Stena Rederi Aktiebolag v Danyard A/S

[1996] APO 12

official notice

decision of a delegate of the commissioner of patents

Application  :          No.  648634  in the name of

Stena Rederi Aktiebolag

Title:          A Hull Structure for Multi-Hull Ships

Action:          An application for an extension of time by

Stena Rederi Aktiebolag to serve evidence in answer under Regulation 5.10 (2) and an objection thereto by DANYARD A/S.

Decision:          Issued            

Abstract:          No facts or submissions of any sort were put forward by the applicant in relation to their preparation of evidence in answer.  No proper case for the extension of time was made out by the applicant on this ground.

However, the applicant filed a request to amend the claims of the accepted specification.  The extension of time was granted due to the uncertainty of the form of the claims of the specification which are being opposed.  Granting the extension is also consistent with Commissioners practice under Subregulation 5.10(1) when amendments are filed during preparation and serving of evidence.

Due to the lack of information relating to the preparation of evidence in answer and the length of time to file the amendment application no award of costs was made.

patents act 1990

decision of a delegate of the commissioner of patents

Re:Patent Application No. 648634 by Stena Rederi Aktiebolag and an opposition under Section 59 of the Patents Act 1990 by DANYARD A/S. An application for an extension of time by Stena Rederi Aktiebolag to serve evidence in answer under Regulation 5.10 (2) and an objection thereto by DANYARD A/S.

background

Patent application 10512/92 entitled “A Hull Structure for Multi-Hull Ships” was filed on 28 January 1992 by Stena Rederi Aktiebolag (Stena).  The application was advertised accepted on 28 April 1994 and assigned the six figure number 648634.  Three notices of opposition were subsequently filed; the first by NQEA Australia Pty Ltd on 25 July 1994, the second by Danyard A/S (Danyard) on 27 July 1994 and the third by Westamarin A/S on 28 July 1994.

Danyard served its statement of grounds and particulars on 26 October 1994 and subsequently served its evidence in support of their opposition on 26 April 1995, after a three month extension of time was granted.

On 24 July 1995 Stena applied for an extension of time from 26 July to 26 October 1995 to serve its evidence in answer, under Regulation 5.10 (2).  The circumstances and grounds upon which the application was made are as follows:

“There are three oppositions to this application. Evidence in Support of two of those oppositions is to hand. Further time is required to receive Evidence in Support of the third opposition to consider all the evidence against the application and to respond thereto. It is contemplated that a Section 104 amendment will be filed and further time is required in order to determine the scope of the claims which might be incorporated in that amendment application.”

This extension of time was granted with no objection from Danyard.

On 13 September 1995 NQEA Australia Pty Ltd advised that they did not propose to serve evidence in support and withdrew their opposition.

On 13 October 1995 Stena filed a statement of proposed amendments seeking to amend the accepted specification, as foreshadowed in their earlier application for an extension of time.

On 19 October Stena applied for a second three month extension of time from 26 October 1995 to 26 January 1996 to serve evidence in answer.

On 8 November 1995 Danyard filed an objection to the extension of time.

The matter was set down for hearing in Canberra on 22 January 1996.  Neither party appeared, as both parties chose to rely upon written submissions filed prior to the hearing date.

THE application

It is the application for an extension of time under Subregulation 5.10 (2) to serve evidence in answer by filed Stena on 19 October 1995, which was objected to by Danyard, which is at issue in this decision.  The application states that the circumstances and grounds upon which the application is made are as follows:

“An amendment application under Section 104 has been filed. Further time is required to determine the outcome of that application and to prepare Evidence-in-Answer should the amendments proposed, if and when allowed, fail to result in resolution of the Opposition.”

In support of its application for an extension of time Stena relied upon written submissions provided by Mr J G Hinde, patent attorney, of Spruson & Ferguson.

the objection

Danyard filed a written statement of objection which included the following reasons:

The amendments proposed make a token change to the scope of the claims.

The applicant has raised no evidence that any attempt has been made to prepare evidence in answer.

The minor nature of the amendment causes the opponent to question whether the applicant has made any diligent attempt to prepare and serve its evidence in answer since the opponent served its evidence in support.

This statement was supported by written submissions provided by Mr A J F Ward, patent attorney, of Griffith Hack & Co.

DECISION

Subregulation 5.10 (2) enables the Commissioner to grant an extension of time to file evidence during opposition proceedings.

Subregulation 5.10 (5) clearly sets out the conditions precedent for the Commissioner to grant an extension of time under Regulation 5.10 (2).  It states, inter alia, that the Commissioner must not grant an extension of time unless he/she is satisfied that such an extension “is appropriate in all the circumstances”.

Neither the application for the extension of time nor the submissions of Mr Hinde make any mention or provide any information on what progress, if any, has been made in the preparation of evidence in answer by the applicant.  The opponents have listed this as a reason for its objection to the extension of time.  It is clear that a proper case for the extension of time has not been made out by the applicant so far as the actual preparation and service of the evidence in answer is concerned.

Notwithstanding the lack of information as to the preparation of evidence by the applicant, in deciding the present application for an extension of time I am mindful of the comments of Burchett J in Ferocem Pty Ltd v Commissioner of Patents, (1994) AIPC 91-057, in which he states:

"The determination of an application for an extension of time under reg.5. 10(2) involves a balancing exercise, in which competing considerations must be taken into account.  There are the interests of the persons directly concerned in the application and opposition in question.  There are also public interests, which are not necessarily all ranged on the same side.  They include the expeditious disposal of matters in the Patents Office, and questions of cost, of efficiency, and of insistence upon proper professional standards being maintained by those who deal with the office. . . . . . "

Hence, I have to determine if the extension sought is appropriate taking into consideration all the circumstances of the present case.

The applicants case for the granting of the extension can be found in the circumstances and grounds upon which the application for extension was made, where, it is stated that further time to prepare evidence in answer is required “should the amendments proposed, if and when allowed, fail to result in resolution of the opposition”.  Mr Hinde in his written submissions also places a strong reliance on the practice of the Commissioner wherein the opposition process can be held in abeyance where a section 104 amendment has been proposed.

Under Regulation 5.10(1) the Commissioner may issue directions which has the effect of “stopping the clock” for filing evidence in answer where a request to amend the specification has been filed, provided the amendments are not trivial.  Another aspect of this practice is that the applicant is required to seek extensions of time under Regulation 5.10(2) (if necessary) up to the grant of leave to amend.  The granting of the present extension of time would be wholly consistent with that practice, as leave to amend had not been granted at the date set down for the hearing.

Strictly speaking, it could be said that evidence in answer should be limited to rebutting the evidence in support with no outside considerations.  I might reasonably question why that part (if any) of the evidence in answer which does not rely on the outcome of the request to amend has not been served, considering the length of time since the evidence in support was served by the opponents.  Indeed, given the applicants strong reliance on the proposed amendment and its ultimate fate, I might also question, as the objector has done, whether there has in fact been any preparation of evidence on the part of the applicant at all.

I can understand why the applicant wishes to wait to see the outcome of the proposed amendments before finalising their evidence in answer as this could possibly bring about a resolution of the opposition.  Certainly a resolution of this (and the other current) opposition without further evidence would be beneficial to all concerned, if at all possible.  I think it would also be more efficient for the applicant to prepare evidence in answer knowing the form and scope of the claims at issue.

On the other hand, Mr Ward has pointed out in his submissions on behalf of the opponent that the applicant can rely, to a large extent, on the claims as originally accepted by the examiner, during opposition proceedings.  I am in agreement with Mr Ward, however, if the form and scope of the claims were to be in doubt as a result of a proposed amendment, as is the case here, to simply ignore the possible consequences of the amendments would be detrimental to the opposition proceedings.  Hence I believe it is appropriate for both parties in this action to know with certainty the form of the claims which are to be the subject of further opposition proceedings.  It is precisely this situation of uncertainty which the practice of the Commissioner under Subregulation 5.10(1) is intended to overcome.

Danyard in its objection to the extension states that the amendments make a token change to the scope of the claims.  Mr Ward submitted that had the applicant made substantial amendments to the claims the opponent might have decided to allow the applicant more time to prepare and serve its evidence.  He also submitted that the amendment does very little to further the applicants case and constitutes no cause for delay.

Generally speaking, an extension of time should only be granted where the proposed amendments are not trivial.  It is not proper to allow an applicant to unnecessarily protract opposition proceedings by filing trivial amendments as this could adversely affect the interests of the opponent(s) as well as the public at large.

It is not appropriate for me in this decision to prejudice in any way future actions or proceedings in relation to the present application by considering the impact of the proposed amendments.  All that is required of me is to make a determination as to whether I believe the amendments to be trivial or not.  While the proposed amendments may not be of the extent wished by the opponent they appear to me to be of a non-trivial nature in that they introduce some, albeit basic, restrictions in the main form of the claimed invention. In that they are not trivial I believe they are relevant to my decision on this extension of time application.

Given the possible uncertainty for both the applicant and the opponent in this matter and the practice of the Commissioner under Subregulation 5.10(1), I believe that is appropriate considering all the circumstances of the present application to grant the extension sought by the applicant.  Hence I grant the applicant a three month extension of time form 26 October 1995 to 26 January 1996 in which to serve their evidence in answer.

Further application and directions

On 22 January 1996 Stena filed a further application for an extension of time of three months from 26 January to 26 April 1996 to serve evidence in answer.

Danyard has not filed an objection to this further application, perhaps as a result of the uncertainty in relation to outcome of this decision.

The extension of time granted in the above decision only goes to 26 January 1996, however, leave to amend the specification was not granted until 1 February 1996.  For the same reasons as those given in my decision, I therefore allow a further one month extension (of the three months requested by the applicant on 22 January 1996) from 26 January to 26 February 1996 for the service of evidence in answer .  This will take the time for serving evidence in answer past the date on which leave to amend the specification was granted.

In the covering letter which accompanied the request for the further extension the applicant also requested the Commissioner to issue directions under regulation 5.10(1) in relation to the serving of evidence in answer.  It was not possible for directions to be given until leave to amend was granted, which occurred after the request on 1 February 1996.

As requested by the applicant, I propose to give directions under Regulation 5.10(1) in relation to the time to serve evidence in answer.  It would seem reasonable to follow the practice of the Commissioner under Regulation 5.10(1), wherein, the applicant is allowed a period of time after the allowance, refusal or withdrawal of the amendment application to serve it’s evidence in answer.

Hence, I propose to issue the following direction:

The time for serving evidence in answer will expire 1 month after the Commissioner notifies the parties of the allowance or refusal of the request to amend filed on 13 October 1995, or if that request is withdrawn 2 weeks after the date of withdrawal.

Before I can issue the direction I must give both parties the opportunity to make representations.  I therefore give both parties 10 days from the date of this decision in which to make representations in relation to the proposed direction.

Costs

Usually in actions before the Commissioner costs follow the event.  In this case the applicant has been successful in obtaining the extension of time on the basis of the circumstances and grounds in it’s application.

While I have granted the extension sought by the applicant I have done so, at least in part, as a result of the uncertainty the proposed amendments may cause during subsequent opposition proceedings.  The filing of these amendments was totally within the control of the applicant.  It is they who chose to file the amendments almost six months after the evidence in support of the opposition had been served and when they had known the case to answer, from the statement of grounds and particulars, for in excess of eleven months.

Considering the lack of substantive information from the applicant relating to the preparation of evidence in answer and the length of time to actually file the amendments I am of the opinion that the applicant should bear it’s own costs in this matter.

Hence, I make no award of costs.

V. J. Portelli
Delegate of the Commissioner of Patents

Patent attorneys for the applicant :  Spruson & Ferguson, Sydney

Patent attorneys for the opponent :  Griffith Hack & Co, Melbourne