CSR Building Products Limited v United States Gypsum Company - [2019] APO 15

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

CSR Building Products Limited v United States Gypsum Company [2019] APO 15

Patent Application: 2013335106

Title:Pregelatinized starch with mid-range viscosity, and product, slurry and methods related thereto

Patent Applicant: United States Gypsum Company

Opponent: CSR Building Products Limited

Delegate: D. S. Triffett

Decision Date: 29 March 2019

Hearing Date: Written submissions filed on 21 February 2019 and 28 February 2019

Catchwords: PATENTS – extension of time to file evidence in support – regulation 5.9 – whether opponent has acted promptly and diligently – whether opponent has made all reasonable efforts to meet filing requirements – extension of time granted.

Representation: Patent attorney for the applicant: James & Wells
Patent attorney for the opponent: Griffith Hack

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application: 2013335106

Title:Pregelatinized starch with mid-range viscosity, and product, slurry and methods related thereto

Patent Applicant: United States Gypsum Company

Date of Decision: 29 March 2019

DECISION

The opponent has met the requirements of paragraph 5.9(2)(a) of the Patent Regulations 1991 (Cth) (Patent Regulations). I grant an extension of time for filing evidence in support until 21 December 2018.

For the purposes of subregulation 5.8(2), this decision represents notice that all of the evidence in support has been filed. The time for filing evidence in answer is 3 months from the date of this decision.

I award costs according to Schedule 8 against United States Gypsum Company.

REASONS FOR DECISION

Background

This matter relates to patent application 2013335106 in the name of United States Gypsum Company (US Gypsum), which was advertised as accepted on 8 March 2018. A notice of opposition to the grant of the patent was filed by CSR Building Products Limited (CSR) on 7 June 2018. The Statement of Grounds and Particulars (SOGP) was filed on 7 September 2018. A request to amend the SOGP was filed on 2 January 2019, and was allowed by a delegate of the Commissioner (delegate) on 7 February 2019. Evidence in Support (EIS) was due to be completed by 7 December 2018.

CSR filed an application for an extension of time of one month to file EIS (the application) on 7 December 2018. Following a request by the delegate for further information dated 21 December 2018, CSR provided that information on 10 January 2019. On 25 January 2019, the delegate indicated an intention to grant the extension. US Gypsum requested to be heard on 1 February 2019.

The law

On 15 April 2013 the Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (No 1) (the Amendment Regulation) commenced. The Amendment Regulation significantly amended the Patents Regulations 1991 (Cth) (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 opposition commenced. Where the evidentiary period commenced on or after 15 April 2013, as in the present case, the extension is governed by regulation…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

Continue reading CSR Building Products Limited v United States Gypsum Company

Details

AGLC: CSR Building Products Limited v United States Gypsum Company [2019] APO 15
Case: [2019] APO 15
Decision Date: 29 March 2019

CaseChat Overview and Summary

The matter before the delegate was an application by CSR Building Products Limited (CSR) for an extension of time to file evidence in support of its opposition to a patent application by United States Gypsum Company (US Gypsum). The patent application related to a pregelatinized starch with mid-range viscosity, and product, slurry and methods related thereto. CSR had been granted an extension of time to file its Statement of Grounds and Particulars, and was now seeking an extension of time to file evidence in support of the opposition. The legal issue was whether the delegate was satisfied that CSR had made all reasonable efforts to comply with all relevant filing requirements under the Patent Regulations 1991 (Cth), and that despite acting promptly and diligently at all times, CSR was unable to file the evidence within the required period.

The delegate found that CSR had made all reasonable efforts to comply with the filing requirements, and had acted promptly and diligently at all times. CSR had canvassed the use of an expert early in the proceedings, and when that expert was ruled out due to health concerns, CSR sought to engage a different expert. The delay in contacting the new expert was reasonable, as CSR had to first establish the freedom of the expert to act in the current opposition. The unexpected absence of the new expert late in the evidentiary stage did not reflect on CSR’s promptness or diligence, as CSR was not informed of this absence despite making reasonable enquiries. The delegate found that CSR had met the requirements of paragraph 5.9(2)(a) of the Patent Regulations, and granted an extension of time for filing evidence in support until 21 December 2018. The delegate also awarded costs according to Schedule 8 against US Gypsum.

The delegate’s decision provides useful guidance on the factors to be considered when determining whether an extension of time should be granted in a patent opposition proceeding. The delegate found that the party seeking the extension must show that it has made all reasonable efforts to comply with the filing requirements, and that despite acting promptly and diligently, it was unable to file the evidence within the required period. The delegate also found that the party must provide enough information to enable the delegate to form their own opinion on whether the party has acted reasonably, promptly and diligently. The delegate’s decision confirms that the Commissioner has discretion to consider whether or not it is appropriate that an extension of time be granted, even if the mandatory requirements of paragraph 5.9(2)(a) have been met.

Orders