Jurox Pty Ltd v Nufarm Limited - [2006] APO 8

ABSTRACTS OF DECISIONS
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No. 772988 in the name of NUFARM LIMITED

Title: Stable Biocidal Compositions

Action: Application for an extension of time by NUFARM LIMITED to serve evidence in answer, and an objection thereto by JUROX PTY LTD

Decision: Issued 10 March 2006.
Abstract

The explanation provided an adequate explanation of the delay and of progress made, and justifies an extension of time.
The argument that Nufarm were unduly and unreasonably protracting the Opposition proceedings is not borne out by the explanation provided. This explanation does show that Nufarm have been diligent in preparing evidence in answer.
On balance the parties’ interests supported an extension, as did the public interest in having a serious opposition decided on its merits.
Extension granted.
Costs awarded against Jurox.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No. 772988 by Nufarm Limited; Application for an extension of time by Nufarm Limited to serve evidence in answer, and an objection thereto by Jurox Pty Ltd.

BACKGROUND

Patent application 772988 in the name of Nufarm Limited (“Nufarm”) was filed on 2 June 2000 as PCT/NZ00/00087, for an invention titled “Stable biocidal compositions”. The application was advertised accepted on 13 May 2004. On 12 August 2004, Jurox Pty Ltd (“Jurox”) filed a notice of opposition. A statement of Grounds and Particulars followed on 12 November 2004 and evidence in support was served on 14 February 2005. Nufarm requested, and were granted, three extensions up to 14 January 2006 to serve evidence in answer.
On 13 January 2006, Nufarm requested another extension of time to 14 March 2006, and Jurox objected to this extension.
The request for the extension of time to file evidence in answer and the objection thereto was heard in Canberra on 14 February 2006. Jurox filed written submissions in support of its objection. Nufarm filed written submissions and were also represented by Ms Virginia Beniac-Brooks, patent attorney of Phillips Ormonde & Fitzpatrick, Melbourne, who appeared by telephone.
THE APPLICATION FOR AN EXTENSION OF TIME
The circumstances in which, and the grounds upon which, the application for an extension of time was made were given as follows:
“Our Australian Attorneys have completed Mr Sorenson's Declaration and it has been sent to us for review. Unfortunately Mr Sorenson has been tied up on a number of matters leading up to the Christmas (sic) and therefore requires further time to consider his evidence. In addition during the month of December our Australian Attorneys tried many times to schedule a meeting with Counsel to have this evidence settled. However, unfortunately Counsel has been tied up on a number of other matters including a couple of court hearings and was unable to dedicate sufficient time to consider the evidence prior to Christmas. Our Australian Attorneys have re-scheduled the meeting for the first week in February when counsel return to chambers. At this stage we anticipate that this Declaration will be served on the Opponent within the further period sought.
Our Australian Attorneys have also prepared a declaration for the second inventor Mark Vickers and forwarded a copy to him for his input, Unfortunately Mr Vickers has been involved in a number of field trials during the months of November and December and has been away from the office. At this stage Mr Vickers has not had a chance to consider his evidence, however, he has assured our Australian Attorneys that he will review the draft Declaration within the next few weeks and provide his comments. Further time is therefore required for Mr Vickers to consider the draft and to provide comment; for our Australian Attorneys to consider those comments and to make the necessary amendments to the declaration. Further time is required for us to review to the Declaration and approve it; for it to be settled by Counsel, executed by the inventor and served on the Opponent.
Our Australian Attorneys met with the independent expect (sic) witness prior to Christmas in relation to his evidence. As a result of that meeting further changes are needed to this expert's evidence. At this stage our Attorneys are endeavouring to have a further draft of the Declaration to the expert in the next week or so and, subject to his availability, for the expert to provide his comments within two weeks. It is our Australian Attorney's aim to have this Declaration settled by counsel at the same time as the Sorenson declaration. Our Attorneys are also still awaiting the expert's comments on some additional documents. Further time is therefore required for the declaration to be revised and sent to the expert; for the expert to provide his comments; for the declaration to be finalised, reviewed and approved by us and for it to be settled by Counsel. Finally additional time is required for the declaration to be executed by the expert and served on the Opponent.”
THE LAW ON EXTENSIONS OF TIME
Extensions to the time limits to file evidence in oppositions is at the discretion of the Commissioner, and is governed by subregulation 5.10(2). The Federal Court has considered the requirements of regulation 5.10 in Ferocem Pty Limited v. Commissioner of Patents (1994) 28 IPR 243, A Goninan and Co Ltd v Commissioner of Patents and Another (1997) 38 IPR 213, and National Starch & Chemical Company v Commissioner of Patents (2001) 50 IPR 398. The relevant considerations arising from these decisions have been set out and followed in numerous patent office decisions relating to regulation 5.10, and may be summarised as follows:
(a)The broad discretion afforded by Regulation 5.10 cannot be reduced to insistence on imperative compliance with particular requirements;
(b)The exercise of this discretionary power requires proper, genuine and realistic consideration of all the relevant aspects that pertain to the application;
(c)The provision of a satisfactory explanation of the delay is a relevant consideration, but is not mandatory;
(d)The public interest in determining a serious opposition on its merits is a relevant consideration and must be balanced with the requirement that matters before the patent office should be dealt with in an efficient, orderly manner and not be unduly prolonged;
(e)The interests of the opponent, the applicant and any other parties are a relevant consideration.
In summary, it is clear from these decisions that the Commissioner, having given both parties the opportunity to make representations, may grant an extension only if reasonably satisfied that it is appropriate in all of the circumstances.
RELEVANT CONSIDERATIONS
Explanation of the delay
Jurox submitted that Nufarm has not provided an adequate basis for the extension of time in its application and have been lacking diligence in preparing evidence in answer. They submitted that the present application for an extension of time filed by Nufarm recites many of the same reasons given in previous extension applications as to why the evidence has not yet been served, and submitted that Nufarm are unduly and unreasonably protracting the Opposition proceedings.
Nufarm, in their submissions, refuted Jurox’s arguments and provided detailed information regarding the circumstances that had resulted in the present request being filed, and the progress that had been made in preparing the evidence in answer. These were:
In their first extension request, Nufarm stated that a draft declaration was being prepared for Mr Sorenson and would be sent to the declarant for his further comment, but time would be needed to incorporate any comments, to finalise the declaration and for execution and service. In the second extension request, the draft had been prepared and sent to Mr Sorenson but he had been unable to consider the draft in any detail due to work commitments, and had only provided some comments. By the third extension request, Mr Sorenson had provided comments and Nufarm stated that the Australian Attorney would be forwarding the declaration to the Applicant for review and approval. It was anticipated at this stage that the declaration would be settled by counsel within the next month. In the present extension request, Nufarm stated that Mr Sorenson had been unavailable prior to Christmas and needed more time to consider his evidence. Further, Counsel was unable to consider the evidence prior to Christmas, and a meeting could not be rescheduled until the beginning of February.
In their first extension request, Nufarm also indicated that they were seeking to locate an additional expert, but that further time would be required to locate a suitable expert and for him to review and comment of the Opponent’s evidence. In the second extension request, an expert had been located and a draft declaration had been prepared but further time was required for this expert to consider the draft. By the third extension request, the expert had provided comments on a draft and it was expected that the declaration could be settled by counsel within a month. In the present extension request, Nufarm indicated that as a result of a meeting with the expert, further changes were needed, as were comments on some additional documents. It was anticipated that these could be made and the declaration settled within the further time period sought.
At the second extension request, Nufarm indicated that the second inventor, Mr Mark Vickers, had become available to assist, but had not yet met with the Attorneys. Further time would be therefore required for Mr Vickers to consider and provide comments on the evidence, and for a declaration to be drafted, settled and executed. By the third extension request, a draft declaration was in preparation but had not yet been considered by Mr Vickers. In the present extension request, Nufarm submitted that the declaration had been prepared and sent to Mr Vickers, but that he had been absent on field work for several months and had not yet reviewed the draft.
In their submissions, Jurox further suggested that, based on the information provided in previous applications for extensions of time, it is ambiguous to determine whether Nufarm seriously intend to file their evidence within the extension of time period sought.
This submission was also refuted by Nufarm, who argued that while they did advise that they hoped to have declarations served within a certain timeframe, circumstances beyond their control prevented this from occurring. The unavailability of both Mr Sorenson and Counsel led to unexpected delays that prevented the evidence being served within the desired timeframe.
In my view, the position taken by Jurox regarding lack of diligence is simply not borne out by the explanation provided by Nufarm. In my opinion, each explanation clearly indicates progress by Nufarm (albeit slow) towards filing and serving their evidence in answer.
In regard to Jurox’s suggestion that there was doubt as to whether Nufarm would file evidence, I note that during the hearing, Nufarm made an undertaking that no further extensions of time would be sought and that they fully expected the evidence in answer to be served by 14 March 2006. This should dispel Jurox’s doubts.
The explanation provided justifies an extension of time.
The Public Interest
As submitted by Jurox, the public interest has two components. The first is that a serious Opposition should be dealt with on its merits. The second is that the proceedings before the Commissioner should be conducted in an efficient and expeditious manner. Nufarm agreed with the first of these points, but made no submission regarding the second.
There is no doubt that the current Opposition is serious, involving allegations of a lack of inventive step in light of eleven prior art documents. In order to determine the opposition on its merits, Nufarm should be entitled to meet the allegations with relevant repudiating evidence. This supports the granting of an extension.
Regarding expeditiousness, at the hearing, Nufarm gave an undertaking that no further extensions would be sought and that the evidence would be finalised and served by 14 March 2006. This evidence has since been filed. The public interest is therefore served for both considerations – as the evidence has now been filed the opposition would be determined on its merits.
In my view, the public interest therefore supports granting the extension.
Interest of the Parties
Clearly the interests of Nufarm are in obtaining the extension in order to serve its evidence in answer. To refuse the extension would be fatal to Nufarm’s case as they would have lost their sole opportunity to refute the Opponent’s allegations.
Jurox submitted that the public (including competitors and customers) is inconvenienced by this extension of time request since, as a result of the delay, uncertainty remains as to the scope of the claims which might be granted on the subject application. They claimed that competitors are being commercially disadvantaged so long as the scope of the claims remains unclear.
Nufarm refuted the contention that the opponent’s interests were being harmed by the present extension request. They argued that after three previous requests for an extension of time, this is the first time that the Opponent has expressed any concern with the time being taken for Nufarm to prepare its evidence. Furthermore, it was Nufarm’s belief that Jurox’s commercial product continued to be manufactured and sold in Australia and that the company was not suffering any detriment commercially.
I am satisfied that the interests of the parties, on balance, lies in granting the extension.
DECISION
The explanation given justifies granting the extension. Nufarm provided an adequate explanation of the delay and their explanation shows progress towards preparing evidence, even if this progress has been slow. The argument that Nufarm are unduly and unreasonably protracting the Opposition proceedings is not borne out by the explanation provided, which does indicate diligent preparation of the required evidence.
I allow the extension. The time for filing evidence in answer is extended to 14 March 2006.
COSTS
Both Nufarm and Jurox made submissions on costs. Nufarm’s submission was that costs should follow the event. Jurox submitted that, even if an extension was granted, the explanation did not provide an adequate basis for the extension of time application and hence they should be awarded costs.
While it can be said that the Commissioner has, on occasion, awarded costs against the party that received an extension, such decisions are made in light of manifestly inadequate explanations and/or a lack of diligence. Neither is the case here. In my view, costs should follow the event. I award costs against Jurox.
GREG POWELL
Delegate of the Commissioner of Patents
10 March 2006
Patent attorneys for the applicant : Philips Ormonde & Fitzpatrick
Patent attorneys for the opponent : FB Rice & Co