Australian Lock Company Pty Ltd v Lockwood Security Products Pty Ltd - [2005] APO 12

OFFICIAL NOTICE
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No. 753733 in the name of AUSTRALIAN LOCK COMPANY PTY LTD

Title: Moveable Element Key and Key Handle and Lock

Action: Request for leave to amend the complete specification, an opposition to the request by LOCKWOOD SECURITY PRODUCTS PTY LTD, and application for an extension of time in which to serve evidence in support (reg 5.10(2)).

Decision: Issued 18 March 2005 .
Abstract

An extension is not appropriate.
The requirement for expert evidence in this case is not necessary. Lockwood’s submission was that the evidence would not go beyond agreeing with what was set out in the Statement of Grounds and Particulars. Furthermore, the issues raised can be dealt with by submissions at the hearing.
While Lockwood was operating under erroneous understandings as to the need for evidence, the need for new experts and the practice of IP Australia in granting extensions of time, the considerations of Race Lotto v AWA Limited [1998] APO 78 do not apply as there is no public interest in granting an extension for evidence that is not necessary.
The explanation of the delay, the parties’ interests and the public interest also do not support an extension being granted.
In line with the long-standing practice of the Commissioner, Lockwood is allowed seven (7) days to serve and file any evidence to hand.
Costs are awarded against Lockwood.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No. 753733 by Australian Lock Company Pty Ltd and a matter of a request for leave to amend the complete specification, opposition to the request by Lockwood Security Products Pty Ltd, and application for an extension of time in which to serve the evidence in support (reg 5.10(2)).

BACKGROUND

Patent application 753733 in the name of Australian Lock Company Pty Ltd ("ALC ") was filed on 3 September 1999 as PCT/AU99/00722 for a “Moveable Element Key and Key Handle and Lock”. The application was advertised accepted on 24 October 2002. On 24 January 2003 Lockwood Security Products Pty Ltd ("Lockwood ") filed a notice of opposition (“the substantive opposition”). While, at the time of this decision, Lockwood had changed its name to ASSA ABLOY Australia Pty Ltd, I will continue to refer to them as Lockwood. On 23 December 2003, following service of the statement of grounds and particulars, but no evidence in support, ALC filed amendments to the description and claims of 753733. A copy of the amendment request was sent to Lockwood on 13 January 2004 inviting them to comment. No comments were received, but Lockwood filed a letter on 23 January 2004 requesting a direction regarding the time limit for serving evidence in support in the substantive opposition. On 17 February 2004 the Commissioner directed that the time limit for serving evidence in support in the substantive opposition would expire one month after the date that the parties were notified of refusal, withdrawal or allowance of the amendments. That is, the clock of the substantive opposition was stopped pending the outcome of the amendment proceedings. On 7 April 2004 a letter was sent to both ALC and Lockwood indicating that leave to amend had been granted. This was advertised on 22 April 2004.
On 22 July 2004 Lockwood filed a Notice of Opposition to the amendments and subsequently served the Statement of Grounds & Particulars on 21 October 2004. This set a final date of 21 January 2005 for Lockwood to file evidence in support of their opposition to the amendments. On 21 January 2005 Lockwood filed a request for an extension of time, and on 2 February 2005 ALC objected to any extension being granted. The matter was heard in Canberra on 23 February 2005. Mr Brad Fitzpatrick, patent attorney of Phillips Ormonde & Fitzpatrick represented Lockwood. Mr Peter Franke, patent attorney of Watermark Patent and Trade Mark Attorneys, assisted by Mr Simon Ellis, represented the applicant. Both parties appeared by phone.
APPLICABLE LAW
The applicable law has been set out in countless decisions issued by the Commissioner, and I see no point in repeating it in detail here. In general though, extensions to the time limits to file evidence in oppositions are at the discretion of the Commissioner, and are governed by subregulation 5.10(2). In deciding whether or not to extend the time limit, the Commissioner must consider the relevant principles which have been developed over several decisions of the courts, most notably Ferocem Pty Ltd v Commissioner of Patents (1994) 28 IPR 243 and A Goninan & Co Ltd v Commissioner of Patents (1997) 38 IPR 213. The relevant principles which I will apply may be summarised as follows:
(a)The broad discretion afforded by Regulation 5.10 cannot be reduced to insistence on imperative compliance with particular requirements;
(b)The exercise of this discretionary power requires proper, genuine and realistic consideration of all the relevant aspects that pertain to the application;
(c)The provision of a satisfactory explanation of the delay is a relevant consideration, but is not mandatory;
(d)The public interest in determining a serious opposition on its merits is a relevant consideration and must be balanced with the requirement that matters before the patent office should be dealt with in an efficient, orderly manner and not be unduly prolonged;
(e)The interests of the opponent, the applicant and any other parties are a relevant consideration.
In all of this, and most significantly in this case, the nature of the evidence is also to be assessed, having regard to any relevant material available (see National Starch & Chemical Co v Commissioner of Patents (2001) AIPC 91-697, 50 IPR 398). It is necessary for the Commissioner to form a view as to the nature of the evidence that is sought to be adduced, and the significance of that evidence for the opposition proceedings.
Nature Of The Evidence
Statement of Grounds and Particulars
The Statement of Grounds and Particulars in this case sets out that the amendments are opposed as they do not satisfy the requirements of section 102(1), section 102(2)(a) and section 102(2)(b). The particulars for each section are set out in the Statement as follows:
“1.0 Section 102(1)

1.1 Claim: 1

Proposed Amendment: “said interaction portion thereby engaging a subsidiary locking and unlocking arrangement at said lock”.
There is no disclosure in the specification as filed of a subsidiary locking and unlocking arrangement. The specification as filed only refers to the locking and unlocking mechanism.
1.2 Claims: 4, 8
Proposed Amendment: “said lock including a main locking and unlocking mechanism and an interference arrangement .... providing an additional locking or unlocking mechanism to the main locking and unlocking mechanism”.
There is no disclosure in the specification as filed of a main locking and unlocking mechanism and an additional locking and unlocking mechanism. The specification as filed only refers to the locking and unlocking mechanism.
2.0 Section 102(2)(a)
2.1 Claim: 1
Proposed Amendment: “....a unitary actuator member rotatably or pivotally supported at the key body in between the two blades”.
The claim 1 as unamended:
“...said actuator being aligned along a plane lying between said blades”.
Whereas the present claim requires the actuator to be aligned along a plane lying between the blades, the proposed claim requires the actuator member to be supported at the key body between the blades. There is no requirement that the actuator be aligned along a plane between the blades. It can be envisaged that whilst the actuator is supported at the key body between the blades, the alignment of the actuator is not along a plane between the blades.
2.2 Claims: 4, 8
Proposed Amendment: “said lock including .... an interference arrangement responsive to the alteration of the position of the interaction portion, the interference arrangement providing an additional locking or unlocking mechanism”.
The claims 6 and 10 as unamended:
“...said lock including an interference means responsive to the interaction means of the key to unlock or lock the lock”.
Whereas the present claim requires the interference means to be responsive to the interaction means to lock or unlock the lock, the proposed claim does not require the interference means to lock or unlock the lock in response to the interaction means.
2.3 Claim: 4
Proposed Amendment: “said lock including .... an interference arrangement responsive to the alteration of position of the interaction portion, the interference arrangement providing an additional locking or unlocking mechanism to the main locking and unlocking mechanism”.
The claim 6 as unamended:
“said lock including and (sic) interference means responsive to the interaction means of the key to unlock or lock the lock”.
Whereas the present claim requires the lock to include an interference means which functions to unlock or lock the lock, the proposed claim is not required to achieve this function.
The proposed claim is broader in scope than the present claim.
2.4 Claim: 8
Proposed Amendment: “...a lock for operation by the key, said lock including...an interference arrangement”.
The claim 10 as unamended:
“...a lock for operation by the key including an interference means for locking a plug of the lock to a surrounding lock shell”.
Whereas the present claim requires the lock to include a plug and a surrounding lock shell, the proposed claim does not include those features. Accordingly the lock as proposed may be of the kind that does not include a plug and surrounding lock shell.
The proposed claims are broader in scope than the present claims.
2.5 Claim: 8
Proposed Amendment: “...said lock including an interference arrangement responsive to the alteration of the position of the interaction portion of the actuator member, the interference arrangement providing an additional locking or unlocking mechanism”.
The claim 10 as unamended:
“...said interference means being responsive to the alteration of position of the interaction means to permit unlocking of the lock”.
Whereas the present claim requires the interference means to be responsive to the alteration of the position of the interaction means to permit unlocking of the lock, the proposed claim does not require alteration of the position of the interaction portion of the actuator member to achieve permission of unlocking the lock.
To that extent the proposed claim is broader in scope than the present claim.
3.0 Section 102(2)(b)
We note the proposed amendments do not address all the subsection 40(2) or (3) issues particularised in the Statement of Ground and Particulars dated 24 April 2003, and reiterated hereinafter in italics.
3.1 The specification of the application is generally ambiguous and fails to clearly and fully describe the invention because:
(a)At page 11 lines 1 to 18 the horn 107 is said to impart upward and downward movement of the discs 212, 213, however it would appear from figure 5 that the downward movement of the discs 212, 213 is imparted by biasing spring 225.
(b)At page 8 lines 20 to 33 suggests that the configuration of the actuator leads to the interaction means imparting a transverse force that is greater than has been effected in the prior art. It is not clear how the transverse force created by the actuator is greater than that effected by the prior art.
(c)At page 8 lines 30 to page 9 line 3 it is suggested that figure 6 and 7 illustrate an interference means that requires a relatively large force to move it. It is implied that the force required is larger than that required to move the tumblers. It is not clear how this relatively large interference force is achieved.
3.2 The claims of the application are not clear and succinct because:
(a)Claims 5 and 11 refer to the interference arrangement including a blocking element which functions to prevent unlocking of the lock. Claim 6 and 12 which are dependent on claims 5 and 11 respectively refer to the interference arrangement including a relocker bar and anvil functioning to obstruct side bar grooves (unlocking of the lock). Claims 7 and 13 which are dependent upon at least claims 5 and 6 refer to the lock including tumblers that function to prevent rotation of a plug relative to a shell (unlocking of the lock). It is not clear whether the relocker bar and anvil are a preferred embodiment of the blocking element, or whether they are an additional feature of the interference arrangement.
(b)Claims 5 and 11 are not clear when dependent upon claims 4 and 8 respectively. Claims 5 and 11 refer to the interference arrangement including a blocking element that obstructs part of said main locking and unlocking mechanism so as to prevent the unlocking of the lock. Claims 4 and 8 refer to the interference arrangement providing an additional locking or unlocking mechanism to the main locking and unlocking mechanism. It is not clear whether the blocking element is part of the main locking mechanism or the additional locking mechanism.
3.3 The claims of the application are not fairly based on the matter described in the specification because:
(a)At page 8 lines 9 to 19 the body of the specification indicates that motion in a direction transverse to the longitudinal axis of the key is not easily replicated by an unauthorised user. The object of the invention as referred to on page 1A is to increase the resistance of the lock to unauthorised unlocking. The claims are not limited to motion of the interaction portion being transversed to the longitudinal axis of the key.
(b)Claim 1 refers to the lock having a subsidiary locking and unlocking arrangement. Claims 4 and 8 refer to the lock having a main locking and unlocking mechanism and an additional locking and unlocking mechanism. The body of the specification refers to a locking mechanism. The body of the specification fails to provide a real and reasonably clear disclosure of a primary and subsidiary, or main and additional locking or unlocking mechanism.”
Is There a Serious Opposition?
I note that some of the particulars provided in the opposition to the amendments are not relevant grounds of opposition available under S102.
The particulars set out as 3.1(a), (b) and (c), as well as particular 3.3(a) are said to represent those problems raised under section 40 in the substantive opposition that the amendments have not addressed (at least in Lockwood’s opinion). However, while it is appropriate to object to the allowability of an amendment under section 102(2)(b) by reason of specification not complying with the requirements of subsection 40(2) or (3), this is only if the specification, as a result of the amendment, does not meet the requirements of subsection 40(2) or (3). The fact that these particulars were raised by Lockwood in the substantive opposition clearly indicates that the non-compliance with section 40(2) or (3), if any, that exists in the specification did not arise as a result of the amendment. As such, these particulars cannot possibly be used in any meaningful way to dispute the allowability of the amendments.
It would also appear to me that the ground raised in section 1 of the Statement of Grounds and Particulars is also of little merit. Lockwood contends that there is no disclosure of a subsidiary/additional locking and unlocking mechanism because the “specification as filed only refers to the locking and unlocking mechanism”. I grant Lockwood the point that the words “subsidiary” or “additional” are never used in the specification. However, the specification clearly shows a “main” locking mechanism (pin tumblers 7 having holes 10 which align with the pins 13 of the sidebars 12 as the pin tumblers cooperate with the teeth 16 of the key), and a “secondary” locking/unlocking mechanism (see, for example figures 5 and 9). For similar reasons particular 3.3(b) would also appear to add little. Furthermore, the clarity problems raised in particular 3.2 would appear to be trivial.
Given this, I have some concerns that the opposition to the amendments is not a serious one.
However, the particulars listed under Ground 2 regarding the amended claims are not insignificant. It will require the Commissioner to determine the scope of the claims and make a decision based upon her determination. This is not a trivial exercise and as a consequence, on balance, I am prepared to believe that the current opposition to the amendments is a serious one.
Is Expert Evidence Likely to be Relevant?
Having regard to the particulars, very early on in the hearing I questioned Mr Fitzpatrick as to why an expert was required in this opposition to provide evidence in support at all. I indicated that, in an opposition to amendments, the issues to be decided, including which features were not in substance disclosed and which features did not fall within the scope of the previous claims, were generally all matters of specification construction. They were matters for the court or tribunal to decide (i.e. matters of law) rather than being matters of fact (where expert evidence is often required). I note that this particularly appears to be the case here. From my reading of the specification and the Statement of Grounds and Particulars, it would appear that the decision on the allowability of the amendments will hinge on the construction placed on the specification, particularly the scope of the claims before and after amendment. That decision is one for the court or tribunal to make.
When seeking to explain why he thought an expert was needed, Mr Fitzpatrick said that he was following a “well-worn path” of using experts to provide declarations. He thought that IP Australia preferred evidence indicating that the amendments were not allowable.
While it could be said with some confidence that expert evidence is accepted by IP Australia, it does not automatically follow that expert evidence must always be submitted. There is no rule or law which requires that IP Australia be supplied with evidence just for the sake of it. Mr Fitzpatrick indicated that this was the “usual route” followed in oppositions. His understanding was that expert evidence is required. However, just because it is the usual route does not mean it must always be followed. The Commissioner’s view is that it is best to have all relevant, but only relevant, material.
Furthermore, when I attempted to draw Mr Fitzpatrick out as to whether the expert evidence in this case would be going anywhere beyond agreeing with the problems set out in the Statement of Grounds and Particulars he indicated that it would not. His understanding was that providing a declaration from an expert gave the hearing officer evidence that an independent person skilled in the art effectively agreed with what the opponent had thought. It was simply the preferred “form” of presenting a case.
While an expert can assist the court or tribunal in their construction of the specification, the issues here appear manifestly clear on the face of the Statement of Grounds and Particulars. Furthermore, the issues can be dealt with by submissions at the hearing.
Given this, expert evidence would appear to add nothing to the opponent’s case and I fail to see why expert evidence in support is required at all. The Statement of Grounds and Particulars clearly sets out what Lockwood contends is not disclosed in the specification as originally filed, what does not fall within the scope of the previous claims and what problems arise under S40(2) and (3). If the expert evidence is going to be nothing more than a reiteration of those problems, delaying this opposition’s process waiting for what has already been supplied seems unproductive. This is particularly true as this opposition is delaying the main opposition.
Is a Different Expert Required?

The explanation given by Lockwood for needing an extension of time was as follows:
“Since filing of the Statement of Grounds and Particulars on 21 October 2004, the applicants Research and Intellectual Property manager has reviewed the amendments, in light of the particulars. We have commenced consideration of obtaining a declarant and our investigations in this regard are proceeding. The intervention of the Christmas holiday period and the resultant absence of appropriate staff have made it difficult to identify and contact appropriate declarants. It is expected that a declarant will be identified, briefed and completed the declaration within the 3 month extension sought.”
Hence, Lockwood was searching for an expert, notwithstanding that they had apparently already obtained an expert for their substantive opposition.
Ignoring what I have stated above regarding experts, if it was assumed that expert evidence was required, I questioned Mr Fitzpatrick during the hearing as to why he could not use as his expert in this opposition the expert that had apparently been retained to provide expert evidence in the substantive opposition. He indicated that the expert for the substantive opposition had gone on maternity leave and was not available. He said that ALC had been made aware of this. When I questioned him as to why he needed a new expert and could not use an expert that Lockwood had used before, he submitted, very surprisingly in my opinion, that he understood IP Australia preferred new experts. Also he submitted that the repeated use of a single expert exposed Lockwood to an argument from any other party that the independent expert was not independent, since they were “guns for hire”. Indeed, Lockwood’s solicitors had advised Mr Fitzpatrick not to use previous experts. Therefore, notwithstanding Lockwood’s use of other experts in previous oppositions, a new expert had to be found for this opposition, and this search had also caused a delay.
While I have heard this type of submission made in opposition proceedings in an attempt to reduce the weight of a particular expert’s evidence, I have never seen a decision in which that submission was accepted. Mr Fitzpatrick’s understanding of the situation seems incorrect. I invited Mr Fitzpatrick to provide me with references to decisions where the evidence of an expert was discounted because of the expert’s repeated appearance for a single party. None were supplied.
It could be said that an expert who either has an interest in the company involved in the opposition, gains a financial benefit beyond that which is normally paid to experts for their time in preparing their evidence, or whose personal circumstances are such as to create a bias against the other party may be of doubtful independence. However, simply saying that an expert has been used multiple times by a company in different oppositions does not impact on their independence. Searching for “new” experts every time an opposition is filed is not compulsory and leads to unnecessary delays.
What was Lockwood’s Understanding of the Process?
From the above it is clear that Lockwood was operating on the understanding that:
(a)expert evidence is always required for oppositions; and
(b)new experts are needed to provide evidence for each opposition.
As I have indicated above, both of these positions are not necessarily true.
Furthermore, Lockwood submitted that if ALC had not objected to the extension they thought that IP Australia would have granted it. They also submitted that since it was their first request for an extension it was unreasonable for it to have been objected to. While this submission does not diminish Lockwood’s responsibilities in providing evidence and the like within the statutory time frames, Mr Fitzpatrick (for the opponent) clearly had a reasonable expectation, based on many years experience, that IP Australia grants extensions rather than refusing them. The actions of Mr Fitzpatrick indicate that he understood the extension would be granted and he would have the time to complete the evidence in support.
Thus the opponent’s understanding was that they thought that the request for an extension (being the first one for the opposition to the amendments) would automatically be granted. This could then explain why they had not been as expeditious as possible in preparing their evidence.
However, while it is only the first request made by Lockwood, it does not follow that first requests are always going to be granted. As pointed out by the delegate in Intertrust Technologies v Microsoft Corporation 2004 APO 9:
“Even though this is only the first extension to serve evidence…, the Commissioner still needs to be satisfied that an extension is appropriate in all the circumstances.”
It appears in this opposition that Lockwood acted the way it did because they were operating under the assumptions set out above, Therefore, given that these assumptions were, ultimately, not correct, it could be argued that, as a consequence, it would be in the public interest to grant the extension rather than shutting Lockwood out entirely.
The situation where an erroneous understanding by a practitioner has been reasonable grounds for granting an extension was considered in Race Lotto v AWA Limited [1998] APO 78. In Race Lotto (supra), a genuine misunderstanding was found to justify an extension although further extensions could not be sought based on the same rationale. In that decision, the delegate found that the opponent's understanding of the state of negotiations at the time provided a credible explanation for the delay in serving evidence-in-support.
However:
(a)bearing in mind my belief that the only ground raised in this opposition that has possible merit goes to the scope of the claims before and after amendment;
(b)given that the scope of claims is a matter of law;
(c)while a situation similar to what was found in Race Lotto (supra) exists; and
(d)notwithstanding that a serious opposition (at least on one ground) exists,
there seems little benefit in granting the extension. The Statement of Grounds and Particulars sets out very clearly what the alleged problems are, and an expert (whether they are an expert previously used by Lockwood or not) agreeing with these statements, but not adding any more, adds nothing. Furthermore, matters of law are for the court or tribunal to make findings on.
Is There a Satisfactory Explanation of the Delay?
Of interest in the explanation is the passage:
“the applicants Research and Intellectual Property manager has reviewed the amendments, in light of the particulars” (my emphasis)
It would appear from this that the Lockwood’s opposition to the amendments and particulars were filed first and then the amendments reviewed. This would seem counter to all accepted practice which would surely be to review the amendments first and then decide whether or not to file an opposition along with all the requisite particulars and evidence. If the selection of an expert had to be delayed until the Research and Intellectual Property manager had completed the review of the amendments, and Lockwood waited until after filing the Statement of Grounds and Particulars for the review, it would seem that Lockwood’s lack of time is of its own making. As Mr Franke submitted on ALC’s behalf, Lockwood had been aware of the amendments for over 12 months. To wait until well after an opposition was filed to review the amendments does not seem diligent.
Mr Franke submitted that, even if Lockwood had to find a new expert, then the most appropriate time to do this would have been when their initial expert became unavailable. Waiting until after filing this opposition was not appropriate. Mr Franke submitted that Lockwood was experienced in patent matters and should have known this. Moreover, there were the experts that were being used in the opposition of the corresponding New Zealand application. While Mr Fitzpatrick responded with the information that ALC had used a similar argument about the need to find declarants to gain an extension in New Zealand, I believe that Mr Franke’s submission has merit.
The explanation given does not justify an extension of time. Lockwood’s decision to wait until after filing the opposition before reviewing the amendments and finding an expert do not justify an extension. No unexpected occurrence forced this delay. Indeed, it would appear to be almost inevitable. The circumstances in which the seeking of an expert was delayed until after reviewing the amendments (which in itself was after filing the Statement of Grounds and Particulars) were entirely of Lockwood’s own making. The explanation does not justify an extension being granted.
What are the Interests of the Parties?
Mr Franke’s submission for ALC was that granting this extension would prolong the substantive opposition since the opposition to the amendments must be finalised before the substantive opposition can continue. This was a disadvantage to them as it delayed any possible grant of their patent.
When I questioned Mr Fitzpatrick as to why it was in Lockwood’s interest to have this extension granted, he stated that his instructions from Lockwood were to ensure that no invalid patent should be granted and that, along the way, various checks and balances should be made. Lockwood had an honest belief that the proposed amendments were not allowable, and they only wanted allowable amendments to proceed. Mr Fitzpatrick submitted that the use of IP rights in the security industry was very important. The applicant had made sales based upon the existence of their IP right and this was of great concern to Lockwood. Lockwood had found possibly more relevant art than had been considered during examination. Lockwood believed that their opposition was entirely justified and would prevent the grant of an invalid patent.
As far as I understand Mr Fitzpatrick’s submission, it does not seem relevant to the present opposition to the amendments. While Mr Fitzpatrick’s submissions may bear some consideration in deciding extensions of time to file evidence in the substantive opposition, an opposition to amendments does not result in a decision which leads directly to the grant of a patent. This present opposition is occurring within, and delaying considerably, the substantive opposition. As such, it would be better if this opposition was dealt with as quickly as possible. An extension of time to file evidence in this opposition does not achieve this. As I indicated above, if the expert evidence is going to be nothing more than a reiteration of the Statement of Grounds and Particulars, there is no need for it. As is obvious from above, the Statement of Grounds and Particulars is very clear and easily understood. The interests of Lockwood would be served just as well by the Statement of Grounds and Particulars as it would be by any expert evidence agreeing with it.
What is the Public Interest?
Mr Franke’s submission on this point was more or less the same as for the ALC’s interest. An extension would unduly protract this opposition and, as a result, the substantive opposition.
Similarly, Mr Fitzpatrick’s submission was more or less the same as that given for Lockwood’s interests. That is, that an invalid patent should not be granted since the use of IP rights in the security industry was very important and Lockwood’s opposition would ensure this.
As I noted above, a submission in this opposition regarding the prevention of invalid patents being granted seems irrelevant. Any decision on the allowability of these amendments will not directly result in a grant of a patent or otherwise. Also, there is the other arm to the public interest to be taken into account, which is the need to deal with matters in an efficient, orderly manner and not unduly prolong them. It could reasonably be said that a decision to grant an extension in this opposition to the amendments will result in the substantive opposition being delayed even further. I am of the view that it is in the public interest in this case to determine this opposition quickly. Therefore, I am of the opinion that public interest would be served by not granting the extension.
DECISION
The expert evidence in support for the present opposition to the allowance of the amendment does not seem necessary. Particularly since it would appear that that evidence will basically agree with the Statement of Grounds and Particulars, which, on its own, is very clear and easily understood. Furthermore the issues raised could be dealt with by submission at the hearing.
While Lockwood’s understanding of how cases are to be presented to IP Australia may have affected their conduct, the position taken in Race Lotto (supra) of granting the extension because it was in the public interest to have the evidence on file is not relevant, since the expert evidence would appear to be unnecessary in this case.
In addition, the explanation does not justify an extension and the public interest is in not allowing the extension so that this opposition, and the substantive opposition, can be determined expeditiously. The interest of the parties is not served by granting the extension, as Lockwood could rely on the Statement of Grounds and Particulars. An extension is not necessary in this case.
Therefore an extension is not appropriate. However, in line with the long-standing practice of the Commissioner, I allow Lockwood seven (7) days from the date of this decision to serve and file any evidence to hand. I note that, in a letter dated 15 March 2005, Lockwood indicated that they had already prepared a draft declaration.
COSTS
Both parties sought costs in this matter, irrespective of the outcome. Lockwood sought costs on the basis that this was the first extension requested for this opposition and it was unreasonable for it to have been objected to. ALC’s submission was that Lockwood had not been diligent and any delay was of their own making. Therefore, even if an extension were granted, costs should be awarded against Lockwood.
Lockwood has not been successful. An extension is not appropriate and not justified. While it may have been Lockwood’s first extension, there is no basis to state that there are a particular number of extensions that should be allowed before awarding costs against those seeking the extension.
I award costs against Lockwood.
GREG POWELL
Delegate of the Commissioner of Patents
Patent attorneys for the applicant : Watermark Patent and Trade Mark Attorneys, Sydney
Patent attorneys for the opponent : Phillips Ormonde & Fitzpatrick, Melbourne