Electro Magnetic GeoServices as v OHM Limited
[2007] APO 30
•14 September 2007
ABSTRACTS OF DECISIONS
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No. 2001230392 in the name of Electro Magnetic GeoServices AS
Title: Method and Apparatus for Determining the Nature of Subterranean Reservoirs
Action: Request for an extension of time to serve evidence in answer to an opposition by OHM Limited
Decision: Issued 14 September 2007
Abstract
Extension of time allowed.
Delays leading to this and the previous extension have resulted from a combination of the unavailability of EMGS management, illness of a declarant, volume of evidence in support to be answered and relatively late amendments to the statement of grounds and particulars by OHM.
Evidence in answer has now been partly served and appears to be highly relevant to the outcome of the substantive opposition, being related to novelty and inventive step considerations. The relevance of the remaining evidence is unclear but is expected to be completed within the current extension.
EMGS have provided a reasonable explanation for the delay.
Costs awarded against the opponent OHM according to Schedule 8 of the Patents Regulations 1991.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re: Patent Application No. 2001230392 by Electro Magnetic GeoServices AS and an extension of time to serve evidence in answer to an opposition by OHM Limited
BACKGROUND
1. Patent application 2001230392 in the name of Electro Magnetic GeoServices AS (hereafter referred to as EMGS) was filed on 1 February 2001. Following examination the application was advertised accepted on 6 April 2006. OHM Limited (hereafter referred to as OHM) filed a notice of opposition under Section 59 of the Patents Act 1990 on 5 July 2006 and a statement of grounds and particulars on 4 October 2006.
2. Following a one month extension of time under s223 a second notice of opposition was filed by ExxonMobil Upstream Research Company (hereafter referred to as Exxon) on 2 August 2006. A statement of grounds and particulars was filed on 2 November 2006 prior to Exxon’s withdrawal from the opposition on 1 February 2007.
3. On 4 January 2007, OHM’s service of evidence in support was completed and a request to amend the statement of grounds and particulars was filed. Evidence in answer was therefore originally due to be served by 4 April 2007. A first extension of time was allowed without objection until 4 July 2007.
4. OHM filed further amendments to the statement of grounds and particulars on 5 June 2007. Following consideration of submissions provided by both parties the amendments were eventually allowed on 17 July 2007.
5. EMGS requested a second extension of time to serve evidence in answer until 4 October 2007. OHM has objected to this request. On 14 August 2007 part evidence in answer was received.
6. The matter was heard by telephone on 15 August 2007. Rebekah Gay, patent attorney of Shelston IP appeared for OHM. Also present for OHM were Matthew Ward and Peter Treloar of Shelston IP and Miles Haines, patent attorney for OHM in the United Kingdom. EMGS chose not to appear but filed written submissions through their patent attorney, Alun Thomas of Madderns.
The application for extension of time
7. EMGS have requested a three month extension of time for serving evidence in answer from 4 July 2007 to 4 October 2007. The reasons for the extension are provided in the declaration of Mr Alun Thomas dated 4 July 2007 and broadly relate to delays in finalising evidence caused by late amendments to the statement of grounds and particulars and the unexpected illness of one of the declarants.
8. The week of the hearing a further declaration by Erland Bakken, General Counsel of EMGS dated 10 August 2007 was provided detailing additional reasons for delays relating to EMGS senior management (including the inventors) being heavily involved in litigation with a competitor and preparation of a public float. In the accompanying submission Alun Thomas also indicates that EMGS is seeking to identify and select an Australian expert witness and is additionally considering evidence from a further foreign witness. The day before the hearing, unsigned copies of statutory declarations by Bjorn Ursin and inventor Svein Ellingsrud were filed as part evidence in answer (both without exhibits).
9. Since the hearing, on 24 August 2007 signed copies of both statutory declarations have been served. Detailed facts pertaining to the extension are as follows.
The first extension
10. EMGS originally delayed service of evidence in answer because they were waiting for the second opponent, Exxon, to complete service of evidence in support, due on 2 February 2007, almost a month later than OHM’s evidence was due. This strategy was adopted to enable all of the particulars, grounds and evidence filed in the two oppositions to be considered together. (As mentioned above, Exxon withdrew their opposition on 1 February 2007.)
11. In addition, the schedules of the relevant technical people had not allowed them sufficient time to discuss, prepare and finalise the evidence in answer.
The present extension
12. In March 2007 EMGS was publicly floated onto the Norwegian Stock Exchange. In the months preceding, the senior management of EMGS, including the inventors, Terje Eidesmo (president) and Svein Ellingsrud (vice president) were heavily involved in preparing for the float and therefore largely unavailable. Shortly after this EMGS became involved in patent litigation in the United Kingdom and Holland.
13. Around the end of April 2007 Bjorn Ursin was selected as an expert witness and after a detailed review of the documents identified in the statement of grounds and particulars prepared preliminary comments.
14. At the beginning of June 2007 EMGS had received two draft statements for the preparation of evidence, when OHM’s second set of amendments to the statement of grounds and particulars raised a number of points that required clarification before the evidence could be finalised. The amendments incorporated several documents cited in the statement of grounds and particulars of the withdrawn Exxon opposition into the present statement of grounds and particulars. It would appear that one of the draft statements was by Bjorn Ursin. I will assume that the second draft statement was prepared by Svein Ellingsrud and not the further foreign expert referred to below.
15. Consequently Bjorn Ursin was rebriefed on the preparation of his evidence.
16. By June 2007, preparation of evidence in answer from inventor Svein Ellingsrud was well underway but finalisation was again delayed due to a six week illness.
17. Unsigned copies of both Svein Ellingsrud’s and Bjorn Ursin’s declarations were then received on 14 August 2007, the day before the hearing, filed as part evidence in answer, and subsequent to the hearing served on the opponent, signed and with exhibits on 24 August 2007.
18. EMGS has also been trying to select and engage an Australian expert, but to date has been unsuccessful. Their submissions received shortly before the hearing also make a brief reference to “a further expert witness”. No further information on this witness has been provided. I was unable to ascertain any detail on who the witness is or what evidence is to be adduced because EMGS did not appear at the hearing.
19. The applicant has indicated that remaining evidence in answer will be completed within the current extension if allowed.
DECISION
20. The present extension would bring the total extension of time to serve evidence in answer to 6 months.
The law on extensions of time
21. 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).
22. 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.
23. Consequently, it is a prerequisite to any decision that the Commissioner must ensure that the other party has been notified, and that both parties have had the opportunity to make representations. These requirements have been met in the present case.
24. 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
25. There have been several contributing factors in the present delay. The reason for EMGS’ original delay, and the reasons for the first extension, related to a deliberate decision to hold off on the preparation of evidence in answer to OHM’s opposition until the second opponent (Exxon) had finalised their evidence in support. This was to enable the statements of grounds and particulars and the evidence in support served by both parties to be addressed at the same time. Clearly this is preferable to what otherwise could be described as a “piecemeal” approach. The delay is understandable in the circumstances.
26. The unavailability of key people who were busy preparing to publicly float EMGS and otherwise in co-ordinating litigation also caused an unfortunate delay in initiating selection of the independent expert, Bjorn Ursin, and in the case of inventor Svein Ellingsrud, preparation of his own statement.
27. This was further compounded by the illness of Svein Ellingsrud, a circumstance clearly outside of the applicant’s control.
28. Only one month before evidence in answer was due to be finalised, OHM amended the statement of grounds and particulars, precipitating a requirement for EMGS to review the amendments. While I agree with OHM that the nature of these amendments “ought to be readily apparent … either from the amended statement of grounds and particulars itself, or from limited literature searches”, it is still reasonable to expect that EMGS would require some additional time to ensure a thorough consideration of any potential changes to the case to be answered.
29. I note that the documents introduced by OHM into the statement of grounds and particulars have not been introduced into evidence. If OHM intend to rely on these documents as part of the opposition, a request to serve further evidence will be required. Such a request is not automatically granted, and will need to be determined on its merits.
30. There is a large volume of evidence in support to be answered, also likely to be a contributing factor.
31. While the delay is unfortunate it is understandable in the circumstances. I am satisfied that a reasonable explanation in the delay has been provided.
The nature and significance of the evidence
32. Two statutory declarations have now been served as evidence in part. The declarations provide a historical account of the development of the invention and address the issues of novelty and inventive step. Following a brief review of the declarations I consider that they are clearly highly relevant to the opposition at hand.
33. EMGS have indicated they are also seeking to engage an Australian expert witness. It is not uncommon for parties to opposition proceedings to use expert evidence from declarants resident in a relevant jurisdiction. However, they have not furnished any information on the nature and significance of the evidence they seek to adduce from this witness, nor have they provided an explanation for this delay. It would appear they have not made any progress to date.
34. Similarly, in their submissions EMGS have made a cursory reference to another foreign expert witness but have not provided any detail as to the nature and relevance of the evidence they seek to adduce and how the preparation of the evidence is progressing. I have not been provided with an adequate explanation of this aspect of the delay.
35. It is regrettable that EMGS did not appear at the hearing. It would have been useful to ascertain what the evidence proposed to be adduced from these further two experts will add to the case. EMGS have indicated they expect their evidence in answer to be completed in the current extension. If this doesn’t eventuate they will need to request another extension of time. Any further requests will need to provide a clear and proper explanation of the delay, along with details of the nature and significance of the evidence to adduced. EMGS should not assume that the Commissioner will necessarily grant an indulgence, as each request is determined on its own merits.
The interests of the parties
36. Without the extension EMGS will not have served any evidence in answer to the opposition. As a consequence, if the extension is not granted then EMGS will effectively be shut out from arguing much of their case. Clearly, EMGS’ interests heavily favour the extension being granted. OHM have an interest in the opposition being determined quickly. The allowance of the present extension will bring the total extension of time to serve evidence in answer to 6 months. To date the opposition has been progressing in a relatively timely manner.
The public interest
37. 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). In the present case, the evidence relates to the construction of prior art documents and establishing the common general knowledge in Australia, including responses to the evidence served by the opponent. These matters are clearly of significance to the grounds of novelty and inventive step. Given the two expert declarations now received are the only pieces of evidence in answer, I believe this evidence is significant to the opposition. I am satisfied that the public interest favours the grant of an extension of time.
The balance of considerations
38. EMGS have, on the whole provided a reasonable explanation for the delay. The public interest and the interests of EMGS favour granting the extension because the evidence served is highly relevant to the opposition. OHM’s interests are against the extension. EMGS have indicated they will be able to complete service of evidence in answer within the requested timeframe. On balance, it is appropriate to grant the extension.
39. I grant the extension of time for serving evidence in answer until 4 October 2007.
Costs
40. Costs normally follow the event. On this occasion, I see no reason to depart from this approach. I award costs against the opponent OHM according to Schedule 8 of the Patents Regulations 1991.
Dr S.D. Barker
Delegate of the Commissioner of Patents14 September 2007
Patent attorneys for the applicant : Madderns
Patent attorneys for the opponent : Shelston IP
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