Gallus Ferd, Ruesch AG v Strork Prints B.V - [2012] APO 46

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…

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.

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Details

Case: [2012] APO 46
Decision Date: 2 May 2012

CaseChat Overview and Summary

Gallus Ferd, Rüesch AG opposed the patent application 2005223202 filed by Stork Prints B.V. The application relates to a method for producing a base material for screen printing, and the base material of this type. The dispute before the Commissioner of Patents involved the grant of an extension of time for Gallus to serve evidence in support of their opposition. The primary legal issue was whether the extension of time to serve evidence in support should be granted under Regulation 5.10 of the Patents Regulations 1991.

The Commissioner considered several factors in reaching a decision. Firstly, the explanation for the delay in serving the evidence in support was not considered adequate. Gallus argued that the delay was due to the need to review a significant number of prior art documents and the unavailability of their expert witness. However, the Commissioner found that these reasons were not unexpected and should have been accounted for during the planning of the opposition. The Commissioner also noted that following a certain evidentiary protocol, as suggested by Gallus, does not necessarily cause a delay in proceedings.

Secondly, the Commissioner considered the public interest in determining the opposition on its merits. Given the nature and significance of the evidence that Gallus intended to adduce, the Commissioner was satisfied that the public interest favoured allowing the extension of time. Lastly, the Commissioner considered the interests of the parties, noting that while they were offsetting, the public interest in this case outweighed the applicant's interest in finality.

In conclusion, the Commissioner found that the extension of time to serve evidence in support until 23 May 2012 was appropriate in all the circumstances. The Commissioner also decided not to award costs to either party, as the extension of time request was inadequate in explaining the reasons for the delay and the nature and significance of the evidence.

Orders