Cryovac, Inc v Pechiney Plastic Packaging, Inc
[2003] APO 18
•11 April 2003
OFFICIAL NOTICE
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : Nos. 723591, 731606, 734008, 735827, 738356 and 739324 in the name of Cryovac, Inc
Titles: High Modulus Film; Printed Polymeric Film and Process For Making Same; Film From A Vinylidene Chloride Copolymer Containing Blend; Heat Sealable Film; Blister-Type Package; and Easy Open Tear Film.
Action: Requests for extensions of time by Pechiney Plastic Packaging, Inc to serve evidence in support; objections thereto by Cryovac, Inc
Decision: Issued .
Abstract
The consequences of refusing to admit evidence already filed would be severe in relation to determining the opposition on its merits, whereas any adverse consequences in allowing it are less apparent. Extensions of time allowed to 19 February 2003 on applications 723591, 731606, 734008, 735827, 738356 and 739324 to admit the evidence already served.
The further evidence to be served in support is likely to be important and will enable the oppositions to be determined on their merits. There appears to have been some lack of diligence in the preparation of the evidence, but when taken in context the lack of diligence is not as great as it would at first seem. It is appropriate in the somewhat unusual circumstances here to take into account the progress in relation to the whole dispute between the parties, rather than focus solely on what has been done in relation to an individual opposition. On balancing all relevant circumstances the extensions of time requested are appropriate.
Extensions of time to serve evidence in support granted to 28 February 2003 on application 723591; to 4 April 2003 on application 731606; to 28 February 2003 on application 734008; to 21 April 2003 on application 735827; to 13 March 2003 on application 738356; and to 11 April 2003 on application 739324.
No award of costs.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No. 723591, 731606, 734008, 735827, 738356 and 739324 by Cryovac, Inc. Requests for extensions of time by Pechiney Plastic Packaging, Inc to serve evidence in support; objections thereto by Cryovac, Inc
BACKGROUND
Patent application numbers 723591, 731606, 734008, 735827, 738356 and 739324 are among 32 applications by Cryovac, Inc ("Cryovac") that have been opposed by Pechiney Plastic Packaging, Inc ("Pechiney"). There are, apparently, also 3 applications by Pechiney or its sister company ANC that have been opposed by Cryovac. Of the 32 Cryovac applications, I understand from the parties that 14 of the oppositions have been settled by withdrawal of the opposition, 5 are subject to ongoing settlement negotiations, evidence in support has been completed in 5 of the oppositions, 2 are in the early stages of opposition, and the remaining 6 are the subject of the present dispute.
Pechiney have filed applications under regulation 5.10(2) for extensions of time to serve evidence in support in relation to these 6 applications. Cryovac have objected to all of these extensions.
I heard the parties in relation to the extension of time requests on the 6 applications in Canberra on 20 February 2003. Mr Andrew Dark, patent attorney of Davies Collison Cave, Melbourne, represented Cryovac at the hearing. Mr David Tadgell, patent attorney of Phillips Ormonde & Fitzpatrick, Melbourne, represented Pechiney. Both parties appeared by telephone.
On 19 February 2003, the day before the hearing, the opponent served part evidence in support. The part evidence in support comprised copies of documents cited in the statement of grounds and particulars.
EXTENSION REQUESTS
The current extensions of time, if granted, will take the total time since service of the statements of grounds and particulars to 24 months for 723591, 16 months for 731606, 15 months for each of 734008 and 735827, and 12 months for each of 738356 and 739324. As noted by the parties, there was a period of inactivity for at least some of these applications due to settlement negotiations between the parties.
The reasons given for the extensions of time are similar for all 6 applications, though varying degrees of explanation is given. The applicant succinctly summarised the reasons provided in the 6 extension requests as follows:
US Counsel for the opponent is considering its position with respect to settlement of these matters in light of the letter terminating settlement in July 2002. (The applicant noted that 4 of the 6 applications were not subject to those negotiations.)
The time available has been insufficient due to the commitments of the opponent's expert, Professor Solomon, both professionally and in relation to co-pending oppositions.
Further time is required for further input from Solomon and to finalise the evidence.
The opponent has been relying on the one Australian expert, Professor Solomon, to provide input into settlement negotiations between the parties and to provide evidence in relation to all 32 of the oppositions. Therefore delays have been caused by the settlement negotiations, the demands on Professor Solomon's time, and due to the large number of co-pending oppositions.
DISCUSSION
The Federal Court has considered the requirements of regulation 5.10 in Ferocem Pty Limited v. Commissioner of Patents (1994) 28 IPR 243, A Goninan and Co Ltd v Commissioner of Patents and Another (1997) 38 IPR 213, and National Starch & Chemical Company v Commissioner of Patents 50 IPR 398. The principles arising from these decisions have been set out and followed in numerous patent office decisions relating to regulation 5.10. In summary, it is clear from those decisions that in order to determine if an extension of time is appropriate in all the circumstances, I need to give proper, realistic and genuine consideration to all relevant factors. These factors include the reasons for the extension, the interests of each of the parties, and the public interest.
Evidence served on 19 February 2003
The opponent served part of its evidence in support on 19 February 2003, the day before the hearing. The question arises as to whether extension should be granted to validate service of this evidence, notwithstanding any further extensions to complete the evidence.
In Ferocem (supra), Burchett J said at 248:
"Indeed, even where an application for a particular period, such as the two months sought here, is regarded as unjustified, it seems to me a decision maker, having a discretion of the kind conferred by Regulation 5.10, should always consider whether some short period ought to be allowed, so that an applicant who may have assumed some extension would be granted will not be shut out entirely from presenting evidence that may be immediately available."
For reasons I have set out in detail below, I consider that the evidence served on 19 February 2003 is important to the opposition. It is therefore in the public interest to admit this evidence. The refusal to grant an extension to admit this evidence would be fatal to at least to the opponent's grounds of novelty and inventive step and the opponent would effectively be shut out of the opposition on these grounds. As the evidence had been served before the hearing, no further delays would arise as a result of granting extensions up to 19 February 2003. The consequences of refusing to admit this evidence would be severe, whereas any adverse consequences in allowing it are less apparent. In light of the reasoning provided in Ferocem, the circumstances weigh heavily in favour of admitting this evidence.
I allow extensions of time to 19 February 2003 on applications 723591, 731606, 734008, 735827, 738356 and 739324 to admit the evidence served on that date. The question remains whether I should allow extensions of time from 19 February 2003 to the periods requested by the opponent.
Nature and significance of evidence
From the decided cases, it is clear that the nature and significance of the evidence to be served is a relevant factor to be considered. Goldberg J set out some useful guidelines in National Starch in relation to the type of material to consider when assessing the likely significance of the evidence.
The six specifications are directed to a variety of films and packages for use in the packaging of food and retail products. Generally speaking, the six specifications are related to each other more by virtue of the general field of the inventions and by the parties involved, than by the specific details of the claimed inventions.
The statements of grounds and particulars set out manner of manufacture, novelty, inventive step and failure to comply with section 40 as the grounds of opposition in each case. The particulars in each opposition identify between three and seven documents on which the opponent relies. All of the documents are patent documents. I note that different patent documents have been cited against each of the applications and that the citations are prima facie relevant.
The cases being put forward by the opponent in support of their oppositions appear to be reasonably well defined by the statements. The cases do not appear to be overly complex and rely on a limited number of documents. Based on the specification and the statements of grounds and particulars, preparation of the evidence for each case (taken individually) would seem to be a relatively straightforward exercise.
The opponent has said that their expert witness, Professor Solomon, is independent of the parties and is one of the leading authorities in the art in Australia. As such, the opponent believes his evidence is of greater significance than, say, an employee of Pechiney. They argued that it would be very detrimental to their case if they were forced to rely on another expert without Professor Solomon giving evidence.
The opponent's particulars include a brief description of the subject matter of the cited documents. From a cursory look of the claims of the specifications and the brief descriptions provided in the particulars, there is prima facie a serious case in relation to at least novelty and inventive step. The evidence served on 19 February 2003 (i.e. copies of the cited documents) appears to be important to the oppositions.
The particulars also indicate that inventive step has been raised in each case and relies at least in part on the common general knowledge. Evidence from an expert in the field would appear to be particularly relevant to this ground in the present case. The particulars suggest expert evidence is also likely to be helpful in relation to the other grounds. Many of the claims are defined by particular properties and parameters and it appears that the definition of certain terms may also be open to argument.
Based on the patent specifications and the cases presented in the particulars, along with the alleged independence and expertise of the witness, my view is that both the evidence already filed and the further evidence to be filed are likely to be of importance to the opposition proceedings.
Settlement negotiations and co-pending oppositions
Settlement negotiations between the parties in relation to a number of applications occurred between June 2001 and July 2002. These negotiations are ongoing in relation to 5 oppositions. According to the applicant, any settlement negotiations in relation to any of the six applications in dispute here were terminated in mid July 2002. The applicant submitted that there have been no settlement discussions or proposals put in relation to any of the applications under consideration since that termination of settlement in July 2002.
It appears that most of the actual communication between the parties has been carried out by their US representatives. As I understand it, a meeting was held between US representatives of the parties in June 2001 to discuss settlement possibilities. This was followed in July 2001 by a confidential letter from the applicant's US Counsel to the opponent's US Counsel, presumably setting out their position in relation to the settlement negotiations. The opponent responded in November 2001. The applicant then sent a response to that letter in July 2002. That letter apparently identified 5 cases for clear settlement and 2 cases for continuing discussion. In October 2002, the Australian Attorneys for the applicant were asked to prepare a settlement agreement in relation to the 5 oppositions that the applicant had identified for settlement. A draft agreement has apparently been prepared and is being considered by US Counsel for the applicant.
Two of the applications in dispute here, 723591 and 731606, were part of the original settlement negotiations up to July 2002. The applicant terminated further negotiations on these two applications in July 2002. The other four applications, 734008, 735827, 738356 and 739324, were not part of the negotiations.
The applicant argued that settlement had been rejected in relation to 723591 and 731606 some seven months before the hearing. The four remaining applications had never been the subject of settlement negotiations and Pechiney has had a substantial amount of time to consider whether a settlement position could be reached in relation to these applications.
Mr Tadgell, on the other hand, argued that I should look at the overall context rather than treating each opposition individually. While there may have been no progress in relation to some individual cases, there had been considerable progress overall. He pointed out that evidence in support was now outstanding on only 8 cases out of the original 32. Evidence in support had been completed on 2 or 3 applications since the July 2002 letter, shortly before Professor Solomon became unavailable for a period due to professional commitments.
Mr Tadgell also pointed out that some of the oppositions were commenced after settlement negotiations were already in progress. These weren't put to Cryovac as they already had a large number of oppositions to consider for settlement. Mr Tadgell submitted, however, that the opponent's position was to try and settle the matters wherever possible. Until the reply in July 2002, significant preparation of evidence could not progress. Up to that time, the comments received from Professor Solomon were mainly in regard to settlement prospects and the merits of the case.
I have previously considered an extension of time application on one of the other oppositions involving these parties (Cryovac, Inc v Pechiney Plastic Packaging, Inc [2002] APO 18 (22 MAy 2002)). In that decision I said at [17]:
"The applicant argued that it appears that no steps have been taken to prepare evidence in this case pending the settlement negotiations on unrelated co-pending applications. It is of course arguable whether the status of co-pending applications is even a relevant circumstance to a request for an extension of time to serve evidence. In my view, this will be dependent on the facts of each case. I believe that, in the present circumstances, it is necessary to consider the broad picture in which the present application appears to be part of a portfolio of applications. It would appear to be in the interest of all parties to settle matters wherever possible to avoid unnecessary opposition proceedings. The public interests relating to cost, efficiency and expeditious disposal of matters may also be served by the oppositions being settled, particularly the number of oppositions in question here. Further, it will only be when all of the oppositions have been finalised that the public will have a clear idea of the monopoly rights covered by the applicant's patent portfolio. In my view, the settlement negotiations in relation to a range of matters is a relevant factor here, with the important proviso that it does not result in an exceptional protraction in the opposition process. This is, of course, a balancing exercise in which each case needs to be determined on its merits."
I remain of the opinion that the co-pending oppositions are a relevant factor and the progress of the oppositions needs to be viewed in the overall context. However, in the 7 months between the July 2002 and the hearing in February, evidence in support was completed in only two or three oppositions.
Mr Tadgell said that Pechiney's reaction on receiving the July letter wasn't to start scrambling to prepare evidence on the remaining cases. Instead, the opponent reviewed the prospects of settlement in the remaining cases, using the July 2002 correspondence as a guide to assessing the likelihood of settlement in specific technology areas. The opponent also made further assessments of which cases were important and which could be withdrawn. Mr Tadgell submitted that there was considerable activity reviewing the oppositions after receiving the letter.
Summarising the above, up to July 2002 Pechiney was concentrating on settling as many of the oppositions as possible and preparation of evidence was basically on hold for most of the applications. In the month following receipt of the July 2002 letter, there was considerable activity reviewing the oppositions in the light of that letter. Pechiney have subsequently filed evidence in support in 2 or 3 oppositions. (There seemed to be some disagreement whether it was 2 or 3, though it is of no real importance). There has also been a period of two months in which Professor Solomon has been unavailable for professional reasons, which I will discuss below. This all suggests that Pechiney have continued to prosecute their oppositions overall, even though there has been little progress on these 6 applications.
One other point raised by the opponent is worth mentioning here. That is, that Pechiney is continuing to actively review the settlement position, and this review could have a bearing on the potential for settlement of the remaining matters. While that may be the case, I believe it is incumbent upon the opponent to continue preparing evidence unless Pechiney receive some positive indication from Cryovac that the applications are being considered for settlement. Cryovac has now let Pechiney know which applications it is considering for settlement. I agree with the applicant that mere speculation of possible settlement is not sufficient reasoning for the grant of an extension. My views on this point are supported by the decisions in Race Lotto Pty Limited v AWA Limited [1998] APO 72 (24 December 1998) and Eli Lilly and Company v Amgen Inc [2000] APO 16 (24 February 2000).
Professor Solomon's role
I understand from the opponent that Professor Solomon is an academic at the University of Melbourne. As noted above, he is advising the opponent and providing evidence in relation to a large number of matters. In addition to the large number of oppositions he has been involved in and his regular academic activities, some of the extension requests indicate that Professor Solomon had "put aside a large part of time from mid December through to late January to work on other professional matters". Mr Tadgell elaborated at the hearing the Professor Solomon was involved for approximately two months writing a book in his professional field.
In my earlier decision on a related case ([2002] APO 18 (22 May 2002)), I said at [15]
"Mr Tadgell said that because of the commercial dominance of the applicant, it was difficult to find local experts that had not had some involvement with the applicant. Mr Tadgell said that the opponent favoured using an independent expert, as the use of in-house experts was often viewed as detrimental to the authoritativeness of the witness. Mr Tadgell also referred to Professor Solomon's expertise in the area and said his familiarity with the technology to a certain extent offset the time constraints placed on Professor Solomon by dealing with a large number of matters. I can well understand the opponent's reasons for its choice of expert. However, it is incumbent on the opponent to devote sufficient resources to meet the regulatory time limits for serving evidence."
I continued at [16]:
"It is tempting to come to the conclusion that because Professor Solomon is involved in so many oppositions, little progress is being made on any of them as he has limited time to devote to each opposition. …"
In fact, the applicant's objection to the extensions appeared to be based on the fact that the reasons given for the extensions indicate that little or nothing had been done on any of the 6 applications. Mr Tadgell appeared to confirm at the hearing that the initial comments provided by Professor Solomon in relation to the 6 oppositions were directed largely to settlement prospects, and that he had not had the opportunity to give detailed comments. The applicant maintained that the applications for extension did not clearly indicate what steps had been taken to prepare evidence.
I note Burchett J.'s comments in Ferocem:
"Before the Tribunal, "the present issue" was wider than a mere explanation of the delay which had occurred, and indeed, as Comcare v A'Hearn shows, there may be situations where an extension is found to be "appropriate in all the circumstances", although no satisfactory explanation of the delay has been given."
As I have already discussed. The progress of these 6 oppositions needs to be viewed in the overall context. However, there remains an expectation that the opponent will prepare its evidence in a timely manner and allocate sufficient resources to ensure this is done. Further, although there is no mandatory requirement for an explanation of the delay, there is a general expectation that a sufficient explanation will be provided when a party applies for an extension.
The applicant argued that Pechiney should be held responsible for their lack of judgement in engaging a single expert witness. Mr Dark pointed out that the first extension of time filed in respect of application 738356 and dated 12 June 2002 stated:
"It is likely that Professor David Solomon will be engaged as a local expert, but as yet he has not had the opportunity to review the relevant documents in detail. If it so happens that Professor Solomon will not have the time to assist, some thought will be given to approaching a second expert witness".
Mr Dark submitted that the opponent thought that the applicant's interests weren't great enough to warrant engaging someone else. I note here that there is also a public interest in the expeditious disposal of matters in the Patent Office (Ferocem).
It is clear that the opponent's reliance on Professor Solomon in a large number of oppositions has lead to significant delays. As I have noted above, and based on the patent specifications and the opponent's particulars, preparation of the evidence for each case would seem to be a relatively straightforward exercise. Even taking into account the opponent's review following receipt of the July 2003 letter and the unavailability of the expert witness for a period, the opponent does not appear to have been as diligent as would be hoped in completing its evidence. Supporting evidence has been completed in only two (or perhaps three) oppositions in that time. If the opponent maintains that time frame, it may be 12 months or more before evidence in support is completed in the remaining cases. This would be clearly unacceptable.
Mr Tadgell submitted at the hearing that since July the opponent has given priority to that evidence required more urgently. He also said that Professor Solomon devotes significant time to preparing evidence. Mr Tadgell stated that there should not be any further significant delays. The opponent also recognised that settlement of these cases now seems to be less of a prospect and the opponent seemed aware that there was a sense of urgency required to complete evidence.
I note here that at the hearing the attorney for the opponent proposed a timetable for completing the service of evidence in support that would have seen the evidence completed on all 6 oppositions within around 3 months. The attorney for the applicant did not appear to be in a position to agree to the proposal at the hearing and maintained the applicant's position that the extensions should be refused outright. In my view the timetable proposed by the opponent appeared to be very reasonable and would result in evidence in support on the 6 oppositions being concluded in a relatively short timeframe. Having said that, I acknowledge the timeframe was relatively optimistic and note though that the opponent may have had some difficulty keeping to that timetable in the period since the hearing.
Interests of the parties
The applicant's interests are clearly in having the extensions allowed so that they may complete service of their evidence in support. If I refuse the extensions of time altogether, the result would be that the opponent has no evidence in support to rely on. This would be fatal to the opponent's case, at least in regards to novelty and inventive step. If I allowed the extensions up to 19 February 2003 but refused any further extension, this would admit the part evidence in support that has already been served. This would enable the opponent to argue its cases on novelty, manner of manufacture and section 40 in each of the oppositions, but without any benefit of expert assistance. The opponent's case on inventive step would be severely curtailed, if not fatally. Refusal of the extensions would have serious consequences in terms of the grounds of opposition the opponent could rely on.
The applicant submitted that the substantial timeframe that Pechiney has had to determine their position on settlement and their continual applications for extension of time on this basis is indicative of a lack of seriousness in these oppositions. I note though that 24 of the 32 oppositions have been dealt with either by withdrawal, further negotiations, or completion of evidence in support. Progress has been made on a substantial number of the 32 oppositions, even if little or no progress has been made in relation to the 6 applications at issue here. Although progress may have been much slower than the either the Commissioner or the applicant would have preferred, I am not satisfied this indicates a lack of seriousness in the oppositions, given the overall circumstances.
The applicant submitted that their interests were being unduly prejudiced by the actions of Pechiney in engaging Solomon even though other options were available. The applicant submitted that their interests outweigh those of Pechiney because of the latter's demonstrated lack of interest in seriously prosecuting these oppositions. The applicant referred me to Eleven Lighting Pty Limited v Interium Pty Ltd [2002] APO 25 (27 June 2002). In Eleven Lighting, the delegate allowed only a partial extension to serve evidence in answer in light of the applicant's demonstrated lack of diligence and interest in seriously defending its application. There is no doubt that the applicant's interests are a relevant factor for me to consider. However, the delegate in Eleven Lighting was faced with a completely different set of facts to those before me and the decision is of little assistance to the present set of circumstances.
On one hand, I can understand the applicant's frustrations at the delays in progressing the oppositions. A large part of Cryovac's patent portfolio has been opposed by Pechiney and the current extensions would take the time for serving evidence in response to between 12 and 24 months since the statements of grounds and particulars were filed. As Sackville J noted in Goninan, "delays in opposition proceedings may unfairly disadvantage the applicant for a patent".
On the other hand, however, I note that the applicant's own actions have not demonstrated any real urgency in bringing the oppositions to conclusion. The applicant took around 8 months to respond to the November 2001 settlement letter from the opponent's US Counsel. In relation to the 5 oppositions in which settlement negotiations are continuing, the opponent stated at the hearing that it is awaiting a response from the applicant to a draft agreement prepared in October 2002. The applicant has not indicated any real or practical difficulties it is facing as a result of the delays. Nor has it indicated that the 6 applications in dispute here are of any greater priority or importance than any other of the 32 applications.
It appears to me that the applicant's objections to the extensions may be at least as likely for strategic reasons in relation to the oppositions as for any unfair disadvantages it may suffer due to the delay in finalising the oppositions. In either case, while I agree with the applicant that their interests are an increasingly relevant factor given the length of delay, I am not satisfied that they outweigh all other considerations at this stage. I note that Mr Tadgell indicated that some further extensions may be required in relation to some of the cases and this will further adversely affect the applicant's interests. However, I am left unclear as to the extent of these adverse affects.
DECISION
I have allowed extensions of time to 19 February 2003 to admit the evidence that has already been served.
I have found that the further evidence to be served in support is likely to be important and will enable the oppositions to be determined on their merits. I have also found that while there appears to have been some lack of diligence in the preparation of the evidence, when taken in context the lack of diligence is not as great as it would at first seem. It is appropriate in the somewhat unusual circumstances here to take into account the progress in relation to the whole dispute between the parties, rather than focus solely on what has been done in relation to an individual opposition. While the delays have a negative affect on the applicant's interests and on the public interests relating to the expeditious disposal of matters, on balancing all relevant circumstances I believe that the extensions are appropriate.
Therefore I grant extensions of time to serve evidence in support to 28 February 2003 on application 723591; to 4 April 2003 on application 731606; to 28 February 2003 on application 734008; to 21 April 2003 on application 735827; to 13 March 2003 on application 738356; and to 11 April 2003 on application 739324.
I note that further extension requests have been or will likely be filed on most if not all of the applications. I would expect the opponent to set out detailed information regarding what steps have been taken in respect to specific applications in their reasons for any subsequent extensions. Mr Tadgell indicated that Professor Solomon finds it most efficient to prepare evidence on one opposition at a time, so there may be little work done (by Professor Solomon) on one opposition while a more urgent opposition is being finalised. While this may be so, the reasons for any extension should set out exactly what is being done and, as far as possible, the likely timetable for completing each step. This expectation applies not only for the 6 oppositions in dispute here, but to any other of the opponent's opposition in which evidence is outstanding.
I would also expect that, whatever steps have been taken in the past, Pechiney would take all necessary steps to enable the expeditious completion of evidence. This includes emphasising to their expert witness the importance of bringing the evidence to conclusion and providing whatever support is necessary for him to do so. Mr Tadgell submitted at the hearing that Professor Solomon takes a thorough approach to preparing his evidence. While this may be so, the delays to date mean that it is more important now for the opponent to ensure that its evidence is completed expeditiously. Given the history of these oppositions, if Professor Solomon cannot devote sufficient time to preparing evidence, in light of his other commitments, the opponent should either obtain evidence from somebody else, or if this is not possible within a short time, advise that their evidence is complete. Mr Tadgell also indicated that it may be possible for the opponent to engage another attorney from his firm to assist in preparation of the evidence. I suggest that the opponent should seriously consider this option.
COSTS
The Commissioner's power to award cost under section 210 is a discretionary power. The normal practice of the Commissioner is for costs to follow the event. However this practice is varied from time to time, depending on the circumstances.
The issue of costs in the current circumstances is somewhat complicated. The decision relates to extension of time applications on 6 oppositions, which are part of an even larger group of 32 oppositions. The opponent has been successful in that I have allowed the extensions. However, the opponents reasons are somewhat deficient in that they continually refer to work being done on co-pending oppositions, but it is not clear from the reasons themselves exactly what is being done on any of the oppositions. The reasons are not as detailed as they could be.
In some situations where the Commissioner has found an extension to be allowable but the reasons on the application provided insufficient justification by themselves, costs have been awarded against the applicant for the extension. For example see Cryovac, Inc v Pechiney Packaging, Inc [2001] APO 56 (16 October 2001).
Although the applicant had put the opponent on notice that it would object to any further requests for extensions, in my view the applicant has taken a narrower view than appropriate by looking at the 6 oppositions in isolation to the broader context of the overall dispute between the parties. Further, as set out above, I am left unclear on the extent of any adverse consequences to the applicant's interests. These factors appear to weigh against awarding costs to the applicant in a situation where I have allowed the opponent's extension.
In all the circumstances, I consider it appropriate to make no award of costs.
Brendan Bourke
Delegate of the Commissioner of Patents
Patent attorneys for the applicant : Davies Collison Cave, Melbourne
Patent attorneys for the opponent : Phillips Ormonde & Fitzpatrick, Melbourne
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