Victor Vrubel and Dan Vrubel v John D Upham

[1996] APO 37

official notice

decision of a delegate of the commissioner of patents

Application  :          No.664804 in the name of VICTOR VRUBEL and DAN VRUBEL.

Title:          Gas Flow Control.

Action:          Application under subsection 223(2) to extend the time under regulation 5.3(1) for an extension of time to file a notice of opposition by JOHN D UPHAM.

Decision:          Issued            .

Abstract:          Subsection 223(2) may be used to extend the time in regulation for an extension of time to file a notice of opposition 5.3(1); lack of funds not circumstances beyond a person’s control; extension of time refused; time to file written submissions on award of costs allowed; patent to be sealed after period for asking for review of decision expires unless a request under section 32 is filed before this period expires.

patents act 1990

decision of a delegate of the commissioner of patents

Re:Patent Application No.664804 by VICTOR VRUBEL and DAN VRUBEL and an application under subsection 223(2) for an extension of time to file a notice of opposition by JOHN D UPHAM.

background

Patent Application No.664804 by Victor Vrubel and Dan Vrubel (the Vrubels) was advertised accepted on 30 November 1995 and according to regulation 5.3(1) any notice of opposition should have been filed before 29 February 1996.  On 28 March 1996 John D Upham (Mr Upham) filed a notice of opposition which was accompanied by an application under subsection 223(2) for an extension of time to file a notice of opposition.  The application was accompanied by a statutory declaration made by Mr Upham and fees ($155) for an extension of time under paragraph (a) of subsection 223(2).

The Vrubels responded by filing a written submission which argued the Commissioner was not allowed to extend the time to file a notice of opposition.  This submission consented to a Mr Steven Janda discussing the matter on behalf of the Vrubels.  I and the deputy Commissioner discussed the matter on the telephone with Mr Janda.  The Vrubels then filed another written submission which argued the Commissioner was not allowed to extend the time.  At the same time they filed a statutory declaration made by Victor Vrubel which gave other reasons why the Commissioner should not extend the time.

The Commissioner asked Mr Upham if he wanted to be heard in relation to his application for extension of time but Mr Upham did not reply within the time allowed.  In a letter dated 22 May 1996 the deputy Commissioner told Mr Upham he intended to refuse the application but before doing so set the matter for hearing because of the requirements of regulation 22.22.

A hearing was held in Canberra on 17 June 1996 at which the Vrubels appeared in person and Mr Upham appeared by telephone.  At the hearing Mr Janda, described on his business card as a translator and interpreter, spoke on behalf of the Vrubels.

SUBMISSIONS
Mr Upham filed a second statutory declaration before the date of the hearing.  At the hearing the Vrubels filed a document headed “Declaration” made by Victor Vrubel but which was not witnessed by a relevant person.  I will refer to oral submissions made at the hearing and any of the documents referred which are relevant at appropriate places in my decision.

DECISION
Mr Janda said the regulations governing oppositions are set out in Chapter 5 of the Patents Regulations and these include the 3 month period for filing a notice of opposition set out in regulation 5.3(1).  Mr Janda said the Commissioner may extend a period prescribed in Chapter 5 under regulations 5.10(1)(b) or 5.10(2)(b) but he pointed out both these regulations state they do not not apply to regulation 5.3(1).  Therefore Mr Janda argued the Commissioner does not have the power to extend the time set out in regulation 5.3(1) under subsection 223(2).

Subsection 223(2) in the present Act is equivalent to subsection 160(2) in the 1952 Act.  The High Court in its judgement in Australian Paper Manufacturers Ltd v CIL Inc (37 ALR 289) refered without criticism to the then recent judgement of the full Federal Court in Scaniainventor v Commissioner of Patents (36 ALR 101). The judgement in this latter case states (at page 105) section 160 is a remedial section which should be applied where it appears to be applicable unless there is some clear indication to the contrary. Therefore I will consider whether subsection 223(2) in the present Act applies to regulation 5.3(1).

Subsection 223(2) applies to relevant acts and these are defined in subsection 223(11).   A relevant act is an action in relation to a patent application or any proceedings under the Act, other than court proceedings, but excludes prescribed actions.

Jenkinson, J (Kimberly-Clark Ltd v Commissioner of Patents and another 13 IPR 569 at page 574) considered there is no logical difficulty about treating the action which commences a proceeding as an action in the proceedings. I note the action in this case was the filing of a notice of opposition under the 1952 Act. Therefore I consider the filing of Mr Upham’s notice of opposition is an act in relation to proceedings under the Act.

The Vrubels’ written submissions argue Mr Upham was not the person concerned in terms of subsection 223(2) because he was not required to make any relevant act in relation to the Vrubels’ patent application.  I note the Federal Court considered section 160(2) in the 1952 Act may be applied to the actions of a potential opponent and not just to the actions of the patent applicant (Kimberly-Clark Ltd v Commissioner of Patents and another 13 IPR 569 at page 574). Therefore I will consider whether subsection 223(2) in the present Act applies to the actions of a potential opponent such as Mr Upham.

Regulation 22.11(3) sets out the prescribed actions as follows:

“(a) an action or step prescribed in Chapter 5 (“opposition”), not being an action or step taken under regulation 5.3(“filing of opposition”) or paragraph 5.4(1)(a) (“filing of statement”);”

I note this regulation does not exclude all actions and steps in Chapter 5 but merely excludes certain actions and steps.  I consider this means subsection 223(2) applies to the actions and steps which are not excluded by regulation 22.11(3).  The actions and steps which are not excluded by this regulation are those in regulation 5.3 or paragraph 5.4(1)(a).  Therefore I am satisfied subsection 223(2) may be used to extend the time in regulation 5.3(1) to allow a potential opponent such as Mr Upham to file a notice of opposition.

According to Mr Upham in 1991 he engaged Victor Vrubel to develop electronic control equipment for his automotive gas injection system.  This system is described in several provisional patent specifications filed by Mr Upham.  In August 1993 a dispute broke out between Mr Upham and the Vrubels about whose names should appear on any application for a patent for the invention.  It seems at this stage Victor Vrubel told Mr Upham about the filing of provisional patent no.0400 which is associated with patent application no.664804.  Mr Upham says he engaged another electronics engineer to complete the invention.

Mr Upham declares as follows:

“No complete Specification was lodged for this invention because I did not have sufficient funds to employ a patent attorney and no company in the Australian LPG Industry was interested in backing this invention (sic) I was already working on a new improved gas injection system and it was decided to work on this new system instead. (Sic) with the limited funds available.

The circumstances beyond my control for failing to lodge an objection to the granting of a patent within the specified time was I did not have the finance to lodge an objection, (sic) It was only after an article was seen in the Engineers Australia March 1996 that Mr Vrubel intended to manufacture the invention that I was able to obtain funds for the objection, (sic)”

Mr Janda submitted Mr Upham’s financial limitations did not constitute a valid circumstance beyond his control.  He referred me to the judgement of the Federal Court in Rohrmoser v Registrar of Trade Marks (70 ALR 613 ) to support his submission. It seems to me the meaning of circumstances beyond a person’s control in this judgement can be summaised as circumstances such that the person or someone acting on the person’s behalf could not prevent them happening (supra at page 619).

The Administrative Appeals Tribunal (AAT) relied on this meaning in several decisions involving the Patents Act (for example Paracel Holdings Pty Ltd v Commissioner of Patents (1994) AIPC 91-053, Jiejing Pty Ltd v Commissioner of Patents (1995) AIPC 91-144, Reilly and Commissioner of Patents 40 ALD 791).

Mr Upham says he obtained legal advice in August 1993 that the Vrubels were ineligible to lodge a provisional patent application for the invention.  He said he did not have sufficient money to engage a patent attorney and pay the fees to file an objection so he did not do so.  In March 1996 one of the companies Mr Upham had approached about the invention directed his attention to a article in a journal about the invention.  Mr Upham said his family had now provided the funds to pay the fees because he had worked on the invention for many years.  He said all his spare money was now tied up in his new invention.

It is unfortunate Mr Upham did not have sufficient funds to both start opposition proceedings against the application and investigate his new invention.  But he made a decision not to file a notice of opposition during the time specified in regulation 5.3(1) based on his financial circumstances at the time.  Mr Upham did not explain why his family did not supply the funds earlier which suggests to me he may now regret his earlier decision.

I consider Mr Upham’s financial circumstances are something within his control and are therefore not a circumstance beyond his control.  I note the AAT in its decision of Reilly and Commissioner of Patents (supra) considered a sequestration order in relation to bankruptcy was not a circumstance beyond control of the person concerned.  Consequently I refuse to extend the time in regulation 5.3(1) under subsection 223(2)(b) for Mr Upham to file a notice of opposition to application no.664804.

I asked Mr Upham if there had been an error or omission which had prevented him from filing a notice of opposition.  He replied there had been no error or omission but his lack of funds had prevented him from filing the notice.  Following this admission by Mr Upham  will not consider whether to extend the time under subsection 223(2)(a).

COSTS
Neither Mr Upham nor the Vrubels made submissions on an award of costs at the hearing.  Neither party was represented by a patent attorney and I did not comment on the lack of submissions on an award of costs at the hearing.  In these circumstances I think I it is reasonable to allow Mr Upham and the Vrubels 14 days from the date of this decision to file written submissions on an award of costs.

SEALING
The deputy Commissioner in a letter dated 22 May 1996 wrote as follows:

“Having regard to the request for an extension of time, and the above matters, I have postponed the final date for sealing this application to 30 July 1996.  Assuming neither party attends the hearing........I advise both parties the Commissioner will proceed to grant the patent after 1 July 1996-unless a request under s.32 is made by that date.”

Mr Upham or the Vrubels may ask the Federal Court or the AAT to review this decision within 28 days of receiving it.  Therefore the dates in the above letter are no longer appropriate as a patent cannot be sealed on application no.664804 before this period expires.  I direct that a patent be sealed on application no.664804 after this period expires unless a request under section 32 is filed before this period expires.

SUMMARY
I found subsection 223(2) may be used to extend the time in regulation 5.3(1).  I refused to extend the time under this regulation to allow Mr Upham to file a notice of opposition.  I allowed the parties 14 days from the date of this decision to file written submissions on an award of costs.  I directed that a patent be sealed on application no.664804 after the period for asking for a review of this decision expires.

M.Kendall
Delegate of the Commissioner of Patents