Mainline Corporate Holdings Limited v Fexco Dynamic Currency Conversion Limited, First Currency Choice Pte Ltd & Pulse International Pty Limited

[2006] APO 13

ABSTRACTS OF DECISIONS

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Application  :          No. 763008 in the name of Mainline Corporate Holdings Limited

Title  :Dynamic Currency Conversion for Card Payment Systems

Action  :Applications for extensions of time in which to serve evidence in reply by Fexco Dynamic Currency Conversion Limited (Opponent 2), First Currency Choice Pte Ltd (Opponent 3) and Pulse International Pty Limited (Opponent 4), and objections thereto by Mainline Corporate Holdings Limited

Decision:          Issued  11 April 2006.

Abstract

Fexco provided a satisfactory explanation of the need for a further extension of time.  On the understanding that evidence in reply is now well underway and almost certain to be completed within the period requested by the opponent, the interests of the opponent and the public both weigh heavily towards the grant of the extension. 

Fexco granted an extension of time to serve evidence in reply from 3 February 2006 to 3 May 2006.

FCC and Pulse have not provided an adequate explanation for the delay in serving evidence.  The lack of urgency demonstrated so far, as well as the distinct possibility that evidence will not be completed during the extension period sought, were significant causes for concern.  On balance, though FCC and Pulse have not made out a proper case justifying the extension, an extension of time is warranted so that all relevant evidence may be placed before the Commissioner. 

Both FCC and Pulse were granted an extension of time to serve evidence in reply from 25 January 2006 to 25 April 2006.

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re: Patent Application No. 763008 by Mainline Corporate Holdings Limited; applications for extensions of time in which to serve evidence in reply by Fexco Dynamic Currency Conversion Limited (Opponent 2), First Currency Choice Pte Ltd (Opponent 3) and Pulse International Pty Limited (Opponent 4), and objections thereto by Mainline Corporate Holdings Limited.

BACKGROUND

1.   Mainline Corporate Holdings Limited (“Mainline”) filed patent application 763008 (54413/99) on 1 September 1999 through the provisions of the Patent Co-operation Treaty.  The application claims priority from an application made in the Republic of Ireland, which was filed on 12 July 1999.  Following examination, the application was advertised as accepted on 10 July 2003.

2.   Four parties filed notices of opposition.  Subsequently, one opposition was dismissed for failure to serve a statement of grounds and particulars.  On 27 July 2004 Pulse International Pty Limited (“Pulse”) wrote to the Commissioner, proposing that the evidence from the three remaining opponents be joined.  Fexco Dynamic Currency Conversion Limited (“Fexco”) indicated that they did not wish to combine their opposition at that stage.  Accordingly, on 26 August 2004 a direction was made that evidence which was served in either of the oppositions by Pulse or First Currency Choice Pte Ltd (“FCC”) was deemed to be served in the other of these two oppositions.

3.   After several unopposed extensions of time by all parties, evidence in support was completed by the opponents in October 2004, and evidence in answer was completed by Mainline in August 2005.

4.   On 19 October 2005 FCC filed a first extension of time until 25 January 2006 in which to serve evidence in reply.   Similarly, on 25 October 2005 Pulse filed a first extension of time until 25 January 2006 in which to serve evidence in reply.  Both of these requests went unopposed.  However, Mainline has opposed the requests for an extension of time until 25 April 2006 filed on 27 January 2006 and 25 January 2006 by FCC and Pulse, respectively.

5.   On 1 November 2005 Fexco filed a first extension of time until 3 February 2006 in which to serve evidence in reply.  This extension went unopposed, and statutory declarations by Mr Christopher Joseph O’Brien and Mr Daniel Vilem Lavecky were served on 2 February 2006.  Accompanying this evidence was a further application for an extension of time until 3 May 2006 within which to serve evidence in reply.  Mainline has also opposed this request for an extension of time.

6.   The applicant's opposition to the extensions of time in which to serve evidence in reply was heard in Canberra on 2 March 2006.  The applicant was represented by Ms Rebekah Gay, senior associate of Shelston IP, assisted by Mr Russell Davies, also of that firm.  Mr Chris O’Sullivan, patent attorney of FB Rice & Co, represented Fexco.  Mr John Dower, patent attorney of Freehills represented FCC.  Prior to the hearing, on 28 February 2006, Mr Paul Savage, patent attorney of Freehills, advised that Pulse had instructed Freehills not to attend the hearing or to make independent written submissions.  However, Pulse would seek to rely upon the submissions made by FCC in support of their extension of time.

SPECIFICATION

7.   The specification is entitled "Placing Advertisements in Publications”, and relates to an Internet-based method of placing display advertisements in publications.  An Internet site which can be accessed by users who wish to place an advertisement is provided by a facilitator.  The user selects the publications in which the advertisement is to appear, along with size and placement details.  After choosing a template which is of a size suitable for placement in the selected publication, the user enters details for the advertisement into the template.  The advertisement is then forwarded by the facilitator either directly or via an intermediary to the selected publication together with appropriate instructions.

8.   The specification ends with 11 claims.  Claim 1, the only independent claim, reads as follows:

1.  An Internet-based method of placing display advertisements in publications, including the following steps:

(a)a facilitator provides an Internet site which can be accessed by advertisers who wish to insert advertisements in publications;

(b) two or more advertisement templates of differing sizes are defined for an advertiser, each advertisement template having a style and appearance approved by or on behalf of the advertiser;

(c) when desiring to place an advertisement in a publication, the advertiser accesses the Internet site and selects a publication in which the advertisement is to appear together with size and placement details;

(d) the advertiser selects one of the templates which is of a size suitable for placement in the selected publication, and enters details of the advertisement into the template; and

(e) the advertisement is then forwarded by the facilitator either directly or via an intermediary to the selected publication together with instructions indicating the advertiser's selections.

THE APPLICATIONS FOR AN EXTENSION OF TIME

9.   Fexco set out the following circumstances in its application for an extension of time in which to serve evidence in reply:

“We have additional Declarations to file from Declarants resident in overseas countries and further time is required to finalise those Declarations and have them executed and returned to us.  We do not expect to need any further extension of time to complete our Evidence-in-Reply.”

10.  FCC’s application sets out the following circumstances for an extension of time in which to serve evidence in reply:

“This is the Opponent's second application for an extension of time.  In the previous application for an extension of time, the Opponent indicated that several experts have been instructed to review and comment on the Applicant's evidence in answer.  Despite difficult circumstances, the Opponent has now made significant progress towards preparing statutory declarations from the experts.

Preparation of Mr Coffill's evidence has been hindered by two factors.  First, Mr Coffill is currently employed on a full time basis in a role which places significant demands on his time.  As a result the time Mr Coffill has to devote to preparing evidence has been limited. Second, Mr Coffill took four weeks of annual leave over the Christmas and New Year period. Mr Coffill was not available to prepare evidence during this time.

Notwithstanding these difficult circumstances, the Opponent has made significant progressed in preparing Mr Coffill's evidence.  Mr Coffill has reviewed the Applicant's evidence in answer.  The Opponent's attorneys have met with Mr Coffill on several occasions to obtain Mr Coffill's comments on the Applicant's evidence.  Two of these occasions have been intensive day long sessions with Mr Coffill.  Following the meetings with Mr Coffill, preparation of Mr Coffill's declaration is well underway.  Further meetings with Mr Coffill have been planned and are expected to take place in the immediate future.

The Opponent has additionally made significant progress in preparing Mr Storey's evidence in similarly difficult circumstances.  Mr Storey is currently employed by Visa International in a full time role with high level managerial responsibilities.  Consequently Mr Storey has had limited time to devote to preparing evidence.  Mr Storey has been unavailable during about a six week period during December and January due to around four weeks of international travel for work and around two weeks of annual leave.

In the time Mr Storey has been available to prepare evidence, significant progress has been made. Mr Storey has reviewed the Applicant's evidence and has met with the Opponent's attorneys on several occasions.  The Opponent's attorneys have received Mr Storey's comments on a substantial part of the Applicant's evidence and preparation of Mr Storey's statutory declaration is well underway.  Further meetings with Mr Storey have been arranged.  In addition to the progress made with Mr Coffill and Mr Storey, the Opponent has been in communication with a number of other witnesses located overseas who provided declarations included in evidence in support.

The Opponent considers this to be a serious opposition and has diligently progressed preparation of its evidence in reply.  The Opponent has made considerable progress in interviewing witnesses and preparing declarations from those witnesses.  However, further time is required for the Opponent to finish interviewing the witnesses and complete preparation of the witnesses' declarations.”

11.  Pulse’s application sets out the following circumstances for an extension of time in which to serve evidence in reply:

“Pulse International Pty Ltd (Pulse) has an arrangement with another opponent, First Currency Choice Pte Ltd (FCC) in terms of which evidence filed by FCC is to be considered as evidence filed by Pulse.

Pulse understands that FCC has applied for an extension of time within which to file its evidence in reply.  Pulse has reviewed those reasons, and concurs that an extension of time is required in order to complete the evidence.  Accordingly, for the reasons stated in the FCC application for an extension of time, Pulse hereby also requests an extension of time for the same 3 month period.”

THE RELEVANT LAW

12.  The requirements for granting an extension of time to serve evidence in reply are set out in regulation 5.10(2) which states:

(2)The Commissioner may extend the time within which the party may take a step prescribed in this Chapter (not being a step that is taken under regulation 5.3 or 5.3AA, paragraph 5.4(a) or subparagraph 5.8(1)(a)(i)):

(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.

13.  This provision must be read in conjunction with regulation 5.10(5):

(5)The Commissioner must not give a direction under subregulation (1) or grant an application under subregulation (2) or (4) unless the Commissioner:

(a) …

(b) …

(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.

14.  The law on extension of time provisions, and more specifically the law on regulation 5.10 has been considered by the Federal Court 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. It is clear from these judgments that regulation 5.10 confers a broad discretion, which cannot be reduced to an imperative compliance with particular requirements. On the contrary, it is necessary to give proper, genuine and realistic consideration to all relevant aspects of the case.

15.  Relevant aspects include the reasons for the delay, the public interest and the interests of the parties, and I will address each of these factors in my decision.

SUBMISSIONS

16.  All parties, with the exception of Pulse, provided written submissions.  I will refer to these where appropriate in the body of my decision.

DISCUSSION

Explanation of the delay by Fexco

17.  The major reason provided by Fexco for the extension has been the unavailability of an overseas expert.  Mr Denis Cleary is a resident of Ireland, and I note from the evidence in support provided by FCC and Pulse that he holds the position of Technical manager at Multi-Currency Management Services Limited (MCMS), a subsidiary of Fexco.  Mr O’Sullivan explained that even though Mr Cleary was engaged prior to the submission of the first request for an extension of time on 1 November 2005, his substantial work commitments have prevented him from working as wished on the opposition.

18.  As a further explanation for the delay, Mr O’Sullivan observed that several closely related opposition and court matters required the attention of Mr Cleary.  Mention was made of proceedings on related cases in Europe, Singapore and New Zealand, and it appears that Mr Cleary has recently spent several weeks as a witness in the Singapore proceedings.

19.  In response, Ms Gay argued that this clearly demonstrated that the preparation of evidence in the current opposition had not been given the priority it deserves.  It was also submitted that the delay was entirely within Fexco’s control, as the choice of Mr Cleary as their expert witness was entirely at their discretion.  It was also suggested that the Commissioner should start from the position that the filing of evidence in reply “should normally be capable of completion within the period provided by the regulations, without any extension of time” (see Kent Moore Corporation v Environmental Products Amalgamated Pty Ltd (1992) 25 IPR 233 at 241).

20.  In my view the Kent Moore decision is of little assistance in this matter.  It predates Ferocem and Goninan, and both of these decisions rejected the overly-prescriptive approach adopted in Kent Moore.  However, the key argument that parties to an opposition should act diligently is accepted.  Though I agree with Ms Gay’s argument that a period of three months should be sufficient for the filing of evidence, unforeseen circumstances may arise which hinders the timely filing of evidence.  Obtaining a witness does not provide a guarantee that they will be in a position to complete their evidence in a timely manner.  For example, I accept that the inability of an opponent to obtain evidence from an ill or absent witness would be deleterious to the progress of their case (e.g. see British-American Tobacco Company Limited v Philip Morris Limited [2000] APO 32 (27 April 2000)). Clearly, the involvement of Mr Cleary in Singapore requires a certain level of commitment and effort, and these are factors which may limit the time that Mr Cleary can devote to the preparation of evidence. Furthermore, the very fact that Fexco is seeking to retain an individual from overseas could imply some difficulty in obtaining expert evidence.

21.  In my view this has resulted in Fexco encountering real difficulties over the past three months that necessitate the need for an extension of time.  In the context of the current extension, this appears to be a reasonable explanation for the delay.  Nevertheless, I would expect nine months to be sufficient time in which to complete evidence in reply.  I would like to remind Fexco that there remains an expectation that they will prepare their evidence in a timely manner and allocate sufficient resources to ensure that this is done.

Explanation of the delay by FCC and Pulse

22.  FCC also referred to the impact of related proceedings overseas as a justification for their delay.  It appears that FCC is considering whether to provide further evidence from several overseas witnesses who had previously provided evidence in support.  Though FCC has been in communication with these overseas witnesses to ascertain whether further evidence should be obtained, they have not been able to complete this process due to related legal proceedings in Singapore.  According to Mr Dower, the final decision regarding whether any of the Singaporean evidence is relevant can occur after that trial is completed.

23.  Ms Gay observed that for the opponent to be “considering” at this stage of the proceedings whether such evidence should be obtained showed an extreme lack of diligence.  Furthermore, evidence in any overseas proceedings was not relevant to the present opposition, and that FCC had only to answer the case put forth in Australia in Mainline's statement of grounds and particulars and its evidence in answer, which had already been served.

24.  In my view the explanation provided by FCC demonstrates poor case management rather than an extreme lack of diligence.  I can certainly appreciate why the opponent might consider it beneficial to include evidence from the Singapore proceedings.  Nevertheless, there is nothing before me to suggest that the Singapore evidence is particularly significant or relevant to the present matter.  Neither does it serve the public interest for the opposition to be delayed indefinitely in the hope that potentially relevant evidence may become available.  If any relevant evidence were to come to light, it would be appropriate for FCC to file this material under regulation 5.10(4), rather than to delay the completion of evidence in reply.

25.  In any case, I agree with the applicant that evidence in reply should be strictly in reply to evidence in answer served by Mainline.  There is no indication that any evidence from Singapore will directly address issues raised by the evidence in answer.  Mr Dower’s argument effectively amounts to a request by FCC to delay the time to serve evidence in reply until FCC's evidence in Singapore is complete.  In my opinion the approach adopted by FCC to the preparation of evidence in reply is seriously misguided, and FCC should proceed without delay to finalise their evidence.

26.  Another reason provided by FCC to justify the extension has been the unavailability of two experts.  Mr Dower explained that declarations from Mr Geoff Coffill and Mr Greg Storey were well under way and that a substantial portion of these declarations had been drafted.  However, they had not yet been finalised as both declarants were employed full time in demanding roles which allowed little time to prepare evidence.  Additionally, Mr Coffill had taken four weeks of annual leave during the Christmas period, while Mr Storey had taken two weeks of annual leave and had travelled overseas for approximately four weeks.

27.  Ms Gay submitted, quite correctly in my view, that expert witnesses always have other commitments and obligations.  Furthermore, it could hardly be said that the taking of annual leave during the Christmas period is an uncommon occurrence.  Ms Gay stated that any serious opponent would have anticipated this potential delay, and taken appropriate action to ensure that evidence was obtained as soon as possible.  For these reasons, it was argued that the explanation provided by FCC was unsatisfactory.

28.  In the present case, the progress of the opponent is clearly open to criticism, especially when it is apparent that Mr Coffill is an employee of Pulse.  I would expect that FCC and Pulse, who requested to be joined in this opposition, would be co-operating fully with each other.  This co-operation should extend to allowing any declarant in their employ the time to prepare evidence as a matter of priority.  As far as I am aware, there have been no unusual circumstances which have impeded the preparation of Mr Coffill’s evidence other than FCC's desire to proceed in the manner that they have chosen.

29.  Ms Gay also noted that in the first extension of time applications filed on behalf of FCC and Pulse, it appears to have taken three months merely to complete a detailed review of the applicant’s evidence in answer.  The applicant firmly believes that this clearly amounts to an undue delay.

30.  I agree with Ms Gay that on the face of it the opponent appears to have been less than diligent in the initial months following service of evidence in answer.  It is, of course, desirable for the opponent to review the evidence in answer in detail.  Nevertheless, it is not clear why it took the majority of the initial three-month period to complete this review, especially when the evidence in answer is not, in my view, overly complex or voluminous.  This apparent lack of diligence appears to have caused a significant part of the overall delay in the opponents’ preparation of its evidence in reply.

31.  Ms Gay also noted that no evidence in reply had yet been filed by FCC , and that there appeared to be little prospect of any evidence in reply being filed in the near future.  When queried on these points, Mr Dower was unable to provide any satisfactory explanation as to why FCC had not served any evidence so far, or why they would require a further three months in which to do so.  Neither was Mr Dower able to provide an undertaking that evidence in reply would be completed within the extension sought.

32.  Pulse has chosen to rely on the reasons provided by FCC to justify their extension.  I agree with the applicant’s submission that their progress has been less than satisfactory, especially when it is recalled that Mr Coffill is an employee of Pulse, and that Pulse has had since July 2005 to obtain evidence from Mr Storey.  As no further reasons justifying the extension have been forthcoming, I conclude that Pulse has not provided a satisfactory explanation for the delay in the serving of evidence in reply.

33.  On balance, I consider that FCC and Pulse have not provided a satisfactory explanation for the delay in the preparation of evidence in reply.  The absence of any apparent urgency on the part of the opponents is of particular concern.  However, the Ferocem case shows that while the reasons for requiring the extension are a relevant consideration in reaching a decision, a satisfactory explanation is not a mandatory requirement. 

The public interest in the Fexco opposition

34.  The orderly progress of opposition proceedings is an important factor relevant to the public interest.  Ms Gay argued that opposition matters should be disposed of expeditiously and referred me to Associated Octel Co Limited v ExxonMobil Chemical Patents Inc (2003) AIPC 91-870 which stated:

“…I consider that the primary responsibility of the Commissioner is to ensure that the evidence in opposition proceedings is provided in as short a time as is reasonably possible, consistent with ensuring that the parties have every reasonable opportunity to provide full evidence in support of their case, and upon the insistence of proper professional standards.”

35.  Though this comment was made in the context of a request to serve further evidence, I believe that it applies equally to all stages of the opposition process.  I accept that proceedings should not be unnecessarily protracted.  The opponents have previously had one extension of time, and I am mindful that, if granted, a second extension would cause a further delay of three months before the substantive hearing.

36.  Ms Gay also noted that the current requests would extend the total time allowed for evidence in reply to nine months, and that this was the same amount of time that had been required to file evidence in answer.  Ms Gay contended that producing evidence in reply should be a shorter task than evidence in answer, and that the three months allowed in the regulations should be sufficient for routine preparation of evidence in reply.

37.  I note that the regulations allow the same amount of time for filing the evidence in reply as for the evidence in answer, with provisions for extending the time in each case.  Notwithstanding this, I agree with Ms Gay that, in general, preparation of evidence in reply should normally be quicker as the opponents are more fully aware of the issues involved and are restricted to replying to the evidence in answer.  Nevertheless, if I were to grant the extensions sought, this protraction would not appear unreasonable given progress in the matter so far.  Any concerns expressed by the applicant regarding the urgency of getting the present opposition to the substantive hearing must be moderated in part by the fact that they took nearly ten months to serve their evidence in answer.

38.  Despite the applicant’s expressed grievances about the lack of diligence demonstrated by the opponents, it is clear from Ferocem and Goninan that I am obligated to give proper consideration to all relevant matters, including the public interest in opposition proceedings being determined on their merits.

39.  On this issue, I note that four declarations (Mr Christopher Joseph O’Brien, Mr Daniel Vilem Lavecky, Mr Charles A. Fillinger and Mr William Maley) have been served as evidence in reply by Fexco.  Two of these (Fillinger and Maley) have already been served during the current extension period sought, and it appears that Mr Cleary’s declaration will be the final one to be served by Fexco.  The significance and relevance of the evidence sought to be adduced is clearly an important consideration, and I have been able to consider the evidence from Messrs Fillinger and Maley directly although not in depth.

40.  Mr Fillinger’s declaration appears to address issues explicitly raised in the evidence in answer by Mr Wastyn and Mr Barry regarding the use of BIN (Bank Identification Numbers) tables in direct currency conversion and the services provided by NaBANCO International Agent Banks.  Similarly, Mr Maley’s declaration, which discusses the operation of Fexco’s direct currency conversion service, is likewise responsive to issues raised by Messrs Wastyn and Barry.  Accordingly, I conclude that both declarations are prima facie relevant to the opposition.

41.  Though I cannot directly determine the relevance of the Cleary declaration, I was assured by Mr O’Sullivan that his evidence will be directed to matters of significant disagreement between the parties.  It was also suggested that the Commissioner would benefit from having all the relevant evidence before her.  This is certainly the approach advocated in Cook Incorporated v Endo Vascular Technologies Inc [1999] APO 14 (24 February 1999) where the delegate said:

“There are disputed matters of fact as between the evidence-in-support of the opposition and the evidence-in-answer.  I believe the public interest, in so far as it relates to ensuring that invalid patents are not granted, weighs heavily towards the granting of the extension sought by the opponents.  This is in order that the delegate of the Commissioner in hearing the substantive opposition, with appropriate evidence in reply, has a more legitimate basis upon which to decide the disputed matters of fact.”

In my opinion these comments are equally relevant in the present case, and that the filing of Mr Cleary’s declaration will allow for a proper determination of the opposition.

The public interest in the FCC and Pulse oppositions

42.  The situation with FCC and Pulse is not as clear, as no evidence in reply has yet been served.  Mr Dower assured me that the evidence in reply will provide FCC “…with the opportunity to clarify the issues in contention, the significance of BINs and whether key documents have been published”.  I agree that these issues are matters of significant disagreement between the parties, and that it would be in the public interest for these issues to be clarified and properly determined at the substantive opposition.

43.  On balance, while the delay in proceedings caused by granting the extensions of time weighs against the opponents, I consider that the balance of the public interest in the present case weighs clearly in having the evidence before the Commissioner so that the case may be decided on its merits.

Interests of the Parties

44.  The interests of the opponents clearly lie in obtaining the extensions, while the applicant’s interests include having the matter determined as quickly as possible.  At the hearing, Ms Gay argued that there was no guarantee that the opponents, even with this extension, could complete the service of evidence in reply.  Particular concerns were expressed about FCC’s and Pulse’s lack of progress.

45.  I accept that Mainline could be disadvantaged by a further protraction of proceedings if I were to grant the extensions now sought.  Nevertheless, there is nothing before me to suggest that such a protraction would have the same undue effect on the applicant as the effect on the opponents if they were denied the opportunity to fully state their case.

46.  Ms Gay also submitted that if extensions were to be granted to FCC and Pulse, strict limits should be set to ensure timely completion of evidence in reply.  The applicant’s concerns are well-founded, and I will take this opportunity to note that the Commissioner is unlikely to be sympathetic to any further requests by FCC or Pulse for an extension of time based on proceedings in Singapore or elsewhere.

47.  On balance, I think the interests of the opponents in having the opportunity to present relevant evidence that would allow the opposition to be decided on its merits outweighs the interests of the applicant in these circumstances.  While I agree with the applicant that their interests are an increasingly relevant factor given the length of delay, I am not satisfied that they outweigh all other considerations at this stage.

DECISION

48.  I have found that Fexco has provided a satisfactory explanation of the need for a further extension of time.  On the understanding that evidence in reply is now well underway and almost certain to be completed within the period requested by the opponent, the interests of the opponent and the public both weigh heavily towards the grant of the extension.  I am therefore satisfied that an extension of time is appropriate in all the circumstances.

49.  Accordingly, I grant Fexco an extension of time to serve evidence in reply from 3 February 2006 to 3 May 2006.

50.  FCC and Pulse have not provided an adequate explanation for the delay in serving evidence.  The lack of urgency demonstrated so far, as well as the distinct possibility that evidence will not be completed during the extension period sought, are significant causes for concern.  Though Mainline was concerned that the opposition should proceed in an orderly manner and not be unduly protracted, it was considered that granting this extension to FCC and Pulse will not impede the expeditious disposal of the opposition as a whole.  Nevertheless, the applicant’s concerns are well-founded, and I will take this opportunity to note that the Commissioner is unlikely to be sympathetic to any further requests by FCC or Pulse for an extension of time based on proceedings in Singapore or elsewhere.

51.  I have found that it is in the public interest for the extension of time to be allowed so that all relevant evidence may be placed before the Commissioner.  Accordingly, I grant both FCC and Pulse an extension of time to serve evidence in reply from 25 January 2006 to 25 April 2006.

COSTS

52.  All parties, irrespective of whether the extension was granted or denied, argued that costs should be awarded in their favour.  The power of the Commissioner to award costs is based on section 210 and regulation 22.8.  The power to award costs is discretionary, so I must take into account all relevant considerations.

53.  In actions before the Commissioner costs normally follow the event.  However, in the present matter the extension application by Fexco only provided the most basic of information as to the reasons for the delay in preparing and serving their evidence in reply.  The extension was, to a significant extent, granted on the basis of the submissions and information provided at the hearing.  Thus Mainline were prima facie justified in objecting to the extension request as filed.  In these circumstances, I consider it appropriate to make no award of costs regarding Fexco’s application for an extension of time in which to serve evidence in reply.

54.  FCC and Pulse have succeeded in obtaining an extension of time under regulation 5.10(2), even though they have not provided a satisfactory explanation for the delay and have clearly been less diligent than desirable in preparing and serving their evidence in reply.  In these circumstances, I also consider it appropriate to make no award of costs in respect of the FCC and Pulse applications for extensions of time in which to serve evidence in reply.

R. W. J. Finzi

Delegate of the Commissioner of Patents

11 April 2006

Patent attorneys for the applicant:   Shelston IP, Sydney
Patent attorneys for opponent 2:  FB Rice & Co, Sydney
Patent attorneys for opponent 3:  Freehills, Sydney
Patent attorneys for opponent 4:  Freehills, Sydney