The Electricity Council v. Brown Boveri (Australia) Pty. Ltd.

[1988] APO 18

In the Matter of the Patents Act 1952 - and In the Matter of Patent Application No. 558283 by THE ELECTRICITY COUNCIL - and - In the Matter of Opposition thereto by BROWN BOVERI (AUSTRALIA) PTY. LTD. - and - In the Matter of Objection to Extension of Time for Serving Evidence in Support.

 

DECISION SUPERVISING EXAMINER OF PATENTS:

Patent application 558283 in the name of THE ELECTRICITY COUNCIL was advertised accepted in the AOJP of 22 January 1987. An application for an Extension of Time within which to lodge Notice of Opposition was lodged on 10 April, 1987 and subsequently allowed. The Notice of Opposition was lodged by BROWN BOVERI (AUSTRALIA) PTY. LTD. (BROWN BOVERI), on 21 July, 1987. Evidence-in-support should therefore have been served by 21 October, 1987, however extensions were allowed under Reg. 55 to extend the date for service to 21 February, 1988. A further extension was requested on 16 February, 1988 to extend the date to 21 May, 1988, to which the applicant objected. A hearing was set down for Canberra on 19 April, 1988. However by mutual agreement both parties chose to rely on written submissions.

To put the circumstances and grounds upon which the application is made into proper perspective the reasons stated in all the applications are given below.

First Extension to 21 January 1988:

"A number of declarations have been prepared however further evidence is in preparation and further time is required to finalise the form of this evidence and forward the associated declarations to the declarants for approval and execution."

Second Extension to 21 February 1988:

"Evidence of Common General Knowledge in the art in Australia is continuing to be collected and further time is required to complete collection and preparation of this evidence."

Third Opposed Extension:

"we have commenced negotiations with the Applicant for this patent with a view to settling this matter. Further time is required to complete these negotiations and to collect and prepare our evidence in support."

The opponent in its written submission expands on these grounds in order to follow the requirements set down by the Federal Court in Vangedal-Neilson v. Smith (Commissioner or Patents) and Another,(1980) 33 ALR 144.

Firstly, the opponent submitted that a serious opposition is foreshadowed. It is the owner of Australian Patent 552405 and it submitted that this patent discloses the major features of the applicant's specification. However, evidence was sought to show that several minor features were matters of common general knowledge and time was required to complete the evidence with appropriate declarations from experts. The total extension requested including this opposed one was 7 months. The reasons given in the first extension request were general, the time required to collect evidence of common general knowledge was stated in the second, but omitted again in this third request. Nevertheless the total extension sought was not an excessively long period and I note the evidence has been served in this proposed extension period.

The applicant referred to the application for an Extension of Time within which to lodge Notice of Opposition, made on 10 April, 1987, in which the opponent stated:

"A certain amount of evidentiary material has been collated and forwarded to our Attorneys for their evaluation and decision as to whether an Opposition is warranted."

On this basis the applicant submitted:

"the opponent has indicated that it was in the possession of material on which it intended to base its opposition some 10 months prior to lodging the present application for extension of time. In our opinion, the opponent has had ample time to prepare its evidence-in- support and we believe that the delay incurred is unreasonable."

The applicant appears to seek consideration of the 3 month extension of time allowed to lodge Notice of opposition as part of the time to prepare evidence in support. I cannot concur with this view as the Act in section 59(1) and in regulation 55(a) deal with these matters separately.

Furthermore the applicant attacks the argument that the opponent has made out a proper case. This is based primarily on the statement of grounds given in the request for this extension, "that further time is required to complete negotiations with the applicant." The applicant lodged a declaration by the Commercial Manager (Research) of the Company stating that no negotiations with the opponent had been authorised or started. The opponent in its submission elaborated on this matter by referring to "actively pursuing contact", "little success in contacting the person responsible" and therefore "unable to open any meaningful negotiations". The statement is therefore incorrect or at least misleading in inferring that negotiations were underway. Nevertheless the statement does also contain the phrase: "further time is required to collect and prepare our evidence in support", which although very general, is not misleading or incorrect. While it is regrettable that the statements did not give a fuller explanation of the delays, in the light of the comments made in the submission the opponent has made a proper case and is clearly a serious opponent.

The other considerations flowing from the Vangedal-Nielson decision concern the public interest, in ensuring that worthless patents are not granted while the process does not involve unreasonable delays which can also adversely affect the applicant. I have concluded in this case that the total time taken to lodge the evidence-in-support is not excessive and thus the public interest will be best served by allowing the extension to consider the evidence already lodged.

The misleading nature of the opponent's statement of the grounds for the Extension of Time I consider to be some justification for the patent applicant's objection thereto, and consequently I award costs against Brown Boveri. Also, I allow three months from the date of this decision for the applicant to lodge its evidence-in-answer.

(J.I. WELSH)

Supervising Examiner of Patents

1 JUN 1988

Attorneys for the patent applicant: Davies & Collison

Attorneys for the opponent Shelston Waters