24 October 2011

Assuming Next-Day Delivery of Mail an ‘Error’

TransLang Technology Ltd v Twister B.V. [2011] APO 70 (6 September 2011)

Opposition – request for extension of time to serve Statement of Grounds and Particulars – delay in postal delivery – whether ‘all due care’ taken – whether ‘circumstances beyond control’ – whether ‘error or omission’

Express POST boxIn this recent Patent Office decision, Delegate Dr S.D. Barker was required to consider a delay by the opponent, Twister B.V., in serving a Statement of Grounds and Particulars of opposition upon applicant TransLang Technology Ltd, which arose due to slow delivery by Australia Post.  Specifically, the Statement was mailed by the opponent’s attorneys from the Sydney CBD on Wednesday, 6 April 2011, in order to meet a deadline for service upon the applicant – whose attorneys were also located in the Sydney CBD, about three blocks away – of Thursday, 7 April 2011.

The delivery in fact took three business days, arriving on Monday, 11 April 2011, four days after the deadline.

These facts, which were set out in a Statutory Declaration made by Twister’s attorney, were not in dispute.  What the Delegate had to determine was whether they provide a basis for grant of an extension of time for service of the Statement, and on what grounds.

The opponent’s attorney argued that an extension should be granted because the delay had occurred despite all due care on his part.  However, the Delegate determined that assuming next-day delivery did not constitute the requisite standard of care.  The extension was granted nonetheless, on the alternative basis that it was a relevant ‘error’ on the part of the attorney to rely upon Australia Post to deliver an article the next day within the same metropolitan area.


General provisions for the grant of extensions to deadlines arising under the Patents Act 1990 are set out in section 223.

In particular, subsection 223(2) provides that:

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.

Additionally, subsection 223(2A) provides that:

(a) a relevant act that is required to be done within a certain time is not done within that time; and
(b) the Commissioner is satisfied that the person concerned took due care, as required in the circumstances, to ensure that doing of the act within time;
the Commissioner must, on application made by the person concerned in accordance with the regulations and within the prescribed period, extend the time for doing the act.

Notably, there is a discretion in subsection 223(2) – even if one the specified conditions are satisfied, a request for extension may be refused.  There is no such discretion in subsection 223(2A) – if the Commissioner is ‘satisfied’ that due care was taken, the extension must then be granted.

It was presumably for this reason that the opponent’s attorney submitted that the relevant provision for grant of an extension in this case was subsection 223(2A).  The Delegate noted that subsection 223(2) was also applicable, and proceeded to consider both (at [5]).


The applicant made written submissions to the effect that the opponent’s attorneys had not exercised the due care required in the circumstances, and therefore should not be granted an extension of time.

Specifically, the applicant stated that (at [4]):

No explanation has been tendered by the Opponent as to why a facsimile transmission of the SGP [Statement of Grounds and Particulars] was not made. We note the physical distance between the offices of the Agents for the Opponent and Applicant is approximately three city blocks. If – as we surmise – the SGP was prepared [with] urgency and finalised the day before the submission deadline, we are at a loss to understand why due care was not exercised by sending a runner to the Applicant’s premises to serve the SGP.

No evidence is tendered by the Opponent or its Agent as to the existence of any such fail-safe or redundant procedures, nor any failures of same to exhibit due care being taken.


While the Delegate acknowledged that Australia Post generally indicates that, for mail posted before 6pm, next day delivery can be expected to metropolitan areas, he noted that there is no guarantee of this.  He therefore considered that it was credible that the opponent’s attorney would have believed that the Statement would arrive in time, but that this was a result of ‘flawed mental function (i.e. it was an error)’ (at [15]).  Due care would therefore have required some back-up process for urgent deliveries, such as sending via facsimile (at [18]).  The circumstance that delivery takes longer than the minimum period, when still within the bounds of what might reasonably be anticipated, is not something that is ‘beyond the control’ of the opponent’s attorney (at [17]).

The scope of failures qualifying as errors or omissions is broad.  The Delegate cited Kimberly-Clark Ltd v Commissioner of Patents (No 3) [1988] FCA 421 in this regard (at [8]):

…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 judgement by agents and attorneys may be as bizarre and as little to be anticipated as lapses of memory and accidental slips.

In other words, to err is human, and even agents and attorneys are entitled to be human, sometimes!

In the circumstances, the Delegate found no reason to exercise the discretion to refuse the extension request, and granted it under the provisions of subsection 223(2)(a) (at [16]).


As noted above, both the applicant’s attorneys and the Delegate expressed the view that, in the circumstances, the opponent’s Statement of Grounds and Particulars should perhaps have been sent via facsimile.  Or why not email?  This is, after all, the 21st century!

But perhaps this is not as simple an option as it appears.  We covered the topic of electronic service on this blog back in August last year – see Serving Documents Electronically — Not as Simple as it Seems?  In brief, service of documents may only be effected electronically with the consent (express or implied) of the recipient.  Therefore, in order to serve the Statement via facsimile, the opponent’s attorneys would ideally have contacted the applicant’s attorneys first, to confirm their willingness to receive electronic service of the document.  Had they done so, there is always the risk of refusal, in which case they would have been no better off.

Alternatively, they could have served via facsimile without ensuring that they had consent.  In this case, the applicant’s attorneys might have objected that service was not validly effected, and the opponent would then have required an extension of time in order to rectify the situation.

In short, despite the prevalence of electronic communications, it is far from clear that service of documents can be effected electronically (either facsimile or email) as a matter of course.

The other – even more old-fashioned – alternative suggested by the applicant’s attorneys was that the opponent’s Statement of Grounds and Particulars could have been personally served by sending a ‘runner’ the three city blocks between the respective offices!  Perhaps a bicycle courier would be the more modern option.  In any event, this might well be the only way to be sure!


The general extension of time provisions under the Australian Patents Act are relatively generous.  In most cases, so long as a genuine intention has been formed, prior to a deadline, to complete the required act, any subsequent failure to meet the deadline will be covered by one of the available grounds.

As this case shows, even a relatively foolhardy mistake, such as relying upon the Australian postal service to deliver promptly, is forgivable.  While it may sound unappealing, a multitude of sins are covered by the rubric of ‘flawed mental function’.  And ‘errors of judgment’ by attorneys and agents might include such slips as might otherwise border on a negligent lack of knowledge of the proper law and procedures – there are other cases in which a ‘mistaken belief’ as to the relevant requirements of the Act and Regulations has been found to be an adequate basis for the grant of an extension of time.

Even so, we are sure that most practitioners would prefer not to find themselves in the position of having to justify an extension of time in these circumstances, particularly in contentious cases in which another party has an opportunity to object to the grant of the extension.


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