Twister B.V. v TransLang Technology Ltd - [2011] APO 70

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Twister B.V. v TransLang Technology Ltd [2011] APO 70

Patent Application: 2008293070

Title:Gas liquefaction and separation device

Patent Applicant:  TransLang Technology Ltd
Opponent:  Twister B.V.
Delegate:  Dr S.D.Barker
Decision Date:  6 September 2011
Hearing Date:  Written submissions filed on 14 June 2011 and 21 June 2011
Catchwords:  PATENTS – extension of time to serve statement of grounds and particulars – statement sent by mail, but not delivered for 3 business days – error or omission by attorney – extension allowed

Representation: Patent applicant: Hodkinson McInnes Patents
Opponent:Spruson & Ferguson

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2008293070

Title:Gas liquefaction and separation device

Patent Applicant: TransLang Technology Ltd
Date of Decision: 6 September 2011
DECISION
I allow the extension of time to serve the statement of grounds and particulars.
I award costs according to Schedule 8 against TransLang Technology Ltd.
REASONS FOR DECISION

A notice of opposition to the grant of a patent on application 2008293070 was timely filed by Twister B.V. on 7 January 2011. By virtue of regulation 5.4, a statement of grounds and particulars was due to be served within 3 months, i.e. by 7 April 2011. The applicant (TransLang Technology Ltd) has advised that the statement was served on 11 April 2011. Consequently, the statement was served out of time.
The opponent requested an extension of time under section 223 for filing the statement of grounds and particulars. The applicant objected to the extension, and the matter was heard by written submissions.
Reasons for the extension of time
The application for extension of time was accompanied by a statutory declaration by Ryan Curnick, which provides the factual basis for the extension. The declaration states:
“1. I am a Registered Patent Attorney at Spruson & Ferguson and are handling an opposition to Australian Patent Application No. 2008293070 on behalf of Twister B.V.;
1. A Statement of Grounds and Particulars for the opposition was prepared by 6 April 2011;
1. By way of service, I forwarded a copy of the Statement of Grounds and Particulars to the Applicant’s Attorney, who are a firm also located in Sydney, by regular mail on 6 April 2011;
1. I assumed that a day would be sufficient for the Statement of Grounds and Particulars to be mailed from one firm located in Sydney to another; and
1. My above assumption was in error and this Declaration is in support of an application for an Extension of Time to belatedly serve the Statement of Grounds and Particulars on the Applicant’s Attorney.”
The applicant’s submissions
The applicant provided written submissions which noted deficiencies in the Curnick declaration. The most relevant statements are:
“No explanation has been tendered by the Opponent as to why a facsimile transmission of the SGP was not made. We note the physical distance between the offices of the Agents for the Opponent and Applicant is approximately three city blocks. If – as we surmise – the SGP was prepared [with] urgency and finalised the day before the submission deadline, we are at a loss to understand why due care was not exercised by sending a runner to the Applicant’s premises to serve the SGP.”
“No evidence is tendered by the Opponent or its Agent as to the existence of any such fail-safe or redundant procedures, nor any failures of same to exhibit due care being taken
The applicable law
The applicant made their submissions on the basis that section 223(2A) is the relevant provision. While that subsection is clearly relevant, section 223(2) could also be applicable. I will consider both subsections.
Section 223 relevantly reads as follows:
(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.
(2A)If:
(a) a relevant act that is required to be done within a certain time is not done within that time; and
(b) the Commissioner is satisfied that the person concerned took due care, as required in the circumstances, to ensure that doing of the act within time;
the Commissioner must, on application made by the person concerned in accordance with the regulations and within the prescribed period, extend the time for doing the act.
The two aspects of section 223(2) are error or omission, and circumstances beyond control. The law on these matters is well established.
Error or omission
In Kimberly-Clark Ltd v Commissioner of Patents (No 3) [1988] FCA 421 at [9], (1988) 13 IPR 569 at 579, Jenkinson J considered the phrase "error or omission" in the context of section 160 of the Patents Act 1952. “Error or omission” is clearly directed to mistakes, but it encompasses a wide range of mistakes:
"the word 'error' is not easily assigned a clear meaning restricted by reference to one or several particular categories of flawed mental function. The attempt is likely to lead to the drawing of fine and often unrealistic distinctions. And 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"
However, there is a limit to what constitutes an error or omission. The law distinguishes between errors and deliberate decisions (Total Peripherals Pty Ltd v IBM & Commissioner of Patents [1998] AATA 784). Of course, where a deliberate decision is made as a consequence of an error or omission, section 223 can still be enlivened (see Re Apotex Pty Ltd and Commissioner of Patents [2008] AATA 226 at [21]).
Circumstances beyond control
Circumstances beyond control were considered in the context of the Trade Marks Act in Re Atomic Skifabrik Alois Rohrmoser v Registrar of Trade Marks [1987] FCA 22 at [18], (1987) 7 IPR 551 at 558. Jenkinson J concluded:
"In the context in which it is found, the expression `circumstances beyond the control of the person concerned' does in my opinion designate - and designates only - occurrences which neither the person concerned nor any person acting on his behalf to do the act or take the step could prevent. The operations of nature and the activities of strangers may result in such occurrences. So, too, may the acts and omissions of certain independent contractors engaged by the person concerned or by his agent, as for example the carrier of mail or the office cleaner, either of whom causes the loss or destruction of a document to be filed. But the acts or omissions of the agent who on behalf of the person concerned is to do the act or take the step are not occurrences of the description specified in paragraph 131(1)(a), in my opinion. Nor, in my opinion, are the acts or omissions of that agent's servants. The section is, I think, correctly described as a force majeure provision."
It is clear that circumstances beyond control refers to force majeure circumstances.
Causation
Once an error or omission or circumstances beyond control has been identified, it must be established that the failure to do the act was caused by the error or circumstances. Causation was considered by Jenkinson J in Kimberly-Clark (No 3) at [12], 580. The concept involves a relationship of cause and effect, although the relationship may be indirect.
Discretionary matters
Section 223(2) is a discretionary power. In Kimberly-Clark, Jenkinson J agreed that in deciding whether to exercise the discretion it is relevant to consider matters such as whether there has been a full and frank disclosure of all relevant circumstances, the interests of the parties in refusing or granting the extension, and the public interest.
Despite due care
Section 223(2A) applies when an error occurs despite person taking “due care”. There is little jurisprudence on what constitutes despite due care. The Manual of Practice and Procedure states at 3.24.6:
“Extensions of time under subsection 223(2A) would only arise where the person concerned had appropriate systems in place and did everything that could reasonably be expected to ensure the relevant act was done and despite that, a relevant act was not done in time. A reasonable enquiry is whether the systems or mechanisms put in place were appropriate to ensure the relevant act was performed in time. If the person concerned did not have adequate systems in place or had not done everything reasonably possible to ensure the relevant act was done in time, an extension under section 223(2A) would not be appropriate.”
Consideration of the facts of the case
It appears from the Curnick declaration that Mr Curnick had a belief that a piece of mail that was despatched on one day in Sydney would be received in Sydney on the next business day. This is consistent with my understanding that mail posted before 6 pm is normally delivered in the same metropolitan area on the next business day. However, mail is not guaranteed to arrive on the next business day. I find it credible that Mr Curnick would have had this belief.
Mr Curnick’s belief that mail posted one day would be delivered the next was clearly a flawed mental function (i.e. it was an error), and this error clearly caused the failure to serve the statement within time. I am satisfied that there was a causative error in this case.
The applicant pointed out that the Curnick declaration does not state when the statement was finalised, or why it was not despatched by facsimile or runner. While it is not incumbent on a person to explain why they failed to do any number of things that they might have done, it would be reasonable for Mr Curnick to have considered sending the statement by facsimile, so it is surprising that he does not mention why this was not done. While I consider this a deficiency in the declaration, I do not consider it to be of such a magnitude that I should refuse to exercise the discretion in the opponent’s favour. This is sufficient to justify an extension of time under section 223(2)(a). I will briefly consider whether an extension would also be available under the other provisions of section 223.
The delivery of mail on the third business day after posting does not represent a force majeure. It is a delay within the bounds of what could be reasonably anticipated. I am not satisfied that there have been circumstances beyond control, so section 223(2)(b) is not applicable.
The applicant has pointed out that it would have been reasonable to send the statement by facsimile, given that only one day remained. I agree. I do not consider that placing the statement in the mail with one day to go can be characterised as doing everything that could reasonably be expected. I am not satisfied that the failure to serve the statement in time was despite due care, so section 223(2A) is not applicable.
Costs
The opponent has been successful in obtaining an extension of time. I see no circumstances that would warrant departing from the normal approach that costs should follow the event. I will award costs against TransLang Technology Ltd.
Dr S.D.Barker
Delegate of the Commissioner of Patents