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…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

Continue reading Stord Bartz A/S v the Dupps Company

Details

AGLC: Stord Bartz A/S v the Dupps Company [1989] APO 35
Case: [1989] APO 35
Decision Date: 1 December 1989

CaseChat Overview and Summary

In the case of Stord Bartz A/S v The Dupps Company, the dispute revolves around the extension of time for Stord Bartz A/S to serve evidence-in-answer to an opposition filed by The Dupps Company against an Australian patent application. The case was heard by a delegate of the Commissioner of Patents, who was tasked with deciding whether Stord Bartz A/S should be granted an extension under Regulation 56 of the Patents Regulations 1952 to serve its evidence-in-answer to the opposition. The legal issues primarily concerned whether the applicant had a good reason for the delay and whether granting the extension would be in the interest of the parties and the public.

The court examined the reasons provided by Stord Bartz A/S for the delay, which included the need to evaluate and prepare evidence, the complexity of the linked opposition proceedings, and difficulties in finding and securing expert testimony. The court also considered submissions from both parties on the matter. The delegate concluded that Stord Bartz A/S had not provided sufficient justification for the delay, finding that the reasons given did not constitute good cause under the regulation. The delegate emphasized that the applicant, as the party seeking the extension, bore the burden of proving a valid reason for the delay. The delegate also noted that the oppositions in both Australia and New Zealand were linked and that the delay was unreasonable given the simplicity of the tasks required.

Based on the findings, the delegate refused to allow an extension of time for Stord Bartz A/S to serve its evidence-in-answer. The court ruled that Stord Bartz A/S had already been granted a substantial extension of eighteen months and that further delay would not serve the interests of The Dupps Company or the public. Consequently, the court awarded costs against Stord Bartz A/S.

This decision highlights the importance of timely submission of evidence in patent opposition proceedings and the stringent scrutiny applied to requests for extensions of time. The court underscored that patent applicants must provide compelling reasons for delays and that the interests of all parties, including the public, should be considered when deciding on such extensions.

Orders