Win Manufacturing Pty Ltd v Clawtech Pty Ltd

[1997] APO 36

official notice

decision of a delegate of the commissioner of patents

Application  :          No. 673482 in the name of Win Manufacturing Pty Ltd

Title:          Cleaning method means

Action:          Application for an extension of time under Regulation 5.10 by Clawtech Pty Ltd

Decision:          Issued            .

Abstract

The opponent has satisfied the criteria for an extension of time.  I grant an extension from 13 June 1997 to 13 July 1997.  The withdrawal of a Declarant at a late stage in the process of preparing evidence in support will have caused significant delays in serving evidence.  This provides sufficient justification for more time to enable someone else to provide evidence.

patents act 1990

decision of a delegate of the commissioner of patents

Re:Patent Application No. 673482 by Win Manufacturing Pty Ltd and an opposition thereto by Clawtech Pty Ltd and application for an extension of time to serve evidence in support under r.5(10)(2)

background

Australian patent application number 15057/95 was filed as a non-convention application on 24 March 1995 by Win Manufacturing Pty Ltd (Win).  It claims priority of 24 March 1994 based on provisional application number PM4704.

The application was advertised accepted on 7 November 1996 and assigned the number 673482. Clawtech Pty Ltd (Clawtech) lodged a notice of opposition on 17 December 1996. 

A statement of grounds and particulars was served on 13 March 1997.

Clawtech filed partial evidence in support (a statutory declaration by Peter Cox), and an application for an extension of time to serve evidence in support from 13 June to 13 July 1997, on 13 June 1997.

The reasons for the extension of time were given in the application as follows:

A number of Declarants have been identified for the purposes of providing Evidence-in-Support.  The Opponents believe that in order to fully support the relevant grounds of the opposition and in particular that of prior use, it is necessary to serve evidence from a number of declarants.  Four of these declarants have been located and briefed.  Evidence-in-Support for the first Declarant has already been served.  Preparation of Declarations for the other Declarants has commenced.  However the second Declarant has recently withdrawn.  Further time is required to finalise Declarations for the third and fourth Declarants.  Further time is also required to locate and brief further suitable Declarants in view of the second Declarant’s late withdrawal.

On 25 June 1997 Win objected to the granting of the extension of time and the matter was set down for hearing in Canberra on 23 July 1997.  I am also aware of another application for an extension of time of one month from 13 July to 13 August, filed on 14 July 1997.  As yet an objection has not been filed.

Both parties relied on written submissions.  Win was represented by Howard Schulze of Collison & Co, patent attorneys, Adelaide and Clawtech by Ian de Jonge of Cullen & Co, patent attorneys, Brisbane.

The subject matter of the application relates to cleaning a damping roller used in offset printing machinery (known as a dampener roller).

EVIDENCE

There was no evidence filed in relation to the application for the extension of time.

DECISION

Regulation 5.10(2) enables the Commissioner to grant an extension of time in opposition proceedings.  From regulation 5.10(5), I note that an extension must not be granted unless I am reasonably satisfied that the extension of time is appropriate in all circumstances.

The factors to be considered in relation to a request for an extension of time have been set out in Ferocem Pty Limited v Commissioner of Patents (1994) AIPC 91-057.

"The determination of an application for an extension of time under reg. 5. 10(2) involves a balancing exercise, in which competing considerations must be taken into account. There are the interests of the persons directly concerned in the application and opposition in question. There are also public interests, which are not necessarily all ranged on the same side. They include the expeditious disposal of matters in the Patent Office, and questions of cost, of efficiency, and of insistence upon proper professional standards being maintained by those who deal with the office. But they also include, as Kitto J. pointed out in Kaiser Aluminium & Chemical Corporation v The Reynolds Metal Company (1969) 120 CLR 136 at 143, "the public interest that a serious opposition by a person entitled in fact to oppose the grant of a patent should be dealt with on the merits, rather than that it should be shut out in consequence of a failure in procedure, lamentable though the failure may be." This proposition was cited, by Bowen CJ in Vangedal-Nielsen [33 ALR 144] (at 150), where he also set out some of the considerations involved upon the application for an extension of time."

I understand that, while I should consider whether or not the person seeking the extension has made out a proper case justifying the extension, I should also consider not only the private interests of the applicant for the patent and the opponent, but also the public interests that whilst the outcome of proceedings should be correct and just, the proceedings should not be unduly protracted.

Justifying the extension

Clawtech submit that

“The opponent has been active in seeking Declarants and in briefing Declarants and preparing Evidence-in-Support of the opposition.  In May 1997, draft Declarations from three declarants were received and reviewed.  Further evidence from the three Declarants was considered important to support the Opponent’s case, and further evidence was requested.  The opponent is experiencing some delays in completing the further Declarations as the declarants are based in different States.  For instance, one declarant is based in Victoria, while another declarant is based in Northern New South Wales and a further declarant is based in New South Wales.

Partial Evidence - in Support of the opposition was served on the applicant on 13 June 1997 in the form of a substantial Declaration of 20 pages and several exhibits by Peter Cox; this showing that the Opponent is being diligent in preparing its case....

One of the initially retained Declarants recently withdrew.  The withdrawal presents a serious and frustrating problem as the Opponent must now undertake duplicate effort to identify and brief new Declarants and to prepare new Evidence-in-Support from them....

Evidence of prior use and prior publication by the applicant is being prepared and finalised.  The Opponent believes there to be more than one instance of prior use or prior publication by the applicant.

Win in turn submits that

“The opponent, Clawtech Pty Ltd through its officers, has been substantially aware of the existence of this Patent Application since at least the middle of 1995 and there has been a dispute from about October 1995 which has already resulted in actions before the Federal Court, South Australia District Registry, General Division No SG 15 of 1996 between Win Manufacturing Pty Ltd, the applicant and Robert C Brough, Timothy G Zwemer and Joel Zwemer.

Clawtech Pty Ltd were not a party to those proceedings but we enclose a transcript of the proceedings before Justice O’Loughlin ... Page 10 of the transcript ... explains the relationship between the parties Brough, Zwemer and Zwemer in connection to Clawtech, namely that they are consultants to Clawtech which is the opponent in the matter of the present proceeding.

In the middle of 1995, Win manufacturing Pty Ltd engaged the service of Robert Brough ... and Tim Zwemer ... Tim Zwemer was Chief executive Officer of Win manufacturing Pty Ltd and Robert Brough was Chief Operations Manager to develop and market the product. ...

This earlier matter is raised simply to point out that the opponents have been clearly aware of the existence of the current Patent application and, of course, the technology relating to the machine and its performance, back when they were employed by Win Manufacturing Pty Ltd...”

In relation to the justification for an extension of time Win submits that the detail provided in the reasons given is insufficient for me to decide whether the extension of time is justified.  They further submit that

“If the Declarants are simply declaring to factual positions, then there would hardly be a necessity to go searching for other Declarants in terms of information or evidence concerning prior use, for instance.  The size of the statement of grounds and particulars gives a guide that there was a lot of work conducted but why have they suddenly seized up.

If further Declarants are needed to establish common general knowledge, why would these people change their mind or surely, in the interests of efficiency of operating the system, these declarants should have all been established well and truly in advance and presumably their evidence is not in any sense controversial so that they would not need to change their mind.

Considering the length of the statement of grounds and particulars, considering the apparent effort and energy that went into the exploration of the materials and the preparation of this, considering the fact that the parties are at substantial loggerheads and have been in litigation previously and are currently trading, whose trade may be impeded as a result of the conclusion of this general matter, it would appear to be eminently in the interests of efficiency and the public interest that a limited period be made available.

It seems to me that Clawtech have provided sufficient justification for an extension of time in this instance.  I am surprised that the opponent has only asked for a one month extension.  It doesn’t seem reasonable to me to process this matter by way of applications for extensions of time of only one month.  These reasons would seem to me justify further time to serve evidence in support, under the provisions of the Act and Regulations.

The withdrawal of a Declarant at a late stage in the process will have caused significant delays in providing evidence.  This provides sufficient justification for more time to enable someone else to provide evidence. 

It is insufficient for Win to allege that Clawtech have not been diligent in using the time available to provide their evidence in the absence of any facts to establish Clawtech’s lack of diligence. 

Win have simply asked questions and made a number of unsupported assertions.

Win also seek to justify their objection to the extension of time on the need to run the patent system efficiently in the public interest.  Whilst I applaud their wish to see the patent system run efficiently I do not think that there has been an undue delay in these proceeding so far.  The alleged foreknowledge of the consultants to Clawtech, of the subject matter of the application under consideration, is not relevant, in this instance, to a consideration of undue delay in the time allowed an opponent, under the regulations, to serve evidence-in-support.  What is relevant is a consideration of whether any delay in the proceedings is justified.

Private and the public interests

In the present circumstances, the public interest in not granting invalid patents overtakes the interests of Win.  The partial service of evidence-in-support suggests to me that a serious opposition has been foreshadowed.

It is clearly in the prospective opponent's interest for the opposition to go ahead.

CONCLUSION

Clawtech has satisfied the criteria for an extension of time.

I grant an extension from 13 June 1997 to 13 July 1997.  In view of the further application for an extension of time to serve evidence in support I will not set a date for the start of evidence in answer.

Costs

It is normal to award costs with the event in these cases and I see no reason for varying this practice.  Consequently, I award costs against Win.

RJ Sawyer
Delegate of the Commissioner of Patents

Patent attorneys for the applicant  :  Collison & Co, Adelaide

Patent attorneys for the opponent   :  Cullen & Co, Brisbane