Innovia Security Pty Ltd v Visual Physics LLC - [2014] APO 15

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Innovia Security Pty Ltd v Visual Physics LLC [2014] APO 15

Patent Application: 2010226869

Title:Micro-optic security and image presentation system

Patent Applicant:  Visual Physics LLC
Opponent:  Innovia Security Pty Ltd
Hearing Officer:  P M Spann, Deputy Commissioner of Patents
Decision Date:  05 March 2014
Hearing Date:  Written submission completed 29 January 2014
Catchwords:  PATENTS – extension of time to file evidence in reply – reg 5.9 – whether applicant has acted promptly and diligently at all times – whether circumstances beyond control – extension refused.

Representation: Patent applicant: Shelston IP
Opponent:Watermark

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2010226869

Title:Micro-optic security and image presentation system

Patent Applicant:  Visual Physics LLC
Opponent:  Innovia Security Pty Ltd
Date of Decision:  05 March 2014
DECISION
Extension of time refused.
REASONS FOR DECISION

This matter concerns a request for an extension of time to file evidence in reply and is determined under regulation 5.9 of the Patents Regulations as amended on 15 April 2013 by the Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (No 1).
Background
Patent application 2010226869 was filed by Visual Physics LLC (Visual) on 30 September 2010 as a divisional of 2004294182.
The present application was advertised as accepted on 17 November 2011 and a notice of opposition to the grant of a patent was filed in the name of Securency International Pty Ltd on 17 February 2012. A statement of grounds and particulars was served and filed on 17 May 2012 and the evidence in support completed on 24 May 2013 after several extensions of time were obtained. The opponent advised the Commissioner of its change of name to Innovia Security Pty Ltd (Innovia) on 19 March 2013.
Visual on 8 August 2013 filed a request to amend the complete specification together with a request for the Commissioner to stay the opposition proceedings. The latter request was refused. On 22 August 2013 Visual filed a further statement of proposed amendments and it then completed its evidence in answer on 26 August 2013. As a consequence Innovia was required to file an intention to file evidence in reply by 26 September 2013.
On 8 August 2013 Innovia requested a delay in the period for filing evidence in reply pending the outcome of the amendment request. Visual opposed that request and ultimately the delegate refused it finding that the scope of the proposed amendments did not warrant a delay in the filing of evidence.
Innovia filed notice of its intention to file evidence in reply on 26 September 2013. Consequently evidence in reply was due by 26 November 2013. It filed a declaration by Dr Hardwick as part reply evidence on 25 November together with a request for an extension of time of two months for the completion of its evidence. The delegate however was not convinced that an extension was justified and on 29 November 2013 invited Innovia to address the concerns that he had raised. Innovia responded to that invitation on 6…

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: [2014] APO 15
Decision Date: 5 March 2014

CaseChat Overview and Summary

Innovia Security Pty Ltd sought an extension of time to file evidence in reply to Visual Physics LLC’s opposition to the grant of patent application 2010226869. The application was for a micro-optic security and image presentation system. The opposition was filed on 17 February 2012. Innovia filed its evidence in support on 24 May 2013. Visual filed its evidence in answer on 26 August 2013 and Innovia was required to file its evidence in reply by 26 November 2013. Innovia filed a declaration on 25 November 2013 and applied for an extension of time. The delegate refused the application and Innovia applied for a hearing. Visual opposed the extension. The primary legal issue was whether the Commissioner had the power to grant an extension of time under regulation 5.9 of the Patents Regulations as amended on 15 April 2013. The Commissioner could extend the time for filing evidence in reply if satisfied that: (a) the party had made all reasonable efforts to comply with all relevant filing requirements and was unable to file the evidence in time despite acting promptly and diligently at all times to ensure the evidence was filed in time; or (b) there were exceptional circumstances that warranted the extension. The Commissioner was satisfied that Innovia had not acted promptly and diligently at all times in preparing its evidence in reply. Innovia had obtained four extensions of time amounting to 10 months for filing evidence in support. The Commissioner was not satisfied that there were exceptional circumstances that warranted the extension of time. The Commissioner refused the application for an extension of time. Innovia may apply for leave to file the declaration as further evidence under subregulation 5.10(4) as it existed before 15 April 2013. Otherwise, the declaration may be information that the Commissioner takes into account under regulation 5.11 as it existed before 15 April 2013. Innovia was ordered to pay Visual’s costs of the hearing.

Orders