Thetford Corporation v Sanitation Equipment Limited

[1983] APO 34

SANITATION EQUIPMENT LIMITED  v  THETFORD CORPORATION

Mr T R BRUHN, Supervising Examiner of Patents

27 October 1983

Patent Application ‑ Opposition ‑ Application for extension of time to serve evidence in support ‑ Patents Act s59 ‑ Patents Regulations regs 55, 83A

Sanitation Equipment had previously been granted an extension of time to serve evidence in support of its opposition to application 525850 and sought a further one month extension to finalise its evidence.  Part of the evidence in support had already been served and only a declaration by a local declarant remained to be provided.
    Thetford lodged an objection to the extension being granted.  The remaining declaration was delivered to the applicant's attorneys within the further extension period sought and before a hearing could be convened.

Held, in granting the extension of time: 
    While the opponent had not convincingly established sufficient grounds to justify the extension of time sought, consideration of the public interest in the present circumstances was an overriding factor in granting the extension.

Application for extension of time
    The opponent sought an extension of time of one month in which to serve evidence in support of its opposition to patent application 525850.  The applicant objected to the extension being granted.  The matter was set down for hearing.

Patent attorneys for the opponent: Edwd Waters & Sons 

Patent attorneys for the applicant: Davies & Collison 

Mr Bruhn:  This matter concerns an application by Sanitation Equipment Limited pursuant to regulation 55 requesting an extension of time of one month to 28 September 1983 within which to serve evidence in support of its opposition.  In a decision dated 5 August 1983 I allowed a previous application by the opponent seeking an extension of time of 3 months until 28 August 1983.  The present application for extension of time was lodged on Monday 29 August 1983, i.e. the last available day of the extension period previously granted, and on the same day the opponent lodged at the Patent Office and served on the applicant a declaration by Lanny Baer which constituted part of its evidence in support.
    The applicant for the patent, Thetford Corporation, notified an objection to the present extension being granted and consequently the matter was set down to be heard in Canberra on 6 October 1983.  Neither party chose to attend the hearing, each party instead being prepared to rely on written submissions lodged prior to the hearing date.
    In considering the application for extension of time, regulation 83A provides that the extension shall not be granted unless the extension is justified having regard to all the circumstances of the case.
    The circumstances and grounds given in the application for extension of time are as follows:

"The Opponent has served part of its Evidence in Support of the Opposition, however, a further small period is required to formalize a Declaration by a local Declarant and file same to complete the Opponent's evidence."

(I note that the declaration referred to, by a Mr Davis, was delivered to the attorneys for the applicant on 28 September 1983, the last day of the extension period now sought).

In submissions lodged on 5 October 1983 on behalf of the opponent by its patent attorneys, Edwd Waters & Sons, Melbourne, the reasons for the extension sought are further explained.  Those submissions in part read as follows:

"The local Declaration related to material constituting what was known and used in Australia prior to the priority date of the herein opposed patent application.

Mr Davis is the General Manager and a Director of Companion Pty Limited, the local importing agent in relation to equipment manufactured by the opponent company Sanitation Equipment Limited, and his Declaration required considerable research of his company's files to establish prior sales as well as literature in a position of the company prior to November 1978.  In addition, being the General Manager of a large company, Mr Davis had pressure of business which of necessity restricted the amount of time that he could apply to this investigation which caused a delay of one month beyond the last extension sought before his Declaration could be finalized."

In support of its objection to the application for extension of time, Thetford Corporation through its patent attorneys Davies & Collison, Melbourne, lodged written submissions on 4 October 1983.  Two main points are raised in that submission.  Firstly, it is submitted that if the extension is granted this will cause a further significant delay in the proceedings.  Secondly, the applicant submits as follows:

"that the opponent has had adequate time to formalise the declaration referred to.  For example it is noted that in the declaration which has now been served out of time that the declarant is the sole Australian distributor of the SANITATION EQUIPMENT LTD. products and as such it would seem that there was in fact no necessity to search for a person as suggested in the original submissions."

Consequently the applicant submits that the opponent has not established any reason appropriate to justify the extension sought.
    From the submissions and reasons for seeking the present extension of time, the extension is sought by the opponent so as to allow it time to "formalize a Declaration by a local Declarant and file same".  The opponent's submissions indicate that in order to obtain details of material constituting what was known and used in Australia prior to the priority date of the opposed patent application (presumably relevant to the opposition grounds of lack of novelty and obviousness), considerable research had to be undertaken by the intending declarant and accordingly the time necessary to undertake that research coupled with that person's other business pressures resulted in the situation where the relevant declaration could not be formalized and served within the time period as previously extended.  There are two points to note in this regard.  Firstly, no information has been provided as to when the intending declarant, Mr Davis, undertook to prepare a declaration on behalf of the opponent company and consequently when the necessary research was first contemplated or started, nor is it apparent that it was necessary for Mr Davis himself to undertake all the research necessary.  However, bearing in mind that Mr Davis was the General Manager of a company having the local importing agency of equipment made by the opponent company, it would seem that in those circumstances the relevant files, brochures, sales information, etc., would have been readily available and accessible to him and that any lengthy research time would not have been needed.  Secondly, no information has been provided as to the precise progress made with the research nor the progress made with the preparation of the intended declaration within the previously extended time period.
    In my view, "pressure of business" is not a sufficient reason for justifying an extension of time.  In opposition proceedings, the onus is on the parties involved to prepare their respective evidence with diligence and accordingly the parties should make every endeavour to prepare and finalize evidence within the due times.  In the present matter, as the extension applied for is sought predominantly on the basis that "pressure of (other) business" by the intending declarant led to the inability to finalize the declaration in time and in the absence of detailed explanation of the surrounding circumstances, I am not convinced that the opponent has established sufficient grounds to justify the extension of time sought.
    But there is a further point I need to consider in determining whether the extension of time ought to be allowed and that relates to public interest.  There are several factors that arise in considering whether an extension sought should be allowed in the public interest.  For instance, it is in the public interest that the status of a patent application be clearly established and that all available evidence be considered in that regard so that the chance of an invalid patent being granted is reduced.  Also, consideration has to be given to the possible inconvenience caused to the public by any unnecessary delay in opposition proceedings if an extension is granted; the applicant touched on this point in its submissions when objecting to the extension sought.
    In considering the public interest as it applies to the present matter, I note that the extension sought is for a period of one month and the declaration intended to be filed has been finalized within the extended time sought.  Hence if the extension is granted, the evidence (namely a declaration by Mr Davis which was delivered to the applicant's attorneys on 28 September 1983 and filed at the Patent Office on 29 September 1983) will be formally accepted as being served within the extended time sought and as that declaration completes the opponent's evidence in support, the delay arising due to the present extension is one month.  Furthermore, having briefly perused the declaration by Mr Davis, I am satisfied that in its general nature it has relevance to the grounds of opposition and that as a consequence the opposition may not be fully considered on its merits if such material were excluded from the evidence in support.
    Having due regard to the relative weight to be given to the aspects of public interest considered above and to all the circumstances of this case, I consider that it would be in the public interest for the extension of time to be granted and accordingly I grant the extension sought.
    Finally, as this decision determines the date of serving evidence in support, the 3 month period specified in sub‑regulation 56(1) for the serving of any evidence in answer will commence from the date of this decision.

I make no award of costs in this matter.