The Sunnyfield Association v Paul Andrew Cronk
[2004] APO 14
•5 July 2004
OFFICIAL NOTICE
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No. 759725 in the name of Paul Andrew Cronk
Title: Luminaire
Action: Opposition under section 59 by The Sunnyfield Association and an objection to an extension of time under regulation 5.10(2) to serve evidence in support
Decision: Issued 05 July 2004.
Abstract
Extension of time allowed.
There is a pending amendment to the parent of the current application to claim divisional status from another earlier application. If this is allowed, it will back date the priority date of the presently opposed patent application by approximately 18 months. Because all the alleged citations post-date the earliest priority date of the grandparent, the nature of the evidence required in the current opposition will be significantly different depending on the outcome of the amendment. Therefore, until the amendment to the parent is finalised, it is not clear what evidence the parties would require to they need to mount to challenge the current patent application.
The opponent and public interest lies in deferring evidence until the amendments are resolved.
While it could be argued that the opponent failed to properly complete their case in the first instance by failing to identify all relevant citations prior to the priority date of the "grandparent", the applicant's failure to properly claim a priority date before the substantive decision has caused the current problems and the opponent should not be punished for the applicant's conduct.PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No. 759725 by Paul Andrew Cronk, Opposition thereto under section 59 by The Sunnyfield Association and an objection to an extension of time under regulation 5.10(2) to serve evidence in support
BACKGROUND
Patent Application 759725 was filed on 17 April 2000 by Paul Andrew Cronk. It claims divisional status from Australian patent application 716550 and additional status from Australian patent 679737. The current application was advertised accepted on 17 April 2003. On 15 July 2003, a notice of opposition was filed by The Sunnyfield Association followed by the Statement of grounds and particulars on 15 October 2003. Evidence in support was initially due on 15 January 2003. The opponent requested and was granted an extension of time to serve evidence in support until 15 April 2004. On 16 April 2004, the opponent requested a second extension of time until 15 July 2004.
The applicant objected to this second extension of time application and the matter was set for hearing in Canberra on 3 June 2004. Both parties appeared by telephone. The applicant was represented by Mr Fraser Old, patent attorney of Fraser Old & Sohn, Sydney and the opponent was represented by Mr Geoff Davidson, patent attorney of Halford & Co, Sydney.
RELEVANT LAW
According to regulation 5.8(2), the time for serving evidence in answer is three months from the date of service of the evidence in support. This time may be extended under regulation 5.10(2) which states:
"(2)The Commissioner may extend the time within which the party may take a step prescribed in this Chapter (not being a step that is taken under regulation 5.3 or 5.3AA, paragraph 5.4(a) or subparagraph 5.8(1)(a)(i)):
(a) on the application of a party in the approved form; and
(b) on such reasonable terms (if any) as the Commissioner specifies; and
(c) after the party has served the application on the other party."
Regarding the factors that must be considered in deciding whether or not the Commissioner should grant an extension of time, Burchett J in Ferocem Pty Ltd v Commissioner of Patents (1994) 28 IPR 243 stated:
"The idea that such a broad discretion can validly be reduced by a decision-maker to an insistence upon 'imperative' compliance with particular requirements has repeatedly been rejected by the courts."
He concluded that:
"The determination of an application for an extension of time under reg. 5. 10(2) involves a balancing exercise, in which competing considerations must be taken into account. There are interests of the persons directly concerned in the application and opposition in question. There are also public interests, which are not necessarily ranged on the same side. They include the expeditious disposal of matters in the Patents Office, and questions of costs, of efficiency, and of insistence upon proper professional standards being maintained by those who deal with the office. But they also include, as Kitto J pointed out in Kaiser Aluminium & Chemical Corporation v The Reynolds Metal Co (1969) 120 CLR 136 at 143, ' the public interest that a serious opposition by a person entitled in fact to oppose the grant of a patent should be dealt with on the merits, rather than it should be shut out in consequence of a failure of procedure, lamentable though the failure may be'."
These "competing considerations" were also discussed in A Goninan & Co Ltd v Commissioner of Patents (1997) 38 IPR 213 where Sackville J adopted the position that the decision-maker was required to give proper, realistic and genuine consideration to the public interest generally and specifically to the opposition proceeding being determined on its merits. In respect of this point, he stated:
"In order for the Commissioner or his delegate to give proper, genuine and realistic consideration to the aspect of public interest I have identified, it is necessary to consider the nature of the evidence the opponent seeks to adduce and the significance of that evidence for the opposition proceedings. I do not mean to suggest that the evidence has to be scrutinised in the same way as would occur at a hearing on the merits. But unless the delegate forms a view as to the issues addressed by the proposed evidence, and whether that evidence is likely to be important in the opposition proceedings, it is difficult to see how proper consideration can be given to the public interest in having such proceedings being determined on its merits."
The relevant principles developed in these decisions may be summarised as follows:
·The broad discretion afforded by Regulation 5.10 cannot be reduced to insistence on imperative compliance with particular requirements;
·The exercise of this discretionary power requires proper, genuine and realistic consideration of all the relevant aspects that pertain to the application;
·The provision of a satisfactory explanation of the delay is a relevant consideration, but is not mandatory;
·The public interest in determining a serious opposition on its merits is a relevant consideration and must be balanced with the requirement that matters before the patent office should be dealt with in an efficient, orderly manner and not be unduly prolonged;
·The interests of the opponent, the applicant and any other parties are a relevant consideration.
These principles were echoed in National Starch & Chemical Company v Commissioner of Patents [2001] FCA 33. I will apply these general principles from the above cases to the present facts, recognising that I must not either grant the extension or refuse it without giving proper consideration to all relevant circumstances.
PRELIMINARY MATTERS
The applicant argued that the request for an extension of time under regulation 5.10(2) was invalid because:
a)the request was filed one day late and therefore outside the time limits prescribed by regulation 5.8;
b)the request failed to mention the appropriate regulation in the request and therefore was not an approved form and did not meet the requirements of regulation 5.10(2)(a);
I do not accept either argument. There is no prescriptive requirement under regulation 5.10 for an extension to be filed before the end of an expired period. Further, and in contrast to the 1952 Patents Act, there is also no legislative requirement for the person requesting the extension to demonstrate extenuating circumstances for a late filing of their request.
I note that a late filing of an extension request could be a relevant factor that the Commissioner may consider in deciding whether an extension is appropriate in all the circumstances. However, filing an extension request one day outside the extended period just appears to be the type of "lamentable" mistake referred to in Kaiser Aluminium & Chemical Corporation v The Reynolds Metal Co (1969) 120 CLR 136 at 143 which would not invalidate the request:
"the public interest that a serious opposition by a person entitled in fact to oppose the grant of a patent should be dealt with on the merits, rather than it should be shut out in consequence of a failure of procedure, lamentable though the failure may be'."
The applicant argued that because the request was filed one day late, the period referred to in regulation 5.8 had ended and, in those circumstances, regulation 5.12(2) compels the Commissioner to set the matter for hearing. However, the periods prescribed under regulation 5.8 are extendible under regulation 5.10. Until an outstanding request under regulation 5.10 is finally determined, it is not possible to determine whether the time limits prescribed under regulation 5.8 have expired and regulation 5.12 is not enlivened. This is regardless of when the regulation 5.10 request is filed because, as noted above, there is no legislative bar to applying for an extension of time outside the period prescribed in regulation 5.8 (see British Sky Broadcasting Ltd v Registrar of Trade Marks [2002] FCA 1556 (13 December 2002); (2003) AIPC 91-840).
The applicant's second argument that the form was not "approved" as required by regulation 5.10(2)(a) is also misguided. The dictionary in Schedule 1 of the Patents Act (1990) simply defines an "approved form" as a form approved by the Commissioner for the purposes of the provision in which the expression appears. There is no prescriptive requirement in this definition for a form to explicitly mention a particular regulation in any form. The Commissioner's long standing practice is to approve a "form" where the type of the request and all the information she requires to process the request can be readily ascertained. I have no difficulty understanding from the opponent's letter the nature of their request and the reasons for it. My view is that it complies with regulation 5.10(2).
I also note that even if I were not correct regarding the nature of the form, it is a technical problem that can easily be rectified and is the type of "form over substance" argument that is warned about in Kaiser Aluminium & Chemical Corporation v The Reynolds Metal Co [supra]. The failure to file an approved form does not mean that a request would be refused, it simply means that there is no pending request to be determined. The remedy would simply be to have the opponent file a more formal "form" because, as noted above, there is no legislative bar to filing regulation 5.10 requests out of time. The Commissioner would then continue to process the new form delaying the current proceedings with no perceived benefit.
RELATED APPLICATIONS
The current application is a divisional application of 716550 (the "parent") and an additional application of 64800/94 (679937 -the "grandparent"). The table below summarises the relevant history of the three related cases:
number earliest priority
datefiling date relationship
to current
applicationPublication
DateCurrent status 64800/94 (679737) 18/11/93 20/06/94 Basis of additional status for current application
25/05/95 patent sealed on 30 July 1997 without being opposed
716550 24/05/95 24/05/95
(PCT application)Parent of current application 28/11/96 notice of opposition filed on 29 May 2000 by The Sunnyfield Association - decision issued on 1 August 2003 found opposition successful in relation to some of the claims - amendments pending before final determination
759725 24/05/95 17/04/00 Current application 27/07/00 notice of opposition filed on 15 July 2003 - awaiting evidence in support OPPOSITION ON PARENT APPLICATION 716550
As noted in the table, the parent application (716550) was opposed on 29 May 2000 by The Sunnyfield Association and a substantive decision was issued by a delegate of the Commissioner on 1 August 2003 (Paul Andrew Cronk v The Sunnyfield Association 2003 APO 27). The delegate concluded that claims 1-5 and 11-15 of the parent application were not novel ("whole of contents" novelty) in light of the applicant's own earlier Australian patent application 64800/94 (679937).
The delegate also found that the sale of "Adjust-A-Shade" at least from 16 May 1995 and at some stage prior to that date constituted a prior use of the invention and thereby deprived claims 1-5, 11-15 of their novelty. This product was commercially marketed by the opponent under exclusive license from the applicant prior to the priority date of the parent application. The two parties fell into dispute over the contract and this was the subject of a legal decision in the NSW Supreme Court on 22 October 1999 (Paul Andrew Cronk & Ors v The Sunnyfield Association T/AsAblite Industries [1999] NSW SC 1038).
The Supreme Court action concerned the legality of the contract between the parties and is not directly relevant to the validity to any of the patent applications. However, it does provide some useful background to the prior use disclosures which were used to invalidate certain claims in the opposition to the parent application. Some key dates are as follows:
18 November 1993: Cronk filed Patent application No PM 2504, later to be associated with Australian patent application 64800/94;
17 February 1994: Declaration of Confidentiality with respect to Adjustable Reflector PM 2504 was signed;
16 May 1994: a Market Research agreement was signed between the parties;
20 June 1994: a complete specification for Australian patent application 64800/94 was filed;
22 March 1995: the first invoice date for the sale of the Adjust-A-Shade is recorded;
24 May 1995: PCT/AU95/00303 was filed, establishing the priority date for subsequent Australian patent application 716550 (and current application 759725);
25 May 1995: Australian patent application No 64800/94 is published by the Australian Patent Office;
Neither the prior use disclosures nor Australian patent application 64800/94 disclosed the feature of a heat shield. The hearing officer found that claims containing this feature were not anticipated. Having found that there was patentable subject matter in the claims of the parent, the hearing officer allowed the applicant an opportunity an opportunity to amend.
However, the applicant did not restrict the scope of their parent claims to a reflector with a heat shield but instead proposed amendments to amend the patent request form to claim divisional status from the grandparent application. If this amendment is allowed, the priority date of the parent application will change and based on the dates above, the whole of contents novelty and prior use citations will likely be obviated. The amendment in the parent is currently being opposed by the opponent.
APPLICATION FOR EXTENSION OF TIME
In the reasons provided by the opponent in its current extension of time request, they noted that if the amendment to the parent application is allowed, it will back date the priority date of the presently opposed patent application (which claims divisional status from its parent) by approximately 18 months. The opponent argued that further time was required to determine how the opposed amendment would affect evidence in support and to serve and file that evidence.
DISCUSSION
I note that all of the documents listed as possible citations in the current statement of grounds and particulars were also cited in the parent opposition. This is not surprising. The disclosures of the parent and the present divisional application are very similar and in fact, figure 1 of the parent application is the same as figure 3 of this divisional application. There appears to be some development in the heat shield in the divisional compared with the parent but this development is not reflected in the claims. There are also some differences in the claims of the parent and divisional application but as noted in Annex 1 (appended to this decision), none of the differences appear significant enough (at least on a cursory level) to affect the novelty conclusions made in respect of the parent.
In contrast to the parent application, the current application claims additional status from the grandparent. The reason for claiming additional status appears to be have been an attempt during examination to overcome a novelty citation based on the grandparent application. In this regard, the "normal" route of claiming divisional status from the earlier application was closed because the current application was filed after the grandparent was sealed.
I am not convinced that the claims in the current application are properly entitled to additional status. Apart from the heat shield which is not defined in most of the divisional claims, there does not appear to be any other modification or improvement in the divisional over the grandparent as required by section 81(1). In any case, claiming additional status merely precludes the grandparent being used in an inventive step objection against the current application (section 25). It will not affect the priority date of the current application (which currently, at its earliest, is the filing date of the parent) and would therefore not overcome a novelty objection based on the grandparent.
The alleged novelty anticipations in both the parent and divisional applications are all before their current earliest priority dates (24 May 1995) but after the earliest priority date of the grandparent application (18 November 1993). If an amendment is made to the parent to make it a divisional application of the grandparent, then both the parent and divisional applications potentially gain the earliest priority date of the grandparent. This could significantly affect the nature of the evidence sought to be adduced in both the parent and divisional oppositions since all of the current citations would post-date the earliest priority date and potentially would become irrelevant. There might also be the need for further evidence to challenge the priority date of the grandparent which would not exist if the amendment to the patent request were not allowed.
Applicant's interest
I note that the applicant was well aware of the grandparent application even at filing of the parent application. They also knew when the statement of grounds and particulars was filed on the parent that all of the citations raised by the opponent were published after the earliest priority date of the grandparent application. There was nothing to prevent the applicant from claiming divisional status in the parent a long time prior to the substantive decision being issued on the parent and it is not evident to me why the applicant failed to claim divisional status in the parent at a much earlier stage in the parent prosecution. It has caused significant unnecessary costs for the opponent and that this might be a factor that the Commissioner would consider in an award of costs.
I am also extremely concerned at the applicant's suggestion at the current hearing that the substantive decision was fully determinative of the issues in the parent and that the opponent has no right to submit further evidence to address a new priority date. This implies that the applicant had a deliberate strategy to claim divisional status in the parent after the substantive decision was issued which if true, is an abuse of the system and totally reprehensible.
In any case, the applicant's argument appears to be fundamentally flawed. If the substantive decision was fully determinative of the issues in the parent, then the parent would not be able to back claim priority as the applicant is now attempting to do. In fact, the substantive hearing has only determined the parent opposition based on a certain priority date and particular disclosures made after that date. There is no bar to the Commissioner considering the validity of any new priority date claimed nor determining whether claims are novel and/or inventive based on disclosures which were made before that new priority date.
The principles of natural justice dictate that the opponent has a right to file relevant further evidence after a substantive hearing if the priority date of the application is back-dated. While this may be against the applicant's interest because of potential delays in both the current and parent opposition proceedings, my view is that applicant's conduct has caused the problem and their interests are necessarily secondary to both the opponent and public interest.
Opponent's interest
The opponent's interests reside in being able to complete their evidence in support. They have already filed evidence in the parent opposition and my view is that much of this is likely to be relevant in the current matter. The additional material being sought is apparently related to the potential new priority date which might exist as a result of the pending amendment on the parent application to claim divisional status from the grandparent.
The opponent should have been aware that one of the ways to overcome an earlier citation by the same applicant is to claim divisional status from the citation as this is not an uncommon practice during examination. Given this, I would have thought a prudent opponent would avoid this problem by identifying all possible novelty anticipations before the earliest priority date of the grandparent at the time of filing the statements of grounds and particulars in both the parent and current oppositions. In that sense, it could be argued that the opponent failed to properly complete their case in the first instance and should not be given a "second bite of the cherry" to locate further evidence at this stage.
However, while I am somewhat disappointed by the opponent's piece meal approach to their evidence, they should not be expected to pre-empt the applicant's case or to argue it for them. The applicant's failure to properly claim a priority date before the substantive decision has caused the current problems and the opponent should not be punished for the applicant's conduct. There was no necessity for the opponent to challenge the earliest priority date of the grandparent nor to produce material which pre-dated the earliest priority date of the grandparent prior to the proposed amendment to the parent patent request. My prima facie view is that the opponent should therefore be given the benefit of the doubt and afforded an opportunity to provide such evidence if, and when, this amendment is allowed.
Public interest
The public interest lies in determining a serious opposition on its merits. Given the similarity between the divisional and parent applications, at least some of the claims of the divisional are likely to be invalid based on the current priority date and evidence provided in the parent opposition. It is therefore in the public interest that all evidence in the parent application is to be considered in the divisional application. I also note that there may also be other citations that pre-date the earliest priority date of the grandparent. It is in the public interest to provide the opponent with a short opportunity to find these if they are available.
In addition, until the amendment to the parent is finalised (and this is currently being opposed), the priority date of the parent and divisional cannot be fully determined. In such a case, it is not clear what evidence the parties would require to mount a challenge to the current patent application. Tamberlin J. in University of Georgia Research Foundation Inc v BioChem Pharma [2001] FCA 688, noted that a decision to delay the substantive matter because of related proceedings is based on:
"the general principle of avoiding a multiplicity of proceedings and the wastage of time and expense that may arise from the presentation and consideration of what may well prove to be irrelevant evidence or material"
In my view, the section 104 amendment to the patent request of the parent application is likely to have a significant effect on the evidence which will need to be adduced in the current opposition. Given this, it is in the public interest to defer evidence until the amendment of the patent request has been finally determined.
DECISION
The amendment in the parent application to claim divisional status on the grandparent will likely have a marked effect in the current opposition, where all the citations appear to post-date the earliest priority date of the parent. Depending on the outcome of the amendment (and this is currently being opposed), the nature of the evidence required in the current opposition will be significantly different. Until the amendment to the parent is finalised, it is not clear what evidence the parties would require to mount a challenge to the current patent application. The opponent and public interest lies in deferring evidence until the amendments are resolved. I therefore find that an extension of time under regulation 5.10(2) is appropriate in all the circumstances and I grant an extension until 15 July 2004 to serve evidence in support.
I also note that there is considerable acrimony between the parties and I wonder whether this has affected both of their behaviours to the detriment of handling both the parent and current oppositions in a sensible manner. In such circumstances, it is incumbent on the Commissioner to intervene and ensure that matters are properly progressed. To that end, I propose the following directions under regulation 5.10(1) in relation to the parent and divisional application:
i. All evidence in the parent application (716550) is to be deemed as filed in the divisional application (759725).
ii. Otherwise, the substantive opposition is stayed until the final outcome of the amendments filed on 3 September 2003 in relation to the parent application (716550) is known;
iii. If the amendment to the patent request is allowed, the opponent has 2 months from the date the Commissioner advises the parties of the allowance of the amendments to serve further evidence in support of BOTH oppositions 716550 and 759725. Once the further evidence has been served, the applicant will have 2 months from date of service of the further evidence in support to serve and file evidence in response in both oppositions.
iv. If the amendments are withdrawn or refused, the divisional matter will go to hearing based on the evidence filed on the parent opposition.
v. Regardless of the outcome of the amendments, the substantive hearing on the divisional matter will be heard concurrently with the final determination on the parent application and one decision issued.
Both parties are invited to provide written comments in relation to the above directions or request to be heard. In absence of a response within 14 days of the date of this decision, I will assume that the parties agree to the process as outlined above and will proceed to issue the proposed directions.
COSTS
In matters before the Commissioner, costs generally follow the event. As the opponent was successful in their request for an extension of time, I award costs against the applicant.
Karen Ayers
Delegate of the Commissioner of Patents
05 July 2004
Patent attorneys for the applicant : Fraser Old and Sohn
Patent attorneys for the opponent : Halford and CoANNEX 1
Comparison of claim 1 in the parent and divisional application
Claim 1 of the parent defines:
A lamp reflector with adjustable curvature including
a pair of resilient sheet members each having a reflective surface;
connecting means for connecting said sheet members together along a common spine so that the sheet members have unflexed positions wherein said reflective surfaces are transverse to each other, each sheet member being adapted to be flexed from said unflexed position to a fully flexed position which forms the corresponding reflective surface into an inside curve with maximum curvature; and
adjustable retaining means connected to said sheet members for retaining said sheet members at a plurality of a selected flexed positions between said unflexed and fully flexed position.
Claim 1 of the divisional defines:
A luminaire having a reflector device comprising a pair of resilient sheet members positioned one to either side of a spine in the manner of the pages of a book, and a lamp holder positioned to align a lamp having a longitudinal axis with said lamp axis being substantially parallel to said spine and spaced to one side therefrom, said sheets when in an unbiased condition lying substantially in two planes intersecting at an obtuse angle, and in operation being flexed and retained against the bias of their normal resilience to create a doubly arched configuration which forms a reflective surface, said surface receiving light emitted from said lamp towards said spine and reflecting same past and beyond said lamp.
Aside from drafting style differences, there appears to be 3 differences in the two claims:
a)The parent claims a reflector device whereas the divisional claims the whole lighting unit including the reflector device and a lamp holder , for example;
b)The term "doubly arched configuration " in the divisional is different from the term "inside curve with maximum curvature";
c)The parent claim defines an adjustable retaining means which is not included in the divisional claim;
None of these difference would appear to significantly affect the novelty outcome. Figure 1 in the novelty citation (64800/94) clearly discloses the reflector device in the full lighting unit and shows the flexed position of the resilient sheet members in a double arched configuration. While claim 1 of the divisional does not explicitly include "an adjustable retaining means", this is not excluded from the claims and is described in figure 3 of the divisional application.
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