Andrew Bodlovich and Kevin Gleeson v Green Camel Pty Limited
[2021] APO 6
•9 February 2021
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Andrew Bodlovich and Kevin Gleeson v Green Camel Pty Limited [2021] APO 6
Patent Application: 2017258843
Title:Frameworks and methodologies configured to enable soil-based production of plants
Patent Applicant: Green Camel Pty Limited
Requestor:Andrew Bodlovich and Kevin Gleeson
Delegate:Felix White
Decision Date: 9 February 2021
Hearing Date: Written submissions filed on 11 December 2020
Catchwords: PATENTS –COVID extension of time to file evidence in support of entitlement – Commissioner’s determination of practice and procedure under Reg 22.24 – factors for consideration – relevance of evidence – explanation for delay – no evidence contradicting streamlined declaration – balance of interests – extension of time granted – no award of costs
Representation: Solicitor for the applicant: Adams Pluck
Solicitor for the opponent: Allens
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2017258843
Title:Frameworks and methodologies configured to enable soil-based production of plants
Patent Applicant: Green Camel Pty Limited
Date of Decision: 9 February 2021
DECISION
I grant an extension of time for the Applicant to file its evidence in support until 27 December 2020. The evidence filed on 4 January 2021 is considered to be filed in time. Both parties have one month from date of this decision to file their evidence in answer.
REASONS
This decision relates to Australian Patent Application No. 2017258843 in the name of Green Camel Pty Limited (“The Applicant”) and a request under s 36 of the Patents Act 1990 (“The Act”) by Andrew Bodlovich and Kevin Gleeson (“The Requestors”).
This decision addresses whether to grant the Applicant an extension of time to file evidence in support.
The timeline of events has been summarised by both parties[1] and they are broadly in agreement. I consider that the Applicant’s summary of events is the more detailed and have attached it as Annex 1 to this decision for reference. I do note at this juncture that the Applicant’s letter of 16 October indicates that their “second extension” of 24 September 2020 which is the subject of dispute was apparently only for one month, whereas the Commissioner’s letters of 29 September and 1 October indicated that she intended to grant an extension to both parties until 27 December 2020 (three months). The internal form generated by IP Australia on receipt of the second extension is also attached for reference as Annex 2.
[1] Applicants Submissions of 2 December 2020 (“AS1”) at 1; Requestors’ Submissions of 2 December 2020 (“RS1”) at 1-10
Subsequent to the written submissions by the parties, the Applicant filed evidence in support via Objective Connect on 4 January 2021.
Regulatory basis for extension of time in s 36 proceedings - ERG
There was some disagreement between the parties as to the regulatory basis for the present extension of time. The Requestors submitted that the extension was sought under the provisions of s 223(b) relating to extensions of time in “circumstances beyond control”.[2] In their response of 10 December 2020 (“RS2”) at 23-25, the Requestors also noted that s 36 proceedings fall under the provisions of Reg 22.24 which allow the Commissioner to determine the practice and procedure for deciding a matter that is not an opposition.
[2] RS1 at 10-14
The Applicant submitted their request was sought under Reg 5.9(2)(b).[3]
[3] AS1 at 4
The question of the regulatory basis for extensions of time in filing evidence in s 36 proceedings was considered in ERG R&D Pty Ltd v Octopus Cards Limited [2006] APO 21 (“ERG”). In that decision the delegate held that the head of power derived from Reg 22.24,[4] and noted:
Where the law confers such a broad discretion, paras. 5 (1) (e) and (2)(b) and (f) of the Administrative Decisions Judicial Review Act 1977 (ADJR Act) set the expectation that the decision maker must not fail to take a relevant consideration into account or follow a rule or policy without regard to the merits of the particular case.[5][4] ERG at [14]
[5] ERG at [15]
The delegate in ERG further considered that this discretion is similar to that provided under what was then Reg 5.10.[6]
[6] ERG at [16]
Federal Court decisions relating to exercising discretion under the previous Reg 5.10[7] have stressed it is necessary to give proper, genuine and realistic consideration to all relevant aspects of the case. The delegate in ERG highlighted relevance of the evidence sought to be adduced, explanation for the delay, the public interest and the interests of the parties.[8]
[7] Ferocem Pty Limited v. Commissioner of Patents [1994] FCA 981; (1994) 28 IPR 243 (“Ferocem”), A Goninan and Co Ltd v Commissioner of Patents and Another [1997] FCA 424; (1997) 38 IPR 213, and National Starch & Chemical Company v Commissioner of Patents [2001] FCA 33; (2001) 50 IPR 398
[8] ERG at [16], referenced in RS2 at 24
10.I note that in 2013 Reg 5.10 was revoked and replaced with the present Reg 5.9 during the “Raising the Bar” suite of legislative and regulatory amendments. The Explanatory Statement to the creation of present Reg 5.9 discussed the need for the Commissioner to be able to prevent the drawing out of substantive oppositions due to multiple extensions of time, and Raising the Bar introduced a new test for determining whether an extension of time for filing evidence is justified. However there is no evidence of the legislators’ intention to also apply the new test to the exercise of discretion under Reg 22.24.
11.It follows that the principles set out in ERG and Ferocem still provide the best guidance for the exercise of discretion under Reg 22.24.
Streamlined COVID extensions – Shell
12.Streamlined COVID extensions of time under have been recently addressed by the Deputy Commissioner in Shell Internationale Research Maatschappij B.V. v Yara International ASA [2020] APO 55 (“Shell”), who characterised the situation as follows (at [5]-[6])
“The current COVID-19 pandemic has resulted in significant social and economic costs. To help alleviate some of these impacts for our customers, IP Australia implemented a streamlined extension of time process on 22 April 2020. These extensions are not a new form of extension but rather utilise existing extension of time mechanisms. Extensions can be requested to any period that can currently be extended under the Patents Act, except for the period to pay renewal or continuation fees. Because the extensions are based on existing provisions, they are also subject to the usual opposition processes that apply to an extension of that type. …”
“The streamlined process allows a requestor to tick a box to declare that the impacts of COVID-19 had prevented a relevant act from being carried out, rather than go through the usual processes and provide the usual material in support of their request. An extension of time of up to 3 months can be requested, free of charge, for certain actions. Requestors are also advised that a false declaration could put the validity of their IP right at risk. While this infers that the requestor is a right holder, I understand this to mean that the usual consequences will apply to any party making a false declaration that they have been unable to meet a deadline due to disruptions caused by COVID-19. Consistent with any declaration the statements of the requestor, in this case that they have been impacted by COVID-19, are accepted unless there are sound reasons to question their veracity.” (citations omitted)
13.The Deputy Commissioner also indicated that even in the case of a streamlined extension, they “are not intended to be a general power of extension. They are available only where COVID-19 has prevented the relevant person from performing the act in the required time”.[9] The Deputy Commissioner also noted that the exercise of the Commissioner’s discretion should take into account the usual factors of “whether there has been a full and frank disclosure of all relevant circumstances, as well as the interests of the parties and the interests of the public”.[10]
[9] Shell at [10]
[10] Shell at [21]
14.Notably however, in Shell the discretion was exercised with regards to s 223 and in the present case the discretion is being applied under Reg 22.24. Therefore, bearing in mind that the COVID extensions are a shorthand for existing mechanisms, I will apply the ERG principles to the facts of the present case.
Relevance of the evidence sought to be adduced
15.The evidence at issue is the Applicant’s evidence in chief. The parties did not make submissions as to the relevance of this evidence but it goes without saying that the evidence in chief is expected to be of high relevance to the Applicant’s case in the s 36 dispute.[11]
[11] This case differs from ERG in that the extension applies to all of the evidence in chief; in ERG the delegate did make a determination on the likely relevance of the additional evidence sought to be adduced in that proceeding.
Explanation for the delay
16.The Applicant made a streamlined declaration on 24 September 2020. In so doing, the Applicant declared that they are applying for an extension of time on the basis that they or their client were unable to undertake a relevant action due to the disruptive effects of the COVID-19 pandemic. In her letter of 29 September 2020, the Commissioner indicated that she intended to grant the extension, so her initial consideration was that the Applicant’s declaration was sufficient.
17.I note that the Applicant submitted that as they “sought the EOT using the streamlined process, … there is no requirement to provide declarations regarding diligent and prompt actions, nor is there a requirement to detail the exact nature of the disruption due to COVID-19”.[12] I do not necessarily agree with this submission. The Commissioner does have the discretion to request further information from a party seeking an extension of time, but has not done so thus far in this instance.
[12] AS1 at 10
18.The Commissioner provided an opportunity for the Requestors to make written representations at that juncture, which they duly did on 9 October 2020. This included a request for the Commissioner to direct the Applicant to make certain declarations as to its diligent preparations and the effects of COVID. The Commissioner’s delegate declined to do so.
19.The Requestors submitted that it is open to the Applicant to provide further information to the Commissioner and, as yet, the Applicant has not done so.[13] The Requestors also submitted that “the Applicant has not explained how COVID-9 has caused a further delay, … that could not have been avoided despite its exercise of due care”.[14]
[13] RS1 at 15 and 25
[14] RS1 at 26
20.The Applicant did make some submissions regarding its actions from August-October 2020[15] and suggested that it had had encountered more difficulty and disruption in that its declarants are no longer in its employ.[16] The Requestors disputed this.[17] My consideration of all these submissions is that, while they do not mention COVID specifically, the Applicant’s submissions are not inconsistent with the streamlined declaration. I also note that the delegate in ERG found that difficulty contacting inventors no longer in a party’s employ is not necessarily indicative of a lack of diligence.[18]
[15] AS1 at 3
[16] AS1 at 16-17
[17] RS2 at 16
[18] See ERG at [28] and [34]
21.Admittedly there is no declaratory evidence available relating to specific impacts of the pandemic on the persons responsible for preparing the Applicant’s evidence. However this is weighed against the principle that statements in the declaration are to be accepted unless there are sound reasons to contest their veracity, and the fact that the Commissioner’s letters of 29 September 2020 and 12 October 2020 declined to indicate that any further information might be needed to substantiate the extension.
22.The Requestors made submissions as to causation[19] based on the location of the Applicant and its representatives in New South Wales, the gradual easing of COVID-related movement restrictions in New South Wales since May 2020, and submitted that “It is far from self-evident that the Applicant's failure to meet the already extended timetable is due to further disruptions from COVID-19”.[20]
[19] RS1 at 18-23
[20] RS1 at 22
23.The Requestors further submitted that “The Applicant needs to show that the further failure results from COVID-19 and could not have been avoided by the Applicant by exercising due care and diligently preparing its evidence”.[21]
[21] Ibid.
24.Nevertheless, on the face of it, that is exactly what the tick box declaration has done. I am minded to view it similarly to a doctor’s certificate – although ephemeral on detail it has indubitable evidentiary value in establishing that COVID did have a material effect on the Applicant’s preparation.
25.Although the Requestors’ submissions raise questions as to the Applicant’s actions, there is no evidence on file to establish that the Applicant’s explanation that they were unable to meet the 27 September 2020 deadline due to the disruptive effects of COVID is not an accurate description.
Balance of interests
26.The Requestors submit that they have expended time and cost to submit their evidence in support by 28 September 2020, and, in filing a request for further extension of time on 24 September 2020, the Applicant has gained an unfair advantage[22] and that the parties cannot be put on an equal position.[23]
[22] RS1 at 28-29
[23] RS2 at 20
27.The Applicant submitted that it has not gained any procedural advantage as it has not accessed the Requestors’ evidence in support.[24]
[24] AS1 at 14, Applicants submissions in reply of 10 December 2020 (“AS2”) at 8(d)
28.There is a public interest in timely resolution of this s 36 entitlement dispute informed by adequate evidence. This is consistent with the delegate’s view in ERG that “the Commissioner has a public interest role in ensuring a “correct and just determination” in matters before her regardless of the dispute”[25] and consideration indicated by the Deputy Commissioner in Shell whether there is an unnecessary delay to the proceedings if the extension is granted.[26]
[25] ERG at [33]
[26] Shell at [29]
29.On balance, the harm to the Requestors if the extension is granted is a perceived disadvantage in terms of evidence preparation time, whereas the harm to the Applicant if the extension is refused is the loss of the opportunity to provide evidence in support. The relative disadvantage to the Requestors is, to my mind, mitigated by the Applicant’s declaration that their preparation of evidence was disrupted by COVID.
30.I do not consider that merely gaining additional time is necessarily an unfair advantage in this case, set as it is against the backdrop of COVID related disruption to the economy and the Applicant’s declaration.
31.It seems to me that the balance of interests is best served by an appropriate extension being granted.
Conclusion
32.The power to issue extensions of time is generally a beneficial one and should be exercised accordingly. I have found above that the tick box declaration is prima facie uncontradicted by declaratory evidence and that delays due contacting inventors do not indicate a lack of diligence. The evidence in support has now been filed. I have also found that the balance of interests lies with an extension being granted.
33.I therefore allow the extension of time to file evidence in support (as indicated by the Commissioner’s letter of 29 October 2020) until 27 December 2020. Since this falls within the period where IP Australia is closed during the end of year break, the evidence in support filed on 4 January 2020 is considered filed in time under the provisions of s 222A as this was the next day IP Australia was open for business.
34.The parties are directed to file their evidence in reply within one month of the date of this decision.
Costs
35.The events in this case are not dissimilar to those encountered in Shell. Following the approach in that case, I make no award of costs.
Felix White
Delegate of the Commissioner of Patents
Annex 1 – Timeline of key dates from AS1
Annex 2 – Request for extension of time received 24 September 2020
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