Fugro Airborne Surveys Corp v Geotech Airborne Limited
[2014] APO 23
•30 April 2014
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Fugro Airborne Surveys Corp v Geotech Airborne Limited [2014] APO 23
Patent Application: 2009243419
Title:Airborne Electromagnetic Time Domain System, Computer Product and Method
Patent Applicant: Geotech Airborne Limited
Opponent: Fugro Airborne Surveys Corp
Delegate: Dr S.D. Barker
Decision Date: 30 April 2014
Hearing Date: Written submissions completed on 9 April 2014
Catchwords: PATENTS – extension of time to file evidence in reply – the opponent failed to file evidence in reply despite acting promptly and diligently – extension granted
Representation: Patent applicant: Wrays
Opponent:Griffith Hack
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2009243419
Title:Airborne Electromagnetic Time Domain System, Computer Product and Method
Patent Applicant: Geotech Airborne Limited
Date of Decision: 30 April 2014
DECISION
I grant an extension of the time for filing evidence in reply until 21 May 2014.
I award costs according to Schedule 8 against Geotech Airborne 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 (the Regulations) as amended by the Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (No 1) (the Amendment Regulation).
Background
This matter relates to patent application 2009243419 in the name of Geotech Airborne Limited (Geotech). The application was advertised as accepted on 23 February 2012 and a notice of opposition to the grant of a patent was filed by Fugro Airborne Surveys Corp (Fugro) on 21 May 2012.
Fugro filed a statement of grounds and particulars on 21 August 2012. Evidence in support was completed on 21 August 2013. Evidence in answer was completed on 21 November 2013. Evidence in reply was due to be filed by 21 February 2014. Fugro has requested an extension of the time for filing evidence in reply until 21 May 2014.
A delegate advised on 4 March 2014 that he was not satisfied with the reasons in support of the application, and further information was provided on 11 March 2014. On 13 March 2014 a delegate indicated that he was now satisfied, and Geotech has asked for a hearing.
The hearing was conducted by means of written submissions. Submissions by both parties were received on 2 April 2014. Submissions in response by both parties were received on 9 April 2014.
Fugro filed evidence by Mr George Nadar on 3 April 2014, and evidence by Dr Petr Kuzmin on 8 April 2014. On 17 April 2014 Geotech filed an application to file further evidence. This appears to be further information in relation to the present extension of time. However, Geotech did not explain the significance of this information to the extension of time. I have briefly reviewed this material, and it appears to show that Dr Petr Kuzmin was involved in discussions with the Geotech group of companies (which includes Geotech). The information appears to be consistent with the information provided by Fugro (discussed below at paragraph [23]).
The law
On 15 April 2013 the Amendment Regulation commenced. The Amendment Regulation significantly amended 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 relevant evidentiary period commenced. Where the evidentiary period commenced before 15 April 2013, the extension is governed by regulation 5.10 of the Regulations as in force immediately prior to 15 April 2013. Where the evidentiary period commenced on or after 15 April 2013 in any opposition commenced before 15 April 2013, or in a substantive opposition commenced after 15 April 2013, the extension is governed by regulation 5.9 of the Regulations as in force on 15 April 2013. This follows from regulation 23.36(2), item 2, of the Regulations.
The present evidentiary period (for filing evidence in reply) commenced on 21 November 2013, i.e. on or after 15 April 2013. Consequently the extension of time is governed by regulation 5.9 of the Regulations as in force on 15 April 2013. Subregulation 5.9(2) states:
The Commissioner may extend the period only if the Commissioner is satisfied that:
(a) the party who intended to file evidence in the period:
(i)has made all reasonable efforts to comply with all relevant filing requirements under this Chapter; and
(ii)despite acting promptly and diligently at all times to ensure the appropriate evidence is filed within the period, is unable to do so, or
(b) there are exceptional circumstances that warrant the extension.
Exceptional circumstances are defined in subregulation (5):
In this regulation:
exceptional circumstances includes the following:
(a) a circumstance beyond the control of a party that prevents the party from complying with a filing requirement under this Chapter;
(b) an error or omission by the Commissioner that prevents a party from complying with a filing requirement under this Chapter;
(c) an order of a court, or a direction by the Commissioner, that the opposition be stayed pending the completion of a related proceeding or action under the Act.
I consider that the Regulations require me to ask myself the following questions:
1. Has the party (and their attorney or agent) made all reasonable efforts to comply with all relevant filing requirements?
2. Was the failure to file the evidence in time despite the party (and their attorney or agent) acting promptly and diligently at all times to ensure the evidence is filed in time?
3. Were there exceptional circumstances that warrant the extension?
I can extend the time for filing evidence only if I am satisfied that the answer to questions 1 and 2 is YES, or if I am satisfied that the answer to question 3 is YES. If I am so satisfied, then I must consider whether there are any discretionary reasons why the extension should not be granted.”
The serious nature of this test is confirmed by the Explanatory Statement accompanying the Amendment Regulation which states:
"The Commissioner will not be able to extend time periods unless one of these conditions was made out. The party seeking the extension will bear the onus of convincing the Commissioner of this. Once the conditions in subregulation 5.9(2) are met, the Commissioner still has the discretion to consider whether or not it is appropriate that an extension of time be granted. In applying the test, the Commissioner will not be required to give a direction to extend a period solely because of delays caused by a legal representative failing to act promptly or diligently, by difficulties in obtaining expert evidence that could have been anticipated and acted on or by attempts to settle the proceedings.
Where a party cannot satisfy the Commissioner that an extension is justified under the test, the Commissioner will not have the power to give a short extension to allow the filing of evidence immediately available or to validate evidence filed out of time."
If the Commissioner is satisfied that an extension is appropriate, the Commissioner must then determine the length of the extension (subregulation (3)):
The Commissioner must determine the length of the extended period having regard to what is reasonable in the circumstances.
The application for extension of time
The application for extension of time states:
"The opponent has been working diligently and promptly to meet the evidence deadline of 21 February 2014. Since receiving the complete evidence-in-answer on 21 November 2013 the opponent's Australian attorneys have been meeting every one or two weeks to strategize and progress forward the evidence-in-reply. There have also been many exchanges of correspondence with the instructing Canadian attorney to also coordinate evidence preparation through the Canadian attorney.
The Australian attorneys have conducted a number of meetings with Mr Boyd (declarant with the evidence-in-support) in assessing Mr Boyd's view of the evidence-in-answer and assisting Mr Boyd in preparing a declaration for submission as part evidence-in-reply.
To that end a declaration by Mr Boyd was completed earlier this week and we had expected to have the declaration executed by the deadline of 21 February 2014 but all attempts to contact Mr Boyd in the last few days have failed. Mr Boyd regularly travels to remote areas for work and it is assumed that he is presently at a remote location as he is uncontactable. We need an extension of another week to contact Mr Boyd and have him execute his declaration.
The opponent has been working toward obtaining the declarations of at least two other suitable declarants who have pertinent points to make in reply.
However one of those declarants took an extended leave for personal reasons from September 2013 and will only resume work full time around 10 March 2014. The declarant has outlined the points to be included in reply but has as yet been unable to complete a draft declaration.
In late December 2013 it was recommended by the opponent's Australian attorneys that Counsel's opinion on certain points of law should be obtained for guidance and clarity on certain aspects of the evidence-in-reply. Due to the holiday season in Australia and in Canada and the absence of key people including the instructing Canadian attorney (absent between 20 December 2013 and 6 January 2014) and the opponent's decision maker (absent between 8 to 19 January 2014), the instructions to retain Counsel were not received until 20 January 2014.
Counsel provided their opinion on 3 February 2014 and it became apparent as a result of that opinion that there was a strong need for one of the declarants to substantiate certain points of rebuttal. That declarant has collected relevant evidence and is presently incorporating that evidence in a declaration for submission as evidence-in-reply.
It is submitted that the opponent and its representatives at all times acted diligently to progress the declarant's declarations in order to comply with the evidence filing requirements, whereby one declarant's evidence is all but signed and the other evidence in part completed. Further time is requested to sign one declaration and complete the remaining evidence."
On 11 March 2014 Fugro provided further information in the form of a print out of the time entries of attorneys and lawyers involved with opposition. More information was also provided about the second declarant (Mr George Nader) and the third declarant (who is presumably Dr Petr Kuzmin). In summary that information is:
·Mr Nader has been closely involved in the opposition proceedings since they commenced
·Mr Nader is in the best position to refute some statements in the Morrison declaration in answer
·Mr Nader had to take an unplanned extended leave for personal reasons from early September 2013 to 10 March 2014
·the third declarant is in a unique position to provide comment on facts in the Morrison declaration in answer
·the third declarant was approached in mid-December 2013.
·the third declarant was originally perceived as having a potential business conflict with this opposition
·the third declarant did not participate immediately due to the perceived conflict
·in early February 2014 the perceived conflict was no longer an issue, and the third declarant commenced preparation of their declaration
·a first draft has been completed
Has the party made all reasonable efforts to comply with all relevant filing requirements?
I must first consider the reasonableness of the approach to evidence preparation adopted by Fugro. As the Deputy Commissioner noted in Merial Limited v Novartis AG [2013] APO 65 (the Merial decision):
"the requirement in paragraph 5.9(2)(a)(i) is intended to import a consideration of the reasonableness of the relevant party’s conduct over the totality of the opposition proceedings rather than its compliance with the particular evidentiary period in question"
Geotech drew attention to Fugro's behaviour in preparing evidence in support, and questioned whether they had been reasonable at that time. In this regard I note what the Deputy Commissioner said in Innovia Security Pty Ltd v Visual Physics LLC [2014] APO 15 at [19]:
"What is reasonable in relation to a former evidentiary period was what was reasonable at that time. … The fact that the Commissioner granted the extensions of time is also significant such that I should assume that, at the time, Innovia were considered to be making reasonable efforts to meet the time for filing evidence in support."
I agree that the assessment of reasonableness must be considered against the backdrop of the legislation applying at the relevant time. I consider the requirement of regulation 5.9(2)(a)(i) to be met in relation to filing requirements up to the filing of evidence in reply.
Turning to the preparation of evidence in reply, Fugro quickly prepared evidence by Mr Boyd (apart from execution of the declaration), and then approached Mr Nader and the third declarant. Mr Nader had previously given evidence, and it was considered that he was the person best placed to give the evidence needed. In this situation it was reasonable to wait until Mr Nader returned from leave (in this regard, I note that the circumstances are different to those considered by the Deputy Commissioner in the Merial decision). It is unclear why the third declarant was not approached until mid-December 2013. However, as he was approached only a few weeks after evidence in answer was completed I am satisfied that this was a reasonable approach.
Was the failure to file the evidence despite acting promptly and diligently?
A party seeking an extension of time will assist the Commissioner (and advance their own cause) if they provide information about what they did, when they did it, and how long those actions took. When considering such information, it is relevant to consider whether there have been any significant unexplained delays. The presence of significant delays without a reasonable explanation is the antithesis of acting promptly and diligently. The delays that need to be considered in the present case are the time taken to prepare the declarations of the three declarants.
i) Boyd declaration
The evidence shows that the Boyd declaration would have been completed and filed in time if not for the unexpected disappearance of Mr Boyd. I am satisfied that his evidence was being prepared promptly and diligently.
ii) Nader declaration
Accepting the unavailability of Mr Nader on unplanned leave, his evidence has progressed quickly and it appears that it has been prepared promptly and diligently upon his return from leave.
iii) The third declaration
The third declarant was approached in mid-December 2013. This declarant was involved in other matters that could be perceived as potentially representing a business conflict with the present opposition. By early February 2014 the potential conflict was no longer an issue. It is apparent that there is an explanation for the delay in preparing the evidence of the third declarant.
Overall
I am satisfied that there is a satisfactory explanation of the various delays in filing the evidence of the declarants. I consider that failure to file evidence in reply by Fugro is depite them acting promptly and diligently.
Were there exceptional circumstances?
Since I am satisfied that an extension is justified on the basis of regulation 5.9(2)(a), it is not necessary to consider whether there were exceptional circumstances.
Conclusion
I am satisfied that an extension of time is justified.
Finally, I need to consider what length of extension is reasonable in the circumstances. Fugro requested an extension until 21 May 2014. The information provided to me about the progress that has been made in finalising all three declarations satisfied me that this is an appropriate extension.
Costs
Fugro have been successful in obtaining an extension of time. I can see no reason to depart from the normal principle that costs should follow the event.
Dr S.D. Barker
Delegate of the Commissioner of Patents
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