Macquarie University v HealthLinx Limited

[2009] APO 1

ABSTRACTS OF DECISIONS

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Application  :          No. 2003250621 in the name of HealthLinx Limited

Title:          Depletion of plasma proteins

Action:          Request for an extension of time to serve evidence in support of an opposition by Macquarie University

Decision:          Issued 14 January 2009

Abstract

Extension of time granted.

Although an explanation of the reasons for the delay was not provided, the extension was granted on the basis of the nature and significance of the evidence:  copies of citations, evidence of the common general knowledge and evidence of construction of the specification.

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Patent Application No. 2003250621 by HealthLinx Limited, and a request to extend the time for serving evidence in support of an opposition by Macquarie University

BACKGROUND

1. HealthLinx Limited is the applicant for patent application 2003250621.  Macquarie University have opposed the grant of a patent.  The period for serving evidence in support of the opposition has been extended from 12 May 2008 to 12 November 2008 without objection.  A further request for extension of time until 12 February 2009 was filed on 12 November 2008.  The applicant objected to the extension, and the matter was heard by telephone on 17 December 2008.  HealthLinx was represented by John Slattery and Helen Mutimer of Davies Collison Cave.  Macquarie University was represented by Tom Gumley of Freehills.

2. The application for extension of time states that the circumstances for the extension are:

   “As of the previous extension request, the Opponent has continued preparation of evidence in support.  In particular, an expert witness has been retained and is now reviewing the opposed application.  Further time is requested for the expert to review the specification of the allowed application and for the expert’s evidence to be documented in the form of declaration.

   A serious opposition is foreshadowed against this application.”

   At the hearing, I was informed that another circumstance is that the parties are continuing to negotiate a settlement.  As this appears to be true as a matter of fact, I have had regard to this circumstance.

   DECISION

3. The law on extensions of time has been summarised in numerous decisions of the Commissioner.  The key points are that the time for serving evidence can be extended under regulation 5.10, and that it is a prerequisite to any decision that the Commissioner must ensure that the other party has been notified, and that both parties have had the opportunity to make representations.  In the present case these prerequisites have been satisfied.

4. An extension can only be granted if the Commissioner is reasonably satisfied that it is appropriate.  In exercising this discretion I am guided by the decisions of Burchett J in Ferocem Pty Ltd v Commissioner of Patents (1994) AIPC 91-057; 28 IPR 243, Sackville J in A Goninan & Co Ltd v Commissioner of Patents (1997) AIPC 91-330; 38 IPR 213 and Goldberg J in National Starch & Chemical Co v Commissioner of Patents (2001) AIPC 91-697, 50 IPR 398. These decisions establish that:

   a)  The power is discretionary:    Regulation 5.10 confers a broad discretion, which cannot be reduced to imperative compliance with particular requirements.  It is necessary to give genuine and proper consideration to all relevant considerations.  (Ferocem at AIPC 38,208; IPR 247-8,  Goninan at AIPC 39,434; IPR 220)

   b)  Explanation of delay: The reasons why the evidence was not served earlier are a relevant consideration, but a satisfactory explanation is not a mandatory requirement.  (Ferocem at AIPC 38,207-8; IPR 247)

   c)  The public interest:     The public interest in determining a serious opposition on its merits is a relevant consideration.  (Goninan at AIPC 39,435-6; IPR 222)

   *         In order to do this, it is necessary for the Commissioner to form a view as to the nature of the evidence that it is sought to adduce, and the significance of that evidence for the opposition proceedings.  (Goninan at AIPC 39,438; IPR 225-6)

   *         The significance of the evidence is assessed having regard to any relevant material available, not just the evidence itself.  (National Starch at [33])

   *         The public interest is not protected merely because some evidence has already been served.  (Goninan at AIPC 39,438; IPR 225)

   d)  The interests of the party seeking the exercise of discretion: The interests of the party seeking the exercise of discretion are a relevant consideration.  (Ferocem at AIPC 38,208; IPR 247)

   e)  The interests of other parties: It is relevant to consider the disadvantage to the other party of delays in determining the opposition, and the effect of delays on the efficient and orderly administration of the Patents Office.  (Ferocem at AIPC 38,208; IPR 247,  Goninan at AIPC 39,436; IPR 222)

5. Mr Slattery referred me to the decision of the Deputy Commissioner in Kent-Moore Corp v Environmental Products Amalgamated Pty Ltd (1992) AIPC 90-915. In Ferocem, Burchett J was critical of the approach taken in Kent-Moore, and I believe it is appropriate to follow the approach laid down by the Federal Court in preference to that in Kent-Moore.

   Explanation of the delay

6. The application filed by the opponent gives no explanation of the delay.  The opponent states what it intends doing if the period is extended, but this does not specify why the evidence was not completed on time.  At the hearing I asked if there was an explanation of the delay, and was told that it is not necessary to provide a full and frank disclosure.

7. It is well established that the failure to provide a satisfactory explanation of delay is not fatal to an extension (as stated in Ferocem).  However, it is equally clear that an explanation of the delay is a relevant consideration, and as such must be taken into account.  In the present case the opponent has chosen to give no explanation of the delay, despite being offered the opportunity.

   The public interest

8. The public interest in determining a serious opposition on its merits is assessed by considering the nature and significance of the evidence that will be served (see Goninan).  In the present case, the application for extension filed by the opponent gives no indication of the nature of the evidence that is being prepared.  It is apparent that an expert witness is reviewing the opposed application.  However, this does not indicate the nature of the evidence that the expert will provide.  In line with the National Starch case, I have had regard to the statement of grounds and particulars and the specification.  I conclude from these documents that the opponent will likely serve copies of the documents identified under the grounds of novelty and inventive step.  However, it is not apparent what evidence the expert is likely to provide.  At the hearing I asked the opponent to explain the nature of the evidence that will be prepared.  I was informed that the expert would provide evidence of the common general knowledge, and also the construction of the specification under opposition.  The evidence that is being prepared would likely be significant.

   Other interests

9. The opponent reiterated that they intend a serious opposition.  The applicant put the view that the present opposition is more a case of frustration to the applicant.  To date there has been no evidence served, and the statement of grounds and particulars was not properly informative (consequently further and better particulars are still required). 

10.  I note that the parties are continuing settlement negotiations, so it is possible that the opposition will be resolved without proceeding to hearing.  While it is in the interests of the parties to resolve the opposition without a hearing, this may not be in the public interest (as the parties might agree, for commercial reasons, to allow an invalid patent to be sealed).  Mr Gumley pointed out that at 3.8.5.8 of the Patent Manual of Practice and Procedures it is stated:

”Where it is clear that both parties are involved in negotiations, the Commissioner may be reasonably satisfied that the extension is ‘appropriate in all the circumstances’ provided that:

.  if the extension is for more than 1 month, the application for the extension includes something from the other party that negotiations are occurring
.  where negotiations have been occurring for more than 6 months, the Commissioner will expect to be provided with details of why negotiations have not yet been concluded and an indication of when agreement is likely.  The Commissioner will not grant indefinite extensions of time to conclude negotiations.”

I do not consider that I am bound to grant an extension of time merely because there are negotiations.  In the present case I have been given scant information in relation to the negotiations -  the negotiations appear to be sporadic over a period exceeding 6 months, and there is no agreement that settlement is likely.  Overall, I consider that this does not provide an explanation of the delay, or provide support for the extension of time.

Conclusion

11.  The interests of the parties are largely offsetting.  The nature and significance of the evidence suggests the extension should be allowed.  Had I been provided with a satisfactory explanation of the delay, then the balance of considerations would clearly have favoured the extension.  However, the absence of a satisfactory explanation of the delay leaves the considerations very finely balanced.  I believe that the likely significance of the evidence marginally outweighs the other considerations.  I conclude that it is appropriate to grant the extension.  I note that Mr Gumley indicated that he expects completing the evidence in support during the period of this extension.

12.  I grant the extension of time to serve evidence in support until 12 February 2009.

Costs

13.  It is normal practice for costs to follow the event.  However, in the present case the critical issue is the nature and significance of the evidence, which was only explained at the hearing.  Consequently, it is not appropriate for costs to be awarded against the applicant.  I consider it appropriate to make no award of costs.

Dr S.D.Barker
Delegate of the Commissioner of Patents

14 January 2009

Patent attorneys for the applicant  :  Davies Collison Cave

Patent attorneys for the opponent  :  Freehills