Breville Pty. Ltd. v Sunbeam Corporation Limited
[2008] APO 28
•3 November 2008
OFFICIAL NOTICE
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No. 2005201507 in the name of Breville Pty. Ltd.
Title: Kettle with Lid Damping Mechanism
Action: An application by Sunbeam Corporation Limited for a second extension of time in which to serve evidence in support of an opposition
Decision: Issued 3 November 2008 .
Abstract
Extension of time allowed.
Delays leading to this and the previous extension have resulted from illness of a declarant and delays in obtaining materials that were available in Australia at the priority date to be used as evidence.
The evidence in support appears to be highly relevant to the outcome of the substantive opposition.
Written submissions inform the Commissioner, and the other side, of the case that the party advances. This allows the oral hearing to focus on the key issues, and makes efficient use of the hearing time. Both parties file their submissions at the same time, and have the opportunity to respond if they choose to appear at the hearing.
Costs awarded against the applicant Breville Pty. Ltd. according to Schedule 8 of the Patents Regulations 1991.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No. 2005201507 by Breville Pty. Ltd. and an extension of time to serve evidence in support of an opposition by Sunbeam Corporation Limited.
BACKGROUND
1.Patent application 2005201507 in the name of Breville Pty. Ltd. (hereafter referred to as Breville) was filed on 11 April 2005. The application was advertised accepted on 21 June 2007. Sunbeam Corporation Limited (hereafter referred to as Sunbeam) filed a notice of opposition under Section 59 of the Patents Act 1990 on 21 September 2007 and a statement of grounds and particulars on 21 December 2007. The application relates to a kettle with a lid dampening mechanism.
2.On 18 January 2008, Breville requested that the Commissioner direct Sunbeam to supply further particulars in respect to the statement of grounds and particulars, and also that certain grounds of the opposition be dismissed. On 1 July 2008, the Commissioner allowed Sunbeam’s application of 26 March to amend the statement. No grounds were dismissed.
3.Evidence in support of the opposition was originally due to be served by 21 March 2008. A first extension was allowed without objection until 21 June 2008.
4.On 20 June 2008, under Regulation 5.10(2) of the Patents Regulations, Sunbeam requested a second extension of time to serve evidence in support from 21 June 2008 until 21 September 2008. Breville has objected to this request.
5.The matter was heard by telephone on 8 August 2008. Mr Michael Molins, patent attorney of Molins & Co appeared for Breville. Mr John Dower, patent attorney of Freehills Patent & Trademark Attorneys appeared for Sunbeam.
6.Evidence in support was completed on 22 September 2008.
The application for extension of time
- Sunbeam have requested a three month extension of time for serving evidence in support from 21 June 2008 to 21 September 2008.
The first extension
- Sunbeam originally delayed service of evidence in support because the sole potential expert witness that had been identified and interviewed at the time was still being assessed as to his suitability. Sunbeam also required more time to attempt to locate other possible expert witnesses.
- At the end of the extension no evidence had been filed.
The present extension
- Sunbeam asserts that their chosen expert witness has been engaged and they have been progressing with his evidence and other evidence in support. This progress has been slower than anticipated because
· the witness has been undergoing chemotherapy treatment since the beginning of May
· tracing and obtaining materials that were available in Australia at the priority date of the application for the witness has been a considerable and time consuming undertaking
- In their application for this extension Sunbeam now claim to have procured all the materials they require but request additional time to complete their expert evidence in relation to these materials.
- At the hearing they also indicated that they reasonably expected to complete their evidence in support within the current extension if allowed. Indeed, on 22 September 2008 evidence in support was completed.
DECISION
13.The present extension would bring the total extension of time to serve evidence in support to 6 months.
The law on extensions of time
14.The time for serving evidence can be extended under regulation 5.10(2):
(2)The Commissioner may:
(a)on the application of a party in the approved form; and
(b)on such reasonable terms (if any) as the Commissioner specifies:
extend the time within which the party may take a step prescribed in this Chapter, not being a step that is taken under regulation 5.3 or paragraph 5.4(1)(a).
- This provision must be read in conjunction with regulation 5.10(5):
(5)The Commissioner must not give a direction under subregulation (1) or grant an application under subregulation (2) or (4) unless the Commissioner:
(a)if he or she proposes to grant an application by a party - is reasonably satisfied that the other party has been notified of the application; and
(b)if he or she proposes to act on his own motion - ensures that the parties are notified of the proposed action; and
(c)in either case:
(i)gives the parties a reasonable opportunity to make representations concerning the application or proposed action; and
(ii)is reasonably satisfied that a direction, and extension of time or the serving of evidence is appropriate in all the circumstances.
16.Consequently, it is a prerequisite to any decision that the Commissioner must ensure that the other party has been notified, and that both parties have had the opportunity to make representations. I will further discuss this prerequisite later.
17.An extension can only be granted if the Commissioner is reasonably satisfied that it is appropriate. In exercising this discretion I am guided by the decisions of Burchett J in Ferocem Pty Ltd v Commissioner of Patents (1994) AIPC 91-057; 28 IPR 243, Sackville J in A Goninan & Co Ltd v Commissioner of Patents (1997) AIPC 91-330; 38 IPR 213 and Goldberg J in National Starch & Chemical Co v Commissioner of Patents (2001) AIPC 91-697, 50 IPR 398. These decisions establish that:
a) The power is discretionary: Regulation 5.10 confers a broad discretion, which cannot be reduced to imperative compliance with particular requirements. It is necessary to give genuine and proper consideration to all relevant considerations. (Ferocem at AIPC 38,208; IPR 247-8, Goninan at AIPC 39,434; IPR 220)
b) Explanation of delay: The reasons why the evidence was not served earlier are a relevant consideration, but a satisfactory explanation is not a mandatory requirement. (Ferocem at AIPC 38,207-8; IPR 247)
c) The public interest: The public interest in determining a serious opposition on its merits is a relevant consideration. (Goninan at AIPC 39,435-6; IPR 222)
·In order to do this, it is necessary for the Commissioner to form a view as to the nature of the evidence that it is sought to adduce, and the significance of that evidence for the opposition proceedings. (Goninan at AIPC 39,438; IPR 225-6)
·The significance of the evidence is assessed having regard to any relevant material available, not just the evidence itself. (National Starch at [33])
·The public interest is not protected merely because some evidence has already been served. (Goninan at AIPC 39,438; IPR 225)
d) The interests of the party seeking the exercise of discretion: The interests of the party seeking the exercise of discretion are a relevant consideration. (Ferocem at AIPC 38,208; IPR 247)
e) The interests of other parties: It is relevant to consider the disadvantage to the other party of delays in determining the opposition, and the effect of delays on the efficient and orderly administration of the Patents Office. (Ferocem at AIPC 38,208; IPR 247, Goninan at AIPC 39,436; IPR 222)
Adequate notice and opportunity to make representations
18.In this case a hearing notice was issued to both parties on 30 June 2008. It invited both parties to provide the Hearing Officer with a written summary of submissions to be made at least twenty four (24) hours before the commencement of the hearing. Sunbeam provided their submissions less than 24 hours before the hearing. No written submissions were received from Breville.
19.At approximately 5 pm, 7 August 2008 a fax was received from Mr Molins stating that Breville “strongly objects that submissions of this kind are proposed outside of the 24 hour time limit imposed” by the hearing notice. Mr Molins further argued that “Such submissions have the potential to be highly prejudicial to the Applicant and it would be unfair for IP Australia to consider these submissions prior to the hearing. The submissions must have no bearing on the conduct or [sic] outcome of the hearing or on the question of costs. The minimum notion of fairness demands that the Applicant be given an equal opportunity to provide submissions in writing, prior to the hearing. Unfortunately, it is neither fair nor possible for the Applicant to respond on such short notice. Fairness demands that the same rules be applied to both parties.” Mr Molins reiterated his argument at the beginning of the hearing the following morning.
20.I well appreciate that the written submissions from Sunbeam were not received outside the 24 hour time limit specified by the hearing notice, and this is most regrettable. There is, however, nothing in the Patents Act or Regulations stipulating the timing or mode of presentation of submissions. The invitation to file written submissions at least 24 hours before commencement of the hearing is simply a matter of administrative convenience for the decision-maker. Written submissions inform the Commissioner, and the other side, of the case that the party advances. This allows the oral hearing to focus on the key issues, and makes efficient use of the hearing time. Both parties file their submissions at the same time, and have the opportunity to respond if they choose to appear at the hearing. In contrast to the filing of evidence, written submissions are not in themselves subject to any right of written reply. In the present case, Breville were allowed to respond fully to Sunbeam's written and oral submissions.
21.I am satisfied that both parties have had the opportunity to make representations, and that there has been no denial of natural justice.
Explanation of the delay
22.There have been several factors in the present delay. The reason for Sunbeam’s original delay, and the reasons for the first extension, related to difficulties in locating and engaging one or more suitable expert witnesses. After the first extension an independent small appliance designer was engaged, and evidence in support partially progressed.
23.Further preparation of evidence was delayed for two key reasons. The first resides in the time taken for the expert witness to trace and obtain materials (kettles), that were available in Australia at the priority date of the application. Sunbeam proceeded to source appropriate kettles after having a meeting with the expert witness where the witness indicated that “one of the exercises he would have undertaken on or before the relevant priority date would have been to visit kettle retailers in Australia to examine the kettles available”. Kettles were sourced from Sunbeam, specific retailer branches in Sydney, and from overseas through the “eBay” website. I think it reasonable that searching for and selecting kettles of a particular age and function would have required some additional time. The delay has not been unreasonable and this part of evidence preparation was completed at the time of the hearing.
24.The second reason for the further delay stems from disruptions created by the expert witness undergoing chemotherapy treatment. Sunbeam knew of this treatment prior to engaging the witness. Nonetheless Sunbeam are of the view that he was the most appropriate person for the task. The witness had indicated that the side effects from monthly chemotherapy treatments would only disrupt preparation of evidence for around one week per month. While it may be arguable that engaging another witness would have been preferable, I think it equally arguable that this may have further prolonged service of evidence. Under the circumstances I think it reasonable that the side effects from medical treatment such as chemotherapy may extend the time required to prepare evidence.
25.Mr Molins objection centres around Sunbeam not providing sufficient detail in their application for the extension. In particular, Mr Molins argued that the identity of the expert witness undergoing chemotherapy should have been revealed and that a “full and frank” disclosure of the circumstances surrounding the delay was not provided. While I agree that the amount of detail provided by Sunbeam is relatively brief, I am still of the view that a reasonable explanation for the delay has been provided. Even if I am incorrect on this point, there is no requirement under Regulation 5.10 for a “full and frank” disclosure. “Full and frank disclosure” is the test used for applications for extensions of time made under s 223 of the Act. The discretion to grant extensions under Regulation 5.10 is a broad one, and while a satisfactory explanation is one relevant consideration, it is not a mandatory requirement.
The interests of the parties
26.Without the extension Sunbeam will not have served any evidence in support of the opposition. As a consequence, if the extension is not granted then Sunbeam will be shut out from arguing their case. Clearly, Sunbeam’s interests heavily favour the extension being granted. Breville have an interest in the opposition being determined quickly. The allowance of the present extension will bring the total extension of time to 6 months, a relatively small period in the overall process.
The public interest
27.The public interest in determining a serious opposition on its merits is assessed by considering the nature and significance of the evidence that will be served (Goninan at AIPC 39,438; IPR 225-6). Three statutory declarations from expert witnesses have now been served as evidence in support. At the hearing Mr Dower indicated that the evidence to be filed would relate to the issues of novelty and inventive step. Following a brief review of the declarations I agree that they are directed to these issues, and in particular appear to be relevant to establishing the common general knowledge in Australia and the construction of prior art documents. This evidence is particularly significant in that without it, there would be no other evidence pertaining to any of these grounds. I am satisfied that a serious opposition is in train and the public interest favours the grant of an extension of time.
The balance of considerations
28.While relatively brief, Sunbeam have on the whole provided a reasonable explanation for the delay. The public interest and the interests of Sunbeam favour granting the extension because the evidence served appears to be highly relevant to the opposition. Indeed, the opposition is unlikely to be considered on its merits without evidence in support. Breville’s interests are against the extension. Sunbeam completed service of evidence on 22 September 2008. (It is noted that the requested extension date of 21 September fell on a Sunday, effectively extending the date until Monday 22 September 2008.) On balance, it is appropriate to grant the extension.
29.I grant the extension of time for serving evidence in support until 21 September 2008. I direct that the time for serving evidence in answer is three months from the date of this decision.
Costs
30.Costs normally follow the event. On this occasion, I see no reason to depart from this approach. I award costs against the applicant Breville according to Schedule 8 of the Patents Regulations 1991.
Nicole Howard
Delegate of the Commissioner of Patents3 November 2008
Patent attorneys for the applicant : Molins & Co
Patent attorneys for the opponent : Freehills
1
1
0