The Secretary of State for Defence in Her Brittanic Majesty's Government of the United Kingdom of Great Britain and Northern Ireland v. Rheinmetall Gmbh

[1985] APO 21

In the Matter of the Patents Act 1952 - and - In the Matter of Patent Application No. 530072 by THE SECRETARY OF STATE FOR DETENCE IN HER BRITTANIC MAJESTY'S GOVERNMENT OF THE UNITED KINGDOM OF GREAT BRITAIN AND NORTHERN IRELAND and - In the Matter of Opposition thereto hy RHEINMETALL GmbH - and - In the Matter of an Objection to an Extension of Time to Serve Evidence-in-Reply.

DECISION OF A SUPERVISING EXAMINER OF PATENTS:

Patent application No. 530072, entitled "Improvements in or Relating to Projectile Tail Fin Units", was advertised accepted on 30 June, 1983 and Notice of Opposition was lodged on 29 September, 1983 by RHEINMETALL GmbH. The service of Evidence-in-support of the opposition was completed on 27 June, 1984 and the service of Evidence-in-answer was completed on 10 January, 1985. The opponent was granted an unopposed extension of time to 10 July, 1985, in which to serve Evidence-in-reply. Subsequently the opponent applied for a further three month extension of time and the applicant objected to the extension being granted.

A hearing was set down in Canberra on Friday, 16 August, 1985 to enable the parties to be heard in this matter. Mr. A. Ward, patent attorney, of Clement Hack & Co., Melbourne, appeared on behalf of RHEINMETALL GmbH. The applicant waived its right to be personally heard at the hearing and made written submissions.

The circumstances and the grounds referred to in the application for the extension of time are as follows:

"Since receiving the Evidence-in-Answer a delay has incurred pending a visit to the opponent hy the opponent's patent attorney. Following the attorney's visit, the matter has been considered and our attorneys have been instructed regarding the final form of the evidence. In consequence of our attorney's recommendations we require further time to complete Evidence-in-reply".

The applicant's reasons for objecting to the extension of time can be summarised as follows:

1. The opponent already has had 6 months following filing of the Evidence-in-answer for service of the Evidence-in-reply.

2. The matter should have been fully explored prior to filing the Evidence-in-support and, since the Evidence-in-reply should be confined to issues raised in the evidence-in-answer, it is believed that the opponent has had adequate time for preparation of the evidence.

3. The opponent's evidence appears to be confined to argument of what was obvious at the priority date of the subject application, and the applicant is concerned that continuing delays will result in relevant facts becoming obscured by the passage of time.

4. In making the application for the extension of time, the attorney for the opponent recites as a supporting circumstance that a delay has occurred pending their visit made to the opponent. The applicant submits that an extension of time should not be granted to compensate for delays in the making of visits.

5. It is further stated in the application for the extension of time that the (opponent's) attorneys have been instructed concerning the final form of the evidence. It is submitted that, this being the case, the evidence should have been prepared and served promptly and that extensions of time for so doing should not be necessary.

The provisions of the industrial property legislation material to extensions of time in opposition proceedings have been considered hy the Federal Court in Vangedal-Nielsen v. Smith (1980) 33 ALR 144 and in Lyons v. Registrar of Trade Marks (1983) 50 ALR 496, 1 IPR 416. These decisions show that:

• The applicant seeking the allowance of an extension of time carries the burden of establishing an appropriate case to Justify that allowance. That is, the applicant for extension of time carries the onus of proof; an extension cannot be granted merely because the other party has been unable to show that an extension should not be granted.

• The applicant for extension of time must make out a "proper case justifying extension".

• In deciding whether the applicant for extension has made out a proper case Justifying extension, the Commissioner must take all relevant considerations (and no others) into account.

These cases also show that in meeting the onus upon it, the applicant for the extension of time is not limited to reliance upon facts proved by formal evidence adduced hy it. It may be able to point to background material or to material publicly available or even to facts proved by the opponent's evidence.

Factors to be considered in deciding whether an extension of time should be granted include:

• the public interest in ensuring that worthless patents are not granted because sufficient time has not been allowed to raise an objection or to prepare and serve evidence in support of an objection,

• the applicant's interest in having sufficient time to prepare an adequate defence of its application, and

• the opponent's interest in expeditiously preventing the grant of a patent which will curtail its activities.

I turn now to the situation before me.

It would appear from the statement of circumstances and grounds that the reason why Evidence-in-reply has not been lodged is because the attorney, acting on behalf of RHEINMETALL, made a visit to that company's headquarters in Dusseldorf, Germany at some time.

The statement does not say that the visit was in connection with the opposition proceedings or related to the present matter of an application for an extension of time.

Indeed at the hearing, Mr. Ward said that the visit to RHEINMETALL GmbH was not the sole reason why the partner of the firm of patent attorneys was in Germany. He said that once it was discovered that a partner of the firm Clement Hack & Co. was going to Germany in June it was decided that he should take the opportunity to explain to RHEINMETALL the differences in the law of "obviousness" as it pertains to Australia compared with Germany, and to explain in more detail the Evidence-in-answer.

In this regard the applicant's comments in paragraph 4 are pertinent. In this instance I agree that the extension of time should not be granted to compensate for the delay brought about by the patent attorney's visit to Dusseldorf.

The visit itself was not specifically for the purposes of the matters between RHEINMETALL and the applicant; if it had been then the visit could have been undertaken much sooner.

Mr. Ward also submitted at the hearing that the Evidence-in-answer raised allegations which required refutation and that the gathering of further material for Evidence-in-reply was necessary.

The Evidence-in-answer consists of two statutory declarations, one by an Australian expert in the field of ballistics and one by a ballistics expert resident in England. The declarations are not lengthy and prima facie they do not appear to contain allegations which present difficulties that could not have been addressed in the 6 months already taken to prepare Evidence-in-reply. However, as explained by Mr. Ward at the hearing, the opponent experienced difficulty in locating an expert in ballistics to reply to the declaration declaring to the state of the art in Australia. The difficulty arose because the present opponent is a private company which is involved in an opposition to al application made hy the Secretary of Defence for the United Kingdom. This applicant has links with the Australian Department of Defence which employs the majority of experts in the field of ballistics in Australia.

I can understand the opponent's difficulty in view of the fact that at the date of lodgement of application No. 530072 there was an order in force prohibiting the publication of information with respect to the subject matter of the application. This order was subsequently revoked. Moreover I can appreciate that employees of the Australian Government may not have been free to give evidence on behalf of the opponent.

I must also consider other factors in deciding whether the extension of time should be granted. Principal among these factors is the public interest in ensuring that worthless patents are not granted and another factor is that sufficient time has been allowed in which to prepare and serve evidence.

I note the applicant's comment in paragraph 1 that the opponent has already had 6 months to serve the Evidence-in-reply. I am also aware of its submission in paragraph 5 that the evidence should have been served promptly if the opponent's attorney had been instructed concerning the final form of the evidence. However at the hearing Mr. Ward gave an undertaking to complete his client's Evidence-in-reply during the time requested in the present application, if the extension was granted.

Furthermore, I believe there is a serious opposition in train which is evidenced by the expense incurred and steps taken so far by both parties, and it is therefore important that all evidence, on which the opposition is to be decided, be adduced.

After consideration of all the above factors I am satisfied that RHEINMETALL GmbH has made a case justifying an extension of time to serve Evidence-in-reply.

I therefore grant the extension of time for 3 months from 10 July, 1985 until 10 October, 1985.

My decision to grant an extension of time relied on submissions made at the hearing and I therefore award costs against RHEINMETALL GmbH.

(M. KENDALL)
Supervising Examiner of Patents
11 SEP 1985