Cadbury Schweppes PLC v WM Wrigley Jr Company
[2007] APO 14
•20 April 2007
ABSTRACTS OF DECISIONS
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No. 2002231274 in the name of WM Wrigley Jr Company
Title: Chewing Gums and Related Products that provide Breath Freshening Characteristics
Action: Opposition by Cadbury Schweppes PLC under section 59 (Patents Act 1990). Objection to an application for an extension of time in which to serve Evidence-in-Support (regulation 5.10(2)).
Decision: Issued 20 April 2007.
Abstract
The applicant requested a 3 month extension of time to file Evidence in Support being the sixth such extension applied for.
The evidence filed indicates that the delays leading to this and the previous five extensions largely arise as a result of difficulties identifying, retaining and organising communication with a suitable expert witness. Although some of the decisions taken by the opponent in attempting to locate a witness might have contributed to the delays to date, the evidence supports the conclusion that a serious opposition is on foot.
The evidence from the expert witness is likely to be highly relevant to the outcome of the substantive opposition being related to novelty and inventive step considerations.
Moreover the delegate concluded that on balance, the public interest was best served by the substantive opposition being decided with all pertinent facts and evidence before the delegate and that the interests of neither party outweighed this factor.
Consequently the delegate allows the extension.
Due to the decisions and actions of the opponent having contributed to the delay, costs are awarded against the opponent Cadbury Schweppes PLC.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No. 2002231274 by WM Wrigley Jr Company and Opposition thereto by Cadbury Schweppes PLC under Section 59 of the Patents Act 1990. Objection to an application for an extension of time in which to serve Evidence-in-Support (regulation 5.10(2)).
BACKGROUND
Patent application 2002231274 (the Wrigley application) was filed under the provisions of the PCT as PCT/US01/50409 on 21 December 2001 by WM Wrigley Jr Company (“the applicant”). The application entered the national phase in Australia on 15 July 2003. The application was advertised accepted on 5 April 2005.
Cadbury Schweppes PLC (“the opponent”) filed a Notice of Opposition on 14 July 2005, followed by a Statement of Grounds and Particulars on 14 October 2005.
At the date of this hearing, the opponent has filed a total of six applications for an Extension of Time in which to file Evidence-in-Support (EIS) dated 13 January 2006, 13 April 2006, 14 July 2006, 13 October 2006, 14 November 2006 and 14 January 2007.
The previous five allowed extensions extended the time for filing of Evidence in Support from 14 January 2006 to 14 January 2007.
Following filing of the second Application for Extension of Time dated 13 April 2006, the applicant filed on 20 April 2006, a Statutory Declaration by Rosaria Stramandinoli and Exhibits RS-1 to RS-8, being part of the Evidence-in-Support.
Following the filing of the fifth Application for Extension of Time by the opponent, the applicant filed comments on 1 December 2006 arguing that the extension should not be granted.
The current Application seeks a further three months extension from 14 January 2007 until 14 April 2007.
On 29 January 2007 the applicant filed an objection to the grant of the current Application for Extension of Time and requested to be heard on the matter.
The matter was heard in Canberra on 7 March 2007. WM Wrigley Jr Company was represented by Andrew Lee and John McCann, attorneys of Spruson and Ferguson, Sydney. Cadbury Schweppes PLC was represented by Ben Fitzpatrick, Counsel, and Janelle Borham, Attorney of Griffith Hack, Melbourne. Both parties appeared by telephone.
RELEVANT LAW
10. Chapter 5 of the Patents Regulations sets out the procedure and time limits governing opposition proceedings. According to regulation 5.8, the time for serving Evidence-in-Support of an opposition is three months from the date of serving the statement of grounds and particulars. A party to an opposition may apply to the Commissioner to extend this time limit pursuant to regulation 5.10(2):
"The Commissioner may 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 5.3AA, paragraph 5.4(a) or subparagraph 5.8(1)(a)(i)):
(a) on the application of a party in the approved form; and
(b) on such reasonable terms (if any) as the Commissioner specifies; and
(c) after the party has served a copy of the application on the other party."
11. Regulation 5.10(5) relevantly provides that before granting an extension of time I must be reasonably satisfied that the extension is appropriate in all the circumstances, and in this I am guided by the well established principles set out in Ferocem Pty Ltd v Commissioner of Patents 28 IPR 243 and A Goninan & Co Ltd v Commissioner of Patents 38 IPR 213.
12. These principles do not demand an imperative compliance with particular requirements, but rather, as stated by Burchett J in Ferocem, involve:
"a balancing exercise, in which competing considerations must be taken into account. There are the interests of the persons directly concerned in the application and opposition in question. There are also public interests, which are not necessarily all ranged on the same side. They include the expeditious disposal of matters in the Patents Office, and questions of costs, of efficiency, and of insistence upon the professional standards being maintained by those who deal with the office. But they also include, as Kitto J pointed out in Kaiser Aluminium & Chemical Company v Reynolds Metal Co (1969) 120 CLR 136 at 143, 'the public interest that a serious opposition by a person entitled in fact to oppose the grant of a patent should be dealt with on the merits, rather than that it should be shut out in consequence of a failure in procedure, lamentable though the failure may be.'"
13. In Goninan Sackville J said that in order to give proper consideration to the public interest in opposition proceedings being determined on their merits, it is necessary to consider the nature of the evidence for which the extension of time is sought and the significance of that evidence for the opposition. The principles applicable to the broad discretion conferred by regulation 5.10 to grant extensions of time were more recently considered in National Starch & Chemical Company v Commissioner of Patents 50 IPR 398 where Goldberg J went further in saying that, in the absence of direct material on the point, the significance of the evidence sought to be adduced might be determined from:
· the technical nature of the invention apparent on the face of the specification;
· the technical nature of the documents referred to in the statement of grounds and particulars;
· the statement of grounds of opposition and the particulars relating to each ground;
· the role and importance of experts in an opposition proceeding; and
· statements in submissions by the party seeking the extension on the nature of the evidence to be relied upon.
14. Finally, regard must also be had to the comments of the Administrative Appeals Tribunal in Sanyo v Commissioner of Patents 36 IPR 470 at 479:
"The decisions of the courts concerning the approach to be taken to the exercise of a discretion to extend time are now well established and include:
· in the absence of nominated factors against which the discretion is to be exercised, regard should be had to the 'subject matter, scope and purpose of the Act': per Mason J (as he then was) in Minister for Aboriginal Affairs v Peko-Wallsend Ltd(1986) 162 CLR 24 at 39-40; 66 ALR 299. A further exposition of this is provided by the comments of Davies J in Chalk v Commissioner for Superannuation (1994) 50 FCR 150 at 154 where he said '……the discretion should be exercised by reference to the words of the statute and the context within which the discretion is conferred';
· while the applicant has the burden of placing before the tribunal the circumstances which it claims will justify the grant of an extension of time, that does not amount to a burden of proof and it is not appropriate that it should be so described: McDonald v Director-General of Social Security (1984) 1 FCR 354 per Woodward J at 357 and Jenkinson J at 368-9: Australian Broadcasting Tribunal V Bond Corp Holdings Ltd (1989) 86 ALR 424 at 432 per Burchett J;
· it is 'more important to consider the consequences of extending or refusing to extend time than debate the reasons why the act was not done in time': per Davies J in Chalk's case, at 156, with whom Black CJ and Cooper J agreed. Similar comments are to be found in Comcare v A'Hearn (1993) 119 ALR 85, particularly at 88;
· actions of the agent of a principal should not necessarily be regarded as being the actions of the principal: A'Hearn's case;
· a legislative provision providing for the exercise of a discretion to extend time is beneficial in nature and should be applied beneficially: Davies J in Chalk's case at 155."
15. I will take these principles into account when deciding whether the presently sought extension of time is appropriate in all the circumstances.
16. I note that the Delegate of the Commissioner indicated in a letter of 7 December 2006 that he would be seeking “significant progress in the preparation of evidence” in considerations of any further extension of time applications. I note that this statement is not determinative of the evidence sought and in no way supercedes or carries the weight of the above judicial decisions upon which this decision will be based.
REASONS FOR THE EXTENSION OF TIME
17. In the current i.e. Sixth Application for Extension of Time, dated 14 January 2007, the opponent stated that:
“The circumstances in which, and the grounds upon which, this application is made are as follows:
Since our last request for an extension of time we have made significant progress in the preparation of evidence.
Our in-house patent attorney in the UK has searched through records and made enquiries with third parties to locate evidence for the prior uses’ identified in the Statement of Grounds and Particulars. He has located evidence of the prior use of Stimerol before the priority date, by locating packets of Stimerol with a “best before” date that is before the priority date. He has also retained a person with knowledge of the ingredients in Stimerol sold at the time to execute a Declaration attesting to its contents. A copy of the declaration has been commenced, and will be executed and served within the current extension period being requested.
We have also made progress in locating evidence on the dates of prior use of the TheraBreath range of chewing gums. We have identified trade mark opposition proceedings in the UK that ran in about 1992 relating to this product, and we are investigating how we can use suitable evidence in the records for the opposition to provide information on the dates of use and composition of the products.
We have now held a telephone conference between our Australian patent attorney and our proposed Japanese-resident expert, on Friday 5 January 2007. In this conference we took down a history of this expert’s background experience. We also put forward to the expert the background to the invention as outlined in this opposition, and asked for his comments on what was occurring in the industry at the priority date. We also completed this for two other oppositions to Wrigley patent applications. Based on this information of the expert, the expert has been retained for use in the three oppositions discussed.
Following the meeting a detailed written report was prepared to record the evidence taken from this expert. The report was sent to the expert for correction on Friday, 12 January 2007. The sections relating to this opposition will be contained in his statutory declaration.
At the end of the meeting, the expert was given copies of these opposed patent applications (including the patent application that is the subject of the opposition). The expert is currently reading the opposed patent applications.
Our Australian attorneys are now preparing copies of the prior art documents, with cover sheets containing questions for the expert. These will be sent to him within about 3 weeks. After this, in about 3-4 weeks time, when the expert has time in his busy schedule as the head of Research & Development of a large company, we will hold a second telephone conference to take his comments on the opposed patent application, and on the prior art documents. We aim to convert this into a draft statutory declaration within about 3-4 weeks of the interview date. The draft will be sent to the expert for correction, and once corrected will be executed in Japan. Thereafter it will be served on the Patent Applicant.
We have been searching for evidence of the Fertin compositions mentioned in the Statement of Grounds and Particulars, and have located a patent application that describes these. We are also looking into this further to prepare suitable evidence.
Given the timetable we have outlined above, we believe that we will be able to complete and serve the Evidence within the time period of extension sought.”
18. The Fourth and Fifth Applications for Extension of Time, dated 13 October 2006 and 14 November 2006 respectively, indicate that the opponent had identified a suitable expert in Japan and was attempting to organise a meeting with this expert during the preceding four month period. They indicate that a specific week in September 2006 had been selected however, “About two weeks before the proposed September meeting we learned that the expert was not available during that week so the proposed meeting had to be cancelled.” No further suitable meeting dates had been identified. In the fifth application the opponent furthermore indicated that “The opponent is making every effort to progress this opposition, in view of the difficulties of dealing with experts who are not resident in the same country as their attorneys”
19. The Third Application for Extension of Time, dated 14 July 2006 stated that the opponent had filed evidence of publication dates of cited documents but had been unable to make suitable arrangements for its Australian attorneys to meet with the identified US expert and were “trying to identify other dates that will suit all of the parties, given the heavy workload and availability of our in-house patent agents and proposed expert”. The opponent also stated that “We are committed to arranging a meeting within the forthcoming three month period to interview the proposed expert. Our Australian attorneys have continued to try and locate an Australian resident expert but less time is being spent on this now that we feel we have exhausted avenues here. Thus, we are focusing on the overseas-resident expert.”
20. The Second Application for Extension of Time, dated 13 April 2006 stated that, of the 10 potential experts originally considered, a single suitable expert in the United States had been identified and was the subject of communications by the opponent’s US patent counsel. Further time was required to “meet with this expert and prepare a declaration of the expert.” The application also indicated that the opponent had been unable to locate an Australian-based expert in this technical field and that “if we cannot locate one soon we will discontinue this search and rely on the overseas resident expert.” The application stated that the Australian attorneys had obtained evidence of the publication dates of the documents referred to in the Statement of Grounds and Particulars and would be filing a Statutory Declaration “shortly”. This evidence was filed on 20 April 2006.
21. The First Application for Extension of Time, dated 13 January 2006 stated:
“Since filing the Statement of Grounds and Particulars, our Australian attorneys have commenced a search for evidence of the publication of each of the documents identified in the Statement of Grounds and Particulars. The Australian Patent Office was requested to provide a certificate attesting to the dates various patents became open to public inspection at the Australian Patent Office in Canberra. The certificate received from the Australian Patent Office indicated that the Australian Patent Office had not kept records of the dates some of these patents become open to public inspection, and therefore further work is required to obtain evidence of the publication dates of those documents. A statutory declaration has been commenced to enter into evidence copies of the prior art documents relied on, together with accession date evidence. For the sake of minimising the number of declarations and repetition of evidence, this will not be completed and filed until all evidence relating to dates of publication is collected.
Our Australian attorneys have also commenced a review for suitable experts in the art of the invention in Australia, as well as overseas experts with knowledge of the state of the art in Australia at the relevant time. There have been a considerable number of telephone conversations and written correspondence to identify a pool of potential experts. Over 10 people have been consulted in gathering information on the details of potential experts to be conducted for acting in this matter. A list of potential experts has been generated, and we are now considering which of these experts is worth pursuing further, bearing in mind issues of location of the experts, skills of the experts, costs and so forth.
In the last 4 weeks we have been trying to make contact with certain experts resident in the US and Japan.
Further inquiries still need to be made to seek potential experts located in Australia, as the current list of over 10 potential experts does not include any Australian nationals. Our Australian attorneys have attempted to locate Australian experts, but currently this has been without success.
Further time is required to complete the expert selection process, and to prepare the evidence of the expert. Further time is also required to obtain evidence of the publication dates of the non-patent literature documents identified in the Statement of Grounds and Particulars.”
SUBMISSIONS
22. At the hearing the opponent argued that delays which have necessitated the past 5 Extensions of Time and the current Application for Extension of Time are as set out in the explanations provided therewith. In addition, however, the opponent provided further submissions including a Statutory Declaration by Janelle Suzanne Borham of Griffith Hack dated 15 January 2007 accompanied by exhibit JSB-1 which is a copy of the Application for Extension of Time in dispute. The opponent’s submissions were predominantly based on Ms Borham’s declaration however they were not formally entered into evidence. These submissions encompassed the following points:
wDue to there being very little development work on chewing gums conducted in Australia, it is not straight-forward to locate an Australian-resident expert in this field, which would “improve our ability to submit evidence more quickly”. However, “it is crucial that expert evidence be submitted” in relation to novelty and inventiveness and the common general knowledge.
wThree potential experts (US residents) who were identified were considered to be too busy providing evidence for Cadbury in a US litigation to be able to be able to devote sufficient time to the Australian oppositions. A further US expert was then approached, however as a result of difficulties in finding suitable times for contact and for financial reasons, the opponent decided not to retain him.
wMs Borham, being Cadbury’s Australian patent attorney had been working with its UK in-house patent attorney, Mr Ben Appleton, to prepare a draft declaration for execution by Mr Hanne Sielemann, in relation to the details of the use of Stimerol “Zenser” gum which is particularly relevant to establishing the novelty and inventiveness of the Wrigley application. The opponent indicated that this declaration would be served on the applicant by 14 April 2007.
wThe opponent has identified and engaged a Japanese resident, Mr Rikiya Kuwahara, to act as an expert witness on its behalf. A telephone conference was conducted between Mr Kuwahara and representatives of the opponent on 5 January 2007 at which Mr Kuwahara discussed the state of the common general knowledge as at the priority date of the Wrigley application as well as some technical matters relating to the use of metal (especially zinc) salts to prepare chewing gum compositions that reduce oral malodour. Among those present at the conference were Ms Borham and Kenta Uemura, IP manager of Cadbury Schweppes, Japan to assist with Japanese/English communication. At the end of the conference Mr Kuwahara was provided with a copy of the three opposed patent applications including the “Wrigley application” and asked to read them in preparation for a second telephone conference scheduled for 9 March 2007 to discuss the Wrigley application and the prior art documents with Mr Kuwahara, but indicted that a further conference might be required if there is insufficient time on 9 March to complete the review of documents. She indicated that following this conference she would be able to “quickly” assemble Mr Kuwahara’s comments from January and March into a Statutory Declaration.to be scheduled once he had done so.
wThe opponent has been unable to locate suitable evidence relating to the product make-up of the TheraBreath range of chewing gums referred to in the Application for Extension of Time.
23. The applicant argued that the opponent has not been showing due diligence in the preparation and service of the EIS and consequently cannot be regarded as prosecuting a serious opposition. The applicant noted that although the opponent has had almost 20 months to prepare its EIS, to date the only material filed are copies of the prior art documents and there has been no evidence filed relating to or supporting the substantive issues raised in the Statement of Grounds and Particulars.
24. The applicant also suggested that in view of the opponent having spoken to at least 10 potential expert witnesses and the considerable delay in identifying the Japanese expert now being retained, either none of the witnesses approached are willing to execute a declaration supporting the opposition or the opponent is not seriously pursuing the opposition.
25. The applicant concluded that there has been undue delay of extraordinary length in locating and retaining an expert witness for this opposition, for which no satisfactory explanation has been provided and that consequently considerable weight should be given to the public interest in expeditiously disposing of this matter.
26. The applicant noted that the opponent had provided no firm undertaking that the EIS would be finalised and filed within the period of this extension and, based upon their “lack of serious progress and diligence to date”, asserted, that it was likely that another extension would be sought on 14 April 2007 if this one was granted.
DECISION
The explanation of the delay
27. The applicant’s argument in objecting to the opponent’s application for extension of time is that the lack of progress in preparing and filing EIS prima facie indicates that the opposition is not being seriously pursued. The applicant based this argument on the observation that, in the almost 20 months since the filing date of the Notice of Opposition, the opponent has not filed any evidence relating to the substantive matters raised in the SGP. Moreover, the opponent’s own evidence indicates that there have been no declarations prepared to date and the expert witness currently being consulted has not yet reviewed either the specification in suit or the prior art documents identified in the SGP. Furthermore the applicant asserted there seemed little reason to be confident that this witness will execute a declaration in support of the opponent’s case, given that none of the initial 10 potential witnesses identified have apparently been willing to do so.
28. It is evident from a review of the evidence filed, including both the applications for extension of time and the submissions of Ms Borham, that delays have arisen as a result of difficulties experienced by the opponent in procuring witnesses. I note that the explanatory submissions made at the hearing provide a much more detailed discussion of the circumstances of the delays than could be determined from the applications for extension of time alone.
29. The opponent explained that although Cadbury is one of the largest manufacturers of chewing gums in the world and a major confectionary and chewing gum importer and supplier in Australia, it does not manufacture its chewing gums in Australia and consequently does not have knowledge of or ready access to relevant Australian experts in the field. As a result, when its attempts to locate an Australian expert proved unsuccessful, the opponent explained that it was forced to search overseas and that this process had caused further delays in the preparation of the EIS.
30. While I accept this reasoning as indicating a legitimate difficulty, I would have expected that, given Cadbury’s knowledge of the Australian chewing gum industry and experience in conducting litigation in this technology it would have concentrated its efforts on locating an overseas expert at an early stage in proceedings rather than continuing to seek an Australian expert until at least 14 July 2006.
31. The opponent also indicated that it initially identified a number of experts in the United States, who, at least up to the filing of the second Application for Extension of Time, it had intended to rely upon. It then appears that at some date prior to the filing of the second application for extension of time, the opponent decided that these experts, being already committed to ongoing litigation actions in the United States on behalf of Cadbury, had insufficient time to consider the matters pertaining to the present opposition. Although I have sympathies with difficulties arising from expert’s busy schedules, these experts were already being retained by Cadbury, in at least one case in relation to a US litigation corresponding to the current dispute. Thus, in my view Cadbury should have known of the existing commitments and the complexity of the matters upon which it was already seeking these experts’ advice. With this in mind I cannot understand why the opponent continued to seriously consider them as potential witnesses rather than concentrating its efforts elsewhere.
32. The opponent then identified a witness, Noda-san, in the United States but was unable to identify a suitable time to conduct a meeting between this witness and the opponent’s Australian attorneys due to the attorneys’ heavy workload and the expert’s moving house. As a result, it appears that attempts to contact this expert were also abandoned and the opponent turned its attention to an expert witness in Japan sometime in September 2006.
33. Once again the opponent’s Australian attorneys were unable to organise a meeting with the Japan-resident expert and, according to the submissions made at the hearing, it was not until a further three months had elapsed (until 5 January 2007), that a preliminary telephone conference was conducted. Given the opponent’s past difficulties in scheduling a meeting in-person between the opponent’s Australian attorneys and their various proposed expert witnesses and that resolution of the matter should have been regarded as urgent, having by then been the subject of several extensions of time, I find it difficult to understand why a telephone conference was not arranged before this late date.
34. The opponent indicated that as a result of this discussion, the declaration from their expert was expected to be prepared within the foreseeable future and the EIS finalised.
35. On the evidence before me it is clear that the opponent has been making real efforts to progress the opposition. I note, however, that many of the delays experienced so far appear to have arisen due to poor planning and / or execution of the actions to mount the opposition especially with regard to the selection of and communication with expert witnesses, which may suggest a lack of perceived urgency on the part of the opponent.
36. Despite these criticisms, however, I consider that the opponent has provided adequate evidence to explain the circumstances that led to the delays to date and, on balance, this evidence suggests that the opponent is attempting to mount a serious opposition.
The Nature of the Evidence
37. The EIS which Cadbury is seeking additional time to file is indicated to be Declarations from their experts in relation to the common general knowledge in Australia at the priority date and comments on the relevance of the cited documents to establishing the novelty and inventive step of the application.
38. The applicant suggested that the expert identified, being a resident of Japan, would not be qualified to provide evidence in relation to the art in Australia. No evidence has been provided, however, that supports this contention and, especially given the time taken in identifying the expert, I see no reason to make such an assumption purely on the expert’s place of birth or residency. Moreover, given that the chewing gum industry is international in nature, I can accept that it is possible for an expert who is resident of another country might be knowledgeable as to the state of the art in Australia.
39. I therefore conclude that the evidence that the opponent is seeking to adduce is pertinent to the outcome of the substantive matter as set out in the SGP.
The interests of the parties
40. Cadbury’s interests would clearly be disadvantaged in arguing the substantive matter if it is unable to serve its EIS.
41. Wrigley’s interests would be served by an expeditious resolution of the opposition and by having certainty with regard to its patent rights in respect of the application. Wrigley argued that if the opponent was not able to file its EIS, it would not be totally shut out of proceedings because the opportunity would still exist for it to appeal an adverse finding in the substantive hearing. An appeal, however, would involve substantial additional costs to the opponent and the applicant.
42. Consequently, while I accept that the applicant could be disadvantaged by a protraction of proceedings if I grant the extension now sought, there is nothing before me to suggest that such protraction would have the same undue effect on Wrigley as the effect on Cadbury if it was denied the opportunity to fully argue its case. Furthermore, while the current delay is extenuate, it is not necessarily inappropriate to grant an additional extension, especially where legitimate difficulties have been encountered and a speedy resolution of the outstanding matters is envisaged.
43. I also believe that certain advantages accrue to the applicant in having all the relevant issues argued in the substantive opposition rather than have them flow over to another forum.
The public interest
44. Public interest considerations were addressed by Burchett J in Ferocem (supra). The Kaiser Aluminium decision which Burchett J cited in Ferocem states that one should deal with a serious opposition on its merits rather than shut it out because of a failure in procedure. At the same time it is also well established that the opposition process should proceed expeditiously and undue delays avoided to afford the public certainty of the patent landscape. The public interest thus lies in a balance between these factors.
45. As an aside, the applicant referred me to Aristocrat Technologies Australia Pty Ltd v IGT [2007]APO 7 (Aristocrat), contending that the delegate’s refusal of a sixth extension of time is “authority that where numerous extensions have been sought with unsatisfactory reasons which demonstrate a serious lack of progress in finalising the evidence then the public interest in determining opposition proceedings expeditiously should outweigh the interest of the party seeking the extension”. The present case differs from Aristocrat in that the evidence provided does provide “satisfactory reasons” for the delays encountered to date.
46. The actions by Cadbury so far suggest a serious opposition is on foot. Although not as well reflected in the facts recited in the application(s) for extension of time as would be preferable, Cadbury generally seem to have proceeded with reasonable haste given the prevailing circumstances.
47. The problems experienced by the opponent in identifying a witness now appear largely overcome and my assumption is that the new expert will now be able to concentrate on their evidence and complete it within a reasonable time frame. In this regard, I note that the opponent has foreshadowed that while the witness is expected to provide declarations that will permit the completion of EIS, a further extension might be required. The opponent should note that in the absence of some new circumstance leading to a delay, such a request for another extension is unlikely to be viewed favourably.
48. Overall my view is that there is a serious opposition in train and I believe it is in the public interest to allow evidence to be finalised to allow a more just determination of the opposition. However, I note that this balance may change if there is prolonged protraction of proceedings.
CONCLUSION
49. In my view the opponent has provided a satisfactory explanation of the delays incurred in their preparation of evidence. However, this is based on the submissions provided at the hearing rather than the application itself. Although some of the decisions taken by the opponent so far could be criticised as not having dealt with difficulties in the most expeditious manner, it is my view that, on balance, the public interest is best served by having all relevant material before the Commissioner in hearing the opposition. Furthermore I consider that neither party’s interests outweigh the other or the public interest.
50. As a consequence, I am satisfied that the current extension is appropriate in all the circumstances and I grant an extension until 14 April 2007 to serve Evidence-in-Support.
COSTS
51. Although it is normal practice for costs to follow the event, I am aware that in this case some of the many delays experienced so far appear to have arisen due to poor planning and / or execution of the actions to mount the opposition by the opponent. Furthermore some of the decisions taken suggest a lack of perceived urgency on the part of the opponent.
52. Also the full explanation of the delay was only provided at the hearing. Consequently, I award costs against the opponent, Cadbury Schweppes PLC.
Leigh Tristram
Delegate of the Commissioner of Patents
20 April 2007
Patent attorneys for the applicant : Spruson & Ferguson, Sydney
Patent attorneys for the opponent : Griffith Hack Patent Attorneys, Melbourne
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