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Attorney-General (NSW) v Quin(1990) 170 CLR 1.

[1997] FCA 424

Federal Court of Australia|1987-12-11|Before: Gummow J, Lockhart J, Sackville J

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At a glance

Source facts

Court

Federal Court of Australia

Decision date

1987-12-11

Before

Gummow J, Lockhart J, Sackville J

Source

Original judgment source is linked above.

Judgment (78 paragraphs)

[1]

CATCHWORDS PATENTS - opposition proceedings - application for second extension of time for filing of evidence - factors to be taken into account - public interest considerations - whether the Commissioner of Patents is under a duty to grant an extension of time where evidence relevant to the opposition proceedings is immediately available - whether the Commissioner is bound to consider the significance of evidence on which the party seeking an extension wishes to rely in opposition proceedings. Administrative Decisions (Judicial Review) Act 1977 (Cth), ss 5(1)(e), 5(1)(f). Patents Act 1990 (Cth),s 59. Patents Regulations 1991 (Cth),regs 5.8(1)(a), 5.10(2), 5.10(5). Attorney-General (NSW) v Quin(1990) 170 CLR 1. Collector of Customs v Pozzolanic Enterprises Pty Ltd(1993) 43 FCR 280. Commissioner of Patents v Microcell Limited (1959) 102 CLR 232. Ferocem Pty Ltd v Commissioner of Patents (1994) 49 FCR 205. Hindi v Minister for Immigration and Ethnic Affairs (1988) 20 FCR 1. Kahn v Minister for Immigration and Ethnic Affairs (unreported, Federal Court of Australia, Gummow J, 11 December 1987); noted at 14 ALD 291. Kaiser Aluminium & Chemical Corporation v Reynolds Metals Co (1969) 120 CLR 136. Minister for Aboriginal Affairs v Peko-Wallsend Limited (1986) 162 CLR 24. Minister for Immigration and Ethnic Affairs v Wu Shan Liang (1996) 185 CLR 259. Pattanasri v Minister for Immigration, Local Government and Ethnic Affairs (1993) 34 ALD 169. Queensland v J L Holdings Pty Ltd (1977) 141 ALR 353. Sacharowitz v Minister for Immigration, Local Government and Ethnic Affairs (1993) 33 FCR 480. Sir W G Armstrong Whitworth & Co (Engineers) Ltd v Commissioner of Patents (1936) 42 ALR 131. Surinakova v Minister for Immigration, Local Government and Ethnic Affairs (1991) 33 FCR 87. Vangendal - Nielsen v Smith (Commissioner of Patents) (1980) 33 ALR 144. A GONINAN & CO LIMITED v THE COMMISSIONER OF PATENTS & ANOR NG 507 of 1996 SACKVILLE J SYDNEY 23 MAY 1997

[2]

[3]

IN THE FEDERAL COURT OF AUSTRALIA ) NEW SOUTH WALES DISTRICT REGISTRY ) No. NG507 of 1996 GENERAL DIVISION ) BETWEEN: A GONINAN & CO LIMITED Applicant AND: THE COMMISSIONER OF PATENTS First Respondent AND: ABB ENGINEERING CONSTRUCTIONS PTY LIMITED Second Respondent CORAM: SACKVILLE J. PLACE: SYDNEY DATED: 23 MAY 1997 REASONS FOR JUDGMENT This is an application under s 5 of the Administrative Decisions (Judicial Review) Act 1977 (Cth) (the "ADJR Act") to review a decision made by a delegate of the first respondent (the "Commissioner") on 24 May 1996. The Commissioner refused an application by the present applicant ("Goninan") for an extension of time to file evidence in patent opposition proceedings. Goninan (the opponent in the opposition proceedings) claims that the Commissioner's decision should be set aside because it involved an improper exercise of power (ADJR Act, s 5(1)(e)) and an error of law (ADJR Act, s 5(1)(f)). Mr Kerr appeared on behalf of Goninan and Mr Catterns QC on behalf of the second respondent ("ABB"). The Commissioner was represented by Mrs Bennett SC, who addressed submissions on the basis that the issues concerned the powers and procedures of the Commissioner: Federal Court Rules O 58, r 3; Merck & Co Inc v Sankyo Co Ltd (1992) 23 IPR 415 (FCA/Lockhart J), at 417-418. No objection was taken to the Commissioner putting submissions on this basis. Background ABB is the applicant for the grant of a patent relating to a technique for the design and construction of railway coal wagons. The application (No 657639) was filed on 14 September 1993 and was advertised on 16 March 1995. The application relates to an earlier patent in the name of ABB in respect of which patent infringement proceedings have been commenced in this Court by ABB against Goninan. Goninan has cross-claimed in those proceedings alleging that the earlier patent is invalid. Goninan filed a notice of opposition to the grant of the patent on 16 June 1995. It served a statement of grounds and particulars of opposition on 18 September 1995. The main grounds of invalidity relied on in opposing the patent are lack of novelty and lack of inventive step. Regulation 5.8(1)(a)(i)(A) of the Patent Regulations 1991 (Cth) (the "Regulations") requires an opponent who intends to rely on evidence in support of the opposition to serve a copy of any such evidence within three months of serving the statement of grounds of opposition. In the absence of an extension, therefore, Goninan was obliged to file its evidence in support of the opposition by 18 December 1995. On 11 December 1995, Goninan sought an extension of time to serve evidence pursuant to reg 5.10(2). ABB objected to an extension being granted and Goninan's application was heard by a delegate of the Commissioner on 20 February 1996. The delegate issued a decision on 21 March 1996 (the "first decision"). In his reasons, the delegate noted that Goninan's request identified at least two Australian experts as potential witnesses, but that there had been no indication of when a search for experts had been commenced or when the experts had been contacted. The delegate also noted that no explanation had been given as to why the formal evidence had not been completed by 18 December 1995. The delegate continued: "In my view the grounds do not seem to justify an extension of time. There is nothing in the request which is supportive of the opponent [Goninan] moving expeditiously to completing its evidence. Indeed the request amounts to little more than `We request an extension of time because we need more time'." After considering the submissions put forward by ABB, the delegate expressed the following view: "The opponent has not provided adequate reasons as to why the gathering of evidence could not be completed before the end of the three month period. For example, the opponent did not explain whether it was going to use any of its employees and ex-employees as expert witnesses; also it did not say whether any of the independent experts it approached did not want to be involved in the opposition."

[4]

After referring to the judgment of Burchett J in Ferocem Pty Ltd v Commissioner of Patents (1994) 49 FCR 205, at 210, the delegate concluded as follows: "Bearing this in mind, I consider that a limited extension of time, solely for the purpose of validating the service of the evidence in support which was available and served on 15 March 1996, is appropriate in all circumstances." The evidence that had been served on 15 March 1996 was a statutory declaration by Mr Smith, an engineer. Mr Smith's declaration addressed questions of both obviousness and novelty. On 14 March 1996, seven days before the first decision, Goninan filed a further application for an extension of time to serve evidence in opposition (the "second application"). Shortly before the hearing of the second application, Goninan filed three further declarations from three expert witnesses in support of the opposition. These were from Mr Stark, a consultant chartered engineer holding a position at the University of New South Wales; Mr Jeffcoat, an engineer resident in Queensland; and Mr Williams, an engineer resident in Victoria. Their statements appear to go primarily to the question of obviousness, but would be likely also to have some bearing on the novelty issue. The hearing of the second application took place on 29 April 1996, before a different delegate of the Commissioner. As already noted, the delegate gave his decision, rejecting the application for an extension, on 24 May 1996. The Legislation and Regulations Before considering the delegate's reasons, it is convenient to consider the relevant legislation and regulations. The Patents Act 1990 (Cth) (the "Patents Act"), s 59, provides that any person may, in accordance with the regulations, oppose the grant of a standard patent on one or more of specified grounds. The grounds include that the invention is not novel (s 18(1)(b)(i)), and that it does not involve an inventive step (s 18(1)(b)(ii)). Of course, the validity of a patent may be challenged in proceedings instituted after the grant of the patent: Patent Act s 138. As Mrs Bennett pointed out, the Patents Act retains the procedure for pre-grant opposition proceedings, despite a recommendation made in 1984 by the Industrial Property Advisory Committee, that such proceedings be abolished. The Committee observed in its report (Patents, Innovations and Competition in Australia (1984)) that opposition proceedings were frequently used by competitors to delay the grant of the patent. This had the effect (para 13.1) "of enabling competitors to pirate the invention and to compete with the inventor directly for the whole of the commercially useful life of the invention". The then Government rejected the Committee's recommendation for abolition of pre-grant opposition proceedings. The reason given was this:

Attorney-General (NSW) v Quin(1990) 170 CLR 1. - [1997] FCA 424 - FCA 1987 case summary — Zoe