IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Fletcher Insulation Pty Ltd v Anton Brandt Buenemann [2015] APO 10

Patent Application:	2009236041

Title:	A roofing bracket

Patent Applicant:	Anton Brandt Buenemann

Opponent:	Fletcher Insulation Pty Ltd

Delegate:	Dr M-A. Fam

Decision Date:	13 March 2015

Hearing Date:	Written submissions completed on 9 January 2015

Catchwords:	PATENTS – section 223 – opposition to an extension of time – whether failure to pay a continuation fee due to an error or omission – error or omission established – whether full and frank disclosure – full and frank disclosure established – opposition fails – extension of time granted

Representation:	Patent applicant:  Think IP Strategy
	Opponent:  Phillips Ormonde Fitzpatrick

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application:	2009236041

Title:	A roofing bracket

Patent Applicant:	Anton Brandt Buenemann

Date of Decision:	13 March 2015
DECISION
The opposition fails on all grounds.  I grant an extension of time to pay a continuation fee.  I allow both parties 7 days from the date of this decision to provide written submissions on the matter of costs.
REASONS FOR DECISION
Background
1.	The present application was filed by Anton Brandt Buenemann on 12 November 2009.  The application subsequently lapsed as a result of failure to pay the 4th year continuation fee due on 12 November 2013.  An application for an extension of time to pay the fee was lodged on 23 May 2014.  

2.	A notice of opposition to the request for the extension of time was filed by Fletcher Insulation Pty Ltd (Fletcher) on 26 August 2014.  Mr Buenemann subsequently requested dismissal of the opposition and the parties were heard in relation to that matter by means of written submissions.  

3.	The Delegate of the Commissioner found that of the three grounds of opposition raised, Ground 2, namely that the applicant’s failure to pay the 4th year continuation fee was due to a deliberate decision not to pay the fee, should be dismissed (Fletcher Insulation Pty Ltd v Anton Brandt Buenemann [2014] APO 73).

4.	The parties were heard in relation to the opposition to the extension of time by means of written submissions.

Relevant law
5.	Section 142(2) states:
“A complete application for a standard patent lapses if:
….
(d)	the applicant does not pay a continuation fee for the application within the period prescribed for the purposes of this paragraph;
….”

6.	Under regulation 13.3(1), the prescribed period for paying a continuation fee is the period ending at the last moment of the relevant anniversary.  However, if the continuation fee is paid within 6 months after the end of the relevant anniversary (the “grace period”), the period referred to in regulation 13.3(1) is taken to have been extended until the fee is paid [regulation 13.3(1A)]. 

7.	In the present matter, the continuation fee was not paid before the end of the 4th year anniversary or during the 6 month grace period.  Consequently, the applicant requested an extension of time under section 223(2) in which to pay the fee.

8.	Section 223(2) states:
“Where, because of:
(a)	an error or omission by the person concerned or by his or her agent or attorney; or
(b)	circumstances beyond the control of the person concerned;
a relevant act that is required to be done within a certain time is not, or cannot be, done within that time, the Commissioner may, on application made by the person concerned in accordance with the regulations, extend the time for doing the act.”

9.	A “relevant act” is defined in section 223(11) as:
“an action (other than a prescribed action) in relation to a patent, a patent application, or any proceedings under this Act (other than court proceedings), and includes the making of a Convention application within the time allowed for making such applications.”  

10.	The nature of “an error or omission” was considered in Kimberly-Clark Ltd v Commissioner of Patents and Another (No 3) [1988] FCA 421; 13 IPR 569 at 579 – 580 in relation to section 160 of the Patents Act 1952, the equivalent of present section 223.  Jenkinson J stated:
“It is in my opinion difficult to suppose that only the inadvertences and accidental steps, and not errors resulting from faulty reflection, of the former class of persons were intended by the draftsman to be within s 160(1).  Further, the word “error” is not easily assigned a clear meaning restricted by reference to one or several particular categories of flawed mental function.  The attempt is likely to lead to the drawing of fine and often unrealistic distinctions.  And some errors of judgment by agents and attorneys may be as bizarre and as little to be anticipated as lapses of memory and accidental slips.  Although the latter kinds of error may be those which the draftsman had principally in mind, I do not think the phrase “error or omission” should be given by construction the restricted meaning which the delegate assigned, and accordingly I conclude that this ground of the application has been established.
I do not think that the conclusion I have reached reduces s 160(2)(a) to a mere general power of extension.  By no means every judgment by “the person concerned” or by “his agent or attorney” which can be shown to have been mistaken will answer the description “error or omission” in the ordinary meaning of those words, which in their context carry, in my opinion, a connotation of obviousness in error.”

11.	Jenkinson J accepted at 580 that:
“…. the failure to do the act or to take the step postulated in respect of an application for exercise of the power conferred by s 160(2)(a) cannot itself be the “error or omission” by reason whereof the failure occurred.”
However, Jenkinson J rejected at 581 the argument that errors or omissions could not be the products of deliberate decisions.

12.	In order to make out a proper case that would justify an extension, Jenkinson J stated at 583 ‑ 584:
“…. an applicant would in my opinion have to go beyond a disclosure of the processes by which an agent’s errors came to be committed, and would have to expose frankly, inter alia, all the conduct, knowledge, beliefs and mental processes of the applicant (or, in the case of corporation aggregate, of the relevant officers and other agents) relevant to an understanding of the way the failure to do the act or take the step occurred, or relevant to an evaluation of the reasonableness of that conduct.
….
Section 160(2)(a) confers a power so conditioned that in my opinion its exercise is not lightly to be granted, and a power to be invoked only upon a prompt, frank, comprehensive and clear disclosure of all the circumstances relevant to the weighing of the discretionary considerations upon which grant or refusal of an extension of time will depend.”
The statement of grounds and particulars
13.	The grounds of opposition to be considered are Ground 1 and Ground 3 as specified in the statement of grounds and particulars:
•	Ground 1: The Applicant has not established any relevant error or omission for the purposes of Section 223(2)(a).
•	Ground 3: The Applicant has not made a full and frank disclosure of all of the circumstances in which the alleged error or omission is said to have been made.
Evidence
14.	Fletcher’s evidence consists of declarations by:
•	Adrian Crooks dated 5 November 2014 (Crooks-1) and Annexures AHC-1 to AHC-9 filed as evidence in support.
•	Adrian Crooks dated 26 November 2014 (Crooks-2) and Annexure AHC-10 filed as evidence in reply.

15.	Mr Buenemann’s evidence consists of declarations by:
•	Anton Brandt Buenemann dated 28 May 2014 (Buenemann-1) filed with the application for an extension of time.
•	Anton Brandt Buenemann dated 1 October 2014 (Buenemann-2) filed with the request for dismissal of the opposition.
•	Anton Brandt Buenemann dated 12 November 2014 (Buenemann-3) filed as evidence in answer.

16.	As previously indicated, Ground 2 of the opposition was dismissed.  Consequently, the evidence will only be considered in so far as it is relevant to Ground 1 and Ground 3.  Similarly, the parties’ submissions will be considered in view of their relevance to Ground 1 and Ground 3.
Application for an extension of time
17.	The application for an extension of time is set out in Buenemann-1:
“My patent attorneys had notified me about the upcoming renewal and I intended to have it paid.  However, I have been quite busy on other matters and I neglected to arrange payment of the required renewal fee.  [There is a reference to a personal circumstance that resulted in an additional and substantial amount of work for Mr Buenemann.]  The patent renewal was missed amongst all of this.”

18.	Further declarations were subsequently filed by Mr Buenemann on 1 October 2014 and 12 November 2014 that expand on the information given in Buenemann-1.  A summary of the facts derived from these declarations is included in the chronology below.
Chronology of events
19.	The chronology of events is based on information provided in Buenemann-1, Buenemann-2 and Buenemann-3, and also with reference to the Patent Office file for the present application.  Where the date of an event is not known, this is indicated by “?”.  Where the background is shaded, the evidence does not clearly indicate the order of events.  

Date	Event	
22 January 2013	Personal circumstance occurs.	
?	Mr Buenemann receives a letter dated 6 August 2013 from his then patent attorneys (Watermark) which appears to be the first reminder to pay the continuation fee.	
12 November 2013	4th year continuation fee due.	
12 May 2014	6th month “grace period” to pay the continuation fee expires.  	
?	Mr Buenemann becomes aware that his patent application has lapsed.	
?	Mr Buenemann receives a letter from the opponent Fletcher dated 14 May 2014.	
?	Mr Buenemann contacts his patent attorney Mr Duncan Bucknell (Think IP Strategy) to discuss his situation.  Mr Buenemann is advised that it is possible to have his patent application revived.	
23 May 2014	Application for an extension of time to pay the continuation fee filed by Mr Buenemann.	

20.	Further consideration of the order of events is provided below.
Consideration
21.	There are two grounds of opposition and I will consider each of these in turn.

Ground 1

22.	Ground 1 is:
“The Applicant has not established any relevant error or omission for the purposes of Section 223(2)(a).”

23.	Fletcher submitted that under section 223(2)(a), the relevant error or omission must be causative of the failure to do the relevant act.  Consequently, in the present case the error or omission must have occurred prior to 12 November 2013 in order for it to be causative of the failure to pay the 4th year continuation fee before the due date.

24.	It was submitted that:
“the Applicant’s position appears to be that the failure to pay the relevant fee was a result of being continuously busy from January 2013 until at least May 2014.  However “being busy” is not an error or omission.”

25.	Fletcher further indicated that it is not apparent how Mr Buenemann’s practice of placing renewal reminders on his desk, until such time as they were actioned, would ensure that payment of the continuation fee took place within the time required.  Fletcher also submitted that it is unlikely that Mr Buenemann was not provided with a reminder notice during the 6 month grace period (Crooks-1 at [21]-[23]) and, despite Mr Buenemann’s assertion that he was unaware of the grace period, there is no evidence that he took any steps to contact his patent attorney upon realising the fee had not been paid to ascertain if there were means to remedy the situation.

26.	In his application for an extension of time, Mr Buenemann stated that it had been his intention to pay the continuation fee.  However, he neglected to pay the fee as a result of an additional and substantial amount of work arising from the personal circumstance.  The application for the extension states “I have been quite busy on other matters”.  However, subsequent information provided by Mr Buenemann indicates that the additional work continued after the time of the personal circumstance in January 2013, including the period up until the date that the continuation fee was due in November 2013 and beyond that date (Buenemann-2 at [5]).  He also reiterated his intention to pay the fee, but had neglected to do so for good reason (Buenemann-2 at [8]).

27.	Mr Buenemann acknowledged in his application for an extension that he had been notified by his patent attorneys regarding the upcoming fee.  He agreed that he had been sent reminders in addition to the first one, but had been unable to identify these documents (Buenemann-3 at [4]).  He further stated that his practice at that time was to place correspondence on his desk until it had been actioned, however:
“…. with all of the other things going on and the large number of documents on my desk, I didn’t get to it in time.” (Buenemann-3 at [4])

28.	I note that Mr Buenemann is the sole inventor and applicant for the present application.  His practice of handling correspondence himself and placing items on his desk for action is not unreasonable in these circumstances.

29.	In regard to the grace period, Mr Buenemann indicated that it was his understanding that once a patent application had lapsed, the situation could not be remedied (Buenemann-2 at [9]).  He further stated that he was unaware of the grace period and did not recall receiving any reminder notices from Watermark to the effect that the continuation fee could be paid within this period (Buenemann-3 at [5]).

30.	I consider that Mr Buenemann intended to pay the continuation fee before the 4th year anniversary date.  However, his inattention to this matter, despite reminders from his patent attorneys, was a consequence of his personal circumstances.  I consider Mr Buenemann’s failure to pay the fee was the result of his distraction due to personal events and am satisfied there has been a causative error or omission.

31.	Having established a causative error before the 4th year anniversary date, it is not necessary to consider Mr Buenemann’s failure to pay the continuation fee during the grace period.  I note, however, that there is no evidence to indicate any change in Mr Buenemann’s intention to pay the fee, regardless of his lack of awareness of the grace period provisions. 

Conclusion on Ground 1

32.	I am satisfied there is a relevant error or omission for the purposes of section 223(2)(a).

Ground 3

33.	Ground 3 is:
“The Applicant has not made a full and frank disclosure of all of the circumstances in which the alleged error or omission is said to have been made.”

34.	Fletcher argued that Buenemann-1 did not provide a prompt, frank, comprehensive or clear disclosure.  It was further submitted that the application for an extension did not describe the totality of the circumstances in which the application came to be filed.  Thus, it was not disclosed that Mr Buenemann had received a letter of demand from Fletcher prior to lodging the application, and had threatened Fletcher with infringement proceedings shortly afterwards (Crooks-1 at [24]-[26]).

35.	In relation to Buenemann-2, Fletcher stated that Mr Buenemann had deliberately refrained from providing details regarding the number or dates of notifications from his patent attorney in relation to payment of the continuation fee.  It was also submitted that Buenemann-3 did not disclose the content of the renewal reminder.  

36.	The text of Buenemann-1 is reproduced above and is brief in nature.  Mr Buenemann subsequently provided further information regarding the personal circumstance and accepted that his initial declaration should have explained he was busy during the relevant period up to the date that the patent application lapsed (Buenemann-2 at [5]).

37.	Mr Buenemann indicated that he did not initially provide information regarding the number or dates of notifications from his patent attorney, as he did not see how this level of detail was relevant (Buenemann-2 at [8]; Buenemann-3 at [4]).  However, further information was subsequently provided in response to Crooks-1 (Buenemann-3 at [4]).

38.	In regard to disclosure of the circumstances at the time of filing the application for an extension, Mr Buenemann acknowledged receipt of the letter dated 14 May 2014 from Fletcher (Buenemann-2 at [9]).  The subsequent action by Mr Buenemann threatening infringement proceedings against Fletcher occurred after the filing of the application for an extension and is of little importance.

39.	Mr Buenemann indicated that he could not recall the precise date on which he became aware that his patent application had lapsed (Buenemann-2 at [9]).  However, this issue is one that requires further consideration.

40.	The Patent Office systems would not have recorded the status of the application as lapsed until 14 calendar days after the expiry of the grace period on 12 May 2014, i.e. 26 May 2014.  Furthermore, the Office did not issue a lapsing notice for the application until 28 May 2014.  Both of these dates occurred after the application for the extension of time was filed on 23 May 2014.  It is therefore apparent that Mr Buenemann did not become aware that his application had lapsed as a result of notification from the Patent Office.

41.	Consequently, it would appear that Mr Buenemann became aware that his patent application had lapsed either as a result of: 

i)	the renewal reminders sent by his patent attorney that he received before the expiry of the grace period; or 
ii)	the letter dated 14 May 2014 from Fletcher that he received after the expiry of the grace period.

42.	The evidence does not clearly indicate the exact circumstances under which Mr Buenemann became aware that his application had lapsed.  However, as Mr Buenemann has stated that he was unaware of the grace period (Buenemann-3 at [5]), and I have already established that there was a causative error before the 4th year anniversary date, this is of no consequence.

43.	In regard to providing a full and frank disclosure, I agree that Mr Buenemann’s first declaration does not provide much detail on the circumstances that resulted in the failure to pay the continuation fee.  However, his subsequent declarations provide information regarding the timing of the personal circumstance and the details of the notifications that he received from his patent attorney in relation to the continuation fee.  I consider Mr Buenemann’s failure to provide this information from the outset is due to him regarding this material as irrelevant, rather than the result of a deliberate action.

44.	Fletcher also submitted that Mr Buenemann did not take immediate action upon becoming aware that his patent application had lapsed.

45.	Mr Buenemann stated that having received a letter from Fletcher dated 14 May 2014 he contacted his patent attorney Mr Bucknell.  As a result of that discussion, Mr Buenemann became aware that his patent application could be revived and the application for an extension of time was lodged on 23 May 2014.  Mr Buenemann indicated that it took a short while to file the application for the extension as Mr Bucknell was travelling at the time (Buenemann-2 at [9]).  

46.	I consider Mr Buenemann took prompt action to remedy the situation once he became aware that it was possible to seek an extension of time in which to pay the continuation fee.

Conclusion on Ground 3

47.	I am satisfied that Mr Buenemann has made a full and frank disclosure of all the circumstances in which the alleged error or omission is said to have been made.
Discretionary provisions
48.	The granting of an extension of time under section 223(2) is at the Commissioner’s discretion.  Fletcher submitted that Mr Buenemann has failed to provide sufficient evidence to enable the Commissioner to exercise her discretion. 

49.	The exercise of the Commissioner’s discretion requires consideration of the relevant factors, as discussed in Kimberly-Clark Ltd v Commissioner of Patents and Another (No 3) (supra) 13 IPR 569 at 583.  The factors relevant to the present application are:

i)	whether the Commissioner is satisfied that a proper case has been made out justifying an extension;
ii)	whether there has been an unreasonable delay in seeking an extension of time;
iii)	the interests of the parties in granting or refusing an extension; and
iv)	the public interest.

In considering these factors, it is “more important to consider the consequences of extending or refusing to extend time than to debate the reasons why the act was not done in time” (Sanyo Electric Co Ltd v Commissioner of Patents [1996] AATA 832; 36 IPR 470 at 479).

Has a proper case been made out?

50.	Mr Buenemann’s evidence establishes that there is a relevant error or omission for the purposes of section 223(2)(a) and provides a full and frank disclosure of the circumstances in which the error or omission occurred.  I am satisfied that a proper case has been made out.

Has there been an unreasonable delay in seeking the extension of time?

51.	Once Mr Buenemann became aware that his patent application could be reinstated, he took prompt action to remedy the situation.  This weighs in favour of granting the extension.

The interests of the parties

52.	Fletcher stated that a letter was sent to Mr Buenemann alleging infringement of innovation patent 2012100178 and in response Mr Buenemann threatened infringement proceedings in relation to the present application.  In this regard the interests of the parties are offsetting.

53.	Mr Buenemann submitted that a refusal to allow the extension of time will clearly result in the loss of the current patent application.

54.	As stated by the Delegate of the Commissioner in Plant Genetic Systems N.V.v Paladin Hybrids Inc. [1999] APO 24:
“In cases relating to extensions of time to restore an application, the applicant’s interests are paramount because refusal of the extension is an abrupt end to the applicant’s rights to its invention.”

55.	I consider the interests of Mr Buenemann weigh in favour of granting the extension.

The public interest

56.	The public interest lies in the efficient and orderly processing of matters before the Patent Office.  As indicated above, Mr Buenemann received a letter dated 14 May 2014 from Fletcher and, following discussion with his patent attorney, became aware that his patent application could be reinstated.  The application for an extension of time was filed shortly afterwards on 23 May 2014.  This does not represent an unreasonable delay.

Conclusion on exercise of discretion

57.	I consider it appropriate to exercise my discretion and grant the extension of time.
Conclusion
58.	The opposition fails on both Ground 1 and Ground 3.  The application for an extension of time to pay the continuation fee should be granted.
Costs
59.	The position of the parties on the matter of costs is ambiguous.  Both parties initially submitted that costs be awarded in their favour.  However, Fletcher subsequently submitted that even if the application for the extension of time is allowed, costs should be awarded in its favour.  Mr Buenemann later submitted that Fletcher’s conduct warrants an award of costs against it and suggested that he wished to be heard separately on the matter of costs.

60.	It is therefore not clear what each party seeks in the award of costs.  In order to ensure procedural fairness, I allow both parties 7 days from the date of this decision to provide written submissions on the matter of costs.

Dr M-A. Fam
Delegate of the Commissioner of Patents