Gutter Grip Australia Pty Ltd v Interit Pty Ltd - [2024] APO 42

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)…

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: [2024] APO 42
Decision Date: 11 October 2024

CaseChat Overview and Summary

Gutter Grip Australia Pty Ltd has opposed amendments made to a patent held by Interit Pty Ltd. The opposition is based on a procedural opposition under section 104 of the Patents Act. The key issue before the court was whether the patentee, Interit, should be granted an extension of time to file evidence in answer in the opposition. The patentee had missed the deadline for filing evidence in answer and sought an extension of three weeks and one day. The court considered whether Interit had made all reasonable efforts to comply with the relevant filing requirements, had acted promptly and diligently at all times, and whether there were exceptional circumstances warranting an extension. The court found that Interit had made reasonable efforts, acted promptly and diligently, and granted the extension of time. The court also ordered that evidence in reply is due within one month from the date of the decision and awarded costs against Gutter Grip Australia Pty Ltd.

Orders