The University of Newcastle Research Associates Limited

[2001] APO 64

OFFICIAL NOTICE

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Application  :          No. 86188/98 in the name of The University of Newcastle Research Associates Limited

Title:          Conversion of Chlorinated, Brominated and/or Iodinated Fluorocarbons and Hydrofluorocarbons

Action:          Application under section 223(2) by Eric Miles Kennedy for an extension of time in which to enter the national phase.

Decision:          Issued  .

AbstractThe applicant, TUNRA, chose to let application 86188/98 lapse.  The inventor, Dr Eric Miles Kennedy, applied for an extension of time in which to enter the national phase after the application had lapsed.  It was found that the failure to enter the national phase by the due date was not because of an error or omission by the person concerned or their agent or attorney.  There is no evidence of any error or omission on the part of TUNRA relating to the failure to enter the national phase.  Consequently there is no evidence of a relevant error or omission to enliven the provisions of section 223(2)(a).

With regard to section 223(2)(b), it is well established that this provision is a force majeure provision.  A deliberate decision by the applicant not to enter the national phase is not a circumstance beyond the control of the person concerned.  Though a disinterested party has argued that this was a circumstance beyond their control, section 223(2)(b) should not be read so as to allow a party, other than the applicant or an opponent, to intervene in the prosecution of a patent application.

Accordingly, the application under section 223(2) by Eric Miles Kennedy for an extension of time in which to enter the national phase was denied.

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Patent Application No. 86188/98 in the name of The University of Newcastle Research Associates Limited and an application under section 223(2) by Eric Miles Kennedy for an extension of time in which to enter the national phase.

BACKGROUND

Patent application 86188/98 was filed by The University of Newcastle Research Associates Limited (hereinafter referred to as TUNRA) under the PCT on 7 August 1998 and given international application number PCT/AU98/00623.  As Australia was elected in the demand for International Preliminary Examination, the final date for entering the national phase in Australia was 7 March 2000.

On 7 August 2000, Dr Eric Miles Kennedy, a senior lecturer from the Department of Engineering at the University of Newcastle, filed an application for an extension of time under section 223(2) in which to enter the national phase.  A statutory declaration accompanied the request.  Dr Kennedy also asked that the application proceed in the name of Pacifitech Pty Ltd (hereinafter referred to as Pacifitech), a company of which Dr Kennedy is a director.

On 6 September 2000, IP Australia informed Dr Kennedy that a delegate of the Commissioner was not satisfied that the extension sought was justified by the material supplied in support.  The delegate invited Dr Kennedy to provide further material in support of the request, and this was filed on 3 November 2000.  The further material consisted of a second statutory declaration by Dr Kennedy and copies of correspondence between TUNRA and their attorneys.  Also included was a copy of a letter from Soozy J Smith, CEO of TUNRA, informing Dr Kennedy that “….TUNRA will no longer fund this application and Baldwin Shelston Waters has been advised to allow the application to lapse”.

IP Australia issued another letter to Dr Kennedy on 28 November 2000.  This letter stated “….there is manifestly no error or omission that can be identified that would allow the delegate to exercise the discretionary power available under S223”.  The delegate also considered whether there were any grounds for granting the extension based on ‘circumstances beyond control’.  No such grounds were found.  Accordingly, Dr Kennedy was informed that “….the documents filed in relation to the extension of time request fail to provide sufficient information that would justify the extension being granted, at this time”.

The matter was set for hearing on 15 October 2001.  Dr Kennedy chose not to attend in person but instead rely on written submissions by his solicitor, Mr Mark Kennedy of Mark Kennedy & Co, Sydney.

To avoid any confusion, I will refer to Eric Miles Kennedy as ‘Dr Kennedy’ and his solicitor, Mark Kennedy, as ‘Mr Kennedy’ in this decision.

THE APPLICATION FOR EXTENSION OF TIME

The reasons for the application for an extension of time are detailed in the first statutory declaration by Dr Kennedy filed on 7 August 2000.

7.I am applying for this extension of time as the three inventors of the technology have incorporated a company, Pacifitech Pty Ltd, which is in the process of taking an assignment of the Application from the Applicant.  Following is an account of the history of our arrangements with the Applicant, the Application’s progress and the circumstances leading the (sic) error or omission of the Applicant which resulted in the Application lapsing on 7 February 2000.

Paragraphs 8 to 21 discuss the prosecution of the international application up to and including the International Preliminary Examination Report.  The declaration then states:

22.I believe that the Applicant then addressed the matters raised regarding amendment of the Application and sought further advice as to entering the national phase in overseas countries.

23.I have been shown documents which confirm that Baldwin Shelston Waters wrote again to the applicant on 13 December reminding the Applicant of the impending deadline.  Neither Dr Dlugogorski, Professor Howe nor myself were copied with any of this correspondence at the time it was received by the Applicant.

24.I have been informed that a meeting took place on 13 January 2000 where Baldwin Shelston Waters advised the Applicant that the estimated cost of the international phase would be up to $100,000.

25.On 1 February 2000, the Applicant wrote to myself and Professor Howe advising us that they were no longer prepared to finance the Application.

26.At this time I was in Sydney at an international conference.  However, I requested to the Applicant that they assign the intellectual property in the technology to Dr Dlugogorski, Professor Howe and myself so that we could pursue the Application in our own right.

27.It is my belief that these circumstances constitute an error or omission on the part of the applicant as Dr Dlugogorski, Professor Howe and I should have been informed of the Applicant’s decision well before the expiry date to allow us to take an assignment of the Application and pursue the intellectual property in the technology in our own right.

SUBMISSIONS

I will refer to relevant submissions where appropriate in the body of my decision.

RELEVANT LAW

This matter concerns several provisions of the Patents Act 1990 and the regulations thereto. Section 223(2) states:

223(2)Where, because of:

(a)an error or omission by the person concerned or by his or her agent or attorney; or

(b)circumstances beyond the control of the person concerned;

a relevant act that is required to be done within a certain time is not, or cannot be, done within that time, the Commissioner may, on application made by the person concerned in accordance with the regulations, extend the time for doing the act.

The trigger for the operation of this section is that a relevant act, defined in section 223(11) as:

“an action (other than a prescribed action) in relation to a patent, a patent application, or any proceedings under this Act (other than court proceedings), and includes the making of a Convention application within the time allowed for making such applications.”

required to be done within a certain time is not, or cannot be, done within that time.

The nature of conduct constituting an error or omission has been discussed by Jenkinson J in Kimberly-Clark v Commissioner of Patents and Anor (No 3) 13 IPR 569. It was found that the meaning of the phrase “error or omission” should not be given a restricted meaning since:

"….some errors of judgement by agents and attorneys may be as bizarre and as little to be anticipated as lapses of memory and accidental slips."

At page 583 he found that, in order to make out a proper case justifying an extension:

"….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 (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 that conduct."

The standard of disclosure required is therefore very high and it will not be sufficient for the applicant simply to provide a factual statement of what led to the error or omission.

Section 89 of the Act relevantly provides:

89(3)An applicant is not entitled to ask that any action be taken, or that he or she be allowed to take any action, under this Act in relation to a PCT application unless:

(a)if the application was not filed in the receiving Office in English—a translation of the application into English, verified in accordance with the regulations, has been filed; and

(b)in any case — the prescribed documents have been filed and the prescribed fees paid.

Regulation 8.1(4) of the Patents Regulations stipulates the prescribed period for the purposes of section 89(3) of the Act for entry into the national phase:

8.1(4)The applicant must meet the requirements of subsection 89(3) of the Act within the period of:

(a)if the application is an application in respect of which Australia has been elected under Chapter II of the PCT within the period specified in Article 39 of the PCT — 31 months from the priority date of that application; or

(b)in any other case — 21 months from the priority date of that application.

DECISION

Mr Kennedy submitted that information provided to TUNRA by their former attorneys was misleading, and that this was clearly an error pursuant to section 223(2)(a).  The relevant paragraph comes from a letter by Griffith Hack to TUNRA, dated 8 June 1999, which states:

“I remind you that the national phase entry deadline in each country of interest is 7 February 2000 (extendable by one further month in each of Australia, Europe and New Zealand).”

I note that no evidence has been provided to establish how TUNRA acted on this information, and it is therefore unclear what relevant error or omission existed to prevent TUNRA from entering the national phase on time.  However, the only sensible conclusion that can be reached if it is assumed that TUNRA had wished to proceed with the application and had relied on this information is that the national phase would have been entered one month earlier than the time limit specified in regulation 8.1(4)(a).  If the national phase had been entered one month earlier than intended, then it is apparent that no extension of time in which to enter the national phase would be required, and the section 223 request is thus rendered nugatory.

Even if I was to decide that information which was misleading fell within the ambit of “error or omission”, this alone is not enough to justify an extension under section 223(2)(a).  There would have to be a necessary causal link between the error or omission and the failure to enter the national phase on time.  Indeed, it would seem that TUNRA made a conscious decision in February 2000 not to continue with the application, a point which was conceded by Mr Kennedy in his submissions.  With no evidence to the contrary, I fail to see what impact this ‘misleading’ information had on TUNRA’s prosecution of their application.  I cannot find the requisite causal connection between the error or omission and the failure to enter the national phase on time.

Mr Kennedy further submitted that an error or omission had occurred because:

(a)the inventors were not given sufficient notice to take assignment of the patent;

(b)the inventors were not advised as to their right to an application for extension of time until June 2000;

(c)the inventors were not aware of the consequences of failing to enter the national phase on time.

Whilst these circumstances may be lamentable, they do not appear to constitute errors or omissions within the meaning of the Act.  Even if I was to characterise these acts as errors or omissions within the meaning of section 223, it would not assist Dr Kennedy in this case.  The error or omission must have been made by Dr Kennedy or his agent or attorney.  TUNRA cannot be described as either his agent or attorney.

In my opinion, a failure by TUNRA to inform the inventors of their rights and obligations, and to leave them sufficient time in which to fulfil these obligations does not constitute a circumstance which prevented TUNRA from fulfilling the requirements for entry into the national phase.  Furthermore, I would emphasise that up until 26 October 2000, the date upon which TUNRA assigned its entire right, title and interest in the invention and lapsed application to Pacifitech, only TUNRA were a ‘person concerned’.  Even after this date, it is not readily apparent whether or not Pacifitech are a ‘person concerned’.

Consequently, I believe that there is no evidence of an error or omission by the person concerned to enliven the provisions of section 223(2)(a).

With regard to the scope of the phrase ‘person concerned’, Mr Kennedy asserted that Eric Kennedy and Dr Bogdan Dlugogorski are a 'person concerned' within the meaning of section 223.  He states that:

“They are clearly ‘persons concerned’ as they were the original inventors and the subsequent applicants.  They are further ‘persons concerned’ in that they were and took part in the process of the international application.

It is submitted that the present applicant Pacifitech are also ‘person concerned’ (sic) within the meaning of the legislation….”

Mr Kennedy further argued that the decision by TUNRA to allow the application to lapse was “circumstances beyond the control” of the “persons concerned” pursuant to section 223(2)(b).

Whilst I have some sympathy for the inventors, who clearly have a strong interest in the survival of the patent application, I must disagree with the assertion that they, or their company, are a ‘person concerned’ within the meaning of the Act.  In Atomic Skifabrik Alois Rohrmoser v Registrar of Trade Marks (1987) 7 IPR 551, Jenkinson J concluded that this is the person in whose name the step is to be taken or the act done. I consider this finding equally applicable in the present case, even though his decision was in regard to section 131(1)(a) of the Trade Marks Act 1955. Since regulation 8.1(4)(a) limits the performance of this act to ‘the applicant’, I consider that there is no basis to support Mr Kennedy's assertion.

My attention was directed by Mr Kennedy to Weir Pumps Ltd v Commissioner of Patents and Stork Pompen BV (1989) 13 IPR 163, but I consider that there is little in this decision to further the argument that either Dr Kennedy or Pacifitech are a ‘person concerned’. The appeal concerned a decision by a delegate of the Commissioner of Patents to refuse an application under section 160(2) of the Patents Act 1952. Deputy President Bannon QC remarked that:

“….I prefer Mr Hinde’s submission that regardless of the alleged independence of s160 of the Act from other provisions thereof, s160(2) is not sufficiently wide to enable a person who is not a party concerned as being an applicant for a patent, or a party concerned as being a party to existing proceedings under the Act (not being proceedings in a court), to apply for an extension of time.”

Indeed, this reinforces my belief that TUNRA alone carries the responsibilty for complying with the requirements for entry into the national phase, and that they are the only person entitled to apply for an extension of time, pursuant to section 223(2), in which to do so.

Furthermore, I consider that neither Dr Kennedy nor Pacifitech fall into those "classes of persons to which the Act accords opportunities to participate in “the whole process of seeking patent protection in Australia" (as per Jenkinson J, Kimberly-Clark v Commissioner of Patents and Anor (No 3), supra, at 574).  It would be remarkable indeed if section 223(2) was in fact intended to be a vehicle for a party, other than the applicant or an opponent, to intervene in the prosecution of a patent application.

However, assuming for the purposes of argument that the inventors and/or Pacifitech are a ‘person concerned’, the discretion should not be exercised in their favour.  Section 223(2) is specifically restricted in its operation to a 'relevant act'.  In the present case, the relevant act is the payment of fees in which to enter the national phase, and section 89(3) and regulation 8.1 place this onus on ‘the applicant’.

The term ‘applicant’ used in the definition is not defined in either the Patents Act or the Patents Regulations.  However, I believe it is apparent from the structure of the Patents Act that the ‘applicant’ for the purposes of section 89(3) is the person who made the international application and is recorded as such.  Further support for this reasoning is provided by other sections of the Act, which specifically define the meaning of the term 'applicant' should another meaning be intended.  One example of this includes section 38, which states that "applicant includes a person entitled to make a request under section 113 in relation to the relevant patent application".  In my opinion, neither Dr Kennedy nor Pacifitech can be considered as the applicant for the purposes of section 89(3).

Thus, it is apparent that even if I was to grant the extension of time sought by Dr Kennedy, the only party capable of giving effect to the extension is the applicant of record, TUNRA.  Such a grant would be manifestly improper.

Amongst the other considerations generally relevant to section 223 requests is the public interest.  Mr Kennedy has argued that the public interest is best served by allowing the extension.  I believe I do not have to come to a concluded view on this matter, as the application has failed for more fundamental reasons.

CONCLUSION

I have found that the failure to enter the national phase by the due date was not because of an error or omission by the person concerned or their agent or attorney.  There is no evidence of any error or omission on the part of TUNRA relating to the failure to enter the national phase.  Consequently there is no evidence of a relevant error or omission to enliven the provisions of section 223(2)(a).

With regard to section 223(2)(b), it is well established that this provision is a force majeure provision.  A deliberate decision by TUNRA not to enter the national phase is not a circumstance beyond the control of the person concerned.  Though a disinterested party has argued that this was a circumstance beyond their control, I reject the inference that section 223(2)(b) allows a party, other than the applicant or an opponent, to intervene in the prosecution of a patent application.

Accordingly, I deny the application under section 223(2) by Eric Miles Kennedy for an extension of time in which to enter the national phase.

R.W.J. FINZI

Delegate of the Commissioner of Patents

Solicitors for the applicant:  Mark Kennedy & Co, Sydney