Gutter Grip Australia Pty Ltd v Interit Pty Ltd
[2024] APO 42
•11 October 2024
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Gutter Grip Australia Pty Ltd v Interit Pty Ltd [2024] APO 42
Patent:2016222479
Title:Multi-Component Gutter Bracket
Patentee:Interit Pty Ltd
Opponent:Gutter Grip Australia Pty Ltd
Delegate:Dr N. R. Madsen
Decision Date: 11 October 2024
Hearing Date: Written submissions completed 27 September 2024
Catchwords: PATENTS – extension of time to file evidence in answer during s104 procedural opposition pursuant to regulation 5.12 – regulation 5.9 – whether patentee has made all reasonable efforts to meet filing requirements – whether patentee has acted promptly and diligently – extension granted – evidence in reply due one month from the date of this decision
Representation: Patent attorney for the patentee: Pizzeys Patent and Trade Mark Attorneys Pty Ltd
Patent attorney for the opponent: Griffith Hack
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent:2016222479
Title:Multi-Component Gutter Bracket
Patentee:Interit Pty Ltd
Date of Decision: 11 October 2024
DECISION
The applicant has met the requirements of paragraph 5.9(2)(a) of the Patent Regulations (1991) and in accordance with regulation 5.12, I grant an extension of time to file evidence in answer. Evidence in answer is hereby complete.
The opponent has one (1) month from the date of this decision to file any evidence in reply in the s104 matter.
I award costs in accordance with Schedule 8 of the Patent Regulations against Gutter Grip Australia Pty Ltd.
REASONS FOR DECISION
BACKGROUND
This matter relates to a request for an extension of time to file Evidence in Answer (EIA) in the opposition under Section 104 of the Patents Act (1990) to amendments filed during re-examination of granted patent 2016222479 (the patent). The patent was granted on 22 February 2018 and a third-party re-examination request was filed on 18 August 2021. After a first adverse re-examination report, the patentee filed amendments on 8 December 2021 and an examiner issued a report identifying these amendments as not being allowable. Further amendments were filed on 22 February 2022 and the examiner considered these allowable. They were advertised and subsequently opposed by Gutter Grip Australia Pty Ltd (the opponent) on 31 May 2022.
Following the instigation of this opposition, the patentee sought to withdraw their amendments of 22 February 2022 and file further amendments. An examiner considered these amendments and reported that they do not overcome the substantive issues of the previous re-examination report. Further amendments were filed by the patentee on 24 January 2023 followed by another adverse re-examination report. Following amendments filed on 29 May 2023 the examiner indicated that he considered that the issues of the previous report had been overcome and that the amendments would be advertised for opposition. The opponent filed a notice of opposition to these latest amendments on 27 September 2023. On 17 November 2023 a delegate then issued a direction for the filing of evidence as follows:
·That the Opponent has two (2) months from the date these directions are made to file any evidence in support of their opposition under s104 of the Act;
·That the Applicant (sic) has two (2) months from the date the Commissioner advises it that the filing of evidence in support is complete to file any evidence in answer to the evidence in support in the s104 opposition; and
·That the Opponent has one (1) month from the date the Commissioner advises it that the filing of evidence in answer is complete in the opposition under s104 of the Act to file any evidence in reply to the evidence in answer.
The opponent filed evidence in support on 16 January 2024 and notice was provided to the patentee on 17 January 2024 that evidence in answer would be due in two months. The patentee failed to file evidence by 17 March 2023 and sought an extension of three weeks and one day to file their evidence in answer. Ultimately a delegate indicated an intention to grant this extension and on 19 June 2024 the opponent requested to be heard in relation to this intention to grant. It is this request that I am deciding.
In support of their request for an extension of time the patentee filed the following declarations:
·Declaration of Peer Watterson dated 21 March 2024 (Watterson #1)
·Declaration of Peer Watterson dated 15 April 2024 (Watterson #2)
·Declaration of Jordan Woolley dated 15 April 2024 (Woolley #1)
·Declaration of Jordan Woolley dated 26 June 2024 (Wooley #2)
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 (1991) (the regulations) as they apply to substantive patent oppositions, particularly regulation 5.9. However, the present matter is not a substantive opposition that is governed by regulation 5.9, instead being a procedural opposition in accordance with regulation 5.10 to an amendment to a patent under section 104 of the Patents Act. These matters are managed by direction under regulation 5.12. In this manner, evidence periods and their extensions are managed in a discretionary manner.
In exercising a similar discretion in a matter that was not governed by regulation 5.9, the delegate in Mine Site Technologies Pty Ltd v R F Industries Pty Limited[1] at [49] and [50], noted that the principles for filing evidence in substantive oppositions under Reg 5.9 “provide appropriate guidance for the exercise of discretion under regulation 22.24” in determining extensions of time to file evidence in entitlement disputes or disputes between applicants. I see no reason why the same logic does not apply to the present scenario of accessing powers in regulation 5.12 to direct the practice and procedure to be followed during a section 104 procedural opposition. Accordingly, I consider it appropriate to assess extensions of time to file evidence in procedural matters using principles developed for assessing extensions according to Reg 5.9. To do otherwise would appear inconsistent with the thrust of the regulations (see the Patent Manual of Practice and Procedure[2]). I now turn to these principles.
[1] [2021] APO 21
[2] >
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.These provisions were considered by a delegate and Deputy Commissioner respectively in TRED Design Pty Ltd v Julie- Anne McCarthy and Bradley McCarthy[3] and Merial Limited v Novartis AG[4]. The principles applied in those decisions, which I accept as correct, are that I must 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.”[5]
[3] [2013] APO 57
[4] [2013] APO 65
[5] TRED Design Pty Ltd v Julie- Anne McCarthy and Bradley McCarthy [2013] APO 57 at [30-31]
The Explanatory Statement accompanying the amendment regulation confirms the seriousness of this test:
"A major cause of protracted opposition proceedings is extensions to the various time periods for providing evidence. The law has developed in such a way as to significantly narrow the Commissioner's discretion to disallow extensions. As a result, oppositions are normally subject to multiple extensions of time and extend over many years, contrary to the interest of the public and parties in resolving oppositions faster.
New subregulation 5.9(2) addresses this issue by introducing a new test for determining whether an extension of time for filing evidence is justified. 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 Patent Examiner’s Manual of Practice and Procedure[6] usefully outlines some principles concerning the understanding of the relevant provisions as applied by decisions of Deputy Commissioners and the Commissioner’s delegates. Key points identify that:
·Reasonableness of conduct relates to conduct across the whole of the opposition, so it is useful to plan early, where possible, for the filing of evidence, including the consideration of appropriate experts.
·Important to obtaining an extension of time is an explanation of what was done, when it was done, how it was done and by whom. A narrative along with a chronology of actions is typically very helpful.
·Acting reasonably at all times, along with being prompt and diligent, is not a standard of perfection. What is required is a reasonable plan executed well, with no significant unexplained delays. An explanation of the circumstances of the case is necessary for a delegate to determine whether a party has been sufficiently prompt and diligent.
·Where simple errors on the part of a party prevent evidence being filed on time, an extension may still be appropriate.
[6] >
It is apparent that the information required to satisfy a delegate will depend on the case, and that generally there should be an explanation of the overall strategy for preparing evidence, a description of what was done, and when it was done, and a discussion of any unexpected difficulties that arose. As further discussed in the Manual of Practice and Procedure, when applying for an extension of time, parties should provide sufficient information to enable the Commissioner to determine whether their actions have been reasonable, prompt and diligent. As noted by the delegate in Fugro Airborne Surveys Corp v Geotech Airborne Limited[7]:
“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.”
[7] [2014] APO 23 at [20]
I also note some other relevant principles identified in decisions under these provisions. Regarding the actions of an applicant seeking an extension to file evidence in answer, the Commissioner will be assisted if an applicant can demonstrate that it had considered its case at an early stage. However, given the costs associated with engaging appropriate experts and drafting declarations, it may be reasonable for the applicant to defer such actions until the evidence in support is filed[8].
[8] Shelford Services Pty Limited v Baylor Research Institute [2014] APO 20 at [18]; Sportingbet Australia v Tabcorp International Pty Ltd [2014] APO 21 at [28].
It has also been observed that the volume of evidence can be a relevant consideration to assessing the reasonableness of the actions of a party[9], and that the fact that an action takes place over several months does not automatically suggest a lack of promptness and diligence[10]. Consideration should be given to the nature of the action and what is reasonable. One is not expected to do the impossible or meet a standard of perfection.
[9] Aquatron Robotic Technology LTD v Zodiac Pool Care Europe [2016] APO 88 at [48]
[10] Osmose New Zealand v Zelam Limited [2014] APO 49 at [18]
I also note that factors to consider when determining whether a party has made all reasonable efforts are generally relevant to the question of whether the party has acted promptly and diligently[11] and vice versa. With specific regard to the requirement that a party make all reasonable efforts to comply with all the relevant filing requirements, this imports a consideration of reasonableness over the totality of the proceedings, not just the evidence period in question.[12]
[11] TRED Design Pty Ltd v Julie- Anne McCarthy and Bradley McCarthy [2013] APO 57 at [60]
[12] Merial Limited v Novartis AG [2013] APO 65 at [16]; Innovia Security Pty Ltd v Visual Physics LLC [2014] APO 15 at [18]).
THE EXTENSION OF TIME REQUEST AND CHRONOLOGY
The patentee has requested an extension of time to file EIA for a period of three weeks and one day exercised in accordance with regulation 5.12 guided by the principle of regulation 5.9. It is clear that there is no consideration required as to whether there are exceptional circumstances justifying an extension.
In their submissions the opponent presented a timeline of relevant events which usefully lays out the relevant circumstances. I generate a similar timeline as follows with my emphasis in bold focussing on understanding of due dates for evidence in answer:
Date Action 27 September 2023 Notice of Opposition filed 27 October 2023 Statement of Grounds and Particulars (SGP) filed 31 October 2023 Delegate invites parties to indicate if they intend to rely on evidence. 1 November 2023 Patentee’s attorney sends letter to patentee reporting that opponent’s evidence in support will be due 27 January 2024. (Watterson #2) 2 November 2023 Patentee’s attorney sends an email to legal representative and patentee stating that they expect their evidence in answer to be due on 27 April 2024. 8 November 2023 Delegate proposes direction for the periods for filing of evidence. 9 November 2023 Patentee’s attorney receives proposed directions and enters ad hoc reminder into docketing system with the message “Has the date for [evidence] in support been finalised? (Watterson #2) 17 November 2023 Delegate issues directions for filing of evidence as per proposed directions of 8 November. This establishes that evidence in answer is due two months form the date that IP Australia advises the parties that evidence in support is complete. It sets the deadline for evidence in support to be 17 January 2024. 20 November 2023 Patentee’s attorney writes to legal representatives indicating that “our evidence in answer will be due around 17 March 2024”. (Watterson #2) 21 November 2023 Patentee’s attorney changes date of event of evidence in support from 27 January 2024 to 17 January 2024 in their docketing system. (Watterson #2). The evidence in answer deadline thus appearing in the docketing system appears to now be 17 April 2024. 16 January 2024 Evidence in support filed by opponent. Patentee’s attorney contacts applicant and legal advisors indicating that deadline will be set by IP Australia but that a good working deadline would be 17 April 2024. (Watterson #1) 17 January 2024 IP Australia issues letter stating that evidence in support is complete. The letter makes clear that that the patentee’s evidence will be due in two months.
On this date Watterson updates the docketing system which generates a due date of 17 April 2024. (Watterson #2)
19 January 2024 Patentee’s attorney emails various parties attaching the 17 January letter from IP Australia, with covering information stating that the deadline for evidence in answer is 17 April 2024. 29 January 2024 Meeting between patentee’s attorney, legal representation, the patentee and senior and junior barristers. (Woolley #1)
During meetings actions were scheduled being:
· Review and analysis of SGP and evidence in support to be completed by all by 16 February 2024
· William Hunter to finalise a complete draft of his expert report by 29 March 2024
· William Hunter to facilitate review and execution of declaration by 12 April
· Attorney to submit entirety of evidence in answer by 17 April 2024.
8 February 2024 Meeting between patentee’s attorney and junior barrister to discuss SGP and evidence. (Woolley #1) 20 February 2024 Meeting between legal representative and junior barrister to discuss William Hunter’s progress. (Woolley #1) 13 March 2024 Conference between William Hunter, junior barrister and legal representatives to discuss evidence. (Woolley #1) 17 March 2024 Evidence in answer due 21 March 2024 Patentee seeks extension of time until 8 April 2024 to file evidence in answer. 8 April 2024 Patentee filed evidence in answer With reference to my emphasis of what appear to be clearly erroneously calculated due dates for evidence in answer, it is clear that consideration of this request for an extension of time requires judgement on the nature of the actions of the relevant parties in the presence of such an error, and whether they are reasonable, prompt and diligent.
THE DELEGATE’S INITIAL CONSIDERATIONS
In her letter of 4 April 2024, the delegate raised some initial concerns regarding the request for an extension of time in regard to whether the patentee’s patent attorney had been reasonable and diligent. In particular, the delegate was initially unclear as to what happened to cause Mr Watterson to overlook information in letters from the Commissioner and why he chose to rely on the docketing system. The patentee responded providing further information which satisfied the delegate, noting that Mr Watterson relied heavily on the docketing system and that this was not unreasonable, given his limited experience in section 104 matters. The response of the patentee also focused on their quick response once an error was identified.
OPPONENT’S SUBMISSIONS
The opponent focusses on the patentee’s attorney’s (Pizzeys) ongoing error regarding the deadline for evidence and his belief of this deadline being in April rather than March, and the patentee’s legal representative (Macpherson Kelley Pty Ltd) and other undisclosed parties’ failure to consider the totality of information provided to them and correct this error. As a summary, the thrust of the opponent’s submissions is that there are significant gaps or inconsistencies in the explanation, that Macpherson Kelley Ptd Ltd or other parties did not act reasonably and diligently in accepting that the evidentiary periods reported to them were correct, and that Pizzeys did not act reasonably and diligently, at all times, in updating the deadline for filing evidence. More specifically:
· They argue that the onus lies on the patentee to justify the extension, and that information has been withheld prior to the 12 June 2024 letter from IP Australia bringing into doubt reasonableness and diligence of actions.
· Inconsistencies in information provided by Mr Watterson in relation to the use of Inprotech and updating of deadlines mean that the Commissioner should have doubt as to the patentee’s explanation of the error and as a result, not be satisfied that the requisite reasonable and diligent action is present at all times.
· That it remains unclear who received the email and attachment of 17 January 2024 and in the presence of the redaction of recipients, it is unclear whether any of the other recipients have had a responsibility for monitoring and managing deadlines.
· It is not reasonable and diligent in approaching deadline management for Macpherson Kelly to merely consider the main body of the 19 January 2024. Instead it is necessary to consider the totality of the information provided.
· There are several errors in this matter and not a simple single error.
· It would have been reasonable and diligent for Pizzeys to question the system configuration at the various stages of the process.
PATENTEE’S SUBMISSIONS
The patentee’s submissions accept an error on the part of Mr Watterson and that it arose as a result of reliance on the firm’s docketing system which operated on rules which generated a due date 3 months (and not 2 months) after the relevant event was created. They suggest that satisfactory action under regulation 5.9 does not require Macpherson Kelly to not accept a filing date reported to them by a patent attorney and that any alleged inconsistencies go nowhere in the present circumstances.
CONSIDERATIONS
The 17th of January letter from IP Australia
The first avenue of analysis presented by the opponent relates to the circumstances of the 17 January 2024 letter from IP Australia. In that letter, IP Australia wrote to the parties stating that evidence in support is complete and made clear in that letter that the patentee’s evidence would be due in two months (effectively being 17 March 2024). While the delegate in considering the request initially could not find evidence that this 17 January letter was sent by Pizzeys to Macpherson Kelly, subsequent declarations from Watterson #2 and Woolley #2 make clear that this letter was forwarded to other parties, including Macpherson Kelly and the patentee. They state:
“I have acted promptly to forward all documents to all parties including my client, the solicitor, barristers and the expert witness.”[13]
“On 19 January 2024, I received an email from Mr Peer Watterson of Pizzeys which attached a copy of the 17 January 2024 letter from the Australian Patent Office.”[14]
[13] Watterson #2 at [91]
[14] Woolley #2 at [8]
With this in mind the opponent submits:
“Woolley #2 was filed after the Opponent requested this hearing and indicated its intention to seek a Notice to Produce in relation to the 17 January Office Letter. Woolley #2 provides a redacted copy of the 19 January 2024 email correspondence (Annexure JDW2-01). Thus, the Patentee has elected to withhold the details of other recipients of the 17 January Office Letter. It is submitted the Commissioner should not be satisfied that all relevant parties have acted promptly and diligently in the face of incomplete information.
In view of omissions in the evidence presented in advance of the 12 June Office Letter [being the delegate’s intention to grant an extension of time letter], it is submitted that the Office arrived at an incorrect conclusion. Due to the information withheld by the Patentee’s representatives, the Patent Office has been led towards making a favourable inference in determining that the 17 January Office Letter was never provided to other parties by Pizzeys.”
I think the opponent’s submission is a little over the top. Firstly, it is clear that the 17 January 2024 letter from IP Australia was provided to parties by the patent attorney and I see no evidence of the patentee misleading the delegate of the Commissioner in this regard. I note that the patentee has not shared all the details of all recipients, however in and of itself I do not see a specific issue with this approach, nor does it generate any substantiated suspicion as to the conduct of parties in my mind. Regardless of who received this email I think the same question is to be asked of the circumstances. This question is regardless of who received the 19 January 2024 correspondence from the patent attorney (or any other relevant correspondence for that matter), was it reasonable, prompt and diligent that the information in the various correspondence from the attorney was considered in the way that it was to continue to arrive at an incorrect understanding of the relevant due date. In other words, I do not think it is useful to speculate whether other (unknown) parties had a responsibility for monitoring and managing deadlines. In my mind it is reasonable to assume that any of these unknown parties’ actions can be assessed in the same light as the actions of Macpherson Kelly. I will thus assess the appropriateness of the actions of the parties in receipt of the correspondence from the patent attorney against the actions of Macpherson Kelly.
Were the Actions of Macpherson Kelly reasonable, prompt and diligent?
The opponent initially points to the statement in Woolley #2 at [10] which notes:
“In my experience, it is not MK’s practice to double check the advice we receive from patent attorneys in relation to procedural matters including in relation to deadlines. In this particular case, consisted with our usual practice, I did not check that Pizzey’s advice in relation to the evidence deadline was correct.”
The opponent then notes that the following information was provided to Macpherson Kelly:
· Email of 19 January stating deadline is 17 April 2024
· Attachment to email of 19 January being letter from IP Australia stating evidence is due 2 months from 17 January 2024
· Email of 2 November 2023 stating deadline is expected to be on 27 April 2024
· Email of 20 November 2023 stating evidence in answer will be due around 17 March 2024
· Email of 16 January 2024 indicating that a good working deadline would be 17 April 2024
· Correspondence of IP Australia dated 8 and 17 November 2023 indicating evidence in answer would be due two months after evidence in support is complete.
The opponent suggests that the guidance to Macpherson Kelly up until 15 January 2024 was that the deadline was likely to be around 17 March 2024, and that on 19 January 2024 Macpherson Kelly became aware that evidence in support was complete. They point out that at no point did Macpherson Kelly seek to clarify the deadline or calculate the deadline themselves and thus argue a lack of reasonableness and diligence where several opportunities to correct the understanding were missed. With this in mind the opponent raises issue with:
· A lack of understanding of steps taken by Macpherson Kelly to record a due date for evidence in support and answer after receiving the email of 20 November 2023
· A lack of understanding of Macpherson Kelly’s docketing processes, including the recording of the deadline following the receipt of the 19 January 2024 email
· Whether in the presence of conflicting information, Macpherson Kelly questioned the discrepancy in reported deadlines.
In summary it appears that the opponent argues that Macpherson Kelly should have done more so to speak as a full-service law firm, and bears responsibility for monitoring and managing deadlines particularly in view of repeated discrepancies.
In short, I do not see any substantial gravity to the submissions of the opponent in arguing that actions needed to have been performed by Macpherson Kelly throughout the period in order to identify correct due dates. What is relevant is that Macpherson Kelly have reasonably put faith in the advice of the patent attorney and appropriately waited until a firm confirmation of a date as received on 19 January 2024 on which to act, this date being 17 April 2024 as an understood deadline for evidence in support. As pointed out by the patentee:
“It is entirely orthodox and reasonable for solicitors to accept a date for filing (or otherwise) reported to them by a patent attorney. As set out in Woolley #2, Macpherson Kelly does not generally deal with the patent office: [6]. Instead, Macpherson Kelly is generally reliant on patent attorney’s to liaise with the Patent Office and notify it of relevant deadlines… reliance on reporting from Pizzeys (specifically) as well as other attorney firms has been the practice at Macpherson Kelly and has yielded compliance with deadlines previously. Second, the date reported was not a date which was unreasonably, obviously or strikingly incorrect… As far as a division of labour, it is entirely reasonable to assume the patent attorney, responsible for liaising with the Patent Office and thus receiving correspondence, would report the outcome of the correspondence accurately.”
I completely agree with the patentee. To the extent that the opponent focusses on an ignorance by Macpherson Kelly of the totality of information provided (including the attachment and earlier correspondence) as opposed to merely the content of the email of 19 January 2024, I note that the earlier correspondence was couched in approximation and prediction as opposed to definitive dates. I do not see it as unreasonable to simply wait for and accept the clear statement made in the email of 19 January 2024 of the due date (being 17 April 2024) and not seek to analyse the attached office correspondence or earlier information to check its correctness. It is simply an efficient approach to give faith to the advice of the patent attorney remembering that an extension of time does not seek a standard of perfection. I do not see it necessary for me to be provided with further information as to the steps taken by Macpherson Kelly to record due dates, use a docketing system, or question discrepancy. Macpherson Kelly waited until receiving a clear statement of a due date for evidence before proceeding with their understanding of the due date. I consider this consistent with reasonable action, and do not see any reasons for a lack of promptness and diligence in this regard as ultimately evidence was completed well within the assumed deadline of 17 April 2024 this only being one month later than the actual deadline. No doubt it would have been more diligent to identify the discrepancy in the due date, but this is action above that required to satisfy me of sufficiently diligent action in the circumstances.
Furthermore, I see no reason to not extend this logic to any possible recipient of the patent attorney’s emails and correspondence.
Were the Actions of Pizzeys patent attorneys reasonable, prompt and diligent?
The opponent seeks to make clear that they do not dispute Mr Watterson’s evidence regarding the 17 January 2024 letter from IP Australia. Instead, the opponent points to alleged inconsistencies between his recollection and the information from the Pizzeys’s docketing system (Inprotech) to argue that it cannot be established that Pizzeys acted reasonably and diligently at all times when updating deadlines for filing evidence. In other words I understand that they suggest that there is sufficient doubt as to reasonableness and diligence at all times exists arising through this inconsistency, and thus an extension should not be granted. In this regard, the opponent points to statements made by the Watterson evidence regarding the records in Inprotech generated prior to 17 April 2024.
Fundamentally the opponent points to statements in the evidence of Watterson which make somewhat unclear whether the Inprotech system was reporting 17 April or 27 April 2024 as a due date around 17 January 2024. They argue that no explanation is provided for why, as recalled by Mr Watterson in his evidence, an evidence due date of 27 April 2024 was suggested by Inprotech given the system configuration which adds three months to what seemed to be an earlier recorded due date for the filing of evidence in support being 17 January 2024.
I will not dive any deeper into this issue. Firstly, there is nothing before me that suggests Mr Watterson’s evidence in not provided to the best of his recollection. It is largely beside the point as to whether the system is calculating 17 April or 27 April as due dates for the filing of evidence in answer. Both of these dates are incorrect and clearly well after the correct due date for the patentee to file evidence. As submitted by the patentee, these alleged inconsistencies simply go nowhere:
“Further and in any event, the alleged inconsistencies raised go nowhere in the circumstances. The vice in Mr Watterson’s reliance on Inprotech in the circumstances is that the rule configuration involved calculation by reference to a 3 month period, where in fact a 2 month period applied. Whether the system was updated earlier or not (as between 17 and 27 January 2024) would not have changed that rule configuration or resulted in the Applicant working towards the true date.
Further, and quite appropriately, the Opponent expressly does not dispute that Mr Watterson has given evidence to the best of his recollection (see OS [53]). Absent directly contradictory information, the unsupported queries raised by the Opponent go nowhere.”
Ultimately the patentee summarises the issues well as follows:
“In the context of Gutter Grip’s opposition to Interit’s application to amend the Patent, Interit was working towards the incorrect date to file its evidence in answer.
Prior to this error, Interit had filed all documentation and evidence on time.
The date the evidence in answer was due was 17 March 2024. Interit was erroneously working towards a deadline in April 2024; initially 27 April 2024 and then 17 April 2024.
Interit’s patent attorney, Mr Watterson was responsible for reporting the due date of the evidence in answer to Interit’s legal team (as well as Interit): Woolley #2 [9]. The error arose as a result of Mr Watterson’s reliance on his firm’s docketing system, Inprotech, which at the time was operating on rules which generated a due date 3 months (and not 2 months) after an event or date was created or entered: see e.g., Watterson 1 [18]-[22].
No challenge to the veracity or honesty of Mr Watterson has been advanced: OS [53]. It is accepted, and does not appear to be challenged by Gutter Grip, that the system was incorrectly configured: see for example Office Correspondence 10 May 2024; OS [53]. It is also accepted that despite his erroneous belief that the system was correctly configured, the conduct of Mr Watterson in endeavouring to understand the process of s 104 oppositions was reasonable and diligent.”
While errors have occurred during the relevant period and one can even argue that there are multiple “points of failure” or “several errors”, the fundamental cause is a reasonable reliance upon the attorney firm’s docketing system which operated on rules which generated a due date 3 months (and not 2 months) after the relevant event was created. For an agent with limited experience in section 104 matters it is not an unreasonable mistake to assume appropriate rules in the docketing system, these being built seemingly upon more common oppositions such as those under section 59 which attract three-month evidence periods. An incorrect assumption will often present multiple points at which it could be corrected, however I see no reason why Mr Watterson could not maintain a reliance on his assumption at various points in the process at least for a reasonable period of time. It would have been particularly diligent if Mr Watterson had questioned the system configuration at particular points of failure during the relevant time period, but I cannot see how this can weight sufficiently against a reasonably founded assumption, while erroneously maintained, that was quickly rectified in a relatively short period of time.
The patentee completed their original plan to file evidence, this being done well within the assumed and incorrect period (only being one month longer than the correct period). Helpfully, upon realising the error, they clearly acted quickly to seek an extension and file evidence. I see the actions of all relevant parties in the circumstances as reasonable, prompt and diligent. Although not perfect, it’s fair to say nobody is perfect, and it must be the case that the principles take this into account.
Discretionary matters
Normally, once the mandatory requirements of paragraph 5.9(2)(a) have been met, an extension is not automatic; the Commissioner “may” extend the period for filing evidence. While my power to extend the time for filing evidence in this matter sits under regulation 5.12 and not 5.9 it is nonetheless broadly discretionary. The information I have on file satisfies me on balance, that an extension should be granted. I see no further reason to not exercise my discretion.
CONCLUSION
I am satisfied that a case has been made for the enlivenment of my discretion to grant an extension. I grant the request for an extension of time to file EIA until 8 April 2024. The applicant filed evidence on 8 April 2024 and evidence in answer is thus complete. In accordance with a delegate’s direction of 17 November 2023, evidence in reply is due within one (1) month from the date of this decision.
I see no basis to deviate from the normal process to award costs against an unsuccessful party. As such I award costs in accordance with Schedule 8 of the Regulations regarding the hearing of the request for an extension of time against Gutter Grip Australia Pty Ltd.
Dr N. R. Madsen
Deputy Commissioner of Patents
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