Stord Bartz A/S v the Dupps Company

[1989] APO 35

In the Matter of the Patents Act 1952

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In the Matter of Application No. 555337 by STORD BARTZ A/S

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In the Matter of Opposition thereto by THE DUPPS COMPANY and Objection by the Opponent to an Extension of Time under Regulation 56 for the Applicant to serve Evidence‑in‑Answer.

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS:
Background
         An International Application was filed on 11 November 1982 by Stord Bartz A/S for patents for an invention entitled "Process for the Production of Fodder and Fat from Animal Raw Materials".  The application was not based on any earlier priority application.  On notice of receipt of the record copy of the International Application by the International Bureau, the Australian Patent Office designated the application as No. 91204/82.  The application entered the National Phase, was advertised as accepted on 18 September 1986 and given the Serial No. 555337.  A notice of opposition was lodged on 16 December 1986 by The Dupps Company, an American company manufacturing and dealing in rendering systems.  After four extensions of time were allowed, the opponent served its evidence‑in‑support on 18 January 1988.  Pursuant to Regulation 56, evidence‑in‑answer was due to be served on the opponent by 18 April 1988, but the applicant applied for and was allowed six extensions

under the Regulation, each extension being for a period of three months.
         On 18 October 1989 the applicant applied for a seventh extension of three months, the opponent objected to this extension in a letter to the Patent Office dated 27 October 1989 and the matter was heard in Canberra on 1 November 1989; the applicant was represented by Mr H. Cumming, patent attorney, and the opponent was represented by Mr P. Kildea, patent attorney.
         At the same hearing matters relating to application No. 570199 were also considered.  That application, by The Dupps Company, is being opposed by Stord Bartz A/S, the former objecting to a fifth extension of time by the latter to serve evidence‑in‑
support.  A decision on that application is issued concurrent with this decision.
Regulation 56
The matter of extension of time to serve evidence in patent opposition matters has been dealt with in Nautical Services Pty. Ltd. v Hitech Distillation (Australia) Pty. Ltd. 7 IPR 567 and that decision referred to the earlier cases of Vangedal‑Nielsen v Commissioner of Patents and Gelphen Nominees 33 ALR 144 and Lyons v Registrar of Trade Marks 1 IPR 416. With regard to an extension of time to serve evidence‑in‑answer, I am required to have regard to the respective interests of the patent applicant, the opponent and the public. The applicant carries the burden of establishing a case to justify the extension, there should be a good reason why the evidence has not been served within the time allowed under the Regulation and there should be no unreasonable delays.
         In the present case the applicant's grounds upon which its applications for extensions of time were made are summarized or cited as follows:
         For the first three extensions the applicant requested further time "to evaluate and prepare evidence" and to "consider both the material and implications arising from the two oppositions" since "the present proceedings are intimately linked with the opposition to application No. 570199".  The application for the third extension was not lodged within the time allowed by the second extension and thus it was necessary to consider the provisions of Regulation 82(b) in allowing the third extension.
         The application for the fourth extension, lodged 18 January 1989, referred to delay in lodging evidence‑in‑support of opposition to 570199, viz:

"As previously indicated, the present parties are engaged in the related opposition to Australian Patent Application No. 12597/83 (570199).  In that matter the lodgement of Evidence‑in‑Support has been delayed due to difficulty in finding a suitable expert in the meat rendering field.  Such an expert has now been found and we have undertaken to file evidence‑in‑supoort by 9th March, 1989.  The same expert will now enable us to assess the evidence‑in‑support lodged in respect of the present proceedings."

The opponent objected to this extension and requested a hearing on the matter but its objection was withdrawn on receipt of a written undertaking from the applicant's attorney, viz:

"to have the evidence‑in‑support [sic] filed by the 18th April 1989, subject to unexpected circumstances arising.  I further undertake to provide draft declarations to you ahead of the April 18th term."

The statements on the fifth, sixth and seventh applications read respectively:

"We have approached three experts concerning execution of affidavits in the light of this Opposition, unfortunately, the major expert is at present out of Australia and one of our patent attorneys visited him in New Zealand with respect to the preparation of the appropriate declarations.  However, due to work commitments the experts have not yet finalised their declarations and we expect to have this evidence in the form of declarations completed shortly. .....

We have had further dialogue with our "experts" concerning this matter but, as yet, we have not received the required Declaration in a final format to serve in respect of our Evidence‑in‑Answer. .....

On 29 August 1989 we had a further conference with our expert concerning this matter and follow‑up correspondence and telephone discussions.  We are still awaiting the declaration executed to serve in respect of our Evidence‑in‑Answer."

Submissions
         Mr Kildea submitted that the extensions of time previously allowed for the applicant to serve its evidence‑in‑answer have been adequate, that the applicant is merely "dragging out proceedings" and that the opponent is not being unreasonable in objecting at this stage.  He stated that the applicant's attorneys have provided no explanation as to why the undertaking to have the evidence filed by 18 April 1989 was not honoured.  He considered that the inventions relating to the two applications in opposition are very similar, that prior claiming was a significant ground of opposition and that little prior art needs to be considered for the evidence‑in‑answer.  Also, he submitted that the meat rendering art was not complex, that there was not a lot of prior art and that it should be "a relatively simple task" to prepare the evidence‑in‑answer.
         Mr Cumming submitted that the matters of opposition to application No. 555337 and of opposition to application No. 570199 are "intimately linked" thus complicating the serving of evidence.  He explained that Stord Bartz has been concerned with the problem of evidence leading to "self‑destruction", he stated:

"An opponent on one case does not wish to shoot himself ... on his own patent and then see a competitor's patent perhaps be granted ... [if] it is not possible to have their [Stord Bartz's] Australian patent granted then their main task is to prevent The Dupps Company in succeeding in having a patent granted."

He indicated that, in opposition proceedings involving the present parties in New Zealand, evidence‑in‑answer has not been served by The Dupps Company and that Stord Bartz was waiting to consider this evidence before serving its own evidence in Australia.
         Mr Cumming referred to some other matters which are relevant to both the present opposition and the opposition to application No. 570199.  These matters are referred to in detail in my concurrent decision on that application and relate to:

(i)The judgements of the Courts in Vangedal‑Nielsen v Commissioner of Patents and Gelphen Nominees 33 ALR 144 and in Kaiser Aluminium & Chemical Corp. v The Reynolds Metal Co. 120 CLR 136 and a decision of the Registrar of Trade Marks in Marks v Spenser 7 IPR 176.

(ii)Stord Bartz's attorneys' attempts to obtain evidence from experts in Australia, Mr Fernando in New Zealand being the only person showing some response.  A preliminary declaration from Mr Fernando, received on 19 June 1989, was not satisfactory and Stord Bartz is currently waiting for Mr Fernando to execute an "amplified" declaration.  Over recent months Mr Fernando has not replied to facsimile communication from Stord Bartz's attorneys ostensibly because he is too busy.

Decision
         In my concurrent decision relating to application No. 570199 I have found, inter alia, that Stord Bartz has been dilatory in serving its evidence‑in‑support.  In the present case I am mindful of the fact that Stord Bartz is the applicant for the patent, however, it is the applicant who carries the burden of establishing a case to justify an extension of time to serve evidence in answer and I consider that the applicant has not established a case in the present circumstances.  The facts before me lead me to the conclusion that Stord Bartz has been dilatory.  I agree with Mr Cumming that the oppositions on the two applications are intimately linked but I do not see that as a reason per se for delaying matters.  In fact, it is because the circumstances of the two oppositions are intimately linked that I am led to similar conclusions, namely that unreasonable delay has occurred in both cases.  Stord Bartz has already been allowed eighteen months extension of time to serve its evidence‑in‑answer.  I consider that indecision relating to self‑destruction, waiting for the other party to serve evidence in New Zealand and waiting several months for a reluctant expert to execute a declaration do not constitute good reasons why evidence‑in‑answer has not been served in this case and it is in the interest of The Dupps Company and the public to bring the opposition to a conclusion as soon as possible.
Conclusion
         For the reasons given above I refuse to allow an extension of time under Regulation 56 to 18 January 1990 for Stord Bartz to serve evidence‑in‑answer to opposition by The Dupps Company.  The previous extension allowed was to 18 October 1989; no evidence has been served on the opponent so the provisions of sub‑regulation 61(1)(a) are applicable.
         I award costs against Stord Bartz.

(J.I. WELSH)

Patent attorneys for the applicant: Arthur S. Cave & Co, Sydney
Patent attorneys for the opponent : Phillips, Ormonde & Fitzpatrick,