Steel Foundations Ltd v Soiltest Australia Pty Ltd

[2001] APO 4

OFFICIAL NOTICE

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Application  :          No. 708999 in the name of Steel Foundations Limited

Title:          Method of Building Construction

Action:          Opposition under Section 59 by Soiltest Australia Pty Ltd.  Application for an Extension of Time in which to serve Evidence in Answer (regulation 5.10(2)).

Decision:          Issued            .

Abstract

The extension of time sought for serving Evidence in Answer is found to be not justified by the reasons given for the delay relating to:

1. absences by key personnel responsible for instruction

2. the time required to review and respond to the large volume of Evidence in Support

and the requested  three month extension is refused.

Following the judgement in Ferocem Pty Ltd v Commissioner of Patents, (1994) AIPC 91-057, however, a limited extension of time of seven days is granted to allow the applicant to serve whatever evidence it has to hand.

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Patent Application No. 708999 by Steel Foundations Limited and opposition under Section 59 by Soiltest Australia Pty Ltd.  Application for an Extension of Time in which to serve Evidence in Answer (regulation 5.10(2)).

BACKGROUND

Patent application 708999 in the name of Steel Foundations Limited (Steel Foundations, 'the applicant') was filed on 16 December 1996 and claimed priority from provisional applications PN7149 (14 December 1995) and PN7150 (14 December 1995).  The patent application was advertised accepted on 19 August 1999.

Soiltest Australia Pty Ltd (Soiltest, 'the opponent') filed a notice of opposition under section 59 on 18 November 1999 followed by a Statement of Grounds and Particulars on 17 February 2000.  A request to amend the Statement of Grounds and Particulars under regulation 5.9 was filed on 5 May 2000 and was allowed on 1 June 2000.

Service of Evidence in Support was completed on 16 May 2000.  Evidence in Answer was due to be served by 16 August 2000 but on 15 August 2000 Steel Foundations applied for an Extension of Time to 16 November which was granted unopposed.  A further request for an Extension of Time to 16 February 2001 to serve Evidence in Answer was filed on 8 November 2000 to which Soiltest formally objected on 28 November 2000.

A hearing was set down for 13 December 2000, however Steel Foundations neither appeared nor filed written submissions. 

Soiltest elected not to attend in person and faxed submissions on 12 December 2000 including a copy of a letter originally filed on 21 November 2000 commenting on Steel Foundations request for a further Extension of Time.

To date, no Evidence in Answer has been served.

SUBMISSIONS

In the absence of more detailed submissions, I have written this decision on the basis that Steel Foundations is relying solely on the statement of circumstances and grounds which formed part of the application for Extension of Time.  That statement indicated that:

"This matter has been delayed by the unavailability of key personnel from the Applicant who are responsible for instructing the prosecution of the Opposition and the large volume of Evidence filed to date".

The submissions by Soiltest may be summarised as follows:

• the opponent referred to Baroid Drilling Fluids Inc v Fina Research Societe Anonyme (1994) APO 73 (13 December 1994), Kimberly -Clark Corporation v The Proctor & Gamble Company (1993) APO 34 (13 May 1993); 26 IPR 581, Minproc Technology Pty Ltd v Commonwealth Scientific and Industrial Research Organisation (1996) AIPC 91-244, and Iowa State University Research Foundation, Inc et al (1998) APO 61 (30 October 1998) to establish the law in this area and in support of their submissions.

• in referring to the previous granted Extension of Time, the opponent argued that the amending of the Statement of Grounds and Particulars, which formed part of the grounds and circumstances upon which the previous application had been based, did not substantially alter the case that the applicant had to answer nor result in a protraction of the preparation of the case.  Moreover the opponent alleged that Mr Camilleri, the inventor on record, would have been familiar with eight of the eleven additional documents added to the statement by the amendment. 

• the opponent commended the decision in Baroid Drilling Fluids Inc v Fina Research Societe Anonyme (supra) in which a three month extension under similar circumstances was refused.  The applicant also sought to distinguish the circumstances which led to the granting of a limited Extension of Time for serving Evidence in Answer on the basis that in Baroid some Evidence in Answer had been served, while in the present application none has been served.

• there has not been a full and frank disclosure of the reasons for the delay, the progress made nor an indication whether this will be the last extension sought.

• contrary to the applicant's assertion, the Evidence in Support consisted of only two statutory declarations comprising 26 pages and 52 exhibits, and 20 pages and 31 exhibits respectively.  The opponent alleges that Mr Camilleri, the inventor on record, would have been familiar with over 50% of the exhibits pertaining to the first declaration and at least 80% of the exhibits pertaining to the second declaration.  Overall, Mr Camilleri would have been familiar with over half of the exhibits served in evidence.

• in view of their being only two declarations, and the level of familiarity of Mr Camilleri with the exhibits, the applicant has had ample time to consider the evidence and to serve Evidence in Answer.

• the technology of the application is old and not complex and most of the evidence served related to novelty and obviousness rather than prior use.

• the opponent completed the more difficult task of researching and compiling Evidence in Support in six months, while the applicant apparently requires a greater time to complete the easier task of answering the evidence raised.

• the continuing lack of resolution of the substantive opposition and hence the Extension of Time is a commercial disadvantage the opponent, disrupts normal trading practices in the building industry and forms a public nuisance.

DECISION

Regulation 5.10(2) of the Patents Regulations 1991 (Cth) enables the Commissioner to extend the time for an action in opposition proceedings. Regulation 5.10(5) requires that for such an extension to be granted the Commissioner must be satisfied that the extension is "appropriate in all the circumstances".

The law relating to these regulations has been thoroughly considered by Burchett J in Ferocem Pty Ltd v Commissioner of Patents (1994) 28 IPR 243 and more recently by Sackville J in A Goninan & Co Ltd v Commissioner of Patents (1997) 38 IPR 213. These decisions make it clear that reg. 5.10 confers a broad discretion that cannot be reduced to imperative compliance with particular requirements. It requires proper, genuine and realistic consideration of all the relevant aspects that pertain to the application. These aspects include:

1. provision of an explanation or justification for the delay in completing the Evidence in Answer,
   Although noting that this is a relevant consideration, satisfactory explanation is not mandatory.
   
   

2. interests of the parties involved in the opposition and the public interest
   Disadvantages to either applicant or opponent are also relevant considerations.
   The public interest in determining a serious opposition on its merits must be balanced with the requirement that matters before the patent office should be dealt with in an efficient, orderly manner and not be unduly prolonged.
   
   

In deciding the issue, I will consider each of these aspects separately.

1. The provision of an explanation or justification for the delay

The onus rests with the party seeking an extension of time to explain or justify the need for the extension with sufficient detail as to why the extension is required. (see Dominion Mining Ltd v MIM Holdings Ltd (1997 APO 27 unreported)

The justification or explanation should establish that the unforeseen circumstances beyond the control of the applicant necessitated additional time to serve evidence and that the applicant has showed diligence in using his or her best endeavours to serve evidence on time.  (see Dominion Mining Ltd v MIM Holdings Ltd supra; Kimberley-Clark Corporation v Proctor & Gamble Co (1993) 26 IPR 581 at 588; Rafaele v Tetley GB Ltd (1996) 36 IPR 481 at 486; Gentia Software plc v Abhor Software Corporation (1998) 42 IPR 169 at 172-3); Kirin-Amgen Inc v Board of Regents of the University of Washington (APO, Application No 600650, 25 January 1994, unreported).

In the present application two reasons are given for the need for the extension.  These are:

(i)the unavailability of key personnel required to give instruction, and

(ii)the time required to review the large volume of Evidence in Support filed by the opponent.

In respect of the first reason, the Commissioner has an expectation that, in any diligent prosecution of an opposition, parties will make available the key personnel necessary for its timely progression.  If these personnel are not available, then an application for extension of time, citing this as the reason, should give some explanation, including an indication of, for example, why the unavailable personnel are key to the prosecution, for how long they are or were unavailable and why other personnel could not be appointed.

Steel Foundations has given no indication, however, as to why their key personnel are unavailable nor why, given that the deadline for filing evidence was known, no other personnel were appointed to provide instruction.  Moreover, there is nothing on the file from which I can infer any explanation for the unavailability.

In the absence of any satisfactory explanation or evidence from Steel Foundations in relation to these absences, I conclude that the requested Extension of Time is not justified on this ground. 

In respect of the second reason, I note that the same argument, i.e. additional time required "to consider and review the mass of Evidence-in-Support", was given by the applicant in applying for the previously granted Extension of Time.  I therefore would expect that the applicant, if diligently pursuing the prosecution of the application, would have been endeavouring to consider and answer this evidence since 17 May 2000.

As in the case of the absences of key personnel, the applicant has provided no explanation as to why the volume of Evidence in Support is too great to be considered in the six month period since 17 May 2000 or what progress has been made.

In reviewing the evidence served, I found that many of these documents are either authored by the inventor, Mr Paul Camilleri, or by "Instant Foundations" (a company of which he was the founder), are technical or advertising documents of "Instant Foundations", or are Australian Standards documents related to the technology of the invention.  I therefore agree with the opponent that, prime facie, it is reasonable to expect that the applicant would have been familiar with many of the documents served.

In terms of number, there are a total of 85 documents in the Evidence in Support, 59 of which were enumerated in the Statement of Grounds and Particulars and the significance of each discussed.  Although this is a substantial number of documents, I do not consider it to be excessive in view of the applicant's likely familiarity with many of them and the fact that the applicant has already had over six months to consider them.  Over this period I would have expected the applicant to have considered at least some of these documents and for their Evidence in Answer to be, if not complete, substantially complete.  There is nothing before me to indicate such progress and no partial evidence has been served. 

I therefore find that the applicant has not successfully made out a case that the volume of evidence served in the Evidence in Support represented too great a burden for the applicant to review and respond in the six month period already elapsed.  Furthermore, I consider that the applicant has failed to demonstrate any diligence in preparing Evidence in Answer in a timely manner and in progressing the application.

Overall I find that the applicant provides no justification for the grant of an Extension of Time on the grounds given, nor can any justification be inferred from the file.

1. Interests of the parties involved in the opposition and of the public

It is clearly in the interests of the opponent to have the matter heard and a decision reached as soon as possible to provide more commercial certainty in the marketplace.  Equally, it is clearly in the applicant's interest gain as much time as possible to prepare a defence against the opposition.  I do not consider that either party has a stronger claim in terms of their private interests.

The issue of the public interest was considered by Burchett J in the Ferocem (supra) decision.  He concluded that in reaching a decision on this point, a balance is required between differing public interests.  Although it is desirable in the interests of cost, efficiency and the orderly prosecution of matters before the Patent Office, that oppositions progress without delay, it is equally important that decisions be made on merit, rather than parties being completely shut out as a result of a failure in procedure. 

In the present case I believe that, considering all the circumstances, the public interest would not be served by granting a further three month extension of time when the applicant has not shown diligence in prosecuting the matter over the last six months.  I am mindful, however, of the importance of providing the opportunity for the substantive opposition to be decided on it's merits with all relevant facts and arguments available.

I therefore find that it is in the public interest that an extension of seven days be granted to the applicant to permit the collation and service of evidence and materials that they already have on hand.

Conclusion

I find that in all the circumstances the applicant, Steel Foundations, has failed to make out a case that justifies the extension of the time to serve Evidence in Answer by a further three months.  I consider that it is in the public interest however, that the applicant should not be completely shut out and that opportunity should be given for it to serve whatever Evidence in Answer it has to hand.  I therefore grant a period of seven days from the date of issue of this decision, in which the applicant may serve Evidence in Answer.

Costs

In actions before the Commissioner, costs usually follow the event.  I see no reason for departing from this in the present case.  I award costs against the applicant Steel Foundations Limited.

Leigh R. Tristram
Delegate of the Commissioner of Patents

Patent attorneys for the applicant  :  Fisher Adams Kelly, Patent & Trademark Attorneys

Patent attorneys for the opponent   :  Cullen & Co., Patent & Trademark Attorneys