Toyo Seikan Kaisha, Ltd v Nordson Corporation

[1985] APO 17

In the Matter of the Patents Act 1952 - and - In the Matter of Patent Application 540353 in the Name of TOYO SEIKAN KAISHA, LTD. - and - In the Matter of an Application under Section 160 by NORDSON CORPORATION for an Extension of the Time in which to Lodge Notice of Opposition.

 

DECISION OF A SUPERVISING EXAMINER OF PATENTS:

Patent application 70202/81 was lodged on 6 May, 1981 in the name of Toyo Seikan Kaisha, Ltd., ("Toyo"). Acceptance of the application was advertised on 15 November, 1984 under the number 540353, so that the three month period allowed by sub-section 59(1) for lodging notice of opposition expired on 15 February, 1985. Notice of opposition was lodged by Nordson Corporation ("Nordson") on 3 April, 1985, accompanied by an application under paragraph 160(2)(a) for an extension of the time (from 15 February, 1985 to 15 April, 1985) in which to lodge a notice of opposition. Toyo objected to the application for extension of time, and the matter was heard at Canberra on 15 July, 1985. Toyo was represented by Mr. P. Jones, Patent Attorney, of Phillips Ormonde & Fitzpatrick and Nordson was represented by Mr. J.D. O'Connor, Patent Attorney, of Spruson & Ferguson. At the hearing, Mr. O'Connor lodged part of Nordson's evidence in support of the prospective opposition.

The application for extension of time relies on the ground in paragraph (a) of sub-section 160(2), which reads:

"160(2) Where, by reason of - (a) an error or omission on the part of the person concerned or of his agent or attorney ...

(b) ...

an act or step in relation to an application for a patent or in proceedings under this Act ... required to be done or taken within a certain time has not been so done or taken, the Commissioner may, upon application by the person concerned ... extend the time for doing the act or taking the step."

Section 160 is a remedial section and should be applied where it appears to be applicable unless there is some clear indication to the contrary.

(Scaniainventor v. Commissioner of Patents (1981) 36 ALR 101 at 105). Sub-section 160(2) appears to be applicable to the time prescribed by sub-section 59(1), and as there is no indication in the latter sub-section to the contrary it may be applied, in a proper case, to allow extensions of the time provided for lodging notice of opposition. In deciding whether there is a proper case for the grant of an extension of time under paragraph 160(2)(a) there are two matters which must be considered. The first of these is whether the applicant for extension of time has established that failure to meet the time limit is due to error or omission on the part of the person concerned or of his agent or attorney. Once this test has been satisfied the Commissioner does have jurisdiction to grant an extension of time. The second matter, which must be considered, is that the Commissioner has a true discretion whether to grant or refuse the extension of time. The Commissioner must take all relevant considerations (and no others) into account in deciding how to exercise this discretion. (Michigan Technological University v. Deputy Commissioner of Patents (1982) 40 ALR 577 and Lehtovaara v. Commissioner of Patents (1981-2) 39 ALR 103).

At the hearing Mr. O'Connor for Nordson submitted that the notice of opposition was not lodged within the time limit set by sub-section 59(1) because of "omission compounded by error". The evidence of any "error or omission" is set out in two declarations lodged by Nordson under regulation 47.

The first of these declarations is by Edmund Joseph Wasp, a Patent Attorney in the employ of Nordson, the material part of which declaration reads:

"4. On or about 26 February 1985 I instructed Charlotte J. Babcock, a Legal Assistant in my Company's Patent Department, to conduct a search on the "INPADOC" and "INPANEW" databases to determine the status of all foreign convention applications for patents claiming the priority date of the U.S. Patent Serial No. 258,772 which later matured on grant as U.S. Patent No. 4,370,368. Ms. Babcock conducted the search and advised me that one of the foreign convention applications was Australian Patent Application No. 70202/81 ("the Australian Application"). The search carried out by Ms. Babcock revealed that the Australian Application had not yet been accepted.

5. On or about 29 March 1985 I telexed Messrs. Spruson & Ferguson, our Patent Attorneys in Australia to request that a watch be placed on the Australian application and to inform me when it was published for opposition.

6. On or about 4 April 1985 I received a telex from Messrs.

Spruson & Ferguson to my Company stating that the Australian Application had been accepted on 15 November 1984 and that the period for filing any Notice of Opposition had expired.

7. After receiving the said telex and on or about 3 April 1985 I telephoned Mr. N.J. Anderson of Messrs. Spruson & Ferguson to inform him that the said database searches had indicated that the Australian Application had not then yet been accepted. Mr. Anderson informed me that he conveyed this information to the Australian Patent Office for the purpose of getting permission to file the opposition out of the time period.

8. On or about 4 April 1985 following my said telephone conversation with the said Mr. Anderson, I asked the said Ms. Babcock to run the search on the INPADOC/INPANEW databases again to verify that the databases were in error. On or about 4 April 1985 the said Ms. Babcock informed me that she had run the search in response to my request and determined that her previous searching logic was incorrect."

The second declaration is by the Charlotte Babcock referred to in Mr.Wasp's declaration. The material part of this declaration reads:

"2. Since about January or February 1985, I have been utilising my Company's Patent Department computer to access various databases offered hy Pergamon InfoLine including INPADOC and INPANEW.

3. On or about 26 February 1985 I was asked by Edmund J. Wasp, a Patent Attorney in my Company to conduct a search in the INPADOC and INPANEW databases in an attempt to determine what published foreign counterparts existed with respect to U.S. Patent No. 4,370,368 as well as to determine the status of each of these published foreign counterparts. INPADOC is the database, which generally is current up to three or four months prior to the current date. Among the foreign counterparts listed in my INPADOC search was Australian Patent Application No. 70202/81 ("the Australian Application"). This document was classified as Al, which according to our manual from Pergamon InfoLine means that the document is a complete specification open to public inspection. I also conducted the same search in the INPANEW database which is generally current to approximately one week prior to the current date and goes back approximately four months from the current date. My search in the IPANEW database revealed no documents. Thus, I concluded that the Australian Application had not yet been published for opposition.

4. On or about 4 April 1985 I was asked by the said Edmund J. Wasp, to conduct the same search as I had conducted on or about 26 February 1985 to verify our earlier search results. Having gained more experience in the methods of on-line searching since the time of my earlier search, I reviewed the earlier search results conducted on or about 26 February 1985 and determined that I had not used the appropriate search command in the IPANEW database. The search I conducted on or about 26 February 1985 was, in effect, a search which would locate any published documents claiming priority on U.S. Patent Application Serial No. 258,772 which application later matured on grant as U.S. Patent No. 4,370,368. Since the priority document in this patent family was a Japanese document a priority search based on U.S. Patent Application Serial No. 258,772 would not have revealed the Australian Application.

5. Having thus determined that my earlier searching logic was erroneous, I referred to my manual and determined what the correct commands would be for a search for counterparts to U.S. Patent No. 4,370,368 in the IPANEW database. The results of my search in the INPANEW database on or about 4 April 1985 listed the Australian Application as Australian Document No. 543,353 and was classified as B2, which according to the Pergamon InfoLine manual means a patent applicant advertised as accepted.

6. On or about 4 April 1985, I also conducted the search again in the INPADOC database to locate counterparts to U.S.

Patent No. 4,370,368. This search also listed the Australian Application as Australian Document 540,353 and it was classified as B2. Since my search logic employed in INPADOC on or about 26 February 1985 was correct. I concluded that the record in INPADOC in respect of the Australian Application had been updated since 26 February 1985. However, having earlier concluded that the search logic I employed on or about 26 February 1985 for the INPANEW database was incorrect, I also concluded that had I used the correct search logic on the earlier date, the Australian Application would have been listed as Australian Document No. 540,353 and would have been classified as B2 in the INPANEW database. Had this been the case, we would have concluded on or about 26 February 1985 that this particular Australian document had been published for opposition."

I find on the evidence in these declarations that:

1. Charlotte Babcock made an error in search logic during her on-line searches of 26 February, 1985, and that

2. but for the error of search logic Nordson would have discovered on 26 February that the subject patent application had already been accepted and advertised for opposition.

The evidence accordingly shows that if there had not been an error in the search on 26 February, Nordson would have been alerted to the acceptance of the application too late to lodge notice of opposition within the time allowed by sub-section 59(1). Nordson would have been alerted to the acceptance of the application 11 days after expiry of the time limit allowed hy sub-section 59(1). I must accordingly conclude that the failure to lodge notice of opposition in time was not by reason of any error or omission on the part of Charlotte Babcock in her search of 26 February, 1985. I could speculate that, as the result of some error or omission, Nordson failed to conduct searches in sufficient time to alert them to acceptance of the application well before expiry of the opposition period. I could equally speculate that the failure to conduct timely searches was due to some cause other than error or omission. In the absence of any evidence explaining why no search was conducted before 26 February, 1985 I cannot come to any finding of fact as to whether or not the failure to conduct a timely search was due to error or omission.

The only circumstance (other than the failure to conduct any timely search) which has been established and which could be described as "error or omission" is the failure to lodge notice of opposition in time. The lodging of notice of opposition is however also the "act or step in relation to an application for a patent or in proceedings under this Act ... required to be done or taken within a certain time". The plain meaning of sub-section 160(2) would require the establishment of some error or omission antecedent to the failure to perform the act or step; the "error or omission" must be the cause of the failure to perform the act or step in good time. The failure to lodge notice of opposition in time thus cannot of itself be treated as the "error or omission" for the purposes of sub-section 160(2).

Nordson accordingly has not established that failure to lodge notice of opposition in time was due to any "error or omission", and so has not established the grounds which are the precondition to any consideration of whether or not there should be exercise of the Commissioner's discretion to grant an extension of time. Accordingly, I refuse the application for extension of time, and I award costs in favour of Toyo.

But for the present proceedings, a patent would have been sealed on this application on 4 April, 1985, well before the time limit (of 6 months from the date of advertisement of acceptance) allowed for sealing by sub-section 66(1). On receipt of Nordson's application for extension of time, the case was withdrawn from the batch of applications to be sealed the following day. The time allowed for sealing under sub-section 66(1) has now expired. On the basis of evidence of which I can take notice, I find that by reason of circumstances beyond the control of Toyo a patent was not sealed on the application within the time limit allowed by sub-section 66(1). 1 would accordingly, on receipt of an application by Toyo, be prepared to grant a suitable extension of time under paragraph 160(2)(b) to allow sealing of a patent. I would also be prepared, under regulation 84A, to exempt Toyo from payment of the fee payable on lodging an application under paragraph 160(2)(b). A patent must not, however, be sealed on the application before the expiry of 28 days from the date on which this decision is furnished to the parties.

(A.J. EVANS)

Supervising Examiner of Patents

30 AUG 1985