Avid Marketing, Inc v Microchip Identification Systems Pty Ltd Summary

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

In the matter of Avid Marketing, Inc v Microchip Identification Systems Pty Ltd, the dispute arose out of an opposition by Microchip Identification Systems Pty Ltd against a patent application filed by Avid Marketing, Inc. The opposition, which was grounded on the novelty, manner of manufacture, and obviousness of the invention, was filed after the acceptance of the patent application on 7 November 1996. The opposition was followed by multiple requests for extensions to serve evidence in support, with the most recent request being contested by the applicant. The case reached a hearing before the delegate of the Commissioner of Patents, who was tasked with deciding on the admissibility of the evidence and the granting of the extension.

The key legal issues before the court involved the determination of whether the opponent was justified in requesting an extension to serve evidence in support of the opposition, and whether such an extension should be granted considering the circumstances presented. The applicant argued against the extension, while the opponent provided explanations for the delay, including personal circumstances affecting a key individual in the opponent's company. The court needed to balance the applicant's right to a timely response against the opponent's right to present a thorough opposition, considering the public interest and the relevance of the evidence provided.

In its decision, the court acknowledged that the evidence had finally been served and appeared substantial and relevant, suggesting that the opposition was indeed serious. The court highlighted the importance of the absent key individual's knowledge in establishing the evidence, and the fact that the applicant had chosen not to contest the relevance of the evidence. The court concluded that the public interest in allowing the opposition to proceed outweighed the inconvenience caused to the applicant, especially since the applicant had already had additional time to prepare a response due to previous extensions. The decision referenced previous cases that supported the granting of extensions under similar circumstances, ultimately allowing the extension and setting a new commencement date for the time to serve evidence in answer.

The court issued an order allowing the extension of time for serving evidence in support to 12 February 1998, the date on which the evidence was actually served. The time for serving evidence in answer was set to commence on the date of the decision's issue. No costs were awarded.

Avid Marketing, Inc v Microchip Identification Systems Pty Ltd

CaseChat Overview and Summary

Orders of the court

Background to the litigation

Evidence Before The Court

Reasons for decision

Legal Principle Established