Gallus Ferd, Ruesch AG v Strork Prints B.V
[2012] APO 46
•2 May 2012
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Gallus Ferd, Rüesch AG v Stork Prints B.V.] [2012] APO 46
Patent Application: 2005223202
Title:Method for producing a base material for screen printing, and base material of this type
Patent Applicant: Stork Prints B.V.
Opponent: Gallus Ferd, Rüesch AG
Delegate: Firoozeh Rabbani
Decision Date: 2 May 2012
Hearing Date: Written submissions filed on 28 March 2012 and 4 April 2012
Catchwords: PATENTS - Reg. 5.10 extension of time to serve evidence in support – nature and significance of evidence important in determination of the opposition– adherence to 3M vs Tyco evidentiary protocol not equivalent to an explanation of the delay – public interest favours extension
Representation: Representation: Patent applicant: Davies Collison Cave, Mr. Julian Curwen
Opponent:Phillips Ormonde Fitzpatrick, Mr. Adrian Crooks
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: Patent Application: 2005223202
Title: Title: Method for producing a base material for screen printing, and base
material of this type
Patent Applicant: Stork Prints B.V.
Date of Decision: 2 May 2012
DECISION
Extension of time to serve evidence in support until 23 May 2012 granted.
REASONS FOR DECISION
1. Patent application 2005223202, titled “Method for producing a base material for screen printing, and base material of this type” was accepted on 9 February 2011 and advertised as such on 24 February 2011. This application is in the name of Stork Prints B.V., hereinafter referred to as Stork or applicant. Gallus Ferd, Rüesch AG, hereinafter referred to as Gallus or opponent, filed an opposition to the grant of the application on 24 May 2011.
2. The Statement of Grounds and Particulars was served on the 23 August 2011 outlining the grounds of opposition as: novelty, inventive step, manner of manufacture, utility, insufficiency, failure to define the invention, clarity and fair basis.
3. The time for serving Evidence in Support expires three months from the date of serving the Statement of Grounds and Particulars (regulation 5.8). This time can be extended under regulation 5.10(2) in conjunction with regulation 5.10(5).
4. The opponent sought a first extension of time of three months to serve evidence in support, the time to be extended from 23 November 2011 to 23 February 2012. The extension request was made on the basis of the following grounds:
“We have through our patent attorneys identified and interviewed a number of potential witnesses to determine their suitability to provide evidence in this opposition. An expert witness has been retained to provide evidence and a number of discussions with that expert witness have been conducted. Further time is required in order to hold further conferences with the retained expert witness and develop the evidence in support.”
5. This first extension was granted.
6. On 23 February 2012, Gallus filed a second application for an extension of time of three months to 23 May 2012 to serve evidence in support. The circumstances in which, and the grounds upon which, that application was made are as follows:
“We have through our patent attorneys conducted a number of conferences with a retained expert witness to develop evidence in support. In addition to discussions in relation to the common general knowledge and matters relevant to the ground of inventive step, the expert has now reviewed a significant number of prior art documents and has provided comments in relation to his understanding of the matters disclosed in those documents. The witness has now also been provided with a copy of the specification of the opposed application. However, discussion of the expert's views has not been completed. Further time is required to complete discussion of the expert's understanding of the specification of the opposed application and to finalise a statutory declaration forming the evidence in support.”
7. This application for a further extension was objected to by Stork, who viewed the explanation offered by the Opponent to be inadequate. Stork justified this belief with the following reasoning:
“The latest extension request in fact shows that very little, if any, further progress has been made. The reasons given to support the latest extension request show that only preliminary discussions have been had with the retained expert witness and that preparation of Evidence-in-Support has not really been undertaken in earnest. It is unclear in fact what of substance has actually been done during the period afforded by the first extension. The application for extension of time is also unduly vague. Reference is made to prior art documents that the expert witness has apparently reviewed. Are these the prior art documents referred to in the Opponent's Statement of Grounds and Particulars or some other prior art documents? It is unclear what relevance these prior art documents have to the Opponent's Evidence-in-Support.”
8. The Commissioner determined that a hearing on the written record was appropriate in this case.
Relevant Law
9. Regulation 5.10(5) requires that an application under Reg. 5.10(2) must only be granted where the Commissioner is reasonably satisfied that an extension of time is appropriate in all the circumstances.
10. The discretionary powers of the Commissioner in relation to these regulations have been elucidated in the following cases, and some factors identified that bear consideration when deciding if an extension is allowable or not, these are:
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 Pty Ltd v Commissioner of Patents [1994] FCA 981; (1994) 49 FCR 205; (1994) 28 IPR 243; [1994] AIPC 91-057; AGoninan & Co Ltd v Commissioner of Patents [1997] FCA 424; 75 FCR 200; (1997) 38 IPR 213; 48 ALD 209; [1997] AIPC 91-330)
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). 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)
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 StarchChemical Company v Commissioner of Patents, [2001] FCA 33 at [33], 50 IPR 398; [2001] AIPC 91-697)
* 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)
11.Each of these factors should be considered by the delegate to provide reasonable satisfaction that an extension of time is appropriate in all the circumstances.
DISCUSSION
Explanation of the delay
12. The extension request states that the expert has been involved in reviewing a “significant number of prior art documents”, and providing comments in relation to his understanding of matters disclosed in those documents.
13. It seems implied by the descriptor “significant”, that it is in fact the large number of prior art documents that need reviewing that has contributed to the delay in preparing the evidence in support. In their submissions, opponent has clarified that the prior art documents are those identified in the Statement of Grounds and Particulars. Examination of the Statement of Grounds and Particulars shows that in fact seven prior art citations have been raised in this opposition; this number does not seem unduly large.
14. In their submissions, opponent has further elaborated that during the first extension period the expert’s availability was limited by reasons of prior commitments including travel. The Christmas Holiday period which occurred in this time period was also cited as a contributing factor for the delay. Therefore, the implication is that the first extension of time was not adequate to provide for completion of the evidence.
15. Applicant acknowledges in their submissions that the above expounded reasons may be relevant to the delay, but also points out that they were not disclosed in the extension of time request. I agree, and must also observe that delays due to prior commitments and the Christmas Holiday period hardly seem unexpected, and should have been accounted for while planning the opposition.
16. Opponent relies on the judgement in Minnesota Mining & Manufacturing Co v Tyco Electronics Pty Ltd, [2002] FCAFC 315; 56 IPR 248, in regards to evidentiary issues and the weight that certain evidence is given in view of the way in which the evidence came into existence. In particular they note that evidence in relation to the question of inventive step has to be obtained without the expert having seen the patent specification. They note in their extension application that it is after review of the relevant prior art that the expert has been provided with a copy of the patent.
17. Opponent found it necessary to ascertain the views of the expert witness relevant to the question of inventive step prior to providing them with a copy of the specification of the opposed application. It is implied therefore, that this evidentiary protocol has contributed to the delay.
18. Adherence to evidentiary protocol as outlined in 3M v Tyco (above) is relevant to an opposition in so far as an expert’s opinion may become tainted by ex-post facto analysis once they are presented with the invention. However, following this line of action does not necessarily in and of itself translate to a delay in the proceedings and to use this modus operandi as an excuse for the delay is not justifiable. As the Commissioner is not bound by the rules of evidence, opponents desirous of following this protocol should factor in time constraints and plan their opposition accordingly.
19. I agree with the applicant in assessing that the extension application was not clear in relation to what caused the delay. Overall the delay has arisen from the deliberate decision of the opponent to follow a certain evidentiary procedure and the occurrence of known factors such as business travel and the Christmas holiday period. The absence of any unexpected element indicates that the delay was the consequence of the way that the opponent is preparing their case. The explanation of the delay is not adequate to justify an extension. However, a satisfactory explanation is not a mandatory requirement and it is important that proper consideration be given to all relevant factors.
The public interest
20. The public interest is to determine if there is a serious opposition underway and if so to deal with the matter on its merits in an expeditious manner. The Statement of Grounds and Particulars elaborates on many grounds of opposition and cites seven prior art documents relevant to issues of novelty and inventive step.
21. Opponent has provided only vague detail regarding the evidence being prepared by the declarant. It appears that the evidence will address matters of common general knowledge, the construction of citations and possibly the construction of the specification. Such evidence is usually of assistance in deciding an opposition, so it is likely that it will be significant. I am satisfied that the public interest favours allowing the extension of time.
Interests of the parties
22. The opponent bears the onus of proof and needs to support their case with evidence in support. Therefore, I consider that their interest in allowing the extension of time is self-evident.
23. Applicant has argued that the protraction of the opposition proceedings by this second request for an extension of time is disadvantageous to their interests. Applicant has corresponding pending applications and granted patents overseas and the opposition may have an impact on how the applicant chooses to progress those pending applications and the manner in which it wishes to enforce its patents. However, the impact on corresponding actions in other jurisdictions is not relevant to the decision I have to make.
24. Applicant has suggested that the evidence be submitted in step-wise manner given the protocol used by the opponent to obtain its expert testimony. It is acknowledged that delays at this stage of the proceedings are not in the interest of the applicant; however, breaking up the evidence into separate chunks may not necessarily provide for an expedited resolution to the opposition.
25. The overall interests of the parties are offsetting, as it is in the interest of the party seeking the extension to have time to complete their evidence and against the interests of the other party who seeks finality.
CONCLUSION
26. 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.
27. The explanation of the delay does not justify the extension. The public interest determined by consideration of the nature and significance of the evidence supports the extension. The interests of the parties are offsetting. While considerations are finely balanced, I am satisfied that the public interest lies in favour of the extension.
28. Step-wise delivery of the evidence may seem appropriate, but is not mandatory as separate declarations may also contribute to further delay.
29. Taking all relevant considerations into account I am reasonably satisfied that the extension of time is appropriate in all the circumstances. I therefore grant the extension of time to serve evidence in support until 23 May 2012.
30. The opponent has not stated that the evidence will be finalized at the end of this extension period, almost twelve months after the opposition was first filed. I would however, exhort the opponent to adhere to this deadline or else provide detailed and relevant explanation of the delay.
COSTS
31. Only the opponent provided submissions in regards to costs and claimed an award of costs. In proceedings such as these it is usually the case that costs follow the event. However, the extension of time request was inadequate is so far as it did not elaborate on the reasons for the delay nor provide for the nature and significance of the evidence that the opponent means to adduce. This information, which is considered critical to this decision, was provided during the course of the opposition. Therefore there is justification to depart from normal practice, and I make no award of costs.
Firoozeh Rabbani
Delegate of the Commissioner of Patents
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