Re Danby Pty Ltd v the Commissioner of Patents and Rib-Loc Group Limited [1988] FCA 43 (1 March 1988)

FEDERAL COURT OF AUSTRALIA

Re: DANBY PTY LTD
And: THE COMMISSIONER OF PATENTS and RIB-LOC GROUP LIMITED
No. QLD G188 of 1987
Patents

COURT

IN THE FEDERAL COURT OF AUSTRALIA
QUEENSLAND DISTRICT REGISTRY
GENERAL DIVSION
Pincus J.(1)

CATCHWORDS

Patents - time for lodging notice of opposition to grant - Extension of time - two powers of extension in Act - whether both apply - sphere of operation of each power.

Patents Act 1952, ss.59, 141, 160

HEARING

BRISBANE
1:3:1988

Counsel for the applicant: Mr. B. D. 0' Donnell

Solicitors for the applicant: Messrs Watt Birch Co.

Counsel for the second respondent: Mr.J. McL. Emmerson Q.C. with Mr. P.D. McMurdo

Solicitors for the second respondent: Messrs Morris, Fletcher & Cross

ORDER

The application be dismissed.

The applicant pay to the second respondent its costs of the proceedings to be to be taxed.

NOTE: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

DECISION

This an application under the Administrative Decisions (Judicial Review) Act 1977 to review a decision of a Supervising Examiner of Patents allowing the second respondent an extension of time to lodge notice of opposition to the grant of a patent I shall use the designations the parties have in this Court, in particular, the applicant before me will be so called, although it was not the party applying to the Examiner.

2. The decision was made under s.16O(2) of the Patents Act 1952, which reads as follows:

"Where, by reason of -

(a) an error or omission on the part of the person
concerned or of his agent or attorney; or

(b) circumstances beyond the control of the person
concerned,

an act or step in relation to an application for a
patent or in proceedings under this Act (not being
proceedings in a court) required red to be done or
taken within a certain time has not been so done or
taken, the Commissioner may, upon application by
the person concerned, but subject to this section,
extend the time for doing the act or taking the
step."

3. The contentions advanced by Mr O'Donnell of counsel for the applicant were based on the presence of the words by reason of"; counsel argued that, although the examiner found that there was an error or omission within (a), he did not find that it caused an act or step referred to in the sub-section not to be done or taken. Further, counsel said, if such a finding were to be read into the reason, there was no evidence to support it

4. A preliminary question which was discussed at the hearing was whether s.160 applies to confer power on the Commissioner to extend time for lodging notices of opposition. It is not absolutely clear that it does so and I invited submissions on the point.

5. Section 59(1) of the Act, which governs the lodgment of notices of opposition, prescribes a time limit and makes specific provision for relaxation of that limit. It says, so far as relevant:

"The Minister or a person interested may, at any
time within 3 months after the date of the
advertisement of the acceptance of an application
for a standard patent and complete specification,
or within such further period, not exceeding 3
months, as the Commissioner, on an application made
to him within the first-mentioned period, allows,
by notice in writing lodged at the Patent Office,
oppose the grant of the patent on one or more of
the following grounds, but on no other ground ..."

6. It will be noted that apart from the consideration just mentioned - that s. 59(1) deals specificity with notices of opposition and s.l60 is general - there are other differences between the two.
(i) The alleviation provision in s. 59 (1) uses the language "such further period ... as the Commissioner ... allows", whereas s .160 (2) says the "Commissioner may ... extend the time ..." It does not appear to me that this difference in language is of importance.
(ii) Section 59(1) permits the allowance of further time, without limit as to grounds; s.160(2) gives power to extend time only on a ground there stated

(iii) Section 59(1) permits an extension only for up to six months past the date of the advertisement; s.160(2) has no such restriction.
(iv) Section 59(1) gives the Commissioner power to allow further time only on application made within three months after the date of the advertisement; s.16O(3) says:

"The time for the doing of an act or the taking of a
step may be extended under sub-section ... (2)
although that time has expired."

7. As will appear, the application to the Commissioner in this case was made after the expiration of three months from the date of the advertisement, so it could not be justified under s. 59(1). If that provision exhaustively sets out the Commissioners power to give further time to lodge notice of opposition, then there was no power to act under s.160(2)

8. Mr Emmerson Q.C., who appeared with Mr McMurdo for the second respondent, argued that there is power to act under s.160(2) after expiration of the period of three months from the date of the advertisement mentioned it, s.59 (1), but not before. He contended that the way in which one should reconcile the two provisions is thus to limit their respective spheres of operation. The alternative view is, of course, that s.59(1) says all the Act has to say about the time for lodging notice of opposition and that it is paying scant respect to the legislative intention revealed by the words "on an application made to him within the first-mentioned period" to hold that the Commissioner may give further time on application made beyond that period.

9. A similar problem, arising under the Trade Marks Act 1905, was dealt with by the High Court in R. v. The Registrar of Trade Marks; Ex parte J.S. Staedtler [1936] HCA 27; (1936) 55 CLR 271. There, a provision allowing a notice of opposition in terms rather similar to those in s.59(1), with which I am concerned, was held to override a general time extension provision. The former permitted lodgment of notice "within three months after the advertisement of the application or such further time not exceeding three months as the Registrar on application made within the first period of three months allows...." The Court regarded the special provision as being "inconsistent with the full application of the general power given to the Registrar by sec. 105 to extend times after their expiration" - per Dixon J. at p. 274

10. On the face of it, there is a simple ground for distinction of the Staedtler case. Section 105 just referred to, corresponding to s. 160(3) of the Patents Act 1952, was expressed to give power to extend time before or after the expiration of a time specified "unless otherwise expressly provided". On the other hand, one may question whether the omission of any such expression from s.160(3) makes much difference; even in its absence, a sufficiently specific contrary provision must necessarily be read as overriding a general provision with which it is inconsistent.

11. However, it was contended by Mr Emmerson that the trend of authority on s.160 is in favour of a generous application of that provision. that appears to me to be so.

12. In AB Scaniainventor v. Commissioner of Patents [1981] FCA 84; (1981) 54 FLR 367, the Full Court had to consider the relationship between s.160(2) and s.141(1) of the Patents act.

13. Section 141(1) says that, where an application for a standard patent or petty patent is made, by a person of a certain description, within twelve months after the making of an application for protection in respect of an invention in a Convention country, a certain consequence ensues, as to the priority date. The Full Court held that s. 160 (2) allows an extension of the time specified in 5.141(1), saying:

Section 160 is a remedial section and should be
applied where it appears to be applicable unless
there is some clear indication to the contrary.
This view is supported by the provisions of
s.160(8)" (p.372)

Section 100(8) reads as follows:

This section does not apply in relation to the
doing of an act or the taking of a step under
section 47, section 474, section 470, section 47C
or sub-section 528(1)."

14. The conclusion arrived at by the Full Court in the Scaniainventor case was approved by the High Court in Australian paper Manufacturers Limited v. C.I.L Inc. [1981] HCA 64; (1901) 148 CLR 551. In Lehtovaara v. Commissioner of Patents (1901) 50 FLR 1, the Full court had to consider the relationship between s.160 of the Act and s.54, limiting the time for acceptance of an application for a patent. Again, the Court held that s.10 applied so as to override a specific time limit, the majority being unable to find a clear indication that s.160 was excluded: pp.13 and 14.

15. These decision were reviewed by Beaumont J in Mitty's Authorised Newsagency v. Registrar of Trade Marks (1983) 76 FLR 217. His Honour there had to consider provisions of the Trade Marks Act 1955 rather similar to, but in his view distinguishable from, those dealt with in Staedtler `s case. The provision in Mitty's case corresponding to s.160 of the Patents Act was s.131, and that corresponding (quite closely) to s 59. of the Patents Act was s.49. His Honour said, at pp.228, 229:

"Section 131 is not a merely general power in any
abstract sense: it is limited in its application
to quite special situations. further, the history
of the legislation and its remedial character
support the conclusion that parliament intended
that, in limited class of case, time could be
extended beyond the period specified in, inter alia,
s.49 ..... Although it was held in
Staedtler's case that the precursor of s.49 should
be regarded as an exhaustive treatment of the
subject, it is possible to reconcile that decision
with the subsequent introduction of a remedial
provision to deal with force majeure situations
arising within the framework of s49. the code or
exhaustive provisions contained in s.49 are thus
made the subject of a limited exception in the
specific circumstances described in s.131."

16. Although I, like Starke J. in Staedtler's case, do not find resolution of the problem free from difficulty, it appears to me that I should follow the trend of these authorities and hold that s.160(2) applies, at least where the possibility of applying under s.59 for further time to lodge notice of opposition is gone. That is, s.160(2), in my opinion, allows the Commissioner to extend time, at least after the expiration of three months from insertion of the advertisement of acceptance referred to in s.59(1). It has to be confessed that the legislative structure thus created looks odd: if the extension is asked for early, there is a limit on the length of the extension but if it is asked for late, there is no such limit. But no doubt, having in mind the provisions of s.59(1), extensions of time to lodge notice of opposition, under s.160(2),will not freely be granted.

17. I hold that there was a discretion, on proof of the matters referred to in s.160(2), to extend time.

Decision of Supervising Examiner

18. At the outset, a procedural point should be noted. The application under s.160(2) was heard in Canberra on 27 July 1987. The representative of the second respondent, in response to submissions made by opposing counsel, sought and was allowed time in which to lodge further submissions. A declaration was accordingly made on behalf of the second respondent on 5 August 1987. The circumstance just mentioned is relevant, as tending to show that each party had a full opportunity to place material before the Examiner and that any apparent gap in such material may not have been merely a slip.

19. The Examiner's reasons said that an application was lodged on 18 May 1985 for a patent for an invention. A request for an examination (under s.47) was lodged in October 1986 and the application was advertised as accepted on 22 January 1987. The three month period allowed for lodging notice of opposition thus expired on 22 April 1987.

20. On 1 July 1987, one J. C. Schmidt, on behalf of the second respondent, applied in his own name under s.160(2) for an extension of time in which to lodge notice of opposition, and on 10 July 1987 a further such application was made on the name of the second respondent. I mention, again, that the parties are given in these reasons the designations that they have in this Court.

21. There were, said the Examiner, two matters to be considered:

"The first of these is whether the applicant (sic)
for extension of time has established that failure
to meet the time limit is due to error or omission
on the part of the person concerned or of his agent
or attorney. Once this test has been satisfied the
Commissioner does have jurisdiction to grant an
extension of time."

The evidence which the Examiner apparently accepted was that the second respondent had told Schmidt to oppose the grant. Schmidt thought a watch was being kept to determine when acceptance took place and he thought the watcher was a Mr Alan Thomas of Collison and Co., a firm of patent attorneys. Schmidt thought he had told Thomas to maintain a watch, but Thomas had no recollection of Schmidt's having done so. So far as relevant , the submissions made on behalf of the present applicant were recorded by the Examiner as follows:

"Regarding the ground stated on Rib Loc's (sic)
application for extension of time `that the notice
of acceptance ..... was inadvertently missed ...',
Mr. 0' Donnell suggested that this was misleading
since no watch was instigated at all; and
considering the evidence he suggested that it was
too vague to decide whether an error or omission
has occurred' He argued that there was no
evidence to show a link between the error or
omission and a failure to lodge notice of
opposition in time; there was no proof that the
watch would have found the Journal notice, and no
detail is given of how watching services are carried
out in Collison & Co."

22. Mr. 0'Donnell, who appeared both before the Examiner and in this Court, relied upon this passage in the reasons as demonstrating that the issue of causation was argued and pressed and that the absence of any express finding that the error or omission relied on had a relevant causative effect attained, accordingLy, greater importance.

23. After discussing the "argument that the evidence was too vague to decide whether an error or omission has occurred" and decisions thought to be relevant to that point, the Examiner said:

"... that the criteria for deciding whether an error
or omission has occurred, are not as rigid as
suggested by Mr. O'Donnell. In this case it is not
necessary to infer that the watch would have
discovered the acceptance of Danby's application,
since the failure to instigate the watch can in
itself be interpreted as an error or omission."

24. The sentence beginning "In this case", just quoted, was particularly relied on by Mr O'Donnell as demonstrating the absence of an express or implicit finding of a causal link between the error or omission and the failure to lodge notice of opposition. I confess that I do not clearly understand the implications of that sentence.

25. Immediately after the sentence just referred to, there appears a discussion of the decision in Toyo Seikan Kaisha Ltd v. Nordson Corporation [1985] APO 17; (1965) 5 I.PR. 388. That was a similar application, but there a search was made which (through an error on the part of the searcher) did not discover that the application in question had been accepted. The Supervising Examiner, Mr Evans, found that the search in the Toyo Seikan matter would in any event have been too late and concluded "that the failure to lodge notice of opposition in time was not by reason of any error or omission on the part of the person who made the search. Commenting on that decision, the Examiner in the present case said, among other things:

"it was decided that no error had occurred
within that initial three month period provided by
ss59(1)."

That is one way of putting it, but the real point of the case was that the error relied on was not causally linked to the failure to lodge notice of opposition in time. The Examiner's treatment of the Toyo Seikan decision appears to me rather to strengthen the applicant's complaint that the Examiner did not fully face up to the necessity of finding a causal link.

26. The Examiner, in analysing the error or omission found, remarked:

"Communications seem to have broken down within
Collison & Co. in this case and too much reliance
was placed on verbal instructions, but the evidence
shows that either Mr. Schmidt or Mr. Thomas or both
made an error or omission in not following Mr.
Menzel's instructions."

27. Mr.Menzel was the representative of the applicant for the extension of time - the second respondent before me.

28. The principal contentions advanced on behalf of the second respondent were that the Examiner did not, nor did he need to, identify the precise error or omission founding his power, that the error or omission could we said to be the failure to pick up the advertisement in the Journal, and that (in view of the evidence that there were consistent instructions to oppose the grant), there was a plain causal link between that error and the failure to lodge notice of opposition. Counsel also contended that it must have seemed obvious to the Examiner that a watch for the advertisement would have been likely to pick it up.

29. Mr. 0'Donnell pointed out that the mere failure to Lodge notice of opposition in time cannot itself be described as such an "error or omission" as the statute requires; as was said in the Toyo Seikan case (at p.392) :

"The plain meaning of s.160(2) would require the
establishment of some error or omission antecedent
to the failure to perform the act or step ..."

30. Here, as I understand the reasons, the error or omission was thought to be either Schmidt's failure to tell Thomas to instigate a watch, or Thomas's failure (on the assumption that he was told to do so) to carry out those instructions.

31. One way of expressing the contention in support of the decision attacked is that it is enough to show that the person desiring to oppose gave appropriate instructions to that end, and that by an error of some kind such instructions were not carried out.

32. The evidence as to what error was made can hardly be pretended to be other than thin, and some may think it a little surprising that it was held sufficient to justify, as a matter of discretion, the grant of an extension of time. But there can be no doubt that the Examiner was satisfied that the failure to lodge notice of opposition in time was due to an error on the part of the agents of the second respondent, and not due to (for example) the second respondent s having lost interest in opposing the grant. It is true that there was no evidence proving that, if a watch had been kept on behalf of the second respondent, it would necessarily, or even probably, have picked up the advertisement. Then, if a watch had been kept and had picked up the advertisement , perhaps another error would have been made, resulting in failure, after all, to lodge notice of opposition in time.

33. Putting that more generally, if there had not been an error on the part of Schmidt or Thomas in arranging for the conduct of a watch of the Journal, there may we I I have been a later error defeating tenzel `s intention of opposing the grant. Had there been such a later error, it would itself have given jurisdiction under s.160(2) to extend time.

34. In my view, although the Examiner's reasons were not free of what Mr Emmerson described as verbal infelicity, on the findings, what happened was that instructions to oppose were firmly given but, through an error, not carried out. The error was not precisely identified, but one thing that went wrong was that no watch was instituted. It was not necessary, in order to found jurisdiction in the Examiner to make an order for extension, to show whether or not it was likely that something else would also have gone wrong, even if a watch had been instituted.

35. No submission was made on the propriety of the mode of exercise of the discretion, as opposed to the question of power.

36. The application to this Court must be dismissed, and with costs.