YUDGMENT No. (OO [GB CATCHWOR ODS PATENTS -— time for lodging notice of opposition to grant extension of time - two powers of extension if Act — whether both apply - sphere of operation of each power. Patents Act 1952, ss.59, 141, lov Danby Pty Ltu Vv. The Commissioner of Patents & Anor Q@lu GTS6S of 1957 PINCUS J. URISBANE T MAKCH 195d " IN THE FEDERAL COURT OF AUSTRALIA > QUEENSLAND DISTRICT REGISTRY ow] QLD G188 of 1987 GENERAL DIVISION ) BETWEEN: DANBY PTY LTD Applicant AND: THE COMMISSIONER OF PATENTS First Respondent AND: RIB-LOC GROUP LIMITED Second Respondent MINUTES OF ORDER JUDGE MAKING ORDER: PINCUS J. DATE OF URDEK: 1 MARCH 196080 WHERE MADE: BRISBANE THE COURT ORDERS THAT: 1. the application be dismissed, 2. tne applicant pay to the secona respongent its costs of the proceeainygs to be taxed. NOTL: Settlement and entry of oruers 1s dealt with in Oraer 36 of the Federal Court Rules. IN THE FEDERAL COURT OF AUSTRALIA ) QUEENSLAND DISTRICT REGISTRY ) QLD G188 of 1987 GENERAL DIVISION ) BETWEEN: DANBY PTY LTD Applicant AND: THE COMMISSIONER OF PATENTS First Respondent AND: RIB-LOC GROUP LIMITED Second Respondent PINCUS J. 1 HARCH 1906 REASUNS FOR JUDGIIENT This an application under the Administrative becis ions (Judicial Review) Act 1977 to review a decision of a Supervising Examiner of Patents allowing the second responaent an extension of time to Louye notice of opposition to tne grant of a patent. I shall use the designations the parties have in this Court, in particular, the applicant before me will ve so callea, although it was not the party applying to the Examiner. The decision was made under s.160(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 1n a court) required 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." The contentions advanced by Mr O'Donneil 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 causeq an act or step referred to in the sub-section not to be qgone or taken. Further, counsel said, 1f such a finuing were to be read into the reasons, there was no evidence to support it. A preliminary question which was ui1scussed at the nearing Was whether $.10U applies to confer power on the Commissioner to extend time for toaging notices of opposition. It 1s not absolutely clear that 1t does so anu I invitea supmissions on the point. Section 59(1) of the Act, which yoverns the lodgment of notices of opposition, prescribes a time Limit ana 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 ..." It will be noted that apart from the consideration just mentionegd - that s.59(1) deals specifically with notices of Opposition ang s.16U 1s general - there are other aifferences between the two. C1) The alleviation provision in s.59(1) uses the Language "sucn further period ... as the Commissioner ... allows", whereas s.16U(2) says the "Commissioner may ... extena the time wee It does not appear to me that tnis difference in Language 15s of importance. (11) Section 59(1) permits the allowance of further time, without Limit as to grounus; $s.16U(2) gives power to extend time only on a grounu there stated. (411) Section 59(1) permits an extension only for up to Ss1x months past the date of the aavertisement, s.16U(¢c) has no such restriction. Civ) Section 59(1) gives the Commissioner power to allow further time only on application made within three months after the date of the auvertisement; s.160(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." 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 1t could not be justified under $.59(1). If that provision exhaustively sets out the Commissioner's power to give further time to lodge notice of opposition, then there was no power to act under s.100(2). Mr Emmerson Q@.C., who appeared with Mr McMurdo for the second respondent, argued that there 1s power to act under $.16U(2) after expiration of the period of three months from the date of the aavertisement mentionea in s.59(1), but not before. He contended that the way in whitch one should reconcile the two provisions is thus to Limit their respective spheres of operation. Tne alternative view 18, of course, that s.59(1) says ali the Act has to say about the time for Lodging notice of opposition and that 1t 15 payiny scant respect to the legislative intention revealed vy the worus "on an application maue to him within the first-mentionead perioag" to hola tnat the Commissioner may give further time on application made beyond tnat period. A similar problem, artsing under the Trade Narks Act 1905, was aealt with by the High Court in R. v. The Registrar of Trade Marks; Ex parte J.S. Staeatler (1930) 55 C.L-R.~ 271. There, @ 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 pertod 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. On the face of it, there 18S 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 expressty proviaed". On the other hana, one may question whether the omission of any such expression from s.16U(35) makes much difference; even in its absence, a sufficiently specific contrary provision must necessarily be read as overriding a general provision with which 1t 1S INCUNSIStent. However, 1t was contendea by Mr Emmerson that the trend of autnority on s.louU 18 1n favour of a generous application of that provision. That appears to me to be so. In AB Scaniainventor v. Commissioner of Patents (1981) 54 F.~L.R. 3607, the Full Court had to consider the relationship between s.10U(2) and s.141(1) of the Patents Act. 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 s.141(1), saying: "Section 160 1s a remedial sectton and should be applied where it appears to be applicable unless there 1s some clear indication to the contrary. This view is supported by the provisions of $.160¢8)" (p.372). Section 160¢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 47A, section 478, section 47C or sub-section 526(1)." The conclusion arrived at by the Full Court in the Scaniainventor case was approveu by the High Court in Australian Paper Manufacturers Limitea v. C.I.L. Inc. (1981) 148% C.L.R. 551. In Lehtovaara v. Commissioner of Patents (1901) So F.L.R. 1, the Full Court hao to consider the relationship between s.160 of the Act and s.54, Limiting the time for acceptance of an application for a patent. Ayain, the Court held that s.160 applieu so as to overriue a Specific time Limit, the majority being unable to find a clear tnaication that s.16U was excludeag: pp.13 ana 14. These decisions were reviewed by Beaumont J. in Mitty's Authorised Newsgency v. Registrar of Trade Marks (1983) 78 F.L.R. 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 $3.49. His Honour said, at pp.228, 229: "Section 131 1s not a merely general power in any abstract sense: it is Limited in its application to quite special situations. Further, the history of the legislation and its remedial character Support the conclusion that parliament intended that, in a limited ckhass of case, time could be extended beyond the period specified in, inter alia, s.49 evoa Although 1t was held in Staedtler's case that the precursor of s.49 should be regarded as an exhaustive treatment of the Subject, 1t 18 possible to reconcile that decision with the subsequent introduction of a remedial provision to deal with force majeure situations arising within the framework of s.49. The code or exhaustive provisions contained in s.49 are thus made the subject of a limited exception in the specific circumstances descrioed in s.131." Although I, (ike Starke J. in Staedtler's case, do not find resolution of the problem free from difficulty, 1t appears to me that I should tollow the trena of these authorities and hold tnat s.16U(2) applies, at least where the possipnility of applying unger s.59 for further time to lLouye notice of opposition 1s yone. Tnat is, s.16UC2), 1n my opinion, allows the Commissioner to extena time, at least after the expiration of three months from insertion of the advertisement of acceptance referred to 1n s$.59¢1). It has to be confessea that the Legislative structure thus created Looks oad: 1f the extension 1s askeu for early, there 1s a limit on the Length of the extension but if it 1s asked for late, there 1s 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. 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 At the outset, a procedural point should be noted. The application under s.100(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 1s relevant, as tending to show tnat each party had a full opportunity to place material before the Examiner and that .iy apparent gap in such material may not have been merely a slip. The Examiner's reasons said that an application was Lodged on lo May 1985 for a patent for an invention. A request for an examination (under s.47) was lodged in October 1986 ana the application was advertised as accepted on 22 January 1987. The three month period allowed for lodging notice of opposition thus expirea on ¢2 April 1967. 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 lLodye notice of opposition, and on 10 July 1987 a further such application was made in 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. There were, said the Examiner, two matters to be considered: "The first of these 1s whether the applicant Csici for extension of time has established that failure to meet the time Limit 1s 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 jurisdictton 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 Alun 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 Schmiat's having aone so. So far as relevant, the submissions Mage on behalf of the present applicant were recorded by the Examiner as follows. "Regarding the grouna stated on Rib Loc's Csic] application for extension of time 'that the notice of acceptance ... waS inadvertently missea ...', Mr. O'Donnell suggestea that this was misleading since no watch was instigatea at all; and considering the evidence he suggested that 1t was "too vague to decide whether an error or omission has occurred'. He arguea that there was no evidence to show a Link between the error or omission ang a failure to lodge notice of Opposition in time; there was no proof that the watch would have found the Journal notice, and no details given of how watching services are carried out in Collison & Co." Mr O'Donnell, who appeared both before the Examiner and in this Court, relied upon this passage in the reasons as 10. 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. After aiscussing 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: eee 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 1t 1s not necessary to aiunfer that the watch would have discovered the acceptance of Danby's application, since the failure to instigate the watch can 1n itself be tnterpretea as an error or omission." The sentence beginning "In this case", just quoted, was particularly relied on by Mr O'Donnell as aemonstrating the absence of an express or implicit finaing of a causal Link between the error ofr omission ana the failure to lodge notice of opposition. I confess that I do not clearly unaerstana the implications of that sentence. Immediately after the sentence just referrea to, tnere appears a discussion of the decision in Toyo Seikan Kaisha Ltd v. Nordson Corporation (19385) 5 I.P.R.~ 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 11. 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: "lee it was decided that no error had occurred within that initial three month period provided by ss.59(1)_" That 1S one way of putting 1t, but the real point of the case was that the error relied on was mot 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 dia not fully face up to the necessity of finding a causal link. The Examiner, in analysing the error or omission found, remarked: "Communications seem to have broken down within Collison & Co. in this case ana too much reliance was placed on verbal instructions, but the evidence shows that either Mr. Schmidt or Mr. Thomas or both mage an error or omission in not following Mr. Menzel's instructions." Mr Menzel was the representative of the applicant for the extension of time - the second respondent before me. The principal contentions advanced on behalf of the second respondent were that the Examiner did not, nor did he need to, tdentify the precise error or omission founding his power, Ce ene aese Ben me > fee Beas +, 12. that the error or omission could be 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 ana the failure to Lodge notice of opposition, Counsel also contended that 1t must have seemed obvious to the Examiner that a watch for the advertisement woula have been Likely to pick it up. Mr O'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 saia in the Toyo Seikan case (at p.392): "Tne plain meaning of s.400(2) woula require the estaplishment of some error or omission antecedent to the failure to perform the act or step ..." Here, as I understand the reasons, the error or omission was thought to be either Schmidt's failure to tell Thomas to instiyate a watch, or Thomas's failure (on the assumption that he was told to uo so) to carry out those instructions. 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. The evidence as to what error was made can hardly be pretended to be other than thin, and some may think it a Little 13. 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 behatf of the second respondent, it would necessarily, or even probably, have picked up the advertisement. Then, 1f a watch had been kept and had picked = up the advertisement, perhaps another error would have been made, resulting in fatlure, after all, to lodge notice of apposition in time. Putting that more generally, if there nad not been an error on the part of Schmidt or Thomas 1n arranging for the conduct of a watch of the Journal, there may well have been a later error defeating Menzel's intention of opposing the grant. Had there been such a Later error, 1t would itself have given jyurisaiction under s.tou(2) to extenu time. In my view, although tne Examiner's reasons were not free of what Mr Emmerson descriped 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, 14. to show whether or not it was Likely that something else would also have gone wrong, even if a watch had been instituted. No submission was made on the propriety of the mode of exercise of the discretion, as opposed to the question of power. The application to this Court must be dismissed, and with costs. t certify that this and the /3 preeeding pages are a true copy of the reasons for judgment herein of His Honour Mr. Justice Pi r. Justice Pincus y Sauter Associate Dated / MarcéA 19SR Counset for the applicant: Mr B.D. O'Donnell Solicitors for the applicant: Messrs Watt Birch & Co. Counsel for the second respondent: fir J. Mel. Emmerson @.C. with Mr P.d. McMurdo Solicitors for the secona respondent: Messrs fiorris, Fletcher &@ Cross Date of Hearing: 24 February 1986