FORD MOTOR COMPANY LIMITED (NASTAS'S) APPLICATION

220 [No.8] REPORTS OF PATENT, DESIGN AND TRADE MARK CASES 11968] Ford Motor ,CO. Ltd. (Nastas's) Application (Evidence in reply P.A.T.) IN THE ApPEAL TRIBUNAL Before MR. JUSTICE LLOYD-JACOB Ist March, 1968. FORD'MoTOR COMPANY LIMITED (NASTAS'S) ApPLICATION Patent-Dppbsition-Practice---:.Evidence-Evidence confined to matters strictly 5 in reply-Opponents' evidence excluded. Patent Rules, 1958, r. 43. In an -opposition.uhe opponents alleged that an invention concerned with a novel carburettor was obvious. By their counter-statement, the applicants denied obviousness and asserted six advantages, one of which was a reduction in production 10 costs. In their evidence in chief the opponents produced a drawing .of a prior art carburettor, the production cost of which they asserted was lower than that of the patented construction. The applicants' evidence in answer was to the effect that the cost of production of the prior art construction shown in the drawing was half as much again as the patented construction. By way of evidence purporting to be in :~5 reply the opponents filed a declaration accompanied by a drawing of another carburettor the production cost of which they contended was lower than the patented construction. The applicants objected that this further drawing and the comments thereon ,were not evidenceconfined to matters strictly in reply such as was permitted by rule 43, but their objection was dismissed after a preliminary hearing. 20 On appeal to the Patents Appeal Tribunal: Held, allowing the appeal; that the opponents having put forward the first drawing as the basis on which the saving of costs should be iudged.Lhey were not meeting the applicants' case by diverting attention to adifjerent constructiori. The hearing officer had acknowledged that fairness demanded that the applicants should have an 25 opportunity of answering this evidence, but there was no certainty that still further conflict of fact would not arise. Rule 43 was directed to securing finality of the pre-hearing procedure. Here the evidence put forward was not evidence in reply, and therefore it was excluded by rule 43, but this decision would not preclude the Comptroller from considering its admissibility under the discretion conferred on him 30 by rule 44. This was an appeal to the Patents Appeal Tribunal from a preliminary decision in an opposition by Societe Industrielle de Brevets et D'Etudes S.I.B.E. to application No. 1,018,543 by Ford Motor Company Limited. The facts of the case appear from the following decision of the superintending examiner, Mr. K. M. Smith dated 2nd 35 November 1967. 221 [1968] REPORTS OF PATENT, DESIGN AND TRADE MARK CASES [No.8] Ford Motor Co. Ltd. (Nastas's) Application {Evidence in reply P.A.T.) At the hearing at the Patent Office on 3rd October 1967 M. C. Dobbs, of Ford Motor Company Limited, appeared for the applicants. R. A. Stanley, instructed by F. J. Cleveland & Co., appeared for the opponents. Mr. Smith-As appears from the correspondence on file, the applicants object to 5 the admission of paragraphs 3, 4 and 5 and exhibit G.L.3 mentioned in paragraph 4 of a second declaration by a Mr. Geoffrey Lawrence filed by the opponents under rule 43, their contention being that these paragraphs and 'exhibit are not evidence which is confined to matters strictly in reply. In a letter to the Comptroller dated 13th July 1967 the applicants' agent requested 10 a preliminary hearing in this matter and stated that, if Mr. Lawrence's evidence were to be admitted, his clients would wish to file further evidence on the point at issue. The applicants' request for a preliminary hearing was resisted by the opponents' agents in a letter to the Comptroller dated 17th July 1967, and in an official letter dated Ist August the applicants' agent was informed that the appointment of a 15 preliminary hearing was thought to be unnecessary and that the admissibility of the evidence in question and any further evidence which the applicants might wish to adduce would be considered at the hearing to be appointed to determine the substantive matters at issue between the parties. In a further official letter dated 16th August, it was pointed out that, in cases of this nature, it is normal office practice 20 to defer consideration of the admissibility of evidence until the substantive hearing, since it may well be impracticable for the hearing officer to attempt to reach any definite conclusion until he is in full possession of all the facts of the case. This letter stated, however, that if the official view were unacceptable, a preliminary hearing would be appointed to determine the correct procedure to be followed in 25 the present instance. As regards the procedural point at issue, it is well established that the Comptroller has discretion to determine the course of opposition proceedings and that he should exercise this discretion to achieve the greatest general convenience compatible with justice to the parties. In the present case, I accept that a decision to defer consider30 ation of the admissibility of Mr. Lawrence's evidence might inconvenience the applicants since, until this point has been decided, they will not be in a position to decide whether to seek leave to file further evidence. On the other hand, it would clearly be inconvenient and uneconomical to determine the admissibility of evidence at a preliminary hearing if this involved a lengthy consideration of the subject35 matter of the application, the documents cited by the opponents and the evidence in question, bearing in mind that this process must inevitably be repeated at the substantive hearing. At the hearing, I pointed out that even if Mr. Lawrence's evidence were found to be inadmissible under rule 43, it could be admitted under rule 44 if it proved to 40 be relevant and important and that, in any event, the applicants' interests were safeguarded by the suggested procedure. Accordingly, I indicated that, notwithstanding the possibility of slight hardship to the applicants, I would not be prepared to determine the admissibility of this evidence as a preliminary issue if it proved to be generally inconvenient to do so. It transpired, however, that Mr. Dobbs was 45 able to summarize the relevant facts in a few minutes, and as Mr. Stanley indicated that he was prepared to deal with this matter, I came to the conclusion that it would be unreasonable to defer its consideration as proposed in the official letters to which I have referred. In the result, after hearing argument, I gave a verbal decision admitting Mr. 50 Lawrence's evidence under rule 43. Mr. Dobbs has now asked me to put my decision into writing and I shall proceed to do so. 222 [No.8] REPORTS OF PATENT, DESIGN AND TRADE MARK CASES [1968] Ford Motor Co. Ltd. (Nastas's) Application (Evidence in reply P.A.T.) The applicants' invention consists in an automatic carburettor choke controlled by a thermo-responsive device which is heate (...truncated)