Magimix SAS v Breville Pty Limited
[2010] APO 32
•23 December 2010
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
[Magimix SAS v Breville Pty Limited] [2010] APO 32
Patent Application: 2007202780
Title:Kettle lid dampening mechanism
Patent Applicant: Breville Pty Limited
Opponent: Magimix SAS
Delegate: Xavier Gisz
Decision Date: 23 December 2010
Hearing Date: Hearing by written submissions
Catchwords: PATENTS - extension of time to serve evidence in support is not allowed – regulation 5.10 – explanation of delay not satisfactory – nature and significance of the evidence not known – merits of the opposition as a whole taken into account – extension of time not in the public interest – attempting to reach a settlement doesn’t justify an extension of time – the application for an extension of time is refused
Representation: Patent applicant: Molins & Co
Opponent:Phillips Ormond Fitzpatrick
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2007202780
Title:Kettle lid dampening mechanism
Patent Applicant: Breville Pty Limited
Date of Decision: 23 December 2010
DECISION
An extension of time to serve the Evidence-in-Support is not appropriate in the present circumstances. Consequently the application for an extension of time is refused.
The Opponent is allowed until 7 January 2011 to serve and file any evidence to hand.
Costs are awarded against the Opponent.
REASONS FOR DECISION
Background
On 29 September 2009 Australian application 2007202780 (the Application) to Breville Pty Limited (the Applicant) was advertised as accepted. On 29 January 2010 a Notice of Opposition was filed by Magimix SAS (the Opponent) and on 29 April 2010 the Statement of Grounds and Particulars was served.
On 29 July 2010 the Opponent filed an application for an extension of time to serve Evidence‑in‑Support until 29 October 2010 which was subsequently granted. On 29 October 2010 the Opponent filed another application for an extension of time to serve Evidence-in-Support until 29 January 2011.
On 5 November 2010 the Applicant objected to the extension of time being granted. On 12 November 2010 the Commissioner determined that a hearing on the basis of written submissions would take place.
The application for an extension of time
The application for an extension of time is as follows:
The circumstances in which, and the grounds upon which this application is
made are as follows:From the time of service of our Statement of Grounds and Particulars under Regulation 5.4, we have at all times endeavoured to diligently pursue swift prosecution of this opposition.
We are continuing to negotiate with the Applicant, Breville Pty Limited, a possible settlement in this matter, including a possible withdrawal of the opposition. Those discussions have been ongoing for many weeks, and it is hoped that settlement will be achieved shortly.
The settlement negotiations have resulted in a temporary delay to the preparation by our Australian Patent Attorneys of our Evidence‑in‑Support of the opposition.
Our hope is for settlement to be reached shortly. If a settlement is not reached, then our desire is to prepare and serve Evidence-in-Support as expeditiously as possible.
The submissions
The Opponent’s submissions from the 26 November 2010 state:
We refer to your letter dated 12 November 2010.
In response, we reiterate that Magimix SAS ("the Opponent") and Breville Pty Limited ("the Applicant") are currently in settlement negotiations regarding this opposition.
The Opponent has only recently, on 19 November 2010, received from the Applicant a written response to their latest settlement offer.
A one-page copy of the last two pending issues out of a complete draft settlement agreement of about 20 pages, is attached. The attached pages are to remain confidential.
It is to be appreciated that the Applicant has indicated acceptance of most of the proposed amendments of the Opponent to the settlement agreement. The Opponent is now proposing further amendments to finalise the agreement, and have committed to send them to the Applicant by the end of this week.
We further reiterate that the on-going settlement negotiations have resulted in a temporary delay to the preparation of Evidence-in-Support of the opposition by the Opponent's Australian patent attorneys.
The Opponent's desire is settlement to be reached shortly. If a settlement is not reached, then it is the Opponent's desire to prepare and serve Evidence-in-Support as expeditiously as possible.
The Applicant’s submissions from 26 November 2010 states:
Magimix's application for an Extension of Time contains recitations of facts which Breville disagrees. Breville has never countenanced any form of delay in the proceedings.
The Applicant then goes on to give the history of negotiations between the Applicant and the Opponent pertaining to this patent application, but notes that:
These facts, as recited above are entirely inconsistent with Magimix’s contention that they are “currently negotiating” with Breville, that there are prospects for withdrawal of the opposition, or that there is hope that a settlement will be achieved.
DECISION
The law for extensions of time
The subregulations of regulation 5.10 dealing with extensions of time to serve evidence state:
(2)The Commissioner may extend the time … :
(a) on the application of a party in the approved form; and
(b) on such reasonable terms (if any) as the Commissioner specifies; and
(c) after the party has served a copy of the application on the other party.
(5)The Commissioner must not … grant an application under subregulation (2) … unless the Commissioner:
(a) if he or she proposes to grant an application by a party -- is reasonably satisfied that the other party has been notified of the application; and
(b) if he or she proposes to act on his or her own motion -- ensures that the parties are notified of the proposed action; and
(c) in either case:(i) gives the parties a reasonable opportunity to make representations concerning the application or proposed action; and
(ii) is reasonably satisfied that a direction, an extension of time or the serving of further evidence is appropriate in all the circumstances.
I am satisfied that the Applicant has been notified and the parties have had a reasonable opportunity to make representations on the application for an extension of time. I must now determine whether it is appropriate in all the circumstances to allow an extension of time for the Evidence in Support to be served.
10. The considerations for deciding whether to grant an extension of time under regulation 5.10 have been investigated in the Federal Court in Ferocem Pty Limited v Commissioner of Patents (1994) 28 IPR 243, A Goninan and Co Ltd v Commissioner of Patents (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 reasons why the evidence was not served earlier is a relevant consideration, but a satisfactory explanation is not a mandatory requirement;
(c) 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;
(d) The public interest is assessed by forming 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. The nature and significance of the evidence is assessed having regard to any relevant material available, not just the evidence already on file;
(e) The interests of the opponent, the applicant and any other parties are a relevant consideration.
Is serving evidence in support appropriate in all circumstances?
11. I will consider whether to exercise the discretion to extend the time to serve Evidence in Support provided in sub-regulation 5.10(5)(c)(ii) with reference to the considerations given in National Starch (supra), Ferocem (supra) and Goninan (supra).
The broad discretion of regulation 5.10
12. In Ferocem Pty Ltd v Commissioner of Patents [1994] FCA 981; 28 IPR 243 at 247 Burchett J sought to clarify how the discretion provided in Regulation 5.10 should be exercised when he said:
Regulation 5.10 lays down a perfectly general requirement – that the Commissioner be ‘reasonably satisfied that … an extension of time … is appropriate in all the circumstances’.
The idea that such a broad discretion can validly be reduced by a decision-maker to an insistence upon ‘imperative’ compliance with particular requirements has repeatedly been rejected by the courts.
Explanation of delay
13. The Opponent asserts that the delay in preparing the Evidence in Support is due to settlement negotiations taking place. Settlement negotiations have been recognised as part of a satisfactory explanation for a delay in serving evidence in some cases (see Cryovac, Inc. v American National Can Company [2006] APO 34 at paragraph 11). However, in these cases there had been some progress in the preparation of evidence when the applications for extensions of time were made. In contrast, there does not appear to be any progress in the preparation of evidence in the present case.
14. In my opinion, the substitution of settlement negotiation for preparing and serving evidence is not a satisfactory explanation of the delay. Parties in opposition proceedings are expected to comply with Regulation 5.8 requirements, even if settlement negotiations are taking place.
The public interest
15. The public interest must be considered in the context of the nature and significance of the evidence. In Goninan (supra) Sackville J stated:
In order for the Commissioner or his delegate to give proper, genuine and realistic consideration to the aspect of the public interest I have identified, it is necessary to consider the nature of the evidence the opponent seeks to adduce and the significance of that evidence for the opposition proceedings.
16. Although the nature of the evidence is not known in this case, the merits of the opposition as a whole should be taken into account when determining the public interest in granting the extension. In this case the Statement of Grounds and Particulars foreshadows a prima facie serious opposition.
17. The public interest is also in the expeditious disposal of the opposition. In Ferocem (supra), where Burchett J. states:
The determination of an application for an extension of time under reg 5.10(2) is a balancing exercise between the interests of the persons directly concerned in the application and opposition in question and public interests including the expeditious disposal of matters in the Patents Office, questions of cost and efficiency, the maintenance of proper professional standards by those who deal with the Patents Office and the public interest in having a serious opposition dealt with on the merits rather than shut out in consequence of a failure in procedure. [emphasis added]
18. It is generally in the public interest that evidence is prepared to support serious oppositions. However, merely providing a Statement of Grounds and Particulars that foreshadows a serious opposition does not inexorably imply that the public interest will be served by granting an extension of time to serve evidence. The public interest is also in the opposition actually taking place (i.e. its expeditious disposal, as per Ferocem (supra)), rather than just being foreshadowed. Thus the public interest is based on the merits of the oppositions and that the party seeking the extension of time is making a genuine attempt to prepare and serve evidence.
19. It is noted that even if an opposition does not proceed, for whatever reason, a consideration to re‑examine the application will take place. A re-examination, if appropriate, will assess the validity of the application in light of all relevant information gathered during the opposition. Thus, the public interest is not completely frustrated if an opposition does not proceed.
20. This is the second application for an extension of time to serve the Evidence-in-Support. The explanation given in this second application is almost identical to the first application – the only difference is the first application states “we are currently negotiating…” whereas the second application states “we are continuing to negotiate…”. The Opponent appears to be no closer to serving evidence now than when the first application for an extension of time was made.
21. The Opponent has not provided or even summarised the evidence it has prepared or plans to prepare. In fact, from the applications for extension of time it could be reasonably inferred that the Opponent has not yet prepared any evidence and only plans to do so if the settlement fails.
22. Although a prima facie serious opposition has been foreshadowed the Opponent has not shown a genuine attempt to prepare and serve evidence. Balancing these factors I believe the public interest will not be served in granting this extension of time.
Oppositions should be efficient and not be unduly prolonged
23. It appears that the Opponent is applying for an extension of time to reach a settlement instead of preparing Evidence in Support. This is unnecessarily prolonging the opposition process, especially in the light of the Applicant’s submissions which assert that a settlement is unlikely.
The interests of the Opponent and the Applicant
24. It is clearly in the interest of the Opponent that the extension of time to serve the Evidence in Support is granted. On the other hand, it is in the interests of the Applicant to have the validity of their patent determined expeditiously. An additional consideration is that the Applicant and the Opponent have been negotiating a settlement. If both parties believed they were close to a settlement, then it may be in both parties’ interests that an extension of time be granted. However, because the Applicant is adamant that a settlement is not likely, an extension of time is not in the interests of the Applicant. On balance, the interests of the Applicant in having the opposition proceed expeditiously outweigh the interests of the Opponent in being given more time to prepare evidence.
CONCLUSION
25. In summary of my discussion above, I have found that none of the criteria for assessing extension of time are in favour of the Opponent being granted the extension and therefore I find that an extension of time is not appropriate.
26. I refuse the application for an extension of time. However, I consider it would be appropriate to grant a short extension so that any evidence at hand could be filed, as suggested in Ferocem (supra). Consequently, I allow the Opponent until 7 January 2011 to serve and file any evidence to hand.
COSTS
27. Costs usually follow the event. I see no reason to depart from this practice, so I award costs against the Opponent, Magimix SAS.
Xavier Gisz
Delegate of the Commissioner of Patents
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