Stork Pompen BV v Weir Pumps Ltd
[1988] APO 7
•10 March 1988
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 Weir Pumps Ltd. filed an opposition on the basis that claim 1 at least was not in respect of a novel and patentable invention over the state of the art in Australia before 12th August 1982 (which I am informed is the earliest priority date claimed). .....
12.A reason that my company did not commission any search or watch in respect of patent claims relating to concrete volute pumps is that it did not occur to myself or, to the best of my knowledge, any other officers of my company or W.P.L. (WEIR) that any broad patent claims (such as those contained in the present patent application) could be made in a field with such long‑
standing prior art in this regard. In view of the acceptance of the present application with the present claims, I accept that there was an error being an error of judgment on the part of my company and Weir Pumps Ltd. in not making enquiries. Furthermore, there was an omission to take competent professional advice which would have resulted in my company or Weir Pumps Ltd. filing an opposition within, what I am informed, was the normal period for lodgment of the Notices of Opposition had the advice we have now received been available to us at the relevant time."
In addition, Mr. Campbell gives details of a pump installation at Eggborough, UK, and of communications between his company and the Electricity Commission of New South Wales regarding the supply and installation of certain pump designs.
Mr. Elliot is the Assistant Secretary of WEIR. His declaration is rather similar in content to Mr. Campbell's and adds nothing of substance to that. The declarants state that WEIR and Weir Engineering Pty. Ltd. are both wholly owned subsidiary companies of a corporate group known as The Weir Group PLC.
The extension of time has been applied for under sub‑section 160(2)(a) of the Patents Act which reads as follows:"160(2) Where, by reason of ‑
(a)an error or omission on the part of the person concerned or of his agent or attorney ...
(b)...
an act or step in relation to an application for a patent or in proceedings under this Act ... required to be done or taken within a certain time has not been so done or taken, the Commissioner may, upon application by the person concerned, ... extend the time for doing the act or taking the step."
In AB Scaniainventor v. The Commissioner of Patents 36 ALR 101 at 105; 51 AOJP 2486 at 2488, the Federal Court stated that:
"Section 160 is a remedial section and should be applied where it appears to be applicable unless there is some indication to the contrary."
Sub‑section 160(2)(a) has been considered to be available to extend the time limit set by sub‑section 59(1) as is evident from previous Office decisions in this regard. Therefore I am satisfied that sub‑section 160(2)(a) is available to seek an extension of time in the present circumstances, and given a proper case, may be applied. In deciding whether in the present circumstances there is a proper case to grant such an extension, it is first necessary to establish that the failure to lodge notice of opposition by 16 October, 1987 was due to an error or omission on the part of the person concerned or of his agent, and if such is established, then the Commissioner has a true discretion whether to grant or refuse the extension of time.
Error or Omission
The evidence of Campbell and Elliot establishes that neither they personally, nor WEIR or any person in the Weir group of companies had any knowledge of patent application 563613 before 20 November, 1987. (Campbell was informed of its existence on 20 November by Spruson & Ferguson and subsequently informed WEIR). Not only was WEIR unaware of its existence prior to that time, but that company and Weir Engineering Pty. Ltd. apparently made conscious decisions not to investigate for the existence of this or indeed any patent applications in this particular field ‑ both declarants state that their respective companies had "not ever (never) commissioned a search or watch of patent applications in the present field", based on the belief of their companies that no valid patent claims could be made in a field with long standing prior art. Although not directly apparent from the evidence, I am otherwise aware from Patent Office records (e.g. INPADOC patent records) that WEIR have been active in the patent field owning patents in at least Great Britain and the USA, and are thus not unaware of the patent system in the world. Clearly therefore WEIR made decisions not to commission a watching service of patent applications in the present field against its background patent system knowledge and given its perception of existing art, and it was only when the present application was drawn to its attention did WEIR apparently realize in retrospect that its understanding and actions may have been misguided.
At the hearing, I was referred to the decision of the Deputy Commissioner in Groko Maskin AB v. Sebastian Engineering (1981) Pty. Ltd. (1984) AIPC 93‑221; 3 IPR 614. In that case an extension of time was sought in circumstances very similar to those of the present, the extension subsequently being granted. Consequently, Mr. Terry argued that I should follow that decision and grant the extension sought here. However Mr. Hinde submitted that this decision should be treated with some caution as it did not, in his view, follow the established precedent and principles at the time. In support of his submission, Mr. Hinde referred to earlier decisions of the Commissioner concerning section 160 extensions in relation to lodging notices of opposition namely Liquid Air Australia v. C.I.G. 1 IPR 145, Kabushiki Kaisha Ishida v. Duro‑Matic 1 IPR 309 and Dow Chemical v. I.C.I. 1 IPR 542, and the decision of the Commissioner's delegate in the more recent case of Toyo Seikan Kaisha v. Nordson Corp. (1986) AIPC 90‑272; 5 IPR 388. He argued that these decisions, and other decisions and Court judgements concerning section 160 extensions, suggest a necessary link between the intention of the person concerned to do the act or take the step and the subsequent failure in that action due to error or omission, unlike the circumstances in the Groko Maskin case (supra).
Mr. Hinde, I believe, makes a pertinent point concerning the intention of the person to do the act or take the step and the existence of an error or omission. A review of recent sub‑section 160(2)(a) extension decisions including those mentioned by Mr. Hinde indicates that an error or omission has been considered to have occurred where there has been a breakdown in procedure in effecting a party's intention in respect of an invention or application (e.g. in respect of making an application pursuant to section 141, in prosecuting an application to acceptance, or in lodging a notice of opposition). Such cases indicate that having decided a course of action in respect of an act or step the performance of which is required within a certain time under the Act, that intention has been frustrated by either an error (e.g. the act has been done incorrectly, or mistakenly done outside the time allowed) or due to an omission (e.g. the act has not been done due to neglect or inadvertence). Therefore in my view, it is appropriate to consider in relation to the person seeking the extension, that person's intention with respect to doing the act or taking the step, and to determine whether any error or omission arose to frustrate that intention.
Referring to the circumstances of the case before me, as already discussed, WEIR had no knowledge of accepted patent application 563613 before 20 November, 1987. This in itself is not necessarily relevant, however the reason for it is. That is, WEIR had decided not to acquaint itself with patent applications in the particular field of technology. Having thus placed itself in a situation where knowledge of such patent applications was avoided, it can hardly be concluded that WEIR intended to oppose STORK's application (of which it had no knowledge), or any other patent application, within the time allowed under the Act. Clearly therefore, in such circumstances, there can be no error or omission in not performing an act which WEIR never intended to perform.
On the question of intention, Mr. Terry argued that in a number of Office decisions, the intentions of the prospective opponents were not clear and yet extensions had been granted. For example, in Firmaframe Nominees v. Automatic Roller Doors (1984) AIPC 93‑222; 4 IPR 137, the instructions given by the prospective opponent to the attorneys were only of a general nature to keep a watch on applications relating to roller doors ‑ not on any specific application. Such general instructions, he submitted, could not be indicative of any intention to oppose a specific patent application.
Whilst I acknowledge that in the above decision (and others like it), the link between the initial instructions and an intention to oppose may be rather tenuous, instructions were given and which, if they had been carried out, could at least have placed the accepted application before the party in time to enable it to decide whether to oppose and more than likely would have led to a notice of opposition being lodged. However, in the present case, WEIR at no stage before 16 October, 1987 took any steps which would have put it in a position to make a decision on whether this application should be opposed. Therefore, while in some previous situations like Firmaframe Nominees v. Automatic Roller Doors (supra) the intention to oppose may not have been entirely definite but the intention to get in a position to be able to decide whether to oppose was there, in this case I am satisfied from the evidence that there was never any such intention.
Therefore, I conclude that as there was never any intention by WEIR to oppose application 563613 on or before 16 October, 1987, or even any intention to place itself in a position to decide whether to oppose, there was no error or omission on its part or by its attorneys within the terms of sub‑section 160(2). The declarants have suggested that there was an 'error or omission' in the sense that WEIR or its companion companies failed to instruct a search to be conducted for patent applications in the relevant technology field and to take professional advice. But in this case, the failure to instruct a search arose from a deliberate decision by WEIR. Whilst viewed retrospectively such course of action may have been misguided, it was nevertheless the intended action by WEIR at the time. As Consequently there was no error or omission in relation to the failure to instruct a search of patent applications, and hence my conclusion on whether there has been an error or omission within the terms of section 160 is not altered.
Discretion
At the hearing, both attorneys raised the matter of whether a serious opposition is foreshadowed. However, this is not a matter which arises initially in relation to considerations concerning an application for an extension of time under sub‑section 160(2) to lodge a notice of opposition. This question only arises once the grounds for the extension under section 160 are otherwise satisfied and where it is apparent that the intended opposition is "frivolous" in nature ‑ in such a situation, the Commissioner's discretion under section 160 ought not be exercised favourably. (See Dentsply International Inc. v. Bayer Aktiengesellshaft (1986) AIPC 90‑328; 7 IPR 408). The initial consideration in granting an extension under sub‑section 160(2)(a) is of course concerned with whether there was an error or omission which led to an act or step not being done or taken within a "certain time". If it is not established that there was an error or omission, the extension should not be granted, irrespective of whether a serious opposition is foreshadowed. In other words, the mere fact that a serious opposition is foreshadowed does not mean that a section 160 applicant is entitled to have an extension automatically granted.
It follows from this that Mr. Terry's further submissions also referring me to the judgement in G.D. Searle & Co. v. Drug Houses of Australia Pty. Ltd. (1984) AIPC 90‑133; 53 ALR 637 are equally irrelevant in the present case and I need not say more on this subject.
Conclusion
I have come to the conclusion that on or before 16 October, 1987 WEIR never had any intention to oppose the present application and consequently there was no error or omission on its part or that of its patent attorneys within the terms of sub‑section 160(2). Consequently WEIR has not established grounds which are the pre‑condition to any consideration of whether or not there should be exercise of the Commissioner's discretion to grant an extension of time. Therefore, I refuse the application for an extension of time, and I award costs against WEIR.
But for the present proceedings, a patent would have been sealed o this application within the initial time allowed for sealing by sub‑section 66(1), viz. 16 January, 1988. As that date has passed, I propose to extend the time for sealing pursuant to sub‑section 66(3)(a) ‑ whilst the present proceeding is not an opposition per se, it is a related action thereto. Accordingly, at the expiry of the appeal period, I will determine the new sealing date.
(T.R. BRUHN)
Patent Attorneys for the patent applicant: Spruson & Ferguson
Patent Attorneys for the applicant under
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