The J.M. Smucker Co. v Natural Fruits Australia Pty Ltd

[1991] APO 9

PATENTS ACT 1952

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Application No. 594358 by THE J.M. SMUCKER CO., opposition by NATURAL FRUITS AUSTRALIA PTY LTD under section 59 and objection to extension of time under Regulations 55 and 82(b) to lodge evidence in support.

Background

Application No. 594358 in the name of The J.M. Smucker Company (Smucker) was advertised as accepted on 8 March 1990.  Notices of opposition were lodged on 17 May 1990 by Raymond Leon Lyons and on 6 June 1990 by Natural fruits Australia Pty Ltd (Natural Fruits).  This decision relates to the latter opposition.

The initial date for serving evidence-in-support of the opposition, pursuant to Regulation 55, was 6 September 1990 but the opponent was allowed extensions of time until 6 December 1990.  Evidence-in-support was received by Smucker on 10 December 1990, four days after the time allowed.

The matter was set down for hearing on 22 February 1991.  The opponent was represented at the hearing by Mr John Christiansen, patent Attorney and Mr Mark Wakeham both of Smith Shelston Beadle, patent attorneys.  The applicant was not represented at the hearing.  Mr Paul Wyk of Collison and Co, Patent Attorneys, presented written submissions.

The application for extension

The regulations governing this application are Regulations 55 and 82. 

Regulation 55 provides, inter alia, that an opponent:

"may serve on the applicant, within three months after the notice of opposition has been lodged at the Patent Office or within such further time as the Commissioner ... allows, a copy of each of the declarations on which he relies in support of his opposition; ..."

Regulation 82 provides:

"An application for an extension of time under these Regulations shall be lodged at the Patent Office -

(a)before the expiry of the time sought to be extended; or

(b)if the Commissioner is satisfied that special circumstances existed which prevented the application being made before that time, within such time as the Commissioner allows."

The Delegate of the Commissioner granted extensions of time under Regulation 55 until 6 December 1990.  Evidence-in-support was received by Smucker on 10 December 1990.

On 4 January 1991 Natural Fruits applied for an extension of time of 4 days (from 6 December to 10 December 1990) to lodge the evidence-in-support.  The conditions of Regulation 82(b) then became applicable.

Evidence and submissions

The application for extension by Natural Fruits was accompanied by a statutory declaration by Mr Wakeham. 

Mr Wakeham declares:

1. I am employed by Sandpat Services Pty Ltd, as a technical assistant in the firm Smith Shelston Beadle, hereinafter referred to as the "firm".

1. I have been responsible, under supervision, with the firm, for the conduct of the applicant's side in the opposition in the matter of Australian Patent Application No. 61616/86.

1. Evidence in support in this matter was due on 6 December 1990.

1. The evidence in support comprised statutory declarations by Heather A. Ross, Julian Madeley, Alan Thomas, Eugene Jones, Stuart R. Graham, A. Cutting and myself.  The declaration by Alan Thomas, Eugene Jones, Stuart R. Graham and A. Cutting were lodged as "evidence in part" on 5 October 1990 and the Declarations by Heather A. Ross, Julian Madeley and myself were forwarded to Collison & Co on 6 December 1990.

1. The declaration by Julian Madeley was only received by the firm on 5 December 1990.

1. The letter dated 6 December 1990, with enclosures, was mailed to Collison & Co on 6 December 1990.

1. It was intended that the letter would be sent to Messrs Collison & Co, by telefax on 6 December 1990, with the originals arriving in due course.  Unfortunately the telefax was not sent and the originals arrived at Collison & Co on 10 December 1990.

1. It is noted that no objection to the receipt out of time of the evidence in answer has been received from the opponents.

1. It is clear that circumstances are due to an omission on the part of "the firm" as it was clearly the intention to lodge the full evidence in support by the due date.

In his written submissions, Mr Wyk of Collison & Co, argued that "the Natural Fruits have not clearly and fully explained the circumstances surrounding their failure to lodge the evidence in support of the opposition by Natural Fruits to the present patent application" (No. 594358).  In conclusion, Mr Wyk says that "it is respectfully submitted that the evidence to hand has not set out the circumstances that prevented the lodging of evidence in support of their opposition, it merely states that the act was "unfortunately" not done.  It certainly does not set out any "special circumstances" as to why the evidence in support was not lodged by the due date.  It is respectfully submitted that Natural Fruits have not made a serious effort to explain the circumstances.  It is clear from the Welcome and Genentech decision that the circumstances do need to be set out and that evidence supporting the allegations should wherever possible be supplied before the commissioner can decide the question of whether special circumstances existed."

Mr Christiansen said that Natural Fruits had been granted three previous extensions of time of 1 month until 6 December 1990 and that there had been no undue delay in preparing evidence.  He said the opponent was mounting a serious opposition and had already served evidence-in-support, in part.  I accept that there has not been any undue delay and that Natural fruits are mounting a serious opposition.

I said to Mr Christiansen and Mr Wakeham, at the hearing, that in my opinion the evidence was not clear and it would be necessary to provide further information, duly sworn, to establish the facts set out in Mr Wakeham's declaration.

Support for this is in Genentech v Welcome (J L Roveta) 11 IPR 401 at page 403 where Mr Roveta said "it would be necessary to exhibit copies of the relevant portions of his personal diary and that of the records department of his firm to establish the facts set out in these paragraphs".

I also referred them to Kimberly Clark Ltd v Commissioner of Patents 13 IPR 569 where on pages 583 and 584 Jenkinson J stated what, in his opinion, an applicant needs to do to make out a proper case justifying an extension of time. That is, "an applicant would in my opinion have to go beyond a disclosure of the processes by which an agent's errors came to be committed, and would have to expose frankly, inter alia, all the conduct, knowledge, beliefs and mental processes of the applicant (or, in the case of corporation aggregate, of the relevant officers and other agents) relevant to an understanding of the way the failure to do the act or take the step occurred, or relevant to an evaluation of the reasonableness of the conduct."

The Declaration also contains a number of errors of fact, for example, the reference in paragraph 2 to "conduct of the applicant's side in the opposition" which is clearly in error.  I gave Natural Fruits an opportunity, at this time, to correct these errors.

I directed Mr Christiansen and Mr Wakeham to lodge the extra material (in declaratory form) as soon as possible.  They did so on 28 February 1991.

In his new declaration Mr Wakeham declares:

1. At that date, 3rd December, 1990, all the statutory declarations intended to comprise the opponent's evidence in support in this matter had been received.  It remained for me to review these declarations, and to draft, have prepared and execute a statutory declaration which drew together the material in the other declarations.

1. Now shown to me and marked Exhibit MAW 1 is a copy of one page of Smith Shelston Beadle's reminder list for December 1990, which was issued on 3rd December 1990.

1. The copy page referred to in paragraph 9 herein referred to the present opposition, and indicated - erroneously - that the extended due date for service of evidence in support was 11th December 1990.  That incorrect date arose, it is believed, from an error in transcribing the date from opposition information sheets supplied by patent attorneys, technical assistants or their secretaries to Smith Shelston Beadle's reminder clerk.

1. Now shown to me and marked Exhibit MAW 2 is a copy of an opposition information sheet filled out by me and includes a "Post-it Note" appended by me to this information sheet.

1. The opponent's sheet referred to in paragraph 11 herein was completed by me on or about 7th December 1990.  In error, it states the extended date for evidence in support was 8th December 1990.  The "Post-it Note" attached to the sheet calls for a reminder card to be issued on 3rd December 1990, and again in error states the due date to be 8th December 1990.  The tick on the note indicates that the card was prepared, and I believe that the card was delivered to me on 3rd December 1990.

1. Having the file in my hands, despite the aforementioned errors, the material on the file would have reflected the correct due date of 6th December 1990, although written confirmation of that date was not received from the Patent Office until 20th December 1990.

1. ... I then arranged for my secretary , Rita Berry, to prepare a covering letter, under cover of which copies of each of the remaining statutory declarations were to be transmitted to Messrs Collison & Co.

1. I have a recollection of instructing my secretary on 6th December 1990 that the letter mentioned in paragraph 16 herein and copies of the statutory declarations by myself, Julian Madeley and Heather A. Ross were to be transmitted to Messrs Collison & Co that day.  My secretary does not recall receiving such an instruction.

1. In my opinion, it is clear that an error or omission by one of two persons employed by Smith Shelston Beadle, Patent Attorneys for the opponent in this matter, led to the balance of the evidence in support in this matter not being sent by facsimile transmission to Collison & Co on 6th December 1990.  It is also my view that Collison & Co contributed to the difficulties in presenting the evidence supporting the extension application by not ever drawing the opponent's attention to the fact that the evidence was received out of time, and by not communicating with Smith Shelston Beadle that there was an objection to the granting of an extension and the detail of such an objection.

Having considered this new material, I am satisfied that the statements made in the earlier declaration about the intention to serve the evidence-in-support by the due date (6 December 1990) are correct.  Duly sworn copies of the records of Smith Shelston Beadle show that the due date for serving evidence-in-support had incorrectly been noted as 11 December 1990 in one instance and 8 December in another.

It seems to me that the errors or omissions referred to in paragraphs 9 to 17 and 30 of Mr Wakeham's second declaration are special circumstances which satisfy Regulation 82(b).

The reasons why errors or omissions are special circumstances have been fully dealt with in Genentech v Welcome Foundation Ltd 11 IPR 401.

I am satisfied that special circumstances prevented Natural Fruits from lodging evidence in support by the due date and that the requirements for an extension of time under Regulation 82(b) have been satisfied.

Conclusion

I find that the requirements for an extension of time under Regulation 82(b) have been satisfied and that Natural Fruits Australia Pty Ltd have lodged evidence-in-support of their opposition to application No. 594358.

The date for serving evidence-in-answer will be three months from the date of this decision.  This is because the applicant (The J. M. Smucker Company) will not be aware of the allowance of the extension of time under Regulation 82(b) until this decision is issued.

I make no award of costs as The J. M. Smucker Company was not represented at the hearing.

Bob Sawyer
Supervising Examiner of Patents

Patent Attorneys for the applicant: COLLISON AND CO, ADELAIDE
Patent Attorneys for the opponent : SMITH SHELSTON BEADLE,
  MELBOURNE