Amcor Packaging (Australia) Pty Ltd v Barokes Pty Ltd - [2004] APO 20

OFFICIAL NOTICE
DECISION OF A DEPUTY COMMISSIONER OF PATENTS
Innovation Patent : No. 2003100154 in the name of Barokes Pty Ltd

Title: Process for packaging wine in aluminium cans

Action: Opposition by Amcor Packaging (Australia) Pty Ltd, and an objection to an extension of time to serve evidence in answer

Decision: Issued 14 July 2004
Abstract

Patentee sought an extension of time of 3 months to serve evidence in answer in an opposition to their innovation patent. There had been no previous extensions of time sought. The opponent objected to the extension. The opponent also requested the patentee's attorney be summonsed for cross-examination.
·    The Commissioner has the responsibility to exercise her discretion to grant an extension of time having regard to all relevant circumstances. Lack of information about what the party has been doing, and what they need to do to complete their evidence, clearly hinders the Commissioner’s proper exercise of this discretion. In appropriate cases it would be more than proper to have the agent for the party seeking the extension of time examined on the activities that have been undertaken to date – such that the Commissioner is better able to correctly exercise her discretion.
·    The attorney's actions were consistent with a reasonably diligent preparation of evidence in answer. In particular, there was no evidence of a deliberate delay – either by way of inattention to the task at hand, or by way of a deliberate strategy to delay the proceedings.
·    Circumstances peculiar to filing evidence in oppositions to innovation patents discussed.
·    The extension of time will be granted if the complete evidence in answer is served on or before 17 August 2004.
·    Observed that the Commissioner will expect the opponent to serve any evidence in reply in the shortest time possible – which might reasonably be expected in the circumstances of the present case to be within the 3 months initially allowed under the regulations.
PATENTS ACT 1990
DECISION OF A DEPUTY COMMISSIONER OF PATENTS
Re:No. 2003100154 in the name of Barokes Pty Ltd, opposition by Amcor Packaging (Australia) Pty Ltd, and an objection to an extension of time to serve evidence in answer.

BACKGROUND

Barokes Pty Ltd [Barokes] applied for innovation patent 2003100154 on 3 March 2003 as a divisional application based on application 2002304976. Subsequent to grant, the patentee requested examination. The patent was certified on 31 October 2003. The invention relates to a process for packaging wine in aluminium cans.
Amcor Packaging (Australia) Pty Ltd [Amcor] filed a notice of opposition on 27 February 2004. That notice, together with the Statement of Grounds and Particulars, and evidence in support of the opposition, was served on the patentee on the same day. The opposition is supported by eight declarations. But the basis of the opposition relies on two factual circumstances. Firstly, a publication in an Italian journal Vignevini in 1992. Secondly, an alleged prior use of the invention in 2001, which involved Amcor arranging for…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2004] APO 20
Decision Date: 14 July 2004

CaseChat Overview and Summary

In the case of Amcor Packaging (Australia) Pty Ltd v Barokes Pty Ltd, the dispute involved an opposition by Amcor against Barokes' innovation patent concerning a process for packaging wine in aluminium cans. The legal issues centred on whether an extension of time should be granted to Barokes for serving evidence in answer, and whether Barokes' patent attorney should be cross-examined regarding the preparation of the evidence. The opposition was based on prior art and prior use, and Barokes had requested a three-month extension to complete their evidence.

The court examined the factors relevant to granting an extension of time, considering the Commissioner's discretion, the public interest, and the need to balance the interests of both parties. The Deputy Commissioner found that Barokes' attorney had acted diligently and there was no evidence of deliberate delay. The court also noted that while the opponent had served an illegible document, the responsibility for providing legible evidence lay with the serving party. Consequently, the Deputy Commissioner decided to grant the extension if the complete evidence in answer was served by 17 August 2004, and emphasized the importance of the opponent serving any evidence in reply within a reasonable time.

The final orders included granting the extension of time on the condition that the complete evidence in answer was served by 17 August 2004, and that the opponent serve any evidence in reply within a short period. The Deputy Commissioner also made no award of costs to either party.

Orders