Stork Pompen BV v Weir Pumps Ltd - [1988] APO 7

In the Matter of the Patents Act 1952
‑ and ‑

In the Matter of Patent Application No. 563613 by STORK POMPEN B.V.
‑ and ‑

In the Matter of an Application under Section 160 by WEIR PUMPS LIMITED for an Extension of Time in which to Lodge Notice of Opposition.

DECISION OF A SUPERVISING EXAMINER OF PATENTS:
Background
Patent application 563613 by STORK POMPEN B.V. (STORK) was advertised accepted in the Official Journal of Patents on 16 July, 1987 and consequently the three month period allowed by sub‑section 59(1) for lodging notice of opposition expired on 16 October, 1987.
A notice of opposition pursuant to sub‑section 59(1) was lodged on 8 December, 1987 by a Scottish Company, WEIR PUMPS LIMITED (WEIR) and was accompanied by an application under sub‑section 160(2) for an extension of time of two months within which to lodge the notice of opposition. STORK gave notice of objection to the extension of time and the matter was set down for hearing in Canberra on 19 January, 1988. Mr. J. Terry, patent attorney of Griffith, Hassel & Frazer, appeared for WEIR and Mr. J. Hinde, patent attorney of Spruson & Ferguson, appeared for STORK.

The Application under Section 160
The circumstances and grounds given in the application for extension of time are as follows:

"We have only very recently become aware of the existence of the patent application as a result of the letter of notification sent on behalf of the applicants to Weir Engineering Pty. Ltd., a New South Wales Corporation which is a wholly owned subsidiary of Weir Pumps Limited and we had omitted to instruct any search or watch in relation to patent applications in a field in which we are active. Having regard to our general knowledge of state of the art we would have opposed the present application within the normal time had we become aware of it."

The evidence in support of the application, lodged pursuant to sub‑reg. 47(2), comprises statutory declarations by Ian Cuthill Campbell and David Peter Elliot.
Mr. Campbell is General Manager and a Director of Weir Engineering Pty. Ltd., which Company is a supplier of pumps of the class of pumps to which patent application 563613 relates. He declares that he only became aware of this application when informed so by Spruson & Ferguson on 20 November, 1987. Because his company did not consider that there could be any patent applications with broad patent claims made in this particular field, no watch or search was ever commissioned of applications in this field. In this regard Mr. Campbell declares at paragraphs 11 and 12:
"11.Prior to 20th November 1987 my company had not ever commissioned a search or watch of patent applications in the present field and I am informed and believed that neither had Weir Pumps Limited ever instructed such a watch or search. However, had my company been aware of the present patent application at an earlier date it would have either itself or through…

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.

Keep reading for free

Create a free CaseChat account to read Stork Pompen BV v Weir Pumps Ltd and more:

Read every judgment in full
Ask AI and get answers linked to paragraphs
See how each paragraph was cited in later cases
Download judgments as PDF or Word

Continue with Google

One click creates your free account or signs you in.

By continuing you agree to the Terms and Privacy Policy.

Details

Case: [1988] APO 7
Decision Date: 10 March 1988

CaseChat Overview and Summary

Stork Pompen BV and Weir Pumps Ltd were involved in a dispute regarding a patent application. Stork Pompen BV had filed a patent application, which was accepted and advertised in the Official Journal of Patents. Weir Pumps Ltd subsequently lodged a notice of opposition to the patent application, but did so outside the three-month period allowed by law. Weir Pumps Ltd also applied for an extension of time to lodge the notice of opposition. The court had to decide whether the extension of time should be granted to Weir Pumps Ltd.

The court considered the circumstances and grounds given in the application for extension of time. Weir Pumps Ltd argued that they had not been aware of the patent application until a late date and therefore had not instructed any search or watch in relation to patent applications in the relevant field. The court examined the evidence provided by Weir Pumps Ltd and concluded that there was no error or omission on their part or their patent attorneys within the terms of the relevant section of the Patents Act. The court found that Weir Pumps Ltd had deliberately decided not to commission a watching service of patent applications in the relevant field, and therefore there was no intention to oppose the patent application within the allowed time. The court also noted that the mere fact that a serious opposition was foreshadowed did not mean that an extension of time should be granted.

Based on the court's reasoning, the application for an extension of time was refused and costs were awarded against Weir Pumps Ltd. The court also proposed to extend the time for sealing the patent pursuant to the relevant section of the Patents Act, as the proceedings were related to the opposition. The final orders would be determined at the expiry of the appeal period.

This case highlights the importance of being aware of patent applications in relevant fields and taking appropriate steps to oppose them within the allowed time. It also emphasizes the need for a clear intention to oppose a patent application and the lack of error or omission in order to be granted an extension of time.

Orders