Avid Marketing, Inc v Microchip Identification Systems Pty Ltd

[1998] APO 3

official notice

decision of a delegate of the commissioner of patents

Application  :          No. 673350 in the name of AVID MARKETING, INC

Title:          Multi-Mode Identification System

Action:          Opposition under section 59 (Patents Act 1990) by MICROCHIP IDENTIFICATION SYSTEMS PTY LTD.  Application for an extension of time in which to serve evidence in support (regulation 5.10(2)).

Decision:          Issued            .

Abstract

Prima facie this is a serious opposition, which in the circumstances, should be allowed to proceed on public interest grounds.  The evidence having been served in the interim, an extension is allowed to the actual date of service.

patents act 1990

decision of a delegate of the commissioner of patents

Re:Patent Application No. 673350 by AVID MARKETING, INC and opposition thereto by MICROCHIP IDENTIFICATION SYSTEMS PTY LTD

background

Patent application 673350 was filed as 37980/93 in the name of AVID MARKETING, INC (the applicant) and advertised accepted on 7 November 1996.  On 7 February 1997 a notice of opposition was lodged by MICROCHIP IDENTIFICATION SYSTEMS PTY LTD (the opponent), followed by a statement of grounds and particulars on 7 May 1997.  Three applications for extensions of time in which to serve the evidence in support were then made, respectively for three months, one month, and one month, which were granted without objection.

On 2 January 1998 a fourth application for extension was made for the period 7 January 1998 to 7 March 1998, to which the applicant has objected and requested a hearing.

Accordingly, a hearing was set down for 17 February 1998.  However, in the event, the opponent’s attorney advised that he would not appear at the hearing and would rely on written submissions, and also that service of the whole of the evidence in support was made on 12 February.  Following this, the applicant’s attorney advised that he also would now not attend the hearing, and would make no written submissions either.  Consequently this decision is based on the written casefile.

DECISION

In the submission the opponent’s attorney details a number of reasons for the delay in establishing  the evidence in support, including holiday periods, re-locations, and absent staff.  The primary reason however, was the unavailability of the attorney’s main contact in the opponent company, Mr Clune, who was overseas on distressing personal business for about nine months from November 1996, which covers almost the whole of the time from acceptance to the initial due date for service of the evidence in support.

It is submitted that Mr Clune held knowledge central to the history of the relevant technology in Australia, and without his input, an expert could not be selected and briefed.

Importantly, the evidence has now been served.  I have looked at it briefly; it is substantial and appears relevant, and I believe that prima facie the opposition is a serious one.  Also, the applicant has chosen to make no submissions in support of their objection.

I have looked at the grounds and particulars relied on in this opposition; they are manner of manufacture, novelty, and obviousness.  There are no section 40 matters.  Refusal of the extension would mean that there is no evidence in support at all, and I consider that the grounds contended would be practically impossible to argue without evidence.  Refusal would therefore evidently cause the opposition to collapse, and while the applicant may suffer some disadvantage, I think that the public interest in permitting a serious opposition to proceed outweighs it.  I note also that by virtue of the several extensions the applicant has had further time in which to consider the statement of grounds and particulars, which should set out the case which has to be answered.

Thus bearing in mind the observations made in Ferrochem Pty Limited v Commissioner of Patents (1994) AIPC 91-057 and Kent-Moore Corp v Environmental Products Amalgamated Pty Ltd (1992) AIPC 90-915, I consider that an extension of time is appropriate in all the circumstances (regulation 5.10(5)).

CONCLUSION

I allow an extension of time in which to serve the evidence in support to 12 February 1998, being the actual date of service.  The time for serving evidence in answer should commence on the date of issue of this decision.

COSTS
There is no award of costs.

RG Tolhurst
Delegate of the Commissioner of Patents

Patent attorneys for the applicant  :  Spruson & Ferguson

Patent attorneys for the opponent   :  FB Rice & Co