10 February 1994 record in AIPO's computerised patent administration system; in view of the differences they should have contacted Solar-Mesh to enquire where to send the statements.
iii.by waiting until 10 February 1994 to send the statement copies, the opponents didn't allow sufficient time for service to occur.
DECISION
In regard to Mr Ivory's first point, I have already indicated that Section 223 and sub-regulation 22.11(3) interact to provide that serving a copy of a statement of grounds and particulars is a "relevant act" for the purposes of section 223.
Regarding Mr Ivory's second point, it is helpful to refer to the provisions in the Patents Act and regulations relating to address for service and the service of documents.
Sub-regulation 22.10(1) states:
"If provision is made in an approved form to state an address for service, the person completing the form must state an address in Australia at which a document under the Act or these regulations may be given to him or her personally or to the person specified in the form as his or her representative."
From the wording of this sub-regulation it is clear that it is the applicant's responsibility to ensure that the address it provides to AIPO as its address for service is, in fact, suitable for that purpose.
Section 221 of the Act states:
" Where this Act provides for a document to be served on, or given or sent to, a person and the person has given the Commissioner an address in Australia for service of documents, the document may be served on, or given or sent to, the person by post to that address."
Having regard to the terms of section 221, it seems to me that Shelston Waters' action of posting the copies of the statements of grounds and particulars to the address indicated in AIPO's records as the applicant's address for service was an appropriate attempt to serve the copies. Moreover, I cannot agree with Mr Ivory's argument that the opponents left insufficient time for service to occur. They sent the copies of statements on Thursday 10 Februry 1994 by express post, which guarantees next day delivery. And the final date for delivery was not until Monday 14 February 1994.
It is established that copies of statements of grounds and particulars were received at the Archerfield Post Office on 11 February 1994. If they were not placed in the applicant's PO Box 694 until after 14 February 1994, it seems to me this must have been due to some failure within the Post Office, and was not within the opponents' control.
At the hearing Mr Ivory put the further argument that, even if the documents had been received by him within time, they would not have been served as required because the statements themselves carried the wrong applicant name, ie they carried the name "Australian Solar-Mesh Pty Ltd" rather than "Solar-Mesh Pty Ltd". However, the incorrect applicant's name on the copies of statements of grounds and particulars was the same as that indicated at 10 February 1994 as part of the applicant's address for service in AIPO's computerised records. Thus, even if the applicant's use of the incorrect name led to the documents not being served, and I am not convinced of this, such failure would have resulted from an error in AIPO's records.
Having regard to all the relevant circumstances, I am satisfied that any failure to serve the copies of statements of grounds and particulars was due to circumstances beyond the opponents' control.
Having decided that any failure to serve the copies was due to circumstances beyond the opponents' control, I must now decide whether it is appropriate to exercise my discretion to allow the requested extensions of time. In exercising this discretion I should take into consideration:
whether a serious opposition is foreshadowed;
ii.whether there has been any undue delay; and
iii.the relative interests of the patent applicant, the prospective opponent and the public.
(see Vangedal-Nielsen v Smith (Commissioner of Patents) (1980) 33 ALR 144.)
The opponents filed notices of opposition. They attempted to serve copies of statements of grounds and particulars within the required time. Those statements set out a number of statutory grounds of attack. I am satisfied that serious oppositions are foreshadowed.
It was not until receipt of the AIPO letter dated 20 April 1994 that the opponents became aware of the possibility that AIPO may consider that they had not served the copies of statements of grounds and particulars. The opponents acted promptly in response to that letter. On 27 April 1994 they sent copies of statements of grounds and particulars to the applicant at its newly recorded address for service. On 4 May 1994 they filed the instant applications for extension of time accompanied by the required declarations. I am satisfied there was no undue delay in the opponents' applications for extension of time.
Any delay in the determination of whether patent application 639894 ought to proceed to grant would disadvantage both the applicant and the public. However, it would clearly not be in the public interest to refuse the applications for extension of time and, possibly as a consequence, shut out the foreshadowed serious oppositions. To my mind this latter consideration carries more weight than any likely delay caused by granting the extensions of time.
Having regard to all the relevant factors I grant the requested extensions.
At the hearing Mr Ivory referred to an advertising sheet promoting a screening system called "Lockscreen". The words "SOLAR MESHES" appear on the sheet. Mr Ivory alleged that this exemplified improper conduct by certain parties and that the opponents were implicated. However, these allegations are not relevant to the issues before me.
CONSEQUENCES OF GRANTING EXTENSION OF TIME
Grant of the requested extensions has the effect of validating service of the copies of statements of grounds and particulars which Solar-Mesh Pty Ltd received on 9 May 1994. At the hearing Mr Ivory argued that the statements of grounds and particulars could not have been served on that date since the period for service had expired. He also contended that the opponents had not applied for a sufficient period of extension. I understand the crux of the latter argument to be that the period of extension applied for had expired before opposition to the extension had been determined; and copies of statements of grounds and particulars could not be served unless and until an extension was allowed.
I am not persuaded by these arguments. It is, in my view, quite appropriate to retrospectively extend a period in order to validate an action that was, otherwise, performed out of time. There is ample precedent for this. For example, where section 223 is applied to extend the time for filing a Convention application, it is usually the case that filing will have occurred before the extension is granted. See also CSIRO v Asterol International 27 IPR 48. In that case the Commissioner's delegate retrospectively granted an extension of time to file a notice of opposition.
The date of service of a copy of a statement of grounds and particulars marks the start of the periods within which:
an applicant can request the Commissioner to dismiss the opposition.
ii.an opponent can serve a copy of its evidence-in support of the opposition.
In particular, the period for requesting dismissal is within one month of the date of service of a copy of a statement of grounds and particulars. (Sub-regulation 5.5 (1)). And the period for serving a copy of evidence-in-support is within three months of the date of service of a copy of a statement of grounds and particulars. (Sub-regulation 5.8(1)).
On my assumption that the opponents failed to file copies of statements of grounds and particulars within the prescribed 3 month period, a consequence of my decision to grant the requested extensions of time is that the date of service was 9 May 1994. This means that the period for requesting dismissal of the oppositions and the period for serving copies of evidence-in-support as determined by sub-regulations 5.5(1) and 5.8(1), respectively, have already expired. In the circumstances it is appropriate that I exercise my discretionary power under regulation 5.10(1) to re-set those periods.
On the other hand, if my assumption is wrong then service occurred on or before 14 February 1994. In that case, too, the prescribed periods for requesting dismissal of the oppositions and for serving copies of evidence-in-support will have expired. But, it would be unreasonable to require that those actions should have occurred within the relevant prescribed periods in view of the uncertainty which has followed the applicant's claim that copies of statements of grounds and particulars were not served within time. In these circumstances, also, it would be appropriate for me to re-set the periods for requesting dismissal and for serving copies of evidence-in-support.
Accordingly, I direct that the period under sub-regulation 5.5(1) within which the applicant can request the Commissioner to dismiss the oppositions commence on the date of this decision. I also direct that the period under sub-regulation 5.8(1) for serving copies of evidence-in-support commence on the date of this decision.
As I previously indicated, the applicant chose to return the copies of the statements of grounds and particulars which were served on 9 May 1994. For the applicant's convenience I will arrange for a copy of the statements to be sent to it with a copy of this decision.
COSTS
At the hearing both parties argued that I should award costs in their favour.
I have found for the opponents in relation to the applications for extension of time. In accordance with the general principle of costs going with the event, I award costs against Solar-Mesh Pty Ltd.
W.S. Patterson
Deputy Commissioner of Patents
Patent attorneys for the opponent : Shelston Waters, Sydney
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