Innovia Security Pty Ltd v De La Rue International Limited - [2014] APO 46

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Innovia Security Pty Ltd v De La Rue International Limited
[2014] APO 46
Patent Application: 2008243094

Title:Arrays of Microlenses and Arrays of Microimages on Transparent Security Substrates

Patent Applicant:  De La Rue International Limited
Opponent:  Innovia Security Pty Ltd
Delegate:  Matt Kraefft
Decision Date:  26 June 2014
Hearing Date:  Written Submissions, completed on 6 June 2014
Catchwords:  PATENTS – extension of time to file further evidence – Patent Regulation 5.10 as in force before 15 April 2013 – amended statement of grounds and particulars – new material in evidence in reply – response by way of further evidence from applicant – satisfactory explanation of delay – public interest favoured allowing the extension – extension of time allowed.

Representation: Patent applicant: Davies Collison Cave, Melbourne.
Opponent:Watermark, Melbourne.

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2008243094

Title:Arrays of Microlenses and Arrays of Microimages on Transparent Security Substrates

Patent Applicant: De La Rue International Limited
Date of Decision: 26 June 2014
DECISION
The applicant has provided a satisfactory explanation for the delay in filing further evidence. The public interest favours allowing the requested extension of time. The interests of the parties are largely offset. On balance it is appropriate to extend the time.
Extension of time allowed until 1 August 2014 to file further evidence.
REASONS FOR DECISION
Background

In a decision dated 1 April 2014 (Innovia Security Pty Ltd v De La Rue International Limited [2014] APO 18), a delegate of the Commissioner allowed an amendment of the opponent’s statement of grounds and particulars in this opposition. Consequential to allowing that amendment, the delegate also allowed the applicant one (1) month from the date of the decision to file further evidence.
On 1 May 2014, the applicant filed an application for an extension of time to file its further evidence. The extended period sought was three (3) months up to 1 August 2014.
The opponent objected and requested to be heard.
The hearing was conducted by means of written submissions. Both parties filed written submissions.
Applicable law
On 15 April 2013, the Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (No.1) commenced (“the RTB Regulation”). This regulation significantly amended the Patent Regulations 1991 as they apply to patent oppositions. The ability to file further evidence is not available for oppositions commenced on or after 15 April 2013. For oppositions commenced before 15 April 2013, the provisions of the previous regulation 5.10 of the Patent Regulations allowed the filing of further evidence. The present opposition is in the latter category.
The law governing extensions of time to file evidence in a patent opposition has also changed under the RTB Regulation. New regulation 5.9 covers extensions of time which is generally stricter than the previous regulation 5.10 for extensions of time. The appropriate provision for an extension of time to file evidence depends on the date on which the relevant evidentiary period commenced. This follows from sub-regulation 23.36(2), item 2, of the RTB Regulation. In this…

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.

Continue reading Innovia Security Pty Ltd v De La Rue International Limited

Details

AGLC: Innovia Security Pty Ltd v De La Rue International Limited [2014] APO 46
Case: [2014] APO 46
Decision Date: 26 June 2014

CaseChat Overview and Summary

Innovia Security Pty Ltd opposed the patent application of De La Rue International Limited on various grounds. The opposition proceedings have been ongoing for almost four years. In a decision dated 1 April 2014, the Commissioner's delegate allowed an amendment to Innovia's statement of grounds and particulars. As a result, the delegate also granted De La Rue one month to file further evidence. De La Rue applied for an extension of time to file this evidence until 1 August 2014. Innovia objected and requested to be heard on the matter. The delegate considered the matter on the basis of written submissions from both parties. The delegate concluded that De La Rue had provided a satisfactory explanation for the delay in filing further evidence. The public interest favoured allowing the requested extension of time, as the opposition proceedings had been ongoing for almost four years and the extension would not be particularly detrimental in the overall proceedings. The interests of the parties were largely offset. The delegate allowed the extension of time until 1 August 2014 for De La Rue to file further evidence. The delegate also awarded costs against Innovia.

The primary issue for the delegate to decide was whether to grant De La Rue's application for an extension of time to file further evidence in the opposition proceedings. Relevant considerations included the reason for the delay, the public interest, and the interests of the parties. The delegate concluded that De La Rue had provided a satisfactory explanation for the delay. The public interest favoured allowing the extension of time, given the length of the proceedings and the limited additional time requested. The interests of the parties were largely offset. The delegate therefore allowed the extension of time until 1 August 2014 for De La Rue to file further evidence. The delegate also awarded costs against Innovia, as it had been unsuccessful in its objection to the extension of time.

Orders