Fonterra Co-Operative Group Limited v Leprino Foods Company - [2014] APO 89

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Fonterra Co-Operative Group Limited v Leprino Foods Company [2014] APO 89

Patent Application: 2008325000
Title:Non-fat dry milk production processes for cheesemaking

Patent Applicant:  Leprino Foods Company
Opponent:  Fonterra Co-Operative Group Limited
Delegate:  Dr S.D. Barker
Decision Date:  24 December 2014
Hearing Date:  Written submissions completed on 21 November 2014
Catchwords:  PATENTS – extension of time to file evidence in reply – regulation 5.9 – actions were prompt and diligent at all times – extension of one week is appropriate – extension granted

Representation: Patent applicant: Davies Collison Cave
Opponent:AJ Park

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2008325000

Title:Non-fat dry milk production processes for cheesemaking

Patent Applicant: Leprino Foods Company
Date of Decision: 24 December 2014
DECISION
I grant an extension of time to file evidence in reply until 3 October 2014.
I award costs according to Schedule 8 against Fonterra Co-Operative Group Limited.
REASONS FOR DECISION

This matter concerns a request for an extension of time to file evidence in reply and is determined under regulation 5.9 of the Patents Regulations as amended on 15 April 2013 by the Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (No 1).
Background
This matter relates to patent application 2008325000 in the name of Leprino Foods Company (Leprino). The application was advertised as accepted on 25 July 2013 and a notice of opposition to the grant of a patent was filed by Fonterra Co-Operative Group Limited (Fonterra) on 25 October 2013.
Fonterra filed a statement of grounds and particulars on 27 January 2014. Evidence in support was completed on 28 April 2014. Evidence in answer was completed by Leprino on 28 July 2014. Evidence in reply was due on 30 September 2014. On this day, Fonterra has requested an extension of time for filing evidence in reply until 10 October 2014.
The delegate advised on 3 October 2014 that he required further information in order to be satisfied that an extension was appropriate. Fonterra filed further information in support of the request for extension on 10 October 2014.
The delegate advised on 14 October 2014 that he was not satisfied that an appropriate case had been made out in regard to the request for an extension of time and that the extension would therefore be refused unless a hearing was requested within seven days.
On 21 October 2014 the opponent requested a hearing to dispute the refusal of the extension of time. The hearing was conducted by means of written submissions.
The opponent filed submissions in support of the extension of time request on the 5 November 2014 and the applicant completed their submissions on 12 November 2014. Final submissions were filed on 21 November 2014.
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 (the Regulations) as they apply to patent oppositions. The law governing…

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 Fonterra Co-Operative Group Limited v Leprino Foods Company

Details

AGLC: Fonterra Co-Operative Group Limited v Leprino Foods Company [2014] APO 89
Case: [2014] APO 89
Decision Date: 24 December 2014

CaseChat Overview and Summary

The case concerns a request for an extension of time to file evidence in reply in opposition proceedings relating to patent application 2008325000 for non-fat dry milk production processes for cheesemaking. The applicant is Leprino Foods Company and the opponent is Fonterra Co-Operative Group Limited. The matter was determined under regulation 5.9 of the Patents Regulations as amended by the Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (No 1). The delegate had initially refused an extension of time for Fonterra to file evidence in reply but granted the extension after a hearing was requested.

The legal issue was whether the delegate should grant an extension of time to file evidence in reply under regulation 5.9 of the Patents Regulations. The relevant considerations under the regulation are whether the party made all reasonable efforts to comply with the filing requirements, whether the failure to file was despite acting promptly and diligently, and whether there were exceptional circumstances warranting an extension. If the mandatory criteria are met, the delegate has discretion to grant an extension.

The delegate found that Fonterra had made all reasonable efforts to comply with the filing requirements and had acted promptly and diligently at all times. Fonterra had not provided a full chronology of events at the time of applying for an extension, but submitted one after the delegate refused the extension. The delegate found no significant unexplained delays in Fonterra's actions. The delegate exercised its discretion to grant an extension of one week until 3 October 2014. Fonterra was ordered to pay the costs of the hearing.

The decision grants an extension of time to file evidence in reply until 3 October 2014 and awards costs against Fonterra Co-Operative Group Limited.

Orders