Tetra Pak International AB v J. Gadsden Pty Ltd

[1984] APO 19

In the Matter of the Patents Act 1952

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In the Matter of Patent Application No. 530946 by TETRA PAK INTERNATIONAL AB

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In the Matter of Opposition thereto by

J. GADSDEN PTY. LTD.

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In the Matter of an Extension of Time within which to Serve Evidence‑in‑Support.

DECISION OF A SUPERVISING EXAMINER OF PATENTS:
         Application No. 530946 relating to "MACHINE FOR APPLICATION OF SUCTION TUBES TO PACKING CONTAINERS" was lodged on 30 January, 1979 by TETRA PAK INTERNATIONAL AB (the applicant).  Acceptance of the application was advertised in the Official Journal on 4 August, 1983.
         On 3 November, 1983 J. Gadsden Pty. Ltd. (Gadsden) lodged an application for a 3 month extension of time in which to lodge notice of opposition.  The applicant did not object to the extension application and an extension of time was granted to 4 February, 1984.  The notice of opposition was lodged on 6 February, 1984, the 4th being a Saturday.  Gadsden then lodged an application for extension of time in which to "lodge (sic) evidence in support".  The circumstances in which and the grounds upon which this application was made were given as:

"Substantial work has been done in identifying the prior art available in Australia at the priority date of the application.  Additional time is required for this purpose, to process the information received and obtain the commentary of the selected expert witnesses."

The applicant did not object to this extension of time application however, through its patent attorney (Mr. S.K. Plymin of Edwd. Waters & Sons), informed the opponent patent attorney (Mr. M.J. Royal of Phillips, Ormonde & Fitzpatrick), in a letter dated 18 July, 1984, that:

"Our client has not objected to the extension of time sought, however, our client wishes to place the opponent on notice that they will not agree to any further extension of time ..."

The requested extension of 3 months was granted thus taking the time for service of evidence‑in‑support to 6 August, 1984.
         On 2 August, 1984 the opponent lodged a further application for extension of time of 3 months in which to serve evidence‑in‑support.  The circumstance and ground in respect of the application for extension given in the form 11 lodged read as follows:

1. Notice of Opposition was lodged on 6 February, 1984.  Since then substantial progress has been made in locating  information about prior art techniques for affixing drinking straws to containers and the like.  However opponent has been advised that prior art techniques for attaching items other than straws to objects such as containers is relevant to show that what is claimed is obvious.  A full enquiry to reveal the true state of the art in Australia as at the priority date of the claims of the application is underway and substantial progress has been made.  Additional time is required to complete the enquiry and to ensure that material relevant for consideration is not overlooked.

2.To prepare adequate proofs of evidence.

3.To draw declarations.

4.To have declarations settled, executed and served."

The patent applicant, Tetra Pak, objected to this application for extension and the matter was set down for hearing.  However both parties sought to rely on written submissions and this decision is based on these submissions.
         It is convenient to set out the respective arguments in full.  The submissions made on behalf of the patent applicant, in a letter dated 4 September, 1984, reads as follows:

"We wish to advise that the applicant does not wish to be heard at the Hearing and will not therefore be represented.  We would, however, appreciate having the following comments considered.

In relation to this matter the opponent has had an initial three month period followed by six months of extensions after the filing of the Notice of Opposition.  During this period there has apparently been no attempt by the opponent to establish any case to support the opposition filed.  There has been no formal or informal advice from the opponent on any material which is considered relevant by the opponent to this opposition.  We respectfully consider that the time available to the opponent to date has been quite adequate to at least establish some form of evidence to support the opposition.  The reasons expressed in the most recent application for an extension of time give clear evidence that the opponent does not have grounds for opposing this particular patent application.  It is stated in the reasons that additional time is required to continue with a full inquiry to reveal the true state of the art in Australia.  It would appear from these statements that the opponent does not have a case for opposing this application but is desperately searching for some material which would provide basis for this opposition.  We respectfully believe that extensions of time to file Evidence‑

in‑Support of an opposition should not be allowed purely on the basis of allowing an opponent time to try and find a case to support an opposition.

As we feel the opponent's extensions are simply delaying the grant of this patent to the detriment of the patent applicant we would ask that the extension of time be refused."

The opponent's submissions are set out in a letter dated 11 September, 1984 made by its patent attorney; it reads as follows:

"We wish to make submissions in support of our application for an extension of time within which to serve evidence in support of this opposition and begin by referring to the submission of 4 September, 1984 on behalf of the applicant.

The submissions begin by referring to the period prior to the filing of the Notice of Opposition.  In our submission the time that expired before the filing of Notice of Opposition is irrelevant to the question of whether the present extension application should be considered favourably.  The extension is required for the purpose of serving evidence.  There may be many reasons why it is inappropriate to prepare that evidence prior to the filing of Notice of Opposition.  Until the decision is made to lodge the Notice of Opposition then any effort expended prior to that date in the preparation of evidence may be wasted.  Thus, it is only the period after the filing of the Notice of Opposition that should be considered for the purpose of determining whether the time allowed so far has been adequate or inadequate.

The submissions next go on to refer to "six months of extensions after the filing of the Notice of Opposition".  This is incorrect.  The regulations provide for a period of three months to serve evidence in support.  There has been only one extension and that has been an extension of three months to 6 August, 1984.  The current application to which objection has been raised would take the total to six.

The submissions then go on to say "During this period there has apparently been no attempt by the opponent to establish any case".  This is patently incorrect and there is no basis for drawing this assumption.  Indeed the application itself refers to substantial progress and to the need for further enquiry.

The submissions then go on to refer to there being "no formal or informal advice from the opponent on any material which is considered relevant".  We submit that it is not a requirement on the opponent to advise the other party of the evidence that it has gathered and has available in any informal way.  Indeed it is generally preferred that the entire evidence in support be lodged at the one time.

The submissions then go on to refer to there being evidence that the opponent does not have grounds for opposing this particular patent application.  Again this is patently incorrect.  The application for extension clearly sets out that the additional time is required to complete the enquiries and to ensure that material relevant for consideration is not overlooked.  This says nothing about the material that has been located already.

In our submission where a serious opposition has been lodged, the matter should not be determined on the basis of a formality such as this, unless it is clearly apparent that this is the proper course.  The onus is to that extent on the objector to prove his points and we submit that in the present case this has not been done."

The relevant date for considering the amount of time the opponent has had to prepare its evidence is the date of lodgement of the notice of opposition.  Thus the opponent has had 3 months pursuant to reg. 55(1), and a further 3 months as a result of the granting of an extension of time.  The opponent is now seeking a further 3 months.  It is submitted on behalf of the patent applicant that there has "apparently been no attempt by the opponent to establish any case ...".  It is further submitted that the reasons expressed in the present application for extension of time give clear evidence that the opponent does not have grounds for opposing and that it "would appear from these statements that the opponent does not have a case for opposing this application but is desperately searching for some material which would provide basis for this opposition".
The circumstances and reasons given in the previous extension of time application, quoted above, referred to "substantial work" being done in identifying the prior art available in Australia at the priority date. The present application for extension reiterates that "substantial progress" has been made in locating information about prior art techniques. It further indicates that the opponent has been advised that prior art techniques for attaching items other than straws to objects such as containers is relevant in relation to obviousness. I do not consider that these reasons suggest "desperation" on the part of the opponent in its quest to find evidence in support of its opposition. Since the judgement in Minnesota Mining and Manufacturing Company and another v. Bieirsdorf (Australia) Ltd. 144 CLR 253, the job of preparing evidence in relation to the ground of obviousness has become more difficult and it is conceivable that evidence collecting may be delayed as a result. This is not to say that an applicant for extension can automatically obtain an extension by simply referring to the difficulty in obtaining evidence in relation to obviousness. Consideration must, be given, inter alia, to the amount of time the opponent has already had to prepare its evidence; in the present case, the opponent has had six months to prepare its evidence. In these circumstances I consider that it is reasonable to allow the opponent a further 3 months in which to make a full enquiry to reveal the true state of the art, prepare adequate proofs of evidence, draw declarations, and settle, execute and serve the declarations. Accordingly I grant the extension requested. I would make the observation however that the opponent has been forewarned of the applicant's attitude to any application for extension of time to serve evidence‑in‑support and that the opponent should consider this in any future application, particularly in relation to the reasons and circumstances set out in any such future application.

(P.A. KILBORN)