Syme Electronic Communications Pty Ltd v Rank Cintel Ltd
[1996] APO 17
•13 March 1996
official notice
decision of a delegate of the commissioner of patents
Application : No. 651983 in the name of SYME ELECTRONIC COMMUNICATIONS PTY. LIMITED.
Title: Telecine chains.
Action: An application by SYME ELECTRONIC COMMUNICATIONS PTY. LIMITED for an extension of time of 3 months to serve evidence in answer, and objection thereto by RANK CINTEL LIMITED.
Decision: Issued .
Abstract: No proper case for the extension of time sought was made out. Partial extension of time granted to validate the service of evidence already served and to conclude evidence in answer stage.
patents act 1990
decision of a delegate of the commissioner of patents
Re:Patent Application No. 651983 by SYME ELECTRONIC COMMUNICATIONS PTY. LIMITED, opposition thereto by RANK CINTEL LIMITED, an application under regulation 5.10(2) of the Patents Act 1990 for an extension of time to serve evidence in answer, and objection thereto.
background
Patent application no. 651983 was filed on 9 August 1991, as application no. 81720/91 by Syme Electronic Communications Pty. Limited (“Syme”). That application claims priority from provisional application no. PK1630 filed on 9 August 1990. Following examination, the application was advertised accepted on 11 August 1994.
A notice of opposition was lodged on 6 January 1995 by Rank Cintel Limited (“Rank”), after an extension of time under section 223(2) of 2 months was allowed. The statement of grounds and particulars was served on 6 April 1995. Evidence in support was served on the attorneys for the applicant on 6 July 1995.
On 6 July 1995 Rank lodged an application under regulation 5.9 to amend the Statement of Grounds and Particulars. This amendment was allowed on 22 February 1996.
On 5 October 1995, Syme applied under the provisions of regulation 5.10(2) for an extension of time of 3 months from 11 October 1995 to 11 January 1996 to serve evidence in answer. On 12 October 1995 a statutory declaration in support of this application was filed. By letter dated 23 October 1995, Rank objected to the granting of the application for an extension of time.
On 10 November 1995, Syme filed a revised application for an extension of time of three months from 6 October 1995 to 6 January 1996.
The applicant served its complete evidence in answer on 4 December 1995.
The matter was set down for hearing in Canberra on 9 February 1996. Syme was represented by Mr Alfred Tatlock of A Tatlock & Associates, Carlton, and Rank was represented by Mr Fraser Old and Mr Julian Asquith of Spruson & Ferguson, Sydney. Both parties appeared by telephone.
THE REQUEST for an extension of time
The request
The reasons given in the request for an extension of time are as follows:
“The Applicant has partially assembled the evidence upon which the Evidence in Answer is based however additional time is required for the preparation of this evidence as the chief engineer of the Applicant, Mr Tony Corcoran, is overseas and will be so until late October 1995. Mr Corcoran is the only one of the inventors of this invention still in the employ of the applicant and his input is essential to the preparation of said evidence, particularly in relation to the new matter in the Opponent’s amended Statement of Grounds and Particulars received 6 July 1995.”
The declaration
The statutory declaration is expressed in the following terms:
“I, BARBARA VAN MEURS, ... declare as follows:
I am employed by Alfred Tatlock ... who is a registered patent attorney, and have assisted with the prosecution of application no. 651983 and the opposition to grant of this application by Rank Cintel Limited.
...
Preparation of Evidence-in-Answer was commenced during August 1995 in association with Mr Tony Corcoran who is the only one of the three inventors remaining in the employ of the Applicant. As the subject matter of the application is technically quite complicated Mr Corcoran’s input in preparing the evidence is essential particularly in relation to the new material introduced by the Opponent being an operational handbook for the BBC Cinetrace System Version 4.0.
When finalising the evidence in mid September 1995 we were unaware that Mr Corcoran was in fact overseas and would be so until late October 1995. On this basis the application for an extension of time was made.”
SUBMISSIONS
By letter dated 23 October 1995, Mr Asquith made representations in support of the objection to the extension of time requested by Rank. In summary Mr Asquith’s representations were:
The applicant has not provided a full and frank disclosure of all the circumstances surrounding the reasons for the application for extension of time. The applicant states only that a witness, Mr Tony Corcoran, will be overseas until late October 1995. The opponent does not state when Mr Corcoran departed on his overseas trip. In this regard, we note that the applicant’s evidence in answer was due on 6 October 1995, which means that Mr Corcoran departed on his overseas trip a significant period of time before the deadline of 6 October 1995, the question arises why there was delay in making the application for extension of time.
The application for extension of time refers to the amendment of the Statement of Grounds and Particulars which was made by the opponent. However, that amendment was of a minor nature, and did not change the case to be answered by the applicant.
I will refer to the submissions made at the hearing at appropriate places in the decision.
DECISION
Regulation 5.10(2) enables the Commissioner to grant an extension of time in opposition proceedings. From regulation 5.10(5) I note that an extension must not be granted unless I am reasonably satisfied that the extension of time is appropriate in all circumstances.
The factors to be considered in relation to a request for an extension of time have been set out in numerous instances elsewhere. Recent examples relevant to a request of the present type are Ferocem Pty Limited v Commissioner of Patents, (1994) AIPC 91-057 and Baroid Drilling Fluids Inc. v Fina Research Societe Anonyme, issued 13 December 1994 (unreported decision on patent application no. 634207). Stated generally, the factors to be considered are as follows:
a) Whether the person seeking the extension has made out a proper case justifying the extension; and
b) Not only the private interests of applicants for patents and opponents, but also the public interests that whilst the outcome of proceedings should be correct and just, the proceedings should not be unduly protracted.
I will now consider the grounds upon which the request for extension of time has been made:
On behalf of Syme it was submitted that “due to a combination of Mr Corcoran being unaware of the date for filing the evidence and the applicant’s attorneys being unaware, until trying to contact him on 29 September 1995, that Mr Corcoran would be away from his office from late September until 23 October 1995, it was not possible to finalise the Evidence-in-Answer by the due date.” Although it was stated that the unavailability of Mr Corcoran was unforseen, no information has been provided as to how much preparation was done by the applicant preceding the attempted contact on 29 September 1995. Also according to Mr Tatlock’s submission, if Mr Corcoran had been available the evidence would have been completed within the 3 month period. However Mr Corcoran, who arrived back from overseas on 23 October 1995, did not complete his declaration and the evidence was not served on the opponent until 4 December 1995. There is no information as to why this delay occurred. I conclude that insufficient information has been provided to enable me to be satisfied that this absence constituted extenuating circumstances such as might provide a basis to justify an extension of time.
On behalf of Syme it was submitted that “the substantial amendment to the Statement of Grounds and Particulars as originally filed of itself caused the preparation of this evidence to be more time consuming than originally expected.” While an amendment to the statement of grounds and particulars may cause uncertainty, in the present circumstances I agree with Mr Old that the amendment made does not significantly change the case the applicant has to answer. The amendment makes reference to the operational handbook for the BBC Cinetrace system. There are already numerous references to the BBC Cinetrace system in the original statement of grounds and particulars. Thus I conclude that the amendment of the statement of grounds and particulars does not provide a basis to justify an extension of time.
On behalf of Syme it was submitted that because an extension of time was allowed for the lodgement of the notice of entitlement it would be inequitable for a request for an extension of time to serve evidence in answer to be denied. I cannot accept this line of reasoning because as far as I am aware there is no basis for me to consider the present request other than on its own merits.
Overall, I consider that the reasoning provided for the delay in filing the evidence in answer is not sufficient to justify allowance of the extension of time sought.
However, in a situation where the Commissioner considered that a request for an extension of time had not been justified, Burchett J observed in Ferocem (supra) that:
“... even where an application for a particular period ... is regarded as unjustified, it seems to me a decision maker, having a discretion of the kind conferred by Regulation 5.10 should always consider whether some short period ought to be allowed, so that an applicant who may have assumed that some extension would be granted will not be shut out entirely from presenting evidence that may be immediately available.”
Taking this into account, I consider that to conclude the evidence in answer stage a limited extension of time, solely for the purpose of validating the service of the evidence which was available and served on 4 December 1995, is appropriate in all circumstances.
I therefore grant an extension of time until 4 December 1995.
The period within which the opponent may initiate actions under the Regulations in relation to the service of evidence in reply commences from the date of this decision.
COSTS
Although I have allowed a limited extension of time, I have found that a proper case to justify the extension of time sought has not been made out in terms of providing a satisfactory explanation for the delay in serving the evidence. I thus award costs against Syme Electronic Communications Pty. Limited.
Alan Moore
Delegate of the Commissioner of Patents
Patent attorneys for the applicant : A Tatlock & Associates, Carlton.
Patent attorneys for the opponent : Spruson & Ferguson, Sydney.
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