Martec Pty Ltd v Beacon Lighting International Limited
[2015] APO 60
•10 September 2015
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Martec Pty Ltd v Beacon Lighting International Limited [2015] APO 60
Patent Application: 2012201780
Title:Improved combined ceiling fan and light fitting
Patent Applicant: Beacon Lighting International Limited
Opponent: Martec Pty Ltd
Hearing Officer: P M Spann, Deputy Commissioner of Patents
Decision Date: 10 September 2015
Hearing Date: Written submissions completed 3 September 2015
Catchwords: PATENTS – inspection – whether direction allowing the opponent access to the applicants confidential evidence subject to conditions is valid – whether direction is inconsistent with the requirement for the evidence to be given to the opponent – direction made providing access to the evidence subject to conditions – direction that the evidence has been given to the opponent by allowing inspection.
Representation: Patent applicant: Davies Collison Cave, Melbourne
Opponent:Griffith Hack, Melbourne
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2012201780
Title:Improved combined ceiling fan and light fitting
Patent Applicant: Beacon Lighting International Limited
Opponent: Martec Pty Ltd
Date of Decision: 10 September 2015
DECISION
I direct that the document titled “Confidential annexure: BM-3 to the 14 August 2015 declaration of Mr Barry Martens” is available for inspection by the legal representatives of Martec Pty Ltd on them giving an undertaking that the information contained in that document will only be used in relation to the present opposition and not be disclosed to any other person.
I further direct that for the purpose of r. 5.7(2) the document has been given to the opponent by allowing inspection.
I give notice to the opponent that the evidence in answer was completed on 14 August 2015 and therefore the date for the filing of evidence in reply under r. 5.8(4) is 2 months from the date of this decision.
I award costs in accordance with Schedule 8 against the opponent, Martec Pty Ltd.
REASONS FOR DECISION
This matter concerns evidence filed in the opposition to application 2012201780 to which a non-OPI order under r. 4.3(2)(b) has been made and whether the Commissioner has power to permit the opponent to inspect that evidence subject to conditions.
BACKGROUND
Patent application 2012201780 was filed in the name of Beacon Lighting International Limited (Beacon) on 27 March 2012 as a divisional application to 2008362348. The application was accepted and a notice of opposition filed by Martec Pty Ltd (Martec) on 24 October 2014. Consequently, the opposition is proceeding under the Patents Regulations as amended on 15 April 2013 by the Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (No 1).
Evidence in support of the opposition has been filed and the period for filing evidence in answer ended on 14 August 2015. On 3 August 2015 Beacon advised that it was considering filing as part of its evidence “confidential and commercially sensitive product sales information” and requested an order under r. 4.3(2)(b) that the sales information not be open to public inspection (OPI). It further requested a direction under s. 56 that the information only be made available to Martec’s legal representatives and only on the basis of providing appropriate undertakings of confidentiality.
On 11 August 2015 Beacon’s attorneys advised that the information would be included as a confidential annexure (ultimately exhibit BM-3) to the declaration of Mr Barry Martens. They also advised that they had sought an undertaking of confidentiality from the lawyers for Martec but that the request was refused.
The non-OPI order was made on 12 August 2015 so as to apply to the exhibit when filed. A delegate of the Commissioner notified the parties on the same date that this had occurred and proposed the follow order:
“The document titled ‘confidential annexure: BM-3 to the 14 August 2015 declaration of Mr Barry Martens’ will be made available for inspection by the legal representatives of Martec Pty Ltd on them giving undertaking that the information contained in that document will only be used in relation to the present opposition and not be disclosed to any other person.”
Beacon’s evidence in answer was completed on 14 August 2015. Evidence other than the confidential exhibit was filed using IP Australia’s electronic drop box (Objective Connect) and was thereby given to Martec at the same time. Exhibit BM-3 was filed with IP Australia directly and is subject of the present dispute. IP Australia has not yet formally notified Martec of the completion of the evidence and therefore the period in which any evidence in reply must be filed under r 5.8(4) has not commenced.
On 19 August 2015 Martec filed submissions that the proposed direction was beyond the power of the Commissioner, that the Commissioner had an obligation to provide a copy of all evidence to the other party in an opposition without qualification and that, even if the power existed to impose conditions, it should not be exercised in this case. Finally it requested confirmation as to the date from which the 2 month period for evidence in reply is to be taken to run.
The parties were invited to be heard on the matter by written submissions. These were filed on 31 August 2015 (opponent) and 3 September 2015 (applicant).
THE LAW
The Patents Act and Regulations do not provide for a disclosure and confidentiality regime specific to opposition proceedings. Rather documents filed in proceedings are subject to the general public inspection and publication provisions of Chapter 4. These essentially provide for standard patents that, from the earlier of 18 months after the earliest priority date or, if earlier, acceptance of the application, the patent specification and all documents associated with the application and in possession of the Patent Office are OPI.
Exceptions to the general rule are provided by r. 4.3. These include documents that would be privileged from production in legal proceedings and that are subject to orders of a court or tribunal that prohibit disclosure. Furthermore, for documents filed from the commencement of the Raising the Bar Regulation, r. 4.3(2)(b) has provided as an exception “a document that the Commissioner has reasonable grounds for believing should not be open to public inspection”. This is a significant change to the provision which previously only applied in the circumstances of an order for production. Further considerations relevant to the operation of r. 4.3(2)(b) are discussed in my decision in Rio Tinto Alcan International Limited v Norsk Hydro ASA [2014] APO 70.
The Explanatory Statement accompanying Raising the Bar Regulation stated following an explanation of the amendment to r. 4.3:
“To ensure appropriate access to non-OPI information where the public interest warrants it (for example when the information is necessary to determine a matter being disputed before the Commissioner), the Commissioner may use their existing power under paragraph 56 (1) (b) of the Act to order inspection of a non-OPI document. To ensure accountability for decisions to grant or refuse inspection, item 86 of Schedule 6 to the Raising the Bar Act also makes these decisions AAT reviewable.”
Subsections 55 and 56 provide:
“55 Documents open to public inspection
(1)Where a notice is published under section 54 or under subsection 62(3), the specification concerned, and such other documents (if any) as are prescribed, are open to public inspection.
(2)Where a notice is published under paragraph 49(5)(b) in relation to an application for a standard patent, or under subsection 62(2) in relation to the grant of an innovation patent, the following documents are open to public inspection:
(a)all documents (other than prescribed documents) filed in relation to the application or the patent, whether before or after the acceptance or grant;
(b)all documents (other than prescribed documents) filed, after the patent ceases, expires or is revoked, in relation to the former patent;
(c)copies of all documents relating to the application or patent (other than prescribed documents) given by the Commissioner to the applicant or patentee, or the former applicant or patentee;
being documents that have not already become open to public inspection.
(3)Subject to section 56A, a specification, or other document, is to be taken to have been published on the day on which it becomes open to public inspection unless it has been published otherwise before that day.
56 Certain documents not to be published
(1)Except as otherwise provided by this Act, documents of the kind mentioned in section 55:
(a)must not be published or be open to public inspection; and
(b)are not liable to be inspected or produced before the Commissioner or in a legal proceeding unless the Commissioner, court, or any person having power to order inspection or production, directs that the inspection or production be allowed.
(2)Notice of an application for the production in legal proceedings of a document of the kind mentioned in section 55 must be given to the Commissioner, who is entitled to be heard on the application.”
In s. 56 reference to “the kind of documents mentioned in s. 55” cannot be a reference to documents that are OPI. Rather the purpose of section s. 56 clearly is to prohibit disclosure unless according to s. 55 and other relevant provisions of the Act disclosure is authorised (it is an offence for the Commissioner or an employee not to comply - see s. 183). Consequently the kinds of documents referred to must be all documents associated with a patent application, all documents filed in relation to an application or patent and all documents relating to an application given by the Commissioner to the applicant or patentee, which are not otherwise OPI under the Act.
Relevantly s. 56(2)(b) provides that such documents are not to be inspected or produced before the Commissioner or in legal proceedings unless the Commissioner (or other relevant person) directs that inspection or production be allowed.
Chapter 5 of the Regulations governs the conduct of oppositions. rr. 5.7 and 5.8 relevantly provide that:
“5.7 Filing of evidence
(1)A party who intends to file evidence in a substantive opposition must:
(a)file the evidence within the relevant evidentiary period mentioned in regulation 5.8; and
(b)if the party files all the evidence before the end of the period—notify the Commissioner of that fact.
(2)The Commissioner must give a copy of any evidence filed by a party under regulation 5.8 to the other party:
(a)before the end of the period, if the Commissioner considers it appropriate to do so; or
(b)as soon as practicable after the relevant evidentiary period ends.
(3)The Commissioner must, as soon as practicable, notify:
(a)the other party of a notification under paragraph (1)(b); or
(b)if no notification is given under paragraph (1)(b)—the parties that:
(i)all the evidence for the period has been filed; or
(ii)no evidence was filed.
5.8 Evidentiary periods
Evidence in support
(1)An opponent in a substantive opposition must file any evidence in support of the opposition:
(a)for a section 101M opposition—at the same time as the documents mentioned in subregulation 5.6(1); or
(b)for any other substantive opposition—within 3 months from the day the opponent files the statement of grounds and particulars under regulation 5.5.
Evidence in answer
(2)If the opponent files evidence in support of the opposition, the applicant must file any evidence in answer to the evidence in support within 3 months from the day the Commissioner:
(a)gives the applicant:
(i) all the evidence in support; or
(ii) if the opponent files the evidence in support in instalments—the final instalment of the evidence in support; and
(b)notifies the applicant that all the evidence in support has been filed.
(3)If the opponent does not file any evidence in support of the opposition, the applicant must file any evidence in answer to the statement of grounds and particulars within 3 months from the day the Commissioner notifies the applicant that no evidence in support was filed.
Evidence in reply
(4)If the applicant files evidence in answer under subregulation (2) or (3), the opponent must file any evidence in reply to the evidence in answer within 2 months from the day the Commissioner:
(a)gives the opponent:
(i)all the evidence in answer; or
(ii)if the applicant files the evidence in answer in instalments—the final instalment of the evidence in answer; and
(b)notifies the opponent that all the evidence in answer has been filed.”
It will be seen therefore that the regulations require a copy of the evidence filed to be given to the other party to an opposition and that the time for the next evidentiary stage is based on that occurring and notification that the previous evidentiary stage is complete. The Commissioner however has broad powers under r. 5.22 to make directions in relation to an opposition that are “not inconsistent with the Act or Regulations”.
CONSIDERATION
The course proposed by the delegate in this matter is consistent with long established practice in the Patent Office under at least the 1990 and 1952 Acts. It recognises that occasionally highly confidential information may be relevant to the determination of a matter before the Commissioner and should be permitted in evidence while providing reasonable controls over the use of that information by the other parties to the proceedings. The alternative is that confidential information cannot be relied on. This is detrimental to the party seeking to file the evidence and, potentially, will result in a less informed and correct determination of the matter. The Commissioner’s practice also avoids the otherwise odd result that confidential information cannot be considered in opposition proceedings before the Commissioner but can be considered in an appeal of the Commissioner’s decision under a confidentiality regime imposed by the Court.
I am not aware of any previous challenge to the power of the Commissioner to permit inspection subject to conditions. In the present case the opponent does not refer to the effect of s. 56(1)(b) but submits that the requirement of r. 5.7(2) for the Commissioner to give a copy of the evidence to the other party is absolute and not subject to r. 4.3(2)(b). It submits that there is no conflict between the regulations in that r. 4.3(2)(b) prevents disclosure to the public generally but r. 5.7(2) requires disclosure to a party.
In my view the interpretation of the legislation suggested by the opponent is unworkable. It fails to recognise that unfettered disclosure to a party to proceedings will destroy confidentiality in the same way as disclosure to any member of the public and therefore whether the information is OPI or made available unconditionally to the other party is of no significant difference. It also seems to assume that unfettered access is in some way necessary to provide procedural fairness in the proceedings.
It is apparent that in the context of Chapter 4 of the Act, s. 56(1)(b) must implicitly authorise a direction allowing inspection subject to conditions. If inspection was intended only to be equivalent to disclosure without an obligation of confidentiality (and therefore equivalent to publication or becoming OPI) it would not be expressed in those terms. Rather inspection appears intended to have the same meaning as in proceedings before the Court where conditional access is common and to be used in proceedings before the Commissioner for a similar purpose.
However if s. 56 does not itself empower such a direction I consider that r. 5.22 certainly does in the case of opposition proceedings (r. 22.24 in other cases). While r. 5.7(2) clearly requires a copy of evidence to be given to another party this is not to say it cannot be given subject to reasonable conditions. Those conditions will in the scheme of the Act and Regulations be appropriate for the consideration of confidential matters in the opposition while maintaining procedural fairness. Accordingly I do not consider such a direction is inconsistent with the Act and Regulations but rather supports a clear intent to permit confidential information to be considered in proceedings before the Commissioner.
I relation to r. 5.7(2) the meaning of “give” is informed by s. 28A of the Acts Interpretation Act 1901. By sub-section (2) however those provisions do not override the relevant provisions of the Patents Act and Regulations including s. 56 and r. 1.2 that authorise a document to be given in another way. In my view the Patents Act clearly contemplates that in certain circumstances a document may be given to a person by permitting inspection and an order to that effect is not inconsistent with the Act and Regulations. In the case of physical evidence, a copy of evidence cannot be given and access can only be provided by permitting inspection of an exhibit at the Patent Office or in the possession of another party. A direction supplementing r. 5.7(2) is clearly required in those circumstances. These are unusual cases for which the general discretionary powers in r. 5.22 appear to have been provided in conjunction with the other provisions of Chapter 5 to provide a workable opposition system.
Consequently I will direct that for the purpose of r. 5.7(2) the confidential document is given to the opponent by permitting inspection of a copy under conditions which I will discuss further below. It follows that they will have been given the document as of the date of my decision. That the opponent may decline the opportunity for inspection does not alter the fact that it has been offered access. It is in fact no different to other circumstances such as under r. 1.2(5) where a document is given by notifying a person that it is available and leaving it to that person to take steps to retrieve the document. This may involve the person meeting certain conditions (such as ICT or security requirements) in order to do so.
Alternatively I could have directed that the confidential information is not evidence for the purpose of r. 5.7 but that it is to be considered in the proceedings under r. 5.23. That provision requires the Commissioner to provide access to the relevant document but in my view there is again no reason why access cannot be subject to reasonable conditions. This is a circuitous route to the same outcome that emphasises the futility of the arguments submitted on behalf of the Opponent. Ultimately what matters is that the opponent has reasonable access and is permitted to respond to evidence to be considered in the opposition. The directions I intend to make do not prevent this.
There remains then the question of what is the scope of the proposed direction. The delegate has proposed access only by the opponent’s legal representatives. Martec suggests that if I find I have power to make a direction for conditional access this should be to its Managing Director on him signing a suitable confidentiality undertaking. The applicant disputes the necessity of access beyond the opponent’s legal representatives but, if justified, proposes that access be provided to an independent market expert.
The information concerned is brief and not technically complex. I do not see at this point why access beyond Martec’s legal representatives is required. Nevertheless it remains open for the opponent to seek a further direction if necessary once the evidence has been considered. However specific justification would be required in addition to that submitted to date and would need to address the option for access by an independent third party. Naturally both parties would be heard before any further direction was made.
Conclusion
I consider that the Commissioner has the power to permit inspection of a non-OPI document subject to conditions. I will make directions accordingly including that for the purpose of r. 7(2) the evidence is given to the opponent by permitting inspection.
Costs
I award costs in accordance with Schedule 8 against the opponent, Martec Pty Ltd.
P M Spann
Deputy Commissioner of Patents
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