Zurich Branch of Midrex International B.v. Rotterdam v Gregory Richard Munt

[1995] APO 30

official notice

decision of a delegate of the commissioner of patents

Application        :  No. 649402 in the name of ZURICH BRANCH OF MIDREX INTERNATIONAL B V ROTTERDAM

Subject::  Smelting iron oxide

Action: Opposition under S.59 of the Patents Act 1952 by GREGORY RICHARD MUNT; request for dismissal; hearings.

Decision:  Issued            .

Abstract:  Opposition dismissed; opponent did not have locus standi.

patents act 1990

decision of a delegate of the commissioner of patents

Re:Patent Application No. 649402 by Zurich branch of Midrex International B.V.Rotterdam, opposition under S.59 of the Patents Act 1952 and requests for dismissal of the opposition or for further and better particulars, under Regulations 5.5 and 5.10 of the Patents Regulations in force under the Patents Act 1990.

background

Patent Application 649402 was lodged on 26 July 1990 and advertised accepted on 26 May 1994, a notice of opposition by Gregory Richard Munt was served on the applicant on 29 August 1994, a Statement of Grounds and Particulars was served on 28 November 1994, and on 21 December 1994 the applicant filed a request to dismiss the opposition or to seek directions for "further and better particulars". The matter was heard in Melbourne on 16 February 1995; the applicant was represented by Mr G Bartlett, patent attorney, and the opponent, Mr Munt, patent attorney, represented himself. At the hearing both parties made submissions relating to whether or not each of the grounds and particulars should be elaborated upon or dismissed.

On 24 February 1995 I wrote to both parties on the following matters:

1.  I was prima facie of the view that the facts in this case were similar to those as reported in the decision of the Commissioner in Re MXM's Application (1992) AIPC 90-926: ie. Subsection 59(1) of the 1952 Act applies to the present opposition and prima facie it seems as though the opponent does not have locus standi. In that decision the delegate found that a registered patent attorney did not have locus standi because he was not a "person interested", as is required of opponents under Subsection 59(1) of the 1952 Act. The delegate's decision in the MXM case was affirmed by the AAT and reported in (1993) AIPC 90-983.

2.  The grounds of opposition referred to in the Statement of Grounds and Particulars should have been those available under the 1952 Act, since the application was lodged under the 1952 Act. In fact, the Statement referred to grounds available under the 1990 Act. I referred both parties to the decision in Norwood Industries Pty Ltd v Macbird Floraprint Pty Ltd (1992) AIPC 90-912, which dealt with the same matter. In that case the delegate did not consider a similar fault in the Statement to be a fatal flaw in the opposition: he stated

"It is however proper in these circumstances to apply a purposive construction to the Statement of Grounds and Particulars as was stated in Borden Inc v Elkem A/S (1992) AIPC 90-893."

.   Since these two matters were not discussed at the hearing, I allowed both parties an opportunity to make submissions thereon.

Both parties filed written submissions on these matters, and Mr Munt also requested another hearing. Both parties were heard on matters of locus standi and costs, by telephone, on 2 May 1995; the applicant was represented by Mr J King, patent attorney, and Mr Munt represented himself.

I shall first deal with the matter of locus standi since it is a crucial issue in deciding whether the opposition is to proceed.

submissions

Mr Munt's submissions on locus standi are summarized as follows:

.   The Notice of Opposition was lodged in Mr Munt's name in his capacity as an agent of the CRA Group companies which wanted the Notice to not be in its name to avoid the possibility of offending the Japanese parent company of the Midrex Group companies. The CRA and Midrex groups had been involved in a joint venture, that led to a dispute involving intellectual property, the groups are now involved in negotiations to resolve the dispute, so the CRA Group companies were anxious that the negotiations not be jeopardised.

.   The applicant was made aware that the CRA Group companies would oppose the application. This occurred, prior to the lodgement of the Notice of Opposition, at a meeting of the Hismelt Corporation, which had also been involved in the joint venture. Therefore, this case can be distinguished from the MXM case where the name of the "real" opponent was unknown to the applicant.

.   As a result of an error of the opponent, the Statement of Grounds and Particulars does not include a statement of the interest of the opponent. This error is not significant though since the applicant knew the identity of the "real" opponent. Also, the Statement does refer to one of the inventors, Mr Hoffmann, working for the abovementioned Hismelt Corporation.

The patent applicant's submissions on locus standi are summarized as follows:

.   The Notice of Opposition clearly indicates that Mr Munt is the opponent and there is no reference to him acting as an agent for another party. While the Statement of Grounds and Particulars includes reference to each of Hismelt Corporation, CRA Limited, Kloekner Werke GmbH and the Division of Mineral Engineering of CSIRO, there is no specific reference to the party from whom Mr Munt is taking instruction.

.   The MXM decision indicates that "a person acting merely as an agent for another has no standing as an opponent to the grant of a patent", even if the other party itself has an interest in the application.

decision

Re the issue of whether the applicant was aware of who the "real" opponent is in this opposition, firstly, I have no evidence before me to prove that the applicant knew that the CRA Group was the opponent. Mr Munt's submission relating to the meeting at Hismelt, where the applicant was supposedly made aware of opposition to its application, is rather vague on this point; I assume that there only was some brief verbal exchange, and there is no reference as to who specifically would be named as the opponent.

Secondly, it is not clear even now who, specifically, is supposed to be the opponent: Mr Munt's submissions refer at various places to "CRA Limited", "the CRA Group" and "the CRA Group companies"; a majority of the references describe the latter as the supposed opponent. However, "the CRA Group companies" sounds to me like a group of separate corporate entities and it is not clear whether they could be considered as one opponent.

Thirdly, I have the MXM decision before me, and it is relevant precedent because the facts in that case are very similar to those in the present case. Even if the applicant had been made verbally aware that one of the "CRA Group companies" might be the "real" opponent in this case, I do not think that is sufficient for me to distinguish the MXM decision. The overriding consideration seems to be that Mr Munt is the opponent and he has no interest in the opposition.

On the other issue of whether Mr Munt made an "error" in making out the notice of opposition in his own name without identifying the "agency relationship", I am not convinced by Mr Munt's submissions. It seems to me that, in the light of his other submission relating to not offending the Japanese parent company of Midrex so that negotiations would not be jeopardised, it was probably a deliberate decision on his part not to identify the agency relationship.

Taking all these matters into account I conclude that the opponent in the present opposition does not have locus standi, and it is appropriate, in accordance with the procedure adopted in the MXM decision, that I dismiss the opposition. Thus it is not necessary for me to consider the submissions made at the first hearing relating to each of the grounds and particulars.

I will now deal with the issue of costs.

With regard to the first hearing, prima facie, neither party raised the crucial issue of locus standi. However, the applicant's submissions following the first hearing and my abovementioned letter of 24 February 1995, request that costs be awarded in favour of the applicant because "the question of Mr Munt's standing was raised informally at the hearing". On this matter at the first hearing, Mr Bartlett, when questioning how Mr Munt was aware of a research project conducted by Hismelt, stated:

"Our instructing US associates have raised doubts as to the bona fides of the opponent....and have been perplexed as to why....the actual opponent has chosen to remain hidden.

I think that at this stage of the hearing Mr Bartlett questioned the opponent's bona fides, but in so doing also recognized Mr Munt as the opponent for the purpose of the opposition; ie. Mr Bartlett questioned the "real" opponent's tactics in having the opposition proceed in Mr Munt's name. However, the applicant did not bring up the issue of the locus standi of the opponent; if the applicant had recognized that Mr Munt should not have been the opponent because he did not have locus standi, then Mr Bartlett would have made this point unambiguously clear. But in fact he did not, so I confirm my finding that neither party raised the issue of locus standi at the first hearing and it is therefore appropriate not to award costs associated with that hearing.

The second hearing dealt with the crucial issue of locus standi and I have found that the opponent does not have locus, so I will follow the usual practice of costs following the event and award costs relating to the second hearing against Mr Munt.

John Welsh
Delegate of the Commissioner of Patents

Patent attorneys for the applicant  :  Wray & Associates, Perth

Patent attorneys for the opponent   :  Griffith Hack & Co, Melbourne