Fugro Airborne Surveys Corp v Geotech Airborne Ltd - [2013] APO 40

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Fugro Airborne Surveys Corp v Geotech Airborne Ltd [2013] APO 40

Patent Application: 2009243419

Title:Airborne Electromagnetic Time Domain System, Computer Product and Method

Patent Applicant:  Geotech Airborne Ltd
Opponent:  Fugro Airborne Surveys Corp
Delegate:  Greg Powell
Decision Date:  15 July 2013
Hearing Date:  Written submissions filed on 18 and 25 June 2013
Catchwords:  PATENTS – extension of time to file evidence in support –– adequate explanation of delay – nature and significance of evidence favours extension – extension allowed – award of costs

Representation: Patent applicant: Wrays, Perth
Opponent:Griffith Hack, Melbourne

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2009243419

Title:Airborne Electromagnetic Time Domain System, Computer Product and Method

Patent Applicant: Geotech Airborne Ltd
Date of Decision: 15 July 2013
DECISION
The time for filing evidence in reply is extended to 21 August 2013.
Costs awarded against Geotech Airborne Ltd
REASONS FOR DECISION

This matter relates to patent application 2009243419 in the name of Geotech Airborne Ltd (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 its Statement of Grounds and Particulars on 21 August 2012 and received two extensions of time to file its evidence in support up until 21 May 2013. On 21 May 2013 Fugro filed a request for a three month extension of time to file its evidence in support, which was subsequently objected to by Geotech and is the subject of this decision.
A hearing was conducted by written submissions. Submissions by Fugro and Geotech were received on 18 June 2013. Submissions in response were received were received on 25 June 2013. Geotech was represented by Wrays, Perth. Fugro was represented by Griffith Hack, Melbourne.
The relevant law
As a consequence of the Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 there are substantial changes to Chapter 5 of the Patents Regulations 1991. In the case of the present application and the present extension of time, the extension is governed by reg. 5.10 as in force immediately before 15 April 2013. One relevant consequence of the amendments to Chapter 5 is that evidence that is required to be served on or after 15 April 2013 is to be filed with the Commissioner rather than served. Consequently in this decision I will make reference to the filing of evidence where that is to happen on or after 15 April 2013.
Regulation 5.10(2) of the Patents Regulations gives the Commissioner the power to extend the time for filing evidence in support. The Commissioner must not grant an extension unless satisfied that the parties have been notified of the application for extension (reg. 5.10(5) (b)), has given the parties a reasonable opportunity to be heard (reg. 5.10(5)(c)(i)), and is reasonably satisfied the extension is appropriate (reg. 5.10(5)(c)(ii)). In the present case the parties have been notified and have had an opportunity to be heard. The only remaining question is whether it is appropriate to extend the time.
The considerations relevant to this question have been considered several times by the Federal Court (Ferocem Pty Ltd v Commissioner of Patents [1994] FCA 981; 28 IPR 243, A Goninan & Co Ltd v Commissioner of Patents [1997] FCA 424; 38 IPR 213 and National Starch & Chemical Co v Commissioner of Patents [2001] FCA 33; 50 IPR 398). In summary, the power to extend time is discretionary, so it is necessary to give genuine and proper consideration to all relevant considerations. (Ferocem at 247-8, Goninan at 220). Relevant considerations include:
a.the reason why the evidence was not filed earlier (Ferocem at 247);
b.the public interest in determining a serious opposition on its merits (Goninan at 222); and
c.the interests of the parties (Ferocem at 247)
Explanation of delay in filing evidence
In its request for the extension of time Fugro set out the nature of the evidence that its expert (Mr Graham Boyd) is expected to provide. The explanation notes that the evidence will be directed to Mr Boyd’s experience, the background of the airborne geophysical surveying industry, design and development processes of surveying technology, comments on the invention and prior art documents. The explanation notes that this evidence has been delayed because of the complexity of the issues, the fact that Mr Boyd resides in South Australia and the unavailability of Mr Boyd given his personal and business commitments.
The explanation notes that Mr Boyd’s declaration was well advanced and Fugro had intended to file it with the present request for an extension of time, but Mr Boyd’s attendance at a conference prevented the declaration from being executed. In addition, the explanation notes that some further relevant prior art had recently been located and Mr Boyd was considering this prior art, which consideration had taken longer than expected.
The explanation also notes that discussions had occurred with further potential experts and more discussions were to occur to decide whether to retain them for the opposition. In their submissions, Fugro expanded upon this by indicating that an Australian expert had been located in March 2013 and an overseas expert had been located in April 2013 and discussions had been held. The submissions note that these experts would be expected to provide evidence regarding airborne geophysical surveys, but the evidence had not yet been completed.
Fugro’s submissions also indicated, looking at the overall progress with respect to preparation of the evidence in support, that an acquisition of it by CGGVeritas meant that senior executives had other commitments related to the acquisition which meant that they were occasionally unavailable. Fugro also submitted that on-going litigation in Canada in relation to a Canadian patent which is substantially equivalent to the present Australian application, which demanded significant time and resources of senior executives, has contributed to the delay in this opposition.
Taking these last two submissions, Geotech criticised these submissions and noted that “the lack of executives has little or no relevance to the failure of Fugro to finalise its Evidence in Support.” I am inclined to agree. It is difficult to see why executive unavailability would delay an expert giving their evidence, unless the executive was the expert. In the absence of further explanation, I cannot see why these circumstances explain the delay.
Turning to the other submissions by Fugro, Geotech criticised this as lacking detail with respect to the amount of time Mr Boyd required and how his commitments impacted on this time, why Mr Boyd could not have been contacted noting the “numerous modern forms of communication available”, why Mr Boyd’s attendance at a (unnotified) conference delayed his evidence and the nature of the further relevant prior art noted in the explanation.
Undoubtedly, these are questions which could be answered and, thereby, provide a more fulsome explanation of the delay. However, the reasons for the delay in providing evidence in support seem clear to me from the explanation. While I note the applicant’s concerns that there may even be more extensions of time in the future, I believe that a satisfactory explanation of the delay has been provided.
The public interest
In its request for the extension of time the Fugro noted:
“All of the evidence which is being prepared is highly relevant to a correct determination of the opposition. It is in the public interest for the Commissioner to be in possession of the entirety of the Opponent's Evidence in Support when determining the outcome of the opposition. It is also clear that this is a serious and important opposition. There are a number of complex issues arising from the patent application that must be addressed in sufficient detail in the Evidence in Support, and it is in the public interest to have the matter heard on its merits, with all relevant material available to the Commissioner”
Geotech criticised Fugro under this consideration by submitting that, as Fugro had not progressed the opposition expeditiously, the public interest favoured the denial of the extension. I cannot agree. Firstly, as I have noted above, Fugro do not appeared to have been negligent in their progress. While no evidence has been filed to date, this is not necessarily evidence of a lack of diligence or genuine attempts to progress the opposition. Secondly, while expeditious disposal of matters before the Commissioner is one part of the consideration of the public interest, it is also in the public interest for oppositions to be considered on their merits. Geotech made no submissions on this point other than to say that the Commissioner is “aware of the basis of the opposition through the Statement of Grounds and Particulars.” It is certainly true that the Commissioner is aware of the basis for the opposition, but if the extension was not granted, she would lack evidence that could establish the common general knowledge within the art and meanings that may be ascribed to words within the various documents, which may lead to an incorrect, unjust decision. This is not desirable.
That is not to say that the time taken by a party to prepare their evidence is something that can be ignored on the basis that it is always better for evidence to be allowed in rather than shut out. Clearly, a less than diligent approach to preparing evidence is something that can be taken into consideration by the Commissioner when deciding whether to extend time periods. However, contrary to Geotech’s position, I do not think that this is evident in this opposition at present.
It would seem to me that the evidence that Fugro seeks to provide is relevant to the grounds of inventive step and novelty, at least. To my mind, the public interest supports an extension.
Interests of the parties
As is normal in such matters, the interests of the parties are opposed and offsetting.
Conclusion
The balance of considerations in this case supports an extension of time. The public interest favours the extension and I consider that there is a reasonable explanation of the delay. The interests of the parties do not alter the balance.
I allow the extension. However, I have noted Geotech’s concerns that that there may even be more extensions of time in the future. I encourage Fugro to continue to process their opposition expeditiously and urge them to file evidence as soon as they possibly can.
Costs
It is normal for costs to follow the event and I do not see any reason to alter the normal approach for this case. I award costs against Geotech.
Greg Powell
Delegate of the Commissioner of Patents