CQMS Pty Ltd v Metalogenia S.A
[2012] APO 72
•11 July 2012
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
CQMS Pty Ltd v Metalogenia S.A [2012] APO 72
Patent Application: 2004318061
Title:Device for removably fixing two mechanical parts to one another
Patent Applicant: Metalogenia S.A.
Opponent: CQMS Pty Ltd
Delegate: Nicole Howard
Decision Date: 11 July 2012
Submissions Received: 24 April 2012 and 1 May 2012
Catchwords: PATENTS – Reg 5.10 extension – evidence in support – evidence highly significant - extension granted – explanation of delay inadequate – no award of costs
Representation: Patent applicant: Lachlan Mullane, Patent Attorney of Hodgkinson McInnes Patents
Opponent:Adam Luxton, Patent Attorney of Fisher Adams Kelly
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2004318061
Title:Device for removably fixing two mechanical parts to one another
Patent Applicant: Metalogenia S.A.
Date of Decision: 11 July 2012
DECISION
Extension of time to serve evidence in support granted until 13 April 2012. No award of costs were made.
REASONS FOR DECISION
BACKGROUND
1.Patent application 2004318061 in the name of Metalogenia S.A. (hereafter Metalogenia) was filed on 30 March 2004. The application was advertised accepted on 8 July 2010. CQMS Pty Ltd (hereafter referred to as CQMS) filed a notice of opposition under Section 59 of the Patents Act 1990 on 24 September 2010 and a Statement of Grounds and Particulars (hereafter SGP) on 21 December 2010. An amended Statement was filed on 21 March 2011.
2.The application relates to a removable device for attaching two mechanical parts, comprising a pin removably locking a first part with respect to a second part, a retainer member associated to the pin and a resiliently loaded tension member which collaborate to prevent the pin from coming out of its lock position.
3.Four extensions of time to file evidence in support (EIS) under Regulation 5.10(2) of the Patents Regulations 1991 have been allowed to date. On 21 March 2012 a request for a fifth extension for a period of one month (to 21 April 2012) was filed. CQMS objected to this request on 4 April 2012.
4.On 21 March 2011 and 21 December 2011 part EIS was served. On 13 April 2012 EIS was completed.
5.Submissions were received from both Metalogenia and CQMS on 24 April 2012. Responding submissions were received from CQMS on 1 May 2012. No responding submissions were received from Metalogenia.
The application for extension of time
The previous extensions
- The original delays in service of evidence in support arose chiefly as a result of difficulties in locating a suitable expert witness and obtaining their evidence. Other reasons for the delays are stated to have included the widely reported flood events in Brisbane and office Christmas shut-downs.
The present extension
- At the time of application for the extension, only part EIS had been served. CQMS requested one additional month to complete their EIS. Indeed the EIS was completed on 13 April 2012, well within this timeframe. They submitted the extra time was required because of
· The extent of evidence being prepared
· The significant work commitments of the expert
· The intervening Christmas festive season and unavailability of relevant people during this period
- The following evidence has now been adduced:
· Statutory Declaration by Mr Adam Luxton dated 21 March 2011 together with Exhibits AL-1 to AL-12
· Statutory Declaration by Dr John De Wit dated 21 November 2011 together with Annexure JDW-1
· Statutory Declaration by Dr John De Wit dated 12 April 2012 together with Exhibits JDW-00 to JDW-12
The law on extensions of time
9.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.
11.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)
Explanation of the delay
12.CQMS submits there have been several factors in the present delay. The reason for the original delay, and the reason for the first extension related to difficulties in locating and engaging one or more suitable independent expert witnesses. After the first extension their chief witness, Dr De Wit was engaged.
13.CQMS argue that the time taken to complete Dr De Wit’s second declaration has been delayed because of his work commitments, the number of documents to be addressed and the intervening Christmas festive season.
14.In their submissions on the present extension CQMS provide
‘During the period between the end of December and 21 March Dr De Wit made significant progress on preparation of this evidence. However, as set out in the reasons provided by the Opponent in its application filed 21 February 2012, Dr De Wit had significant work commitments during this period.
In particular, Dr De Wit was engaged by the Opponent as a consultant engineer.’
15.In their submissions on the first extension CQMS correctly remind the reader that
‘the role of an expert is to assist the Commissioner, not the party engaging that expert. With that in mind, whilst personnel having the requisite skill sets and experience are employed by the Opponent, the Opponent formed the view that evidence from employees would not be sufficient in these proceedings.’
16.Also, Metalogenia draws my attention to two patent applications in the name of CQMS Pty Ltd which provide John Robert De Wit as an inventor. 2003264586 was filed on 28 November 2003 and 2011100605 was filed on 24 May 2011 with an associated provisional being filed 24 May 2010.
17.I find this interesting. On the one hand CQMS have stressed the importance of using an independent expert and claim to have experienced delays because of the difficulty in ‘identifying’ Dr De Wit. On the other hand it is apparent that CQMS have had some kind of relationship with Dr De Wit since at least 2003 and attest that he has been unable to complete his declaration due to significant work commitments (after apparently being employed by the Opponent!).
18.This leaves me unsure as to the veracity of the explanations for the delay. At the very least I do not believe it reasonable to conclude that Dr De Wit’s work commitments were entirely outside of the control of the Opponent and therefore do not think this constitutes a reasonable explanation for the delay.
19.CQMS also submit the extent of the evidence being prepared is significant and has contributed to the delay. I note that there are 12 citations and 6 matters asserted to be common general knowledge in the opposition. I do not consider this amount of evidence to be out of the ordinary and in the absence of a fuller explanation I do not believe it reasonable to conclude that this has contributed to the present delay.
20.The remaining explanation CQMS have provided has been ‘knock-on’ type delays from the Christmas period which is now well in the past and I do not consider to be a reasonable justification for the delay as it is common and expected practice for professionals to plan their work around known holidays.
21.Metalogenia’s objection centres around CQMS’ alleged ‘dilatory conduct’ and failure to adequately explain the delay. I have found that a reasonable explanation for the delay has not been provided however 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
22.Without the extension CQMS will not have served any expert evidence going to novelty or construction. As a consequence, if no extension is granted then CQMS could be severely compromised when arguing these matters. CQMS interests clearly favour the extension being granted. Metalogenia have an interest in the opposition being determined quickly. The previous extensions have totalled 12 months. While this is not an insignificant period of time, I do not believe the allowance of one further month will make a significant difference to the interests of Metalogenia.
The public interest
23.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). Two statutory declarations from the expert witness have now been completed. The evidence that is the subject of this extension relates to novelty and construction matters. This evidence is particularly significant in that without it, there would be no or little expert evidence pertaining to these grounds. Metalogenia submit that the absence of such evidence would not be prejudicial to the public interest because the statutory declaration ‘merely addresses issues that would be available to the Hearing Officer in any case from their own review of the previously submitted prior art material’. I do not agree. While it is permissible for a Hearing Officer to rely on their own technical background if required, in my view this does not abrogate the need for expert opinion. Specifications are addressed to the notional skilled artisan and the public interest is best served when the Commissioner is assisted by evidence provided by appropriately qualified people.
24.I am satisfied that the nature and significance of the evidence favours the grant of an extension of time.
The balance of considerations
25.The public interest and the interests of CQMS favour granting the extension because the evidence now adduced appears to be highly relevant to the opposition. Metalogenia’s interests lie in refusal of the extension. Although CQMS have not provided a reasonable explanation for the delay, because EIS has been completed I believe the public interest weighs heavily in favour of granting the extension.
26.I grant the extension of time for serving evidence in support until 13 April 2012.
Costs
27.Costs normally follow the event. However, while there was an attempt to explain, on this occasion I have found the explanation for the delay to be inadequate. Had the explanation provided more detail the present objection may have been avoided. I make no award of costs.
Nicole Howard
Delegate of the Commissioner of Patents
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