official notice

decision of a delegate of the commissioner of patents

Application	:	No.  667105 in the name of Outokumpu Harjavalta Metals Oy

Title	:	Method for Beneficiating Nickel Sulfide Concentrate and Corresponding Mixtures, Unsuitable for Smelting

Action	:	Application for an extension of time to file Notice of Opposition and a request under Regulation 22.16(2) by WMC Resources Pty.

Decision	:	Issued             .

Abstract

 A request under R.22.16(2) is unnecessary in that the filing date of the notice of opposition is a matter of official record and the inclusion of the lodgement date on the notice of opposition is merely a matter of form.

The extension of time is justified and I have granted the extension sought as the patent attorney charged with providing a watching service failed to meet the terms of the watching service and provide relevant information to his client to allow the client to file a notice of opposition within time.

A prospective opponent needs to exercise due diligence in filing notices of opposition.  WMC Resources Ltd is very lucky, in this instance, that there is another opposition in train.  Current Patent Office practice is to quickly seal applications where the opposition period has expired and there have been no oppositions filed.  WMC Resources Ltd could very easily have found that the application they wished to oppose had already been sealed and that the opposition process was no longer available.

I note that WMC Resources Ltd has made undertakings in relation to filing and service of the statement of grounds and particulars and evidence in support, however, the time for serving the statement of grounds and particulars, in relation to R.5.4, will begin from the date of this decision

patents act 1990

decision of a delegate of the commissioner of patents

Re:	Patent Application No. 667105 by  Outokumpu Harjavalta Metals Oy  and a request for an extension of time to file a Notice of Opposition by WMC Resources Ltd and a request under regulation 22.16(2)
background
 Australian patent application number 41268/93 was filed as a convention application on 16 June 1993 by Outokumpu Harjavalta Metals Oy (Outokumpu).  It claims priority from FI application 922844 (18 June 1992).

The application was advertised accepted on 7 March 1996 and assigned the number 667105. WMC Resources Ltd (WMC) lodged a notice of opposition on 18 September 1996.  WMC also filed a request to extend the time for filing the notice of opposition (under section 223 of the Act) as the period for filing the notice had expired on 7 June 1996.

The circumstances in which, and grounds upon which the application is made were referred to in the Application for Extension of Time by WMC as follows

The Notice of Opposition to Application No 667105 was not filed in good time due to an error or omission by the Applicant’s patent attorney.

The facts upon which the above ground is based are set out in the accompanying declarations by Rolf Van Wollingen, Patent Attorney and principal of Griffith Hack and Andrew Wood, Legal Counsel, of WMC Resources Ltd.

WMC later discovered that the Notice of Opposition had been left undated and filed:

•	a request under Regulation 22.16(2) (for the exercise of the Commissioners discretion to treat the notice as having been filed and to direct the person from whom it was received to do whatever things are necessary to ensure that the document will comply with requirements of the Act and Regulations);
	
•	a request under regulation 5.3A (to amend the Notice of Opposition) - this request was withdrawn at the hearing; and 
	
•	another Notice of Opposition dated 9 October 1996 together with a request, in a letter, for extension to file this notice - the parties agreed, at the hearing, to defer consideration of this notice and the further extension of time until after a decision had been made on the request under regulation 22.16(2) and the original section 223 request.

A statement of grounds and particulars is yet to be served.

On 7 October 1996 Outokumpu objected to the granting of the extension of time and a hearing on the matters was heard in Canberra on 7 November 1996.
Both parties filed written submissions and evidence, and were heard by phone.  Outokampu was represented by Mr Michael Angliss of Davies Collison Cave, patent attorneys, Melbourne and WMC by Mr Ian Pascarl of Minter Ellison Northmore Hale, lawyers, Melbourne.
EVIDENCE
Outokumpu provided a statutory declaration by Michael Leigh Angliss, patent attorney, of Davies Collison Cave dated 6 November 1996.

WMC provided statutory declarations by:

•	Lisa Melanie Teller, legal practitioner of Perth Western Australia dated 6 November 1996 and 6 November 1996 (two of the same date).
•	Andrew Wood, legal practitioner, of Perth, Western Australia dated 18 September 1996 and 6 November 1996.
•	Rolf Van Wollingen, patent attorney, of Griffith Hack dated 18 September 1996.
•	Antony Paul Mizzi, patent attorney, of Perth, Western Australia dated 6 November 1996.
SUBMISSIONS
In summary, the submissions by Outokumpu were:

Regulation 22.16(2) request

1.	A copy of the notice of opposition has not been served on Outokumpu.  The copy of the notice served on 18 September is not a copy of the notice lodged because it bears the hand written date of 18 September 1996.  The notice of opposition lodged bears no date.

Section 223

1.	The prospective opponent has failed to make out a proper case to justify the extension of time in that:

•	they have failed to establish that an error or omission can be identified which establishes a chain of causation which resulted in the prospective opponent failing to lodge the notice of opposition within the prescribed time;
•	there is no explanation of the inaction of the prospective opponent when it was aware that it should have been receiving a number of patent abstracts on a weekly basis;
•	there has been an undue delay on the part of the prospective opponent in the lodging of the Notice of Opposition and the lodging of the extension of time.  There is no explanation of the delay in reviewing the abstracts received from its attorney in order to mark those applications for which WMC wished to receive patent specifications;
•	that the prospective opponent has failed to establish that a serious opposition is in train.  The prospective opponent has demonstrated by its actions from October 1995 to September 1996 little urgency or seriousness in relation to obtaining or receiving patent applications published as accepted;
•	they have failed to provide a full and frank disclosure of the circumstances surrounding the failure to file the Notice of Opposition within the prescribed period.  There is no explanation of when and how copies of the patent specifications were obtained or ordered or of when and how the decision was made to oppose the present application.

2.	Request that if the Commissioner allows the extension he direct that the statement of grounds and particulars and evidence in support be filed and served immediately.

Costs

Outokumpu submitted that it is entitled to an award of costs because of:
•	the considerable period for which the prospective opponent has sought an extension of time;
•	the failure of the prospective opponent to make out a proper case and explain the substantial delays in lodging Notice of Opposition;
•	the substantial confusion arising from the actions of the prospective opponent following the lodgement of the application for extension of time on 18 September 1996; and
•	the failure of the prospective opponent to comply with the regulations relating to the filing of a Notice of opposition.

WMC

In summary, the submissions by WMC were:

Regulation 22.16(2) request.

The commissioner should exercise his discretion and treat the notice of opposition lodged 18 September 1996 as having been filed as is permitted by Regulation 22.16(2) and direct WMC to insert the date ‘18 September 1996’ on the AIPO file copy or substitute a new copy dated 9 October 1996 because:
•	apart from the missing date, the notice was in accordance with the approved form;
•	the fee payable was paid on 18 September 1996;
•	the document has been date stamped by the Patent Office as having been received on 18 September 1996;
•	the missing date is a formality issue and does not affect the substantive issues involved.

Section 223

.	The concept of error in the provision of a s.223 extension should be interpreted broadly - Amrad Corporation Ltd v Commissioner of Patents (1994) 29 IPR 218.
	
.	The error or omission does not have to be accidental or due to an inadvertent source.  Errors or omissions resulting from faulty reflection or deliberation fall within the section.  Kimberley-Clark v Commissioner of Patents (1988) 13 IPR 569
	
.	The very existence of an error or omission means that a certain lack of care was involved - Smith v Bonell (1986) AIPC 90-327.
	
.	“All that is required is once an error or omission has been established that there be some causal link between the error or omission and the failure to lodge the notice of opposition within 3 months”, Kimberly-Clark Ltd v Commissioner of Patents (1988) 13 IPR 551 per Jenkinson J:
•	the prospective opponent’s attorney failed to conduct the patent watch as instructed;
•	the prospective opponent’s attorney’s failure to conduct the watch as instructed led to the attorney failing to provide any report at all in relation to the application until 21 days after the final date permitted for filing the notice of opposition.  This is the second part of the relevant error or omission and start of the causal chain;
•	The attorneys report given 21 days after the final date for filing the notice of opposition failed to draw attention to the acceptance of the application and expiry of the period of opposition.  This is the third part of the relevant error or omission and continuation of the causal chain;
•	The attorney’s error and omission deprived the prospective opponent of the ability to file and serve a notice of opposition within the time required.  This is the first direct consequence of the error;
•	the error or omission of the attorney deprived the prospective opponent of the ability to move quickly after 28 June to file a notice of opposition and to commence a s.223 application.  This is the second direct consequence of the error;
•	the opponent was not involved in nor did it contribute in any way to the error or omission and delay in filing the notice of opposition.

5.	There has been prompt, frank, comprehensive and clear disclosure of all the circumstances that have led to the failure to file the notice of opposition within time.  Henkel Kommanditgesellschaft Auf Aktien v Fina Research & Societe Anonyme (1993) AIPC 90-999.

6.	There has been no undue delay on the part of the potential opponent:
•	it was reasonable and sensible to have WMC technical staff review the 165 abstracts on receipt;
•	eight weeks was a reasonable time to review 165 abstracts.
	
7.	The balance of the interests of the parties and the public is in favour of granting the extension sought.

8.	There is a serious opposition in train.

9.	The s.223 application has been prosecuted without undue delay:
•	Wood sought advice immediately after discovering the error on 4 September;
•	WMC’s solicitors moved expeditiously to prepare a notice of opposition, section 223 application and comprehensive supporting declarations between 5 September 1996 and 18 September 1996.

10.	Section 223(2)(b)
•	as a matter of statutory interpretation, the wording of this subsection should be given its plain meaning;
•	the plain meaning of this subsection is broad enough to cover this fact situation:
•	the relevant officer of the opponent company did not possess any specialist patent knowledge and relied upon the skill and judgement of his companies external patent attorney;
•	the circumstances that occurred were beyond the control of the prospective opponent.

Costs

Costs should follow the event.  If the opponent’s request for an extension of time is justified, then costs should be awarded against the applicant.
DECISION
Request  under Regulation 22.16(2)

Regulation 22.16	
(1)  In this regulation:
"document" does not include a specification or an abstract.
 (2)	If a document received at the Patent Office does not substantially comply with Schedule 3 or is not in accordance with whichever approved form is applicable, the Commissioner may treat the document:
(a)	as not having been filed and return it to the person from whom it was received with a statement indicating how the document or form does not so comply or accord; or
(b)	as having been filed, but direct the person from whom it was received to do such things as are necessary to ensure that the document will so comply or accord.

I have seen details of Official Receipt P020258, and a copy of the letter, accompanying the notice of opposition and the application for extension of time, date stamped by AIPO Perth on 18 September 1996.  I am satisfied that a notice of opposition by WMC Resources Ltd was lodged on 18 September 1996.  

There is no need, in my view, to invoke Regulation 22.16(2).

In Kaiser Aluminium & Chemical Corporation v The Reynolds Metal Company (1969) 120 CLR 136 at 143, Kitto J. pointed out that 

"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."

There is no requirement in the Patents Act or Regulations that the notice of opposition be dated.  The notice should be “in the approved form” [R.5.3(1)].  I understand this to refer to the content of the notice, for example details of the opponent and the grounds and circumstances of the opposition, not to matters of form.  The inclusion of the date of filing the notice (inserted by the potential opponent) on the notice of opposition is, in my view, merely a matter of form and convenience.  The date of filing a notice (the official filing date) is essential for administrative purposes.  It is a matter of official record.  The official filing date is important as it may establish the person’s right to oppose the application.  The date shown on the notice of opposition and the official filing date for the notice of opposition are in some cases different.

I also consider that the inclusion of the hand written date of filing on the copy of the notice served on the applicant, is also a matter of form, and does not in any way invalidate the notice served on  Outokumpu.

This matter is trivial and, in my view, should never have been brought to a hearing.  The matter could have been resolved early in the process with details of the official receipt provided by WMC together with a recognition that official records provide the necessary details of filing not the date shown on the notice.

Consequently, I consider it is imperative, if the opposition process is to be effective, “to deal with the matter on its merits” and not become immersed in details which are merely matters of form.

The substantive issues in this case surround the section 223 extension of time.

Request under section 223.

Extensions of time for filing notices of opposition are considered under section 223 of the Act. (See regulation 22.11(3))

Extensions of time
Section 223.
(2) 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.
... 
 (3)  	The time allowed for doing a relevant act may be extended, whether before or after that time has expired. 
... 
(6)  	A person may, as prescribed, oppose the granting of the application 
... 
 (11) In this section: 
"relevant act" means 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.

The provisions of s.223(2) are such that before the Commissioner can proceed to exercise discretionary power under the subsection, the existence of a relevant error or omission must be established.  I have said relevant error or omission because the subsection requires a causal link between the error or omission and the fact that the "relevant act" was not done within a "certain time".  The provisions of s.223(2) correspond closely to the provisions of s.160(2) of the repealed Patents Act 1952 and I believe that precedent under the former act is equally relevant to the current provisions.  Decided cases involving the former s. 160 provisions such as Kimberly-Clark Ltd v. Commissioner of Patents 13 IPR 569 and Danby Pty Ltd v. Commissioner of Patents 12 IPR 151 discuss the causal link aspect.

I have evidence before me, in the form of statutory declarations from Van Wollington and Wood, that establish a chain of causation for the failure to file the notice of opposition within time.

The chain involves:

1.	The failure of Rolf Van Wollingen, of Griffith Hack patent attorneys, between 16 October 1995 and 28 June 1996 to provide WMC with abstracts of relevant accepted patent specifications to meet the terms of the watching service for WMC.  The relevant abstracts were provided 21 days after the date for filing a notice of opposition expired.

2.	The patent attorney failed to inform WMC that some of the patent applications provided by the watching service were for applications for which the final date for opposition had either passed or was imminent.  

	The submission from WMC that it relied on its patent attorney to provide that sort of advice is, in my view, reasonable in the circumstances.

	On 29 August 1996, Andrew Wood received “marked applications” from the Manager of the Technology Department, WMC Nickel Division and on 5 September (5 working days later) it came to his attention that WMC wished to oppose application no.667105.  He “immediately contacted Griffith Hack for urgent advice on WMC’s position in view of what had occurred”.

This provides the necessary chain of causation to establish that an error or omission was made.  WMC have also made a full and frank disclosure of the circumstances surrounding the failure to file the notice of opposition in the required time.

Having decided that an error or omission has been made, I must now decide whether it is appropriate to exercise my discretion to allow the requested extension of time. In exercising this discretion I should take into consideration: 
 
i.   	whether a serious opposition is foreshadowed; 
ii.  	whether there has been any undue delay; and 
iii.  	the relative interests of the patent applicant, the prospective opponent and the public. 
 (see Vangedal-Nielsen v Smith (Commissioner of Patents) (1980) 33 ALR 144.)

Whether a serious opposition is foreshadowed
 
In instructing Griffith Hack to institute a watching service to alert them to relevant accepted patent applications WMC have clearly signalled their intention to oppose relevant patent applications.

The evidence of Wood is clear.  Once WMC were aware of the significance of application 667105 it took them 8 working days to file the notice of opposition and an application for an extension of time together with two statutory declarations and a draft statement of grounds and particulars.  WMC have submitted that that they will file and serve its statement of grounds and particulars (paragraph 5 of a Teller declaration dated 6 November 1996) and serve evidence in support before 25 December 1996 (paragraph 6 of a Teller declaration dated 6 November 1996).  They made a verbal undertaking to do this at the hearing.

I am satisfied that a serious opposition is foreshadowed.

I have been asked by Outokumpu to issue directions about the service of the statement of grounds and particulars and service of evidence in support to ensure the statement and evidence are both served expeditiously.  Such directions would be inconsistent with R.5.4 and R5.8 and as such not in accordance with R.5.10(1).  I will not issue these directions.

Whether there has been any undue delay
 
There are only two instances in this case, in my view, where undue delay may be considered.  They are during the period between WMC receiving 165 abstracts and deciding to oppose application no. 667105 and the period between deciding to oppose and lodging their notice of opposition and extension of time as any period before the date of receipt of the abstracts is part of the chain of causation of the error or omission.

In the intervening time between receipt of the 165 abstracts from Griffith Hack on 28 June and 29 August (8 weeks), the abstracts and relevant full copy patent specification were reviewed by WMC technical staff.  I do not consider this to be an unreasonable time to complete this task, particularly having regard to the need to obtain full copy specifications for relevant abstracts as part of the process and the fact that the opponent was unaware of the urgency of the matter due to the expiry or imminent expiry of the time to oppose some of the applications.

A prospective opponent needs to exercise due diligence in filing notices of opposition.  WMC is very lucky, in this instance, that there is another opposition in train.  Current Patent Office practice is to quickly seal applications where the opposition period has expired and there have been no oppositions filed.  WMC could very easily have found that the application they wished to oppose had already been sealed and that the opposition process was no longer available.

After becoming aware of the wish to oppose application no. 667105 WMC took 8 working days to file the notice of opposition, together with an extension of time to meet the due date in June and two supporting statutory declarations.  I think the time expended was reasonable in the circumstances.

I do not think there was undue delay.

The relative interests of the patent applicant, the prospective opponent and the public

In the present circumstances, the public interest involving not granting invalid patents overtakes the interests of the applicant in this matter because I think a serious opposition has been forshadowed.  Further, I do not think the interests of the applicant are unduly disadvantaged if the opposition goes ahead in this case as it has already been opposed by another party.  It is clearly in the prospective opponent’s interest for the opposition to go ahead.

The extension of time, in my view, has been justified and I grant an extension of time from 7 June 1996 to 18 September 1996 to file the notice of opposition lodged on 18 September 1996.

CONCLUSION
I have concluded that a request under R.22.16(2) is unnecessary in that the filing date for the notice of opposition is a matter of official record and its inclusion on the notice of opposition is merely a matter of form.

I have also concluded that the extension of time is justified and I have granted the extension sought.

I note that WMC has made some undertakings in relation to filing and service of the statement of grounds and particulars and evidence in support, however, the time for serving the statement of grounds and particulars, in relation to R.5.4, will begin from the date of this decision.
COSTS
Outokumpu submitted that it is entitled to an award of costs because of:
•	the considerable period for which the prospective opponent has sought an extension of time;
•	the failure of the prospective opponent to make out a proper case and explain the substantial delays in lodging Notice of Opposition;
•	the substantial confusion arising from the actions of the prospective opponent following the lodgement of the application for extension of time on 18 September 1996; and
•	the failure of the prospective opponent to comply with the regulations relating to the filing of a Notice of opposition.

I am partly sympathetic to Outokumpu’s position in relation to costs.  The actions of WMC did contribute a deal of confusion to resolving the matter of what date should be attributed to the undated notice of opposition lodged on 18 September 1996.  This has caused Outokumpu extra work although I consider the matter to be minor.  WMC has made out a case justifying the extension of time and I have granted the extension.

Consequently, it seems to me that WMC should bear some of the costs of bringing these matters to a hearing and I will apportion some of the costs to them.  As the R.22.16(2) matter is relatively minor, I award only 80% of the costs against Outokumpu.

Bob Sawyer
Delegate of the Commissioner of Patents

Patent attorneys for the applicant  :  Davies Collison Cave, Melbourne
Lawyers for the opponent   :	 Minter Ellison Northmore Hale, Melbourne