Walter Joseph Nugent v Gainsborough Hardware Industries Limited

[1996] APO 42

official notice

decision of a delegate of the commissioner of patents

Application  :          No. 662657 in the name of Gainsborough Hardware Industries Limited

Title:          Dual Function Lock Mechanism

Action:          Application for extension of time by Walter Joseph Nugent under section 223 to serve statement of grounds and particulars.

Decision:          Issued            .

Abstract:          Extension of time of five days allowed under section 223(2)(a) to serve statement of grounds and particulars.  Error established as the reason for the failure to serve the statement of grounds and particulars by the due date.  The statement was due to be served on the applicant on 7 March 1996.  The agent for the opponent filed the statement with the Commissioner on 7 March 1996 and sent a copy to the applicant on the same day by certified mail.  The copy was received by the applicant five days later.  The agent for the opponent had served the statement on the applicant in the wrong manner.  The opponent had not made a deliberate decision to serve the statement out of time and had the intention to serve it correctly.

Direction that the time for serving evidence in answer commence from the date of this decision.

Costs awarded against Gainsborough Hardware Industries Limited.

patents act 1990

decision of a delegate of the commissioner of patents

Re:Application for extension of time by Walter Joseph Nugent under section 223 to serve statement of grounds and particulars.

background

Patent application no. 662657 by Gainsborough Hardware Industries Limited (Gainsborough) was advertised accepted on 7 September 1995.  A notice of opposition was filed by Walter Joseph Nugent (Nugent) on 7 December 1995.  A copy was served on the applicant on 8 December 1995.  The statement of grounds and particulars was filed on 7 March 1996 and a copy served on the applicant on 12 March 1996.

Regulation 5.4 requires an opponent to serve a copy of the statement of grounds and particulars on the applicant within three months of filing the notice of opposition.  The opponent must also file the statement at the Patent Office as soon as practicable after the copy of the statement has been served on the applicant.  In the present case, the statement was filed with the Patent Office on the final day of the three month period, but a copy was not received by the applicant until five days after that date.  The Patent Office sent a letter to the agents for the opponent advising that the statement had been served late and asking if the opponent intended filing a request under section 223 for an extension of time.

Nugent applied under section 223 of the patents Act 1990 for an extension of time of five days in which to serve the statement of grounds and particulars on the applicant.  While not explicitly stated in the application for extension of time, it is clear the opponent is relying on section 223(2)(a).

Gainsborough opposed the extension of time.  The matter was heard in Canberra on 16 July 1996.  Richard Hamer, solicitor of Arthur Robinson & Hedderwicks appeared by telephone on behalf of Nugent.  Raymond Hind, patent attorney of Davies Collison Cave filed written submissions for Gainsborough.

Application for extension

The application for extension of time was accompanied by a statutory declaration by Gregory Marcel Bosmans, a law clerk and employee of the firm Arthur Robinson and Hedderwicks.  According to the declaration, on 7 March 1996 Mr Bosmans caused the statement to be filed with the Commissioner of Patents and on the same day caused a copy of the statement to be sent by certified mail to the applicant at its address for service.  Paragraph 5 of the declaration reads as follows:

“At the time of causing the Statement to be sent to the Applicant, I was of the mistaken belief:

(a)that service of the Statement on the Applicant, as for service of the Notice of Opposition, was only required to be effected as soon as practicable after the Statement had been filed with the Commissioner. I was of the mistaken belief that the timing requirements prescribed by regulation 5.4 of the Patents Regulations 1991 applied to filing of the Statement with the Commissioner, rather than the service of the Statement on the Applicant; and

(b)that service of the Statement was duly effected at the time it was sent, rather that at the time at which the Statement would have been delivered in the ordinary course of post.”

decision

The primary submission of the patent applicant was that “the failure to serve the statement of grounds and particulars on the applicant within the prescribed time was due to a deliberate decision on the part of the opponent’s agent to follow a particular course of action based on a positive mistaken belief as to the state of the law”.  Mr Hind submitted that the failure to serve the statement of grounds and particulars on the applicant by 7 March 1996 was due to a deliberate decision by Mr Bosmans to send the statement by certified mail on that date.  Mr Hind stated that section 223 does not apply in such a case.

Mr Hind directed me to the decision of Parker J in Land’s Patent (1910) 27 RPC 481. In Land’s Patent, the patentee had deliberately elected not to pay a renewal fee in the mistaken belief that his monopoly would be protected by a later patent.  Mr Hind submitted that the facts of Land’s Patent were “on all fours with the facts of the present case”.  However, I believe there is an important distinction between the present case and the facts in Land’s Patent.  It is clear from the evidence filed by the opponent that it was always the intention of the opponent to serve the statement of grounds and particulars within the relevant time.  This is supported by the fact that the statement was received by the Patent Office by the relevant date.  I do not think there was any deliberate decision not to serve the statement of grounds and particulars or to serve the statement out of time.  It was always the intention of the opponent to serve the statement in time, but this intention was thwarted by Mr Bosmans serving the statement in the wrong manner.

Mr Hind also referred me to the cases of Cambridgeshire and Isle of Ely County Council v Rust [1972] 2 QB 426 and Olsen v The Grain Sorghum Marketing Board; Ex parte Olsen & Anor [1962] Qd R 580 (FC) in support of the argument that mistake of law is no excuse. However neither of these cases dealt with a remedial provision such as section 223 and are of little assistance in the present matter.

Both parties referred me to the words of Isaacs J in Bull v Attorney-General (NSW) (1913) 17 CLR 370 at 384, regarding the approach to be adopted in the interpretation of remedial legislation:

‘In the first place this is a remedial Act, and therefore, if any ambiguity existed, like all such Acts should be construed beneficially. ... This means, of course, not that the true signification of the provision should be strained or exceeded, but that it should be construed so as to give the fullest relief which the fair meaning of its language will allow.”

I was also directed by both parties to the decision of Jenkinson J in Kimberly-Clark Ltd v Commissioner of Patents and Another (No 3) 13 IPR 569 where he said at 579:

“It is in my opinion difficult to suppose that only the inadvertences and accidental steps, and not errors resulting from faulty reflection, of the former class of persons were intended by the draftsman to be within s 160(1).  Further, 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. ...

I do not think that the conclusion I have reached reduces s 160(2)(a) to a mere general power of extension.  By no means every judgement by “the person concerned” or by “his agent or attorney” which can be shown to have been mistaken will answer the description “error or omission” in the ordinary meaning of those words, which in their context carry, in my opinion, a connotation of obviousness of error.”

Mr Hamer referred me to a number of Patent Office decisions where extensions of time were allowed in relation to the filing and service of a document where, through inadvertence, the document had not been produced on time.  Mr Hamer submitted that it would be absurd if an extension was available in relation to an inadvertence whereby a document was not prepared in time, yet an extension not be available where a document had diligently been prepared on time but was, through error, served in the wrong manner.

A further case of relevance is Hood Computers Pty Limited v On-Line Furniture Pty Ltd an unreported decision on application 601055 dated 27 May 1996.  That case bore some similarity to the present case in that the opponent filed the statement of grounds and particulars with the Patent Office within the relevant time, but inadvertently omitted to serve a copy of the statement on the applicant. The Deputy Commissioner found that the fact that a statement was prepared and filed with the Commissioner indicated that there was a relevant intention to proceed with the opposition.  In Ethyl Petroleum Additives Ltd v Exxon Chemical Company, an unreported decision on application 650025 dated 27 April 1995, a delegate also dealt with similar issues to those before me and allowed an extension.

I am satisfied that there was an error or omission which resulted in the statement being served on the applicant outside the relevant time.  The agent for the opponent erred by serving the statement in the same manner as for service of the notice of opposition, rather that according to the requirements of regulation 5.4.  This appears to me to have what Jenkinson J referred to as a connotation of obviousness of error.

Having decided that there was an error, I need to decide whether to exercise the discretionary power of section 223(2)(a).  The factors to be taken into account have been set out in many decisions, including Vangedal-Nielsen v Commissioner of Patents & Gelphen Nominees 33 ALR 144 and Ferocem Pty Limited v Commissioner of Patents (1994) AIPC 91- 057.

It appears that a serious opposition is in train.  The evidence in support has already been served.  Other factors I need to consider are whether there was undue delay in filing the application for extension and the respective interests of the parties.

The opponent became aware of the error on 9 April 1996.  The application for extension is dated 30 April 1996.  According to the agent for Nugent, this application was mailed to AIPO on the same day, but was not received.  The application was refiled on 8 May 1996.  The application was made within three to four weeks of the opponent becoming aware of the error.  Mr Hind submitted that an unexplained delay of 21 to 30 days must be considered unreasonable and unnecessary in the context of the prescribed 3 month period for serving a statement of grounds and particulars.  However I do not think this has caused the opposition proceedings to have been unnecessarily protracted in this case.  I also note that the extension is for a period of only five days and that service of evidence in support was completed on 7 June 1996, within the time allowed without the extension.  I do not think that Gainsborough would be unduly prejudiced if I allowed the extension.  Similarly, the public interest in the expeditious disposal of matters in the Patent Office has not been significantly disrupted.

Mr Hind argued that if I construed the words “error or omission” to embrace a deliberate decision based on a positive mistake as to the state of the law, this would be inconsistent with the public interest in insisting that proper professional standards are maintained by those who deal with the Patent Office.  I have already stated that, in my opinion, the opponent did not make a deliberate decision to serve the statement out of time.  On the latter point, while I agree that there is a public interest in maintaining proper professional standards, the fact that section 223 is included in the Patents Act recognises that mistakes are sometimes made.

Having regard to all the circumstances, I grant the extension of time sought under the provisions of section 223(2)(a).

I allow the opponent’s application for extension of time from 7 March 1996 to 12 March 1996 in which to serve the statement of grounds and particulars on the applicant.

Directions

The opponent completed service of evidence in support on 7 June 1996.  I direct that the time for serving evidence in answer shall start from the date of this decision.

costs

I have allowed the application for an extension of time.  In the circumstances I believe that costs should follow the event.  I award costs against Gainsborough Hardware Industries Limited.

Brendan Bourke
Delegate of the Commissioner of Patents

Patent attorneys for the applicant  :  Davies Collison Cave

Solicitors for the opponent           :  Arthur Robinson & Hedderwicks