Dura-Post (Aust) Pty Ltd v Delnorth Pty Ltd
[2008] APO 10
•11 April 2008
ABSTRACTS OF DECISIONS
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No.2004249786 in the name of DELNORTH PTY LTD
Title: ROADSIDE POST
Action: Opposition under Section 59 by DURA-POST (AUST) PTY LTD, and objection to an application under Regulation 5.10(2) for an extension of time in which to serve evidence in reply
Decision: Issued 11 April 2008.
Abstract
Dura-Post has requested the extension on the grounds that material is being prepared as part of the co-pending infringement/revocation action before the Federal Court which is directly relevant to matters raised in the Evidence-in-Answer served and filed by the applicant. Some of the declarants for this evidence are located overseas.
It was found that Dura-Post has provided a reasonable explanation for the delay in filing the Evidence-in-Reply. It was also found that the considerations behind the private interests of the parties and the public interest support the extension.
An extension until 5 April 2008 in which to serve Evidence-in-Reply is granted.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No. 2004249786 by DELNORTH PTY LTD, and objection to an application under Regulation 5.10(2) by DURA-POST (AUST) PTY LTD for an extension of time in which to serve evidence in reply
BACKGROUND
Patent application 2004249786 was filed on 10 June 2004 by Delnorth Pty Ltd (hereafter referred to as Delnorth) and was advertised accepted on 5 January 2006.
Dura-Post (Aust) Pty Ltd (hereafter referred to as Dura-Post) filed a notice of opposition to the grant of a patent on 30 March 2006 and completed its Evidence-in-Support on 24 April 2007. Delnorth completed its Evidence-in-Answer on 5 November 2007. Dura-Post served it intention to file Evidence-in-Reply on 5 December 2007 and this therefore gave them until 5 February 2008 to serve their Evidence-in-Reply. On 5 February 2008 Dura-Post filed an application under Regulation 5.10(2) for an extension of time until 5 April 2008 in which to serve Evidence-in-Reply and this was objected to by Delnorth.
The matter was heard in Canberra on 18 March 2008. The party requesting the extension of time, namely Dura-Post, opted not to appear, and instead relied on written submissions by Anthony Lee, patent attorney of the firm Madderns. Delnorth was represented at the Hearing by Greg Gurr, patent attorney of the firm Spruson & Ferguson who appeared by telephone. Mr Gurr also provided written submissions. Both sets of written submissions were of considerable assistance in determining this matter.
REASONS FOR THE EXTENSION OF TIME
The circumstances and grounds for requiring the extension of time are as follows:
“Material is being prepared as part of the co-pending infringement/revocation action before the Federal Court in New South Wales which is directly relevant to matters raised in the Evidence-in-Answer served and filed by the applicant. Some of the declarants for this additional evidence are located in the United States and this has led to delays in finalising the Declarations/Affidavits due to the complicated logistics of handling documents between parties located in different states in Australia and overseas. Further time is required to have the Declarations/Affidavits finalised, executed and returned.”
THE LAW
Extensions to the time limits to file evidence in oppositions is at the discretion of the Commissioner, and is governed by subregulation 5.10(2). The Federal Court has considered the requirements of regulation 5.10 in Ferocem Pty Limited v Commissioner of Patents [1994] FCA 981; (1994) 28 IPR 243, A Goninan and Co Ltd v Commissioner of Patents and Another [1997] FCA 424; (1997) 38 IPR 213, and National Starch & Chemical Company v Commissioner of Patents (2001) 50 IPR 398. The relevant considerations arising from these decisions have been set out and followed in numerous patent office decisions relating to regulation 5.10, and may be summarised as follows:
a) The broad discretion afforded by regulation 5.10 cannot be reduced to insistence on imperative compliance with particular requirements;
(b) The exercise of this discretionary power requires proper, genuine and realistic consideration of all the relevant aspects that pertain to the application;
(c) The provision of a satisfactory explanation of the delay is a relevant consideration, but is not mandatory;
(d) The public interest in determining a serious opposition on its merits is a relevant consideration and must be balanced with the requirement that matters before the patent office should be dealt with in an efficient, orderly manner and not be unduly prolonged;
(e) The interests of the opponent, the applicant and any other parties are a relevant consideration.
In summary, it is clear from these decisions that the Commissioner, having given both parties the opportunity to make representations, may grant an extension only if reasonably satisfied that it is appropriate in all of the circumstances.
DECISION
Explanation of the delay
Dura-Post has submitted that the two month extension they have sought is based primarily on the consideration of the period that they thought would be required, at the time of filing the extension request, to finalise a number of affidavits that were being prepared in relation to a related Federal Court proceedings and which would form part of the Evidence-in-Reply. As these affidavits are to be prepared by persons located in the United States the two month extension was reasonable given the anticipated complexities of dealing with overseas declarants and the effect this would have on the preparation of the Evidence-in-Reply in total.
They further submitted that service of Evidence-in-Reply has been partly completed and they undertake that barring any circumstances beyond their control the remainder of the Evidence-in-Reply will be completed by 5 April 2008. Till the date of the Hearing, the Commissioner had not received any part Evidence-in-Reply; however the applicant confirmed that they had been served with this part Evidence-in-Reply on 17 March 2008.
According to Delnorth, Dura-Post completed formal service of sworn evidence in the Federal Court proceedings on 22 February 2008 and this includes sworn affidavits from John Howard Willbery, Danny Lee Lane and William Ayers Ward. They further confirmed at the Hearing that the part Evidence-in-Reply that was served includes these three affidavits. However they argued that Dura-Post has not provided a satisfactory explanation for the delay in filing this part Evidence-in-Reply nor provided an indication of what additional material is to be served. Delnorth also advised that the Hearing in the Federal Court proceedings commenced on 10 March 2008 and that they were concerned Dura-Post was using the present extension of time application to delay service of evidence until after the Federal Court Hearing, so that they could prepare fresh evidence based on the conduct of the Federal Court Hearing or to prepare further evidence that should rightly have been served as Evidence-in-Support.
While the application for the extension states that further time is required to have the Declarations/Affidavits finalised, executed and returned I note that the affidavits for the Federal Court proceedings were not served till 22 February 2008 and all three affidavits were sworn only after the application for the extension was filed on 5 February 2008. I also note from the part Evidence-in-Reply served by Dura-Post which was received by the Commissioner after the Hearing that two of these declarations were sworn in the United States. I therefore accept that it would not have been unreasonable for Dura-Post to have requested a two month extension given that two of the declarants were overseas. Whilst it has turned out that all these three affidavits were sworn and served in the Federal Court on 22 February 2008, it does not necessarily follow that the part Evidence-in-Reply for the current opposition should have been served at the same time or very soon thereafter. I think the opponent is entitled to study these additional affidavits and then formulate their Evidence-in-Reply. In fact the part Evidence-in-Reply includes in additions to these three affidavits, a declaration by Lawrence Bede Dowling dated 28 February 2008. It is therefore my view that there has been no undue delay by the opponent in filing the part Evidence-in-Reply.
As Dura-Post did not appear at the Hearing I could not find out from them what additional evidence they intend to file to complete their Evidence-in-Reply or what progress has been made to date. However I note that they have undertaken that barring any circumstances beyond their control the remainder of the Evidence-in-Reply will be completed by 5 April 2008. I am therefore satisfied that Dura-Post has given a satisfactory explanation for the delay.
The interests of the parties
I accept that the applicant could be disadvantaged by a further protraction of proceedings if I grant the extension presently sought by Dura-Post. The delay is preventing them from commencing equivalent infringement proceedings against the opponent and another competitor in relation to the opposed patent application.
In contrast, the opponent’s interests would be best served by granting an extension of time to enable them to finalise their evidence in reply. Dura-Post has already served part Evidence-in-Reply and has given an undertaking to complete the evidence within the current extension sought. It is therefore my view that the balance in relation to the interests of the parties is currently in favour of the opponent Dura-Post.
The public interest
The public interest calls for a balance between the requirements that oppositions be dealt with expeditiously and economically, and that a serious opposition be dealt with on its merits (Ferocem (supra) and Goninan (supra)).
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. I am advised by Dura-Post that the evidence already served in Evidence-in-Support and Evidence-in-Answer substantially accords with the evidence served with respect to the Federal Court proceedings. As the material sought to be served as Evidence-in-Reply is also stated to include the evidence being prepared for the Federal Court proceedings, I am satisfied that this evidence is likely to be relevant to the proper determination of these opposition proceedings. Therefore at this stage of the proceedings I am of the view that there is clearly greater public interest in having the opposition determined on its merits.
CONCLUSION
I have found that Dura-Post has provided a reasonable explanation for the delay in filing the Evidence-in-Reply. I have also found that the considerations behind the private interests of the parties and the public interest support the extension.
I am therefore satisfied that an extension of time is appropriate in all the circumstances. Therefore I grant Dura-Post an extension until 5 April 2008 in which to serve its Evidence-in-Reply. While not relevant to the decision I note that service of Evidence-in-Reply has been completed on 2 April 2008.
COSTS
In the present case, the explanation supplied was found to justify an extension. In such circumstances costs follow the event. I see no reason to depart from the usual practice of the Commissioner in these matters. I therefore award costs against the applicant Delnorth according to Schedule 8 of the Patents Regulations.
R Subbarayan
Delegate of the Commissioner of Patents
11 April 2008Patent attorneys for the applicant : Spruson & Ferguson
Patent attorneys for the opponent : Madderns
0
2
0