Meiji Dairies Corporation v Fonterra Co-operative Group Limited - [2012] APO 129

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Meiji Dairies Corporation v Fonterra Co-operative Group Limited [2012] APO 129

Patent Applications: 2006288405

Titles:Milk material with good flavor and physico-chemical properties and process of producing the same

Patent Applicant:  Meiji Dairies Corporation
Opponent:  Fonterra Co-operative Group Limited
Delegate:  Dr S.D.Barker
Decision Date:  23 November 2012
Hearing Date:  Written submissions filed on 24 and 25 September 2012; further submissions in response filed 2 and 3 October 2012

Catchwords: PATENTS – extension of time to serve evidence in support – delay due to unavailability of experts – nature and significance of evidence supports the extension – no award of costs as a consequence of the two step process of explaining the reasons for the extension

Representation: Patent applicant: Spruson & Ferguson
Opponent:A J Park

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Applications: 2006288405

Titles:Milk material with good flavor and physico-chemical properties and process of producing the same

Patent Applicant: Meiji Dairies Corporation
Date of Decision: 23 November 2012
DECISION
I allow an extension of time to 18 November 2012.
No award of costs.
REASONS FOR DECISION

This matter relates to patent application 2006288405 in the name of Meiji Dairies Corporation (the applicant). The application was advertised accepted, and a notice of opposition to the grant of a patent was filed by Fonterra Co-operative Group Limited (the opponent).
After filing their Statement of Grounds and Particulars on 25 November 2011, the opponent received two extensions of time to serve their evidence in support (taking the due date to 18 August 2012). No evidence was filed and no further correspondence was received by this date. On 29 August 2012 the opponent filed an application for a three month extension of the time for serving evidence in support, which was subsequently objected to by the applicant and is the subject of this decision.
A hearing was conducted by written submissions. Submissions by the opponent were received on 24 September 2012 and submissions in response were received on 2 October 2012. Submissions by the applicant were received on 25 September 2012 and submissions in response were received on 3 October 2012. The applicant was represented by Spruson & Ferguson. The opponent was represented by A J Park.
Evidence in support comprising a declaration by Mr Dennis Charles Hurren was filed by the opponent on 23 October 2012. Declarations for Mr Anura Rohan Wewala and Mr Scott James Gardiner were filed on 26 October 2012.
Reasons for the extension of time
The reason for the extension of time was given as:
We regret the lateness of this request. Our reminder system failed to bring this to my attention.
Since our last request a lengthy first draft declaration has been produced by one expert. The other expert's availability to assist on this case has been limited and unfortunately has been further delayed for personal reasons.
We believe that gathering of the evidence will be further advanced substantially during this three month period.
These reasons for the delay have been greatly expanded upon in the opponent’s submissions for the hearing at pages 2-3, and the reasons for the late filing of the request for extension were detailed in the opponent’s submissions in response on page 2.
The relevant law
Regulation 5.10(2) of the Patents Regulations 1991 gives the Commissioner the power to extend the time for serving evidence in support. The Commissioner must not grant an extension unless satisfied that the parties have been notified of the application for extension (reg. 5.10(5)(b)), has given the parties a reasonable opportunity to be heard (reg. 5.10(5)(c)(i)), and is reasonably satisfied the extension is appropriate (reg. 5.10(5)(c)(ii)). In the present case the parties have been notified and have had an opportunity to be heard. The only remaining question is whether it is appropriate to extend the time.
The considerations relevant to this question have been considered several times by the Federal Court (Ferocem Pty Ltd v Commissioner of Patents [1994] FCA 981; 28 IPR 243, A Goninan & Co Ltd v Commissioner of Patents [1997] FCA 424; 38 IPR 213 and National Starch & Chemical Co v Commissioner of Patents [2001] FCA 33; 50 IPR 398). In summary, the power to extend time is discretionary, so it is necessary to give genuine and proper consideration to all relevant considerations. (Ferocem at 247-8, Goninan at 220). Relevant considerations include:
a)The reason why the evidence was not served earlier (Ferocem at 247)
b)The public interest in determining a serious opposition on its merits (Goninan at 222)
c)The interests of the parties (Ferocem at 247)
Explanation of delay
Submissions were made by the opponent alleging that part of the reason for the delay was a failure by the applicant to provide a translation of the Japanese language priority document. In the Statement of Grounds and Particulars at A.2 a request was made by the opponent for the applicant to supply an English translation of the Japanese priority document 2005-246908. The opponent has submitted that a reason for the delay was due to the failure of the applicant to comply with this request.
This issue has already been dealt with by correspondence to both parties, but suffice to say the proposition put forward by the opponent has no merit. In line with the Official Notice published by this office on 1 January 2001 it is only upon a direct request by the Commissioner that an applicant would be compelled to provide a verified translation. A request by the opponent included in their Statement of Grounds and Particulars is not the equivalent to a request originating from the Commissioner. Therefore I consider this argument to hold very little weight.
Also of very little weight is the argument made by the opponent that a reason for the delay was due to workload caused by preparing documents for opposition proceedings on the corresponding European patent. I agree with the applicant’s submissions that the opposition proceedings in Europe do not provide a sufficient justification for an extension of time.
In terms of the experts themselves, the opponent provided little information as to the reasons for the delay in the initial application. More elaborate reasons were provided only in submissions before this hearing. For Mr Hurren the explanation provided by the opponent included delays caused by holidays, illness and the interference of the regular business of Mr Hurren. All in all I am satisfied that the explanation in relation to Mr Hurren is adequate.
The same cannot be said for Mr Wewala. It appears to suggest that Mr Wewala was only retained after another expert who was initially selected became unavailable. No clear explanation has been provided at any stage as to why Mr Wewala was not retained earlier, nor why any delay has occurred regarding his evidence.
The applicant has submitted that the availability of expert witnesses in general cannot be used to justify an extension of time. The applicant relies on section 3.8.4 of the Manual of Practice and Procedure to support this assertion. On closer inspection this section of the Manual deals with directions made by the Commissioner under reg 5.10(1). The current extension of time application has been made under reg 5.10(2). Therefore although the availability of expert witnesses may be a circumstance to which the Commissioner must give regard, the considerations detailed in section 3.8.4 are not relevant for the current proceedings.
The applicant also relied on ABB EPT Construction Pty Ltd v A. Goninan & Co. Ltd [1996] APO 27 and S.D.S. Digger Tools Pty Ltd v Pasdonnay Pty Ltd [1995] APO 57 to support this argument. Although I agree that both decisions had regard to the unavailability of the experts, this was one of a number of factors considered by the delegates in each of those decisions, and both decisions can be distinguished as they turned on other facts such as insufficient or inadequate detail in the explanations.
Despite the deficiencies for Mr Wewala’s explanation, I am satisfied a sufficient explanation of the delay regarding Mr Hurren has been provided, and therefore overall there is an adequate explanation of the delay.
In the present case the application for an extension of time was made after the evidence period had expired. Under the Patents Act 1952 an extension after the period had expired could only allowed if there were "special circumstances" (see Genentech Inc. v The Wellcome Foundation Limited [1988] APO 15; 11 IPR 401; 1988 AIPC 90-493). There is no such requirement under the present regulations, but consistent with the Ferocem decision the reason why the application for extension of time was not made until after the period had expired is a relevant, but not mandatory, consideration. In this instance the opponent described the failure to lodge their application for the extension of time within the 3 month period as due to a failure in their reminder system. I am satisfied that there is a satisfactory explanation of this aspect of the delay.
Public interest
When considering the public interest, it is necessary to form a view as to the nature and significance of the evidence that is being prepared (Goninan at 225-6). As the declarations from Mr Hurren and Mr Wewala have now been filed their nature and significance is apparent. Certainly the declaration by Mr Hurren appears to address important issues of relevance such as novelty and inventive step. However upon a cursory inspection it is not so apparent what the significance of the Wewala declaration is. The initial application for extension of time gave no hint as to the nature of the evidence for either expert, and in the further submissions no adequate explanation is given to the significance of the Wewala evidence.
On the basis of the evidence of Mr Hurren I am of the opinion that the public interest favours allowing the extension to allow this evidence to be properly tested at hearing.
Interests of the parties
As is normal in such matters, the interests of the parties are opposed and offsetting. The applicant has questioned whether the opposition is serious in light of the failure of the opponent to lodge their extension of time application within the allotted time. As noted above, I have considered the reasons provided for the late application and I am satisfied by the reasons given. I am also of the opinion that, through the Statement of Grounds and Particulars and the evidence already filed in support of the opposition, the opponent is serious in its opposition.
Conclusion
I am satisfied that overall the opponent has discharged the onus of justifying an extension, with the key factors being that sufficient explanation was provided in the opponent’s submissions regarding Mr Hurren, and that the public interest favours admitting the evidence already filed. I will allow the extension of time.
Costs
In my mind it is clear that the initial explanation provided by the opponent to justify the extension of time was severely lacking. The reason for the failure to file the application in time was dealt with in a single sentence. No reason justifying the extension of time was given with regard to the “first expert” (presumably Mr Hurren) and a very limited explanation was provided for the “other expert”. These deficiencies were only corrected once submissions for the purposes of this hearing were received.
Although it is normal for costs to follow the event, where the application for extension of time as filed is inadequate, and the extension is subsequently granted on the basis of information provided at the time of the hearing, then the party objecting to the extension was justified in their objection and should not be penalised by an award of costs against them. This approach was adopted in Apotex Pty Ltd v Les Laboratoires Servier [2012] APO 91, for instance. I see no reason to depart from this approach given the facts before me. The opponent has been successful on the basis of new information provided in written submission. Considering the lack of information given in the initial application, the applicant was justified in objecting to the extension, and the award of costs should not penalise them. It is appropriate to make no award of costs.
Dr S.D.Barker
Delegate of the Commissioner of Patents