Commonwealth Scientific and Industrial Research Organisation v Agriculture Victoria Services Pty Limited
[2014] APO 80
•3 December 2014
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Commonwealth Scientific and Industrial Research Organisation v Agriculture Victoria Services Pty Limited [2014] APO 80
Patent Application: 2007335195
Title:Artificial selection method and reagents
Patent Applicant: Agriculture Victoria Services Pty Limited
Opponent: Commonwealth Scientific and Industrial Research Organisation
Delegate: Dr S. D. Barker
Decision Date: 3 December 2014
Hearing Date: Written submissions completed on 21 October 2014
Catchwords: PATENTS – extension of time to file evidence in support – whether a short delay in contacting an expert was prompt and diligent – extension of time allowed
Representation: Patent applicant: Griffith Hack
Opponent:Davies Collison Cave
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2007335195
Title:Artificial selection method and reagents
Patent Applicant: Agriculture Victoria Services Pty Limited
Date of Decision: 3 December 2014
DECISION
I allow an extension of time to 19 December 2014 for filing evidence in support.
I award costs according to Schedule 8 against Agriculture Victoria Services Pty Limited.
REASONS FOR DECISION
This matter concerns whether an extension of time should be allowed in order to file evidence in support. The matter is determined under the Patents Regulations as amended on 15 April 2013 by the Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (No 1).
Background
This matter relates to patent application 2007335195 in the name of Agriculture Victoria Services Pty Limited (Agriculture Victoria). The application was advertised as accepted on 19 December 2013 and a notice of opposition to the grant of a patent was filed by Commonwealth Scientific and Research Organisation (CSIRO) on 19 March 2014.
CSIRO filed a statement of grounds and particulars on 19 June 2104. Evidence in support was due to be filed by 19 September 2014. On 11 September, CSIRO requested a three month extension of the time for filing evidence in support until 19 December 2014.
The delegate notified CSIRO on 18 September 2014 that he intended to grant the extension of time to 19 December 2014 to file evidence in support.
On 18 September 2014 the delegate received a letter from Agriculture Victoria requesting that he refuse CSIRO’s request. Subsequently, the applicant formally objected to the extension being sought and asked to be heard on the matter.
The hearing was conducted by means of written submissions. Submissions by both parties were received on 14 October 2014. Submissions in response by both parties were received on 21 October 2014.
The law
On 15 April 2013, the Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (No 1) (the Amendment Regulation) commenced. This Regulation significantly amended the Patents Regulations (the Regulations) as they apply to patent oppositions. The law governing extensions of time to file evidence in a patent opposition depends upon the date on which the relevant evidentiary period commenced. Where the evidentiary period commenced before 15 April 2013, the extension is governed by regulation 5.10 of the Regulations as in force immediately prior to 15 April 2013. Where the evidentiary period commenced on or after 15 April 2013 in any opposition commenced before 15 April 2013, or in a substantive opposition commenced after 15 April 2013, the extension is governed by regulation 5.9 of the Regulations as in force on 15 April 2013. This follows from regulation 23.36(2), item 2, of the Regulations.
The present evidentiary period (for filing evidence in support) commenced on 19 June 2014, i.e. on or after 15 April 2013. Consequently the extension of time is governed by regulation 5.9 of the Regulations as in force on 15 April 2013. Subregulation 5.9(2) states:
The Commissioner may extend the period only if the Commissioner is satisfied that:
(a) the party who intended to file evidence in the period:
(i)has made all reasonable efforts to comply with all relevant filing requirements under this Chapter; and
(ii)despite acting promptly and diligently at all times to ensure the appropriate evidence is filed within the period, is unable to do so, or
(b) there are exceptional circumstances that warrant the extension.
Exceptional circumstances are defined in subregulation (5):
In this regulation:
exceptional circumstances includes the following:
(a) a circumstance beyond the control of a party that prevents the party from complying with a filing requirement under this Chapter;
(b) an error or omission by the Commissioner that prevents a party from complying with a filing requirement under this Chapter;
(c) an order of a court, or a direction by the Commissioner, that the opposition be stayed pending the completion of a related proceeding or action under the Act.
These provisions have been considered by the Commissioner in TRED Design Pty Ltd v Julie-Anne McCarthy and Bradley McCarthy [2013] APO 57 and Merial Limited v Novartis AG [2013] APO 65. The principles applied in those decisions, which I accept as correct, are that I must ask myself the following questions:
1. Has the party (and their attorney or agent) made all reasonable efforts to comply with all relevant filing requirements?
2. Was the failure to file the evidence in time despite the party (and their attorney or agent) acting promptly and diligently at all times to ensure the evidence is filed in time?
3. Were there exceptional circumstances that warrant the extension?
I can extend the time for filing evidence only if I am satisfied that the answer to questions 1 and 2 is YES, or if I am satisfied that the answer to question 3 is YES. If I am so satisfied, then I must consider whether there are any discretionary reasons why the extension should not be granted.”
As noted in the Explanatory Statement accompanying the Amendment Regulation:
"The Commissioner will not be able to extend time periods unless one of these conditions was made out. The party seeking the extension will bear the onus of convincing the Commissioner of this. Once the conditions in subregulation 5.9(2) are met, the Commissioner still has the discretion to consider whether or not it is appropriate that an extension of time be granted. In applying the test, the Commissioner will not be required to give a direction to extend a period solely because of delays caused by a legal representative failing to act promptly or diligently, by difficulties in obtaining expert evidence that could have been anticipated and acted on or by attempts to settle the proceedings.
Where a party cannot satisfy the Commissioner that an extension is justified under the test, the Commissioner will not have the power to give a short extension to allow the filing of evidence immediately available or to validate evidence filed out of time."
If the Commissioner is satisfied that an extension is appropriate, the Commissioner must then determine the length of the extension (subregulation (3)):
The Commissioner must determine the length of the extended period having regard to what is reasonable in the circumstances.
The application for extension of time
The application for the extension of time, which includes a table setting out the timeline for the preparation of evidence in support is reproduced in full in Annex 1.
On 12 September 2014 the delegate advised that based on the explanation provided with the request, he was not satisfied that an extension of time was justified. The delegate invited CSIRO to file further comments as to:
- why discussions about potential Australian based witnesses did not commence before
12 June 2014
- were other potential witnesses in addition to the first potential witness also identified on 12 June 2014, and if not, why not
- why was the first potential Australian based witness not contacted directly until
30 June 2104
- why did it take up to 16 July 2014 to contact and assess the suitability of another four potential Australian based witnesses
- why were potential overseas based witnesses not identified until 21 July 2014
CSIRO responded to the delegate’s invitation for information on 16 September 2014. CSIRO submitted that the suitability of potential Australian based witnesses did not commence before 12 June 2014 because the complex nature of the subject matter required that the attorney spend considerable time acquainting himself with the principles underpinning the claimed subject matter. Also, it was not until the opponent’s case was settled and the statement of grounds and particulars was well advanced, that it was possible to begin the process to identify potential expert witnesses.
Direct contact with the first potential Australian witness was not made until 30 June 2014 because the statement of grounds and particulars was being finalised before it was filed on the due date of 19 June 2014. On 19 June 2014 the attorney travelled overseas to attend an international conference. He returned on 30 June 2014 and contacted the first witness.
Contact of a further four potential Australian based witnesses was not completed until 16 July 2014 because the experts were unavailable to assist, or were unsuitable mainly because of conflict of interest issues.
With regard to the overseas based witnesses, CSIRO indicated that the potential Australian witnesses identified potential overseas based experts. Three were assessed as unsuitable because of possible conflict of interest issues. Two others without a conflict of interest or knowledge of the patent were engaged.
On 17 September 2014, in response to an additional request from the delegate, CSIRO provide further information.
In summary that information relates to the adoption of a two stage process for gathering evidence from the witnesses. CSIRO also advised that at least eight weeks would be needed for the preparation of evidence in support and it is expected that the evidence will be completed within the requested extended period.
Has the party made all reasonable efforts to comply with all relevant filing requirements?
In the Merial decision, the Deputy Commissioner noted:
"that the requirement in paragraph 5.9(2)(a)(i) is intended to import a consideration of the reasonableness of the relevant party’s conduct over the totality of the opposition proceedings rather than its compliance with the particular evidentiary period in question"
Firstly, I consider the requirement of 5.9(2)(a)(i) to be met in relation to the filing of the statement of grounds and particulars, and also in the time taken to respond to the delegate’s requests for further information.
Agriculture Victoria’s submissions predominately relate to the period prior to CSIRO filing the statement of grounds and particulars on 19 June 2014.
Agriculture Victoria submitted generally that because no action was taken by CSIRO before 12 June 2014 to identify or engage potential witnesses, CSIRO has not acted reasonably with respect to the filing of evidence in support and thereby not acted reasonably over the totality of the opposition proceedings.
Agriculture Victoria raised several points in support of their case that CSIRO’s actions in the time taken to engage experts have not been reasonable. I consider that the reasonableness of CSIRO’s actions is best understood by considering whether their actions were prompt and diligent.
Was the failure to file the evidence despite acting promptly and diligently?
Agriculture Victoria submitted that it is accepted practice in oppositions that opponents begin to identify experts at an early stage in the opposition proceedings. Agriculture Victoria also disagrees with CSIRO over the complexity of the claimed subject matter.
On the face of it I consider that the complexity of the subject matter to be a factor in this instance that supports CSIRO's approach and the time they took to identify potential witnesses. While it is reasonable to expect that consideration should be given early in an opposition process to the identification of witnesses, I consider that it was a reasonable in this case to wait until the basis of the opposition was elucidated and the relevant prior art identified before identifying appropriate experts.
CSIRO has demonstrated that it had begun to consider potential witnesses on 12 June 2014. This date is before the commencement of the evidentiary period in question, here, the period for filing evidence in support. I do not consider the approach adopted by CSIRO to wait until the statement of grounds and particulars was well advanced to have contributed to the delay in submission of evidence in support.
Agriculture Victoria submitted that the 18 day period between 12 June 2014 when discussions about a first potential Australian witness took place and actual email contact with the expert on 30 June 2013, is unreasonable and not prompt and diligent action. The applicant also submits that the responsibility for contacting witnesses during the prosecuting attorney’s absence could have been undertaken by another attorney in the same firm.
The course of actions suggested by Agriculture Victoria might have been possible, but I do not consider 18 days to be outside of the range of prompt and diligent.
The applicant has contrasted the actions of CSIRO with the actions taken by Meat & Livestock Australia (MLA) who are engaged in a separate opposition against the present application. Agriculture Victoria submits that MLA had contact details of potential witnesses by 12 May 2014 and MLA’s evidence in support comprising two expert declarations was filed by 19 September 2014. Remembering that "promptly and diligently" is not setting a standard of perfection (Osmose New Zealand v Zelam Limited [2014] APO 49 at [22]), and that it is assessed in the context of the personal circumstances of the party (Mineral Technologies Pty Ltd v Orekinetics Investments Pty Ltd [2014] APO 63), it is more important to consider what CSIRO did, rather than what MLA did. It is clear from the timeline submitted by CSIRO with their request that they have consistently acted to engage a witness since the first email contact with the first potential witness on 30 June 2014. The suitability of five potential Australian witnesses was considered over the following 22 days to 21 July 2014. I do not consider this period of 3 weeks or so to constitute a delay that is outside the range of prompt and diligent. Nor do I find any evidence that it would have been foreseeable that these potential experts would ultimately be unavailable or unsuitable due to possible or real conflicts of interest. As noted by CSIRO in their submission:
“different opponents can have different experiences when preparing their respective cases”
I am satisfied that the failure to file evidence was despite CSIRO acting promptly and diligently.
Were there exceptional circumstances?
Given my conclusion, it is not necessary to consider whether there are any exceptional circumstances.
Conclusion
I am satisfied that an extension of time is appropriate. CSIRO has requested an extension of 3 months to 19 December 2014. I am satisfied that this is an appropriate extension.
Costs
It is normal for costs to follow the event. In this case CSIRO has been successful and I can see no reason to depart from the norm. I will award costs against Agriculture Victoria.
Dr S.D. Barker
Delegate of the Commissioner of PatentsANNEX 1
We, Commonwealth Scientific and Industrial Research Organisation of Limestone Avenue, Campbell, ACT 2612, Australia, apply for an extension of time of three months from 19 September 2014 to 19 December 2014 in respect of Australian Application No. 2007335195 within which to file Evidence-in-Support.
The circumstances in which, and the grounds upon which, this application is made are as follows: -
Since prior to the commencement of the evidentiary period, the Opponent has worked diligently to identify experts and to retain and work with identified experts on the preparation of the Evidence-in-Support. The following table sets out the timeline for preparation of the Evidence-in-Support:
12 June 2014
Teleconference with our attorney to discuss suitability of a potential Australian-based expert witness.
30 June 2014 Email to Australian-based expert to request telephone discussion for assessing suitability and availability for preparation of Evidence-in-Support. 1July 2014 Email from Australian-based expert witness regarding scheduling a teleconference. 2 July 2014 Teleconference between our attorney and the Australianbased expert regarding potential conflicts and availability. 2 July 2014 Email to second potential Australian-based expert witness, requesting an initial discussion to assess suitability and availability for preparation of the Evidence-in-Support. 2 July 2014 Email to third potential Australian-based expert witness, requesting an initial discussion to assess suitability and availability for preparation of the Evidence-in-Support. 7 July 2014
Receiving email from first potential Australian-based expert witness to further discuss potential conflicts of interest.
7 July 2014 Email to first potential Australian-based expert witness regarding potential conflicts of interest and requesting further clarification on availability. 7 July 2014 Teleconference between our attorney and second potential Australian expert witness to discuss suitability and availability for preparation of Evidence-in-Support and sending expert email confirming matters discussed and proposing dates to meet with expert.
9 July 2014 Email to fourth potential Australian-based expert witness, requesting a telephone discussion to assess suitability and availability to assist in preparation of Evidence-in-Support. 10 July 2014 Receiving email from fourth potential Australian-based expert witness suggesting suitable dates for initial discussion. 10 July 2014 Receiving email from first potential Australian-based expert witness, advising his unavailability to meet within requested timeframe. 16 July 2014 Teleconference between our attorney and third potential Australian -based expert witness to discuss suitability and availability and concluding that this expert as unsuitable based on prior knowledge of the opposed patent. 16 July 2014 Teleconference between our attorney and fourth potential Australian-based expert witness to discuss suitability and availability and concluding that this expert was unsuitable based on a potential conflict of interest issue. 16 July 2014 Email to fifth potential Australian-based expert witness, to request initial telephone conference for assessing expert's availability and suitability for preparation of Evidence-in- Support. 17 July 2014 Teleconference between our attorney and fifth potential Australian-based expert witness and concluding unsuitable based on prior knowledge of the opposed patent. 18 July 2014 Teleconference between our attorney and second potential Australian-based expert witness to clarify the ambit of the sought-after evidence and potential conflicts of interest. 21 July 2014 Receiving and considering email from third potential Australian-based expert witness, advising his decision not to proceed. 21 July 2014 Email to five potential overseas-based expert witnesses, requesting initial telephone discussion to discuss their suitability and availability. 22 July 2014 Teleconferences between our attorney and three of these potential experts, in which each advised their unavailability to assist based on potential conflict of interest issues. 22 July 2014 Teleconference between our attorney and first potential US- based expert witness to discuss suitability and availability and sending email confirming intention to engage him for preparation of Evidence-in-Support. 23 July 2014 Teleconference between our attorney and second US-based potential expert witness to discuss suitability and availability and sending email confirming intention to engage him for preparation of Evidence-in-Support. 23 July 2014 Sending first US-based expert witness list of questions for consideration prior to interview.
24 July 2014 Sending second US-based expert witness a list of questions for his consideration prior to interview. 31 July 2014 Teleconference between our attorney and first US-based expert witness regarding response to questions and further discussion of common general knowledge in the art. 31 July 2014 Receiving email from first US-based expert witness with further discuss ion of common general knowledge. 1August 2014 Teleconference between our attorney and second US-based expert witness regarding response to questions and further discussion of common general knowledge in the art. 4-7 August 2014
Preparing draft expert declarations for defining common general knowledge.
12 August 2014 Receiving email from second US-based expert witness with further discussion of common general knowledge. 19 August 2014 Sending email to first US-based expert witness regarding response to questions and requesting clarification of common general knowledge. 21 August 2014 Receiving email from first US-based expert witness with sought-after clarification. 22 August 2014 Email to second US-based expert witness regarding response to questions and requesting clarification of common general knowledge. 25 August 2014
Receiving and considering email from second US-based expert witness providing sought-after clarification.
31 August 2014 Receiving further discussion of common genera l knowledge from first US-based expert witness and considering same. 2 September 2014
Email to first US-based expert witness regarding response to questions and requesting further discussion of common general knowledge.
4 September 2014 Receiving email from first US based-expert witness with further discussion of common general knowledge. 4 September 2014 Sending second US-based expert witness for review a draft expert declaration defining the common general knowledge. 5 September 2014
Receiving email from second US-based expert witness attaching revised expert declaration.
8 September 2014 Email to second US-based expert witness requesting further discussion of common general knowledge. 8 September 2014 Email to first US-based expert witness regarding expert's response received in previous email. 9 September 2014 Receiving email from second US-based expert witness, providing sought-after information and finalising expert declaration. 10 September 2014 Receiving email from first US-based expert witness with further discussion of common general knowledge. As evidenced by the above timeline, the Opponent has acted diligently at all times to meet the 19 September 2014 deadline for filing Evidence-in-Support. However, due to the unforseen difficulty in locating impartial expert witnesses and the complex nature of the subject matter encompassed by the claims of the opposed specification, further time is required to complete the draft expert declaration for the first US-based expert witness and to seek second expert declarations from both the first and second expert witnesses to address questions relating interalia to the inventive step of the subject matter claimed in the opposed specification. The second expert declarations could not have been prepared prior to or simultaneously with the first expert declarations to preserve the integrity of the expert witnesses in impartially defining the common genera l knowledge. It is expected that the Opponent's Evidence-in-Support will be completed within the requested extended period.
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