Yamazaki Mazak Corporation v. I.m.t. International Machine Tools Pty Ltd; Nakamura-tome Precision Industry Co Limited; and Interact Machine Tools (Nsw) Pty Ltd

[1991] APO 18

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Application No 601838 by YAMAZAKI MAZAK CORPORATION - Opposition by I.M.T. INTERNATIONAL MACHINE TOOLS PTY LTD; NAKAMURA-TOME PRECISION INDUSTRY CO LIMITED; and INTERACT MACHINE TOOLS (NSW) PTY LTD and an Application for Extension of Time to Serve Evidence-in-Support of the Opposition.

Background
          YAMAZAKI MAZAK CORPORATION (YAMAZAKI) lodged application No 601838 (15283/88) entitled "A Complex Machining Tool and a Machining Method for the use of the Machine Tool" on 28 April 1988.  The application was advertised accepted in the Official Journal of 20 September 1990.
          IMT INTERNATIONAL MACHINE TOOLS PTY LTD (IMT); NAKAMURA-TOME PRECISION INDUSTRY CO LIMITED (NAKAMURA) and INTERACT MACHINE TOOLS (NSW) PTY LTD (INTERACT) lodged a section 59 notice of opposition on 20 December 1990.  An extension of time to lodge evidence-in-support was applied for on 17 April 1991 for the period 20 March to 20 June 1991.  YAMAZAKI objected to the grant of this extension.  The matter was set down for a hearing on 15 May 1991.
          Mr Chris O'Sullivan of Griffith Hack & Co appeared for the applicants and Mr Graham Cowin of Phillips Ormonde & Fitzpatrick appeared on behalf of all three opponents.
Consideration
          The application for extension of time was lodged under reg 55(a).  In deciding whether to grant the extension I am bound by reg 83A(a).  Having due regard to all the relevant circumstances in this case, my decision as to whether the extension is justified will be based on the principles set out in Vangedal-Nielsen v Smith and

Gelphen Nominees (1980) 33 ALR 144 and also those in Lyons v Registrar of Trade Marks 1 APR 416.
          These principles require the opponents to make out a proper case justifying the extension.  They also require the Commissioner to have proper regard to the respective interests of the opponents, the patent applicant and the general public.  The Commissioner has a duty to protect the public interest both by ensuring that invalid patents are not granted and also that proceedings are not unreasonably delayed.  In this case I must therefore consider:

(a)whether there is a serious opposition,

(b)whether IMT, NAKAMURA and INTERACT have good reasons for not having completed serving their evidence-in-support by 20 March 1991, and

(c)whether the resulting delay in proceedings is unreasonable.

The reasons given by all 3 opponents for the extension of time are identical and are as follows:

"Much of the evidence on which it is proposed to rely has been collected and is currently being collated into the necessary Declarations.  However, further time is required to complete the evidence and serve it on the applicant."

Submissions
          The main points of Mr O'Sullivan's submissions made on behalf of the patent applicant, YAMAZAKI, are as follows:

(1)The applicant believes that one or more of the opponents are infringing this application.  In order to protect their interests they have lodged two petty patent divisional applications [601140 (57741/90) and 601669 (58803/90)] both of which have been sealed.

(2)As a result of this action the opponents commenced proceedings for Interlocutory and Final Relief in advance of the standard patent (this application) being sealed.

(3)These infringement proceedings (which are being defended by INTERACT and IMT) are currently underway in the Federal Court and a date for final hearing has been set down for 3 weeks from 5 August 1991.

(4)The applicants wish to have this standard patent application sealed, so that it too can be litigated in the same proceedings.

(5)That the bulk of the evidence relied on by the opponents in this patent opposition is essentially the same in substance as the affidavits filed in the Federal Court concerning lack of novelty and obviousness.  Therefore the evidence in support could have been filed before the due date of 20 March 1991, since the differences between the affidavits in the Federal Court proceedings and the Declarations in this matter are minor.  He pointed out that all but one of the affidavits were filed before 4 February.  He submitted that the one affidavit which was sworn after the due date of 20 March 1991 (that of Dr Spencer sworn on 28 March 1991) was not relevant to these opposition proceedings.  He also argued that there was no reason why the remainder of the affidavits could not have been converted into the declarations required for evidence in support during the period from 4 February to 20 March 1991.

Mr O'Sullivan provided copies of the affidavits filed in respect of the infringement proceedings so that the hearing officer could compare them with the declarations lodged as evidence in support.

(6)That if no extension of time to file evidence-in-support was granted that the opposition must fail through lack of evidence.  However the public interest would be served by the fact that any patent sealed on application 601838 would be joined in the infringement action and be tested in the Federal Court.

(7)That any delay on the part of the Commissioner in deciding this matter of extension of time for lodging evidence-in-support would serve the interests of the opponents in view of the pending Federal Court proceedings.

At the hearing Mr Cowin for the three opponents explained the circumstances of the preparation and lodgement of the evidence in support.  The main points that he made are summarised below.

(1)The opposition by IMT, NAKAMURA and INTERACT is serious:

-the locus standi of IMT and INTERACT evidenced by its defence of the infringement action brought by the applicant in the Federal Court in relation to the two divisional Petty Patents based on Application 601838,

-all documents that the opponents intend to rely as evidence in support have now been served on the applicant and all but one were actually lodged at the Patent Office on 2 May 1991 (the final declaration of evidence in support was served on the applicant on 14 May 1991,

-the documents are highly relevant to the determination of the opposition.

(2)The short delay in lodging evidence-in-support is not attributable to lack of diligence on the part of the opponents:

-whilst it is true that a large amount of the subject matter of the documents of the evidence-in-support is similar to the affidavits filed in respect of the infringement action, there are substantial and important differences,

-in particular the documents differ from the court affidavits in that they are concerned with the claims of the standard patent application 601838 rather than those of sealed petty patents 601140 and 601669,

-that the declaration by Dr Spencer, which was not served on the applicant until 14 May 1991 (the day before the hearing), contains matter from the court affidavit of 29 March 1991 as well as matter from the earlier affidavit of 4 February 1991,

-that the declaration of Dr Spencer was crucial to the success of the opposition,

-that Dr Spencer was only engaged as an expert witness in December 1990.  He is an Associate Professor and Deputy Head of the School of Mechanical Engineering at the University of Technology, Sydney,

-Dr Spencer has a normal academic workload, and in addition was out of the country during the period 28 March to April 10.  He could not therefore consider material from his two affidavits in order to combine and edit them to form a single declaration for this patent opposition during the period of his absence,

-that the infringement proceedings hindered rather than helped the preparation of evidence-in-support, because Dr Spencer had limited time to work on preparing both affidavits and a declaration.

(3)It is in the best interest of the public to grant the extension:

-the public interest is best served by not granting invalid patents, rather than granting them and testing their validity in court in infringement proceedings,

-in the event that the extension were refused, the evidence would still be before the Commissioner and it would have to be considered in a possible "bar to sealing" action.

(4)Grant of the extension would not result in an unreasonable delay in proceedings since all the evidence-in-support had now been served on the applicant.

Mr O'Sullivan replied for the applicant that he felt that the evidence-in-support had only been completed as quickly as 14 May 1991 because the applicant had opposed the extension of time to lodge it.
Decision
          In view of the court proceedings for infringement in relation to the Petty Patents and the character and volume of evidence served I accept the opponents submission that its opposition is serious.  All the evidence-in-support has now been served.  Without close analysis of the evidence, which is inappropriate at this stage and could pre-empt the opposition proceedings, it seems to be similar to that filed in the course of the infringement proceedings, with some differences, therefore I am satisfied that, prima facie, the evidence is relevant.
          It seems to me from the opponents submissions that they have not been dilatory in preparing their evidence-in-support.  They have encountered slight delays, due in particular to Dr Spencer's limited availability and his need to assist in the preparation of evidence for the infringement proceedings.
          In these circumstances I do not consider that the delay of 2 months is in any way unreasonable considering the respective interests of the opponent, the applicant and the public.
          The applicants have argued that any delay in the lodging of evidence-in-support would adversely affect their interests in view of the impending infringement action in respect of the petty patents.  I do not believe this is the case, since even if the opponents had managed to serve all their evidence before 20 March, I do not believe it would have been possible for Patent Application No 601838 to have been sealed in time to be joined in the same infringement action as the two divisional petty patents.
           Bearing in mind that all the evidence-in-support was served by 14 May 1991, I grant an extension until 20 May 1991.  Both parties were informed of my decision by telephone on 20 May 1991, and thus evidence-in-answer is due 3 months from that date.
Costs
          Mr Cowin made submissions regarding costs.  He argued that since all the evidence-in-support was served by 14 May 1991 (1 day prior to the hearing) the applicants should have withdrawn their opposition to the extension of time to lodge evidence-in-support.  He therefore argued that the opponents should be awarded punitive costs.
          Mr O'Sullivan for the applicants argued that it was only the opposition to the extension of time to lodge evidence-in-support that induced the opponents to serve the evidence as quickly as they did.  He claimed that his clients' interests were being affected by the delay in view of the pending infringement action and he felt that he was fully justified in opposing the extension.
          He also submitted that since the last of the evidence-in-support was only served a mere day before the hearing, this did not give sufficient time for him to obtain instructions from the applicant (who is resident overseas) in time to withdraw the opposition to extension of time.
          In my view the reasons given by the opponents in their application for the extension are generally not indicative of why the extension is necessary.  However I believe the justification for the extension could only be determined from Mr Cowin's submissions at the hearing.  In particular the details of Dr Spencer's limited availability and the crucial nature of his declaration were only revealed at the hearing.  Consequently an award of costs in the opponents favour is not justified.  However since the opponents have succeeded in their application for an extension of time an award of costs in favour of the applicants is not justified either.
          In the circumstances, I make no award of costs.

(R.A. MELVIN)
   Delegate of the Commissioner of Patents