Memcor Australia Pty Ltd v Zenon Technology Partnership
[2007] APO 22
•29 June 2007
ABSTRACTS OF DECISIONS
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No. 2004203855 in the name of ZENON TECHNOLOGY PARTNERSHIP
Title: Vertical skein of hollow fiber membranes and method of maintaining clean fiber surfaces
Action: Opposition under Section 59 of the Patents Act by MEMCOR AUSTRALIA PTY LTD and an application for an extension of time under Regulation 5.10 to serve evidence in support.
Decision: Issued 29 June 2007.
Abstract
This is an opposition to a request for an extension of time of three months to file evidence in support. One previous extension of three months had already been granted. Delays leading to this extension have largely resulted from Professor Leslie’s holiday, his regular work and his wife’s unexpected surgery. Memcor has provided a reasonable explanation for the delay. The considerations behind the private interests of the parties and the public interest also support the extension.
Extension of time allowed.
Costs awarded against the applicant Zenon.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No. 2004203855 by Zenon Technology Partnership, opposition under section 59 by Memcor Australia Pty Ltd and objection to an application under regulation 5.10(2) for an extension of time in which to serve Evidence-in-Support.
BACKGROUND
Patent application 2004203855 in the name of Zenon Technology Partnership (hereafter referred to as Zenon) was advertised accepted on 29 June 2006. It is a divisional of Patent Application 715364 which is also currently under opposition from Memcor Australia Pty Ltd (hereafter referred to as Memcor).
A notice of opposition to the present divisional application was filed by Memcor on 1 August 2006. A statement of grounds and particulars was served on 31 October 2006 and evidence in support was due by 31 January 2007.
On 29 January 2007 Memcor requested an extension to 30 April 2007 to serve evidence in support. Zenon did not object to the extension but provided written submissions as to why the extension should be refused. Despite these submissions the Commissioner was satisfied that the extension was appropriate in all of the circumstances and granted the extension.
A second request for an extension until 30 July 2007 to file evidence in support was filed by Memcor on 27 April 2007 and was opposed by Zenon.
The matter was heard in Canberra on 6 June 2007. Zenon was represented by Mathew Swinn, patent attorney of Corrs Chambers Westgarth, Melbourne. Memcor was represented by Peter Heathcote, patent attorney of Shelston IP, Sydney. Both parties appeared by telephone.
THE APPLICATION FOR EXTENSION OF TIME
The circumstances and grounds for requiring the second extension of time are as follows:
“The expert who we have selected to assist us in this matter, Associate Professor Gregory Leslie, has been absent on leave during the University break over the Christmas/New Year period and has only returned to his position at the beginning of March. Professor Leslie has completed his review of the common general knowledge in Australia relevant to the opposed application. Associate Professor Leslie’s wife fell ill in March and required hospitalization and surgery in early April. Professor Leslie has been required to care for his young family during his wife’s Illness. This unexpected circumstance has impacted not only on Professor Leslie’s normal work duties but has severely curtailed the time he has been able to dedicate to considering and reporting on the opposed application and the relevant prior art to be used as part of the Evidence in Support. Professor Leslie is also assisting us with evidence in a number of other related oppositions which has also reduced his time available in respect of this matter.
Our Australian attorney, who has been intimately involved in this matter and other associated oppositions over several years, is also absent on an overseas business trip for several weeks from mid April. This absence has also impacted on the preparation of the Evidence in Support.
In view of all the above circumstances, we seek further time to allow, for the completion of the review of the opposed application and relevant prior art by the our expert, review of the expert’s report by our legal advisors, preparation and settling of the evidence in consultation with Counsel and the execution and service of the evidence on the applicant’s attorneys.”The first application for an extension of time filed on 29 January 2007 read as follows:
“We wish to submit evidence from an Australian expert as to the state of Common General Knowledge in Australia at the priority date, as to the meaning in Australia of certain terms within the opposed application and in respect of interpretation of the relevant prior art, as part of our Evidence-in-Support. An expert has been selected, however, as result of pressure of other work and the Christmas/New Year holidays, the expert has been unable to complete an initial report on the state of Common General Knowledge in Australia at the relevant date. Further time is required to allow this expert to complete his review of the common general knowledge, the opposed specification and the prior art and to formulate his opinion.
We have also engaged Counsel to assist in the preparation and settlement of final evidence in this matter. Again, as the result of court matters in November 2006 and the Christmas/New Year break, Counsel will be unavailable until early February 2007 to assist in this matter. Further time is required for Counsel to review the proposed evidence and settle the evidence in consultation with our advisors and for execution and service of the evidence on the applicant.”THE LAW ON EXTENSIONS OF TIME
Extensions to the time limits to file evidence in oppositions is at the discretion of the Commissioner, and is governed by subregulation 5.10(2). The Federal Court has considered the requirements of regulation 5.10 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. 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 exercise of this discretionary power requires proper, genuine and realistic consideration of all the relevant aspects that pertain to the application;
(c) The provision of a satisfactory explanation of the delay is a relevant consideration, but is not mandatory;
(d) 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;
(e) The interests of the opponent, the applicant and any other parties are a relevant consideration.
In summary, it is clear from these decisions that the Commissioner, having given both parties the opportunity to make representations, may grant an extension only if reasonably satisfied that it is appropriate in all of the circumstances
RELEVANT CONSIDERATIONS
Explanation of the delay
The reasons given by Memcor for requiring further time are:
·Professor Leslie, Memcor’s expert, only returned from leave at the beginning of March;
·His wife fell ill in March and had surgery in early April requiring him to care for his young family and reducing the time he could devote to this opposition;
·He has been briefed to assist with evidence in other related oppositions which has reduced the time available in respect of this opposition;
·He has full-time work at the University;
·He has already completed his review of the common general knowledge in Australia but needs further time to consider and report on the prior art to be used in the evidence in support;
·Memcor’s Australian attorney was unavailable for several weeks in April due to a business trip.
Zenon submitted that Memcor’s application for the extension provides wholly inadequate reasons for requiring an extension, particularly taken together with the reasons given in January for requiring the first extension. While they agreed that the holidays and the wife’s illness were valid reasons, they argued that the evidentiary base upon which Memcor could rely in this opposition was well established before this opposition was filed due to the fact that Memcor has also been conducting an opposition against the corresponding European patent for over three years. Also Memcor has previously submitted evidence of common general knowledge against the broader original claims of the parent application which would have at least given Professor Leslie information and a collection of prior art to start from. They criticised the fact that Memcor had not provided information such as when Professor Leslie returned to work following his wife’s illness, what tangible documents or drafts have been produced by Professor Leslie or the dates on which he had met with the attorney.
Memcor on the other argued that they were working diligently in the preparation of their evidence and the reasons given by them were all valid reasons. The current extension is only the second extension sought by Memcor. The expert witness used by Memcor for the opposition of the parent application was not available for the current opposition and hence Memcor had to select and engage Professor Leslie as a new expert. The opponent further argued that Professor Leslie being an independent expert cannot be expected to base his evidence on evidence prepared by another person. As the priority date of the application goes back over 10 years it has taken time for Professor Leslie to determine what was the common general knowledge at that time. In relation to the reason that the applicant’s Australian attorney has been absent on an overseas business trip for several weeks, Memcor admitted at the hearing that this was not a major reason, but rather it was Professor Leslie’s inability to complete his expert evidence which had significantly impacted on the completion of their evidence in support.
While an initial period of 3 months is available under the legislation to file evidence in patent oppositions, obviously the legislation allows extended periods where this is ‘appropriate in all the circumstances’. I note that if the current extension is granted it will bring the time the opponent has had to file their evidence to 9 months, but I do not consider that this is excessive in the circumstances. Evidence, in the form of statutory declarations from appropriately skilled practitioners in the relevant industry(s), to establish the disclosure of an anticipatory document or the state of the common general knowledge, years prior at the priority date of the accepted patent claims, is also notorious for taking considerable time. It is not unusual for much longer periods than the initial 3 month period to be required as was the case for Memcor to file evidence in support in the instant opposition. I also refer to Neville William Lyons (carrying on business as Mitty's Authorised Newsagency) v The Registrar of Trade Marks (1983) 78 FLR 217, where Beaumont J said
"Further, I think that the delegate was entitled to have regard to the notorious fact that opposition proceedings usually involve the gathering of evidence from third parties and this usually takes considerable time."
Whilst Memcor might have known of the evidentiary base it was going to rely on through the oppositions to the parent application and the corresponding European application, I note that the Statement of Grounds and Particulars cites around 23 prior art documents in support including 4 or 5 new prior art documents not present in the Statement of Grounds and Particulars of the parent application. I also agree that it would be inappropriate for Professor Leslie, as an independent expert, to base his evidence on evidence prepared by another person. I have been presented with no arguments to convince me that Professor Leslie’s holiday, his regular work and his wife’s unexpected surgery would all have not impacted on his ability to complete his expert evidence within the previously extended time.
At the hearing the opponent indicated that Professor Leslie has completed his evidence on the common general knowledge and that he has started reviewing the prior art and that a draft declaration is expected to be prepared shortly.
I am satisfied that Memcor has given a reasonable explanation of the delay and is being diligent in the preparation of its evidence.
The interests of the parties
To date, Memcor have not served any evidence by experts. As a consequence, if the extension is not granted then Memcor will be effectively shut out from arguing much of their case. Clearly Memcor’s interests heavily favour the extension being granted.
Zenon’s interests are best served by having a patent granted in the near future to enable them to exploit and protect their invention, and they would be disadvantaged by Memcor unnecessarily protracting the opposition.
The statement of grounds and particulars foreshadows a serious opposition. Although the shortage of evidence makes it difficult to confirm this, I note that Memcor has opposition proceedings against the parent application and also against a corresponding European patent. At the hearing Memcor submitted that substantial progress has been made in the preparation of their evidence and they are confident of serving the evidence within the extended period sought. It is my view that the balance in relation to the interests of the parties is currently in favour of the opponent Memcor.
The public interest
The public interest calls for a balance between the requirements that oppositions be dealt with expeditiously and economically, and that a serious opposition be dealt with on its merits (Ferocem (supra) and Goninan (supra)).
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. In the present case, the evidence relates to the analysis of prior art documents and establishing what was known in Australia. These matters are clearly of significance to the grounds of novelty and inventive step. Given that no expert evidence has yet been served, this evidence is likely to be significant to the opposition.
I accept oppositions should also be dealt with expeditiously and economically. On the other hand there is a serious detriment to the public interest if the opponent is shut out from serving any expert evidence against the patent application at all. This could potentially result in invalid claims being granted.
I am therefore satisfied that the public interest favours the grant of an extension of time.
DECISION
I have found that Memcor has provided a reasonable explanation for the delay in filing the evidence in support. I have also found that the considerations behind the private interests of the parties and the public interest support the extension.
I am therefore satisfied that an extension of time is appropriate in all the circumstances. Therefore I grant Memcor an extension until 30 July 2007 in which to serve its evidence in support.
COSTS
In the present case, the explanation supplied was found to justify an extension. In such circumstances costs follow the event. I see no reason to depart from the usual practice of the Commissioner in these matters. I therefore award costs against the applicant Zenon.
R Subbarayan
Delegate of the Commissioner of Patents29 June 2007
Patent attorneys for the applicant: Corrs Chambers Westgarth, Melbourne
Patent attorneys for the opponent: Shelston IP, Sydney
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