Whitco Pty Ltd v Austral Lock Pty Ltd

[1983] APO 25

In the Matter of the Patents Act 1952

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In the Matter of Patent Applications Nos. 523995 and 524036 by WHITCO PTY. LTD.

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In the Matter of Oppositions thereto by AUSTRAL LOCK PTY. LTD.

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In the Matter of Requests for Extensions of Time within which to lodge Evidence‑in‑

Support.

DECISION OF A SUPERVISING EXAMINER OF PATENTS:
        Applications Nos. 523995 and 524036 were advertised accepted on 26 August, 1982.   Notice of opposition to either patent application was therefore due to be lodged by 26 November, 1982, however the opponent requested an extension of this period to 26 February, 1983.   As the applicant did not object, this extension was allowed.
        Notices of opposition were lodged by Austral Lock Pty. Ltd. on 22 February, 1983.   Evidence‑in‑support of each opposition was therefore due to be lodged by 22 May, 1983.   On 19 May, 1983, Austral Lock lodged at the Patent Office part evidence‑in‑support in the oppositions and also applications for extensions of time for a further period of two months until 22 July, 1983 in which to serve additional evidence‑in‑support.   In view of the provisions of regulation 85 and in accordance with Patent Office practice, these extension

applications were referred to the applicant to enable that party an opportunity to raise an objection and to be heard if it so wished.   The applicant duly lodged objections to the extensions being granted and accordingly a hearing was set down in Canberra for 6 July, 1983, to enable the parties to be heard on the matter.   Rather than appear at the hearing each party chose to rely on written submissions lodged prior to the hearing date.
        It is worth noting at this point that the opponent prepared and filed its notices of opposition, part evidence‑in‑support and extension of time applications directly itself since during that time period the opponent had not retained the services of professional agents.   The opponent since June 1983 has engaged A. Tatlock & Associates, patent attorneys, to prosecute further its oppositions, with G.R. Cullen & Company, patent attorneys, representing the applicant.   It is also worth noting that the opponent completed its evidence‑
in‑support by lodging additional evidence on 4 July, 1983, i.e. prior to the hearing date.
        The circumstances and grounds given in the applications for extension of time are as follows:

"We have not had sufficient time to complete our case of opposition to the Whitco patent."

In objecting to the applications for extension of time, the applicant's submissions can be summarized as follows:

1.The opponent has had nine months since advertisement of acceptance in which to consider its opposition and provide supporting evidence.

2.The part evidence‑in‑support lodged on 19 May, 1983 "is by way of personal opinion and is inconclusive and unsupported by evidence", and "contains no suggestion that the Opponent is in possession of any conclusive evidence or is likely to obtain such evidence".   Accordingly the applicant contends "that the Opponent has been dilatory in his efforts to obtain evidence".

3.Any further delay in these opposition proceedings arising from further extensions of time will seriously disadvantage the applicant due to lost sales resulting from other manufacturers making or importing copies of its lock the subject of these patent applications and selling them while the applicant is unable to commence infringement actions until patents are sealed on the applications.

While the applicant's observation as indicated in point 1 is correct, in relation to the matters in question the opponent has in effect only had the three months specifically provided by regulation 55 in which to serve its supporting evidence.
        With regard to point 2 of applicant's submissions, it is not appropriate for me to study in detail the part evidence‑in‑support lodged by the opponent in these oppositions.   However I merely make the following general observations on presentation of evidence.   Generally speaking, I do not necessarily conclude that due to the nature and presentation of a party's evidence that this alone establishes that the party has been dilatory in its efforts to obtain evidence.   Such a party may well have had the necessary evidence available but failed to present it in a suitable format as evidence‑
in‑support; this may well be the case here bearing in mind the fact that the part evidence‑in‑support was prepared and lodged directly by the opponent without the apparent assistance of professional advice.
        Point 3 of the applicant's submissions draws attention to the interests of the applicant in these oppositions and will be a matter I will consider in the context of public interest later in this decision.
        In submissions lodged on behalf of the opponent in this matter by its Attorneys, reference is made to the circumstances leading up to the lodgement of Notices of Opposition and part evidence‑in‑support directly by the opponent, and the subsequent realization by the opponent that as the evidence already lodged may not be satisfactory in form for evidence, professional advice would be needed if the oppositions were to be proceeded with.   I note however that this realization concerning the form of evidence apparently first arose some time after the extension applications were lodged.   The submissions also refer to discussions between attorneys for the opponent and attorneys for the applicant in June 1983 which I consider are not directly relevant to my consideration of this matter.   The submissions then continue with the follow‑
ing paragraph:

"We submit that, in the circumstances, the time requested by the Opponent would not be considered to be unreasonable in the light of normal Opposition time scales, and the particular circumstances appear to be eminently reasonable, as there has certainly been no intention not to proceed with all due diligence, but this has been prevented by lack of knowledge."

In relation to the above paragraph of applicant's submission, I place no weight on the comparison with "normal Opposition time scales", since it must be appreciated that each application for extension of time needs to be judged on its merits viewed only against the circumstances of that case.   The criteria for granting an extension of time in the present situation is set out in regulation 83A which states in part:

"... the Commissioner shall not grant the extension of time unless he is satisfied that the extension is justified having regard to all the circumstances of the case."

It is therefore necessary for me to consider the present applications for extension of time accordingly.
        The submissions on behalf of the opponent apart from referring to opponent's "lack of knowledge" and its realization (in June 1983) of difficulties it might have to overcome if professional advice or assistance was not obtained gives no other reason for seeking the present extensions according to the applications lodged on 19 May 1983.   Nevertheless I think it is apparent from those applications themselves that the extensions sought were to enable the opponent to "complete our case of opposition to the Whitco patent" on the basis that up until 19 May, 1983 it had not had sufficient time.   It can only be inferred from the applications and opponent's submissions that lack of knowledge by the opponent in obtaining and documenting the necessary evidence may have resulted in the opponent finding it had insufficient time to complete its evidence in the initial three months allowed.   In the absence of other clear reasons why the time allowed has been insufficient to complete opponent's evidence‑in‑support I am not satisfied that circumstances based on "lack of knowledge" by the opponent alone justify the granting of the extensions sought.
        There is a further consideration in determining the allowance of an extension of time and that is one of public interest.   From its point of view, the applicant has submitted that further delays resulting from, for example, the granting of further extensions of time "will seriously disadvantage the Applicant in further lost sales" and delay any possible infringement action it may wish to commence.   I can appreciate the applicant's concern and possible inconvenience arising from delays in the opposition action.   However in considering the public interest, I must carefully weigh inconvenience occasioned by delay in proceedings if the extensions are granted, against the possible effect on the public if the oppositions are not fully considered on their merits, which would be the consequence if the applications for extensions of time are refused.
        In the present circumstances, if the extensions are granted there will be no significant delay arising in these proceedings since the evidence which was lodged at the Patent Office on 4 July, 1983 and served on the applicant on or about that day will be formally accepted as being served within the extended time sought, and as that evidence completes opponent's evidence‑in‑support the provisions of regulations 56 and 57A are then open to the applicant.
Having briefly perused the evidence lodged on 4 July, 1983 I am satisfied that in its general nature it is relevant and indicates that serious oppositions are mounted. It is in the public interest that a serious opposition should be allowed to proceed (see remarks made by Kitto J. in Kaiser Aluminium & Chemical Corporation v. The Reynolds Metal Co. 120 CLR 236 at page 143). It is also in the public interest that the status of a patent applic‑ ation 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.
        I am satisfied that the opponent is mounting serious oppositions to the patent applications, and am also of the view that the opponent has been reasonably diligent in its prosecution of the oppositions.   Having due regard to all the circumstances of these cases I consider that it would be in the public interest for the oppositions to proceed and accordingly I have decided to grant the applications for extension of time.
        Since this decision will issue to the parties after the date to which extensions have been granted, as already indicated to each party by telephone, for the purposes of regulation 56(1) I allow the applicant 3 months from the date of this decision to serve any evidence‑in‑answer to the oppositions.
        I make no award of costs in this matter.

(T.R. BRUHN)