Mineral Technologies Pty Ltd v Orekinetics Investments Pty Ltd
[2014] APO 63
•2 September 2014
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Mineral Technologies Pty Ltdv Orekinetics Investments Pty Ltd [2014] APO 63
Patent Application: 2011253825
Title:Cleaning device
Patent Applicant: Orekinetics Investments Pty Ltd
Opponent: Mineral Technologies Pty Ltd
Delegate: Dr S.D. Barker
Decision Date: 2 September 2014
Hearing Date: Written submissions completed on 11 August 2014
Catchwords: PATENTS – extension of time to file evidence in answer – what is reasonable, prompt and diligent assessed in context – declaration of drought was not an exceptional circumstance for the purposes of filing evidence – extension of time allowed
Representation: Patent applicant: IP Gateway
Opponent:Halfords IP
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2011253825
Title:Cleaning device
Patent Applicant: Orekinetics Investments Pty Ltd
Date of Decision: 2 September 2014
DECISION
I allow an extension of the time for filing evidence in answer until 22 August 2014.
For the purposes of regulation 5.8(4), this decision represents notice that all of the evidence in answer has been filed. The time for filing evidence in reply is 2 months from the date of this decision.
I award costs according to Schedule 8 against Mineral Technologies Pty Ltd.
REASONS FOR DECISION
This matter relates to patent application 2011253825 in the name of Orekinetics Investments Pty Ltd (Orekinetics). The application was advertised as accepted on 6 June 2013 and a notice of opposition to the grant of a patent was filed by Mineral Technologies Pty Ltd (Mineral Technologies) on 6 September 2013.
Mineral Technologies filed a statement of grounds and particulars on 6 December 2013. Evidence in support was completed on 5 March 2014. Evidence in answer is due to be filed by 7 June 2014. Orekinetics has requested an extension of the time for filing evidence in answer until 22 August 2014.
The Commissioner advised on 15 July 2014 that she was satisfied with the reasons in support of the application, and Mineral Technologies asked for a hearing. The hearing was conducted by means of written submissions.
The law
On 15 April 2013, the Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (No 1) (the Amendment Regulation) commenced. The Amendment Regulation significantly amended the Patents Regulations (the Regulations) as they apply to patent oppositions. The law governing extensions of time to file evidence in a patent opposition depends upon the date on which the opposition commenced. Where the evidentiary period commenced on or after 15 April 2013 (as in the present case), the extension is governed by regulation 5.9 of the Regulations as in force on 15 April 2013. This follows from regulation 23.36(2), item 2, of the Regulations.
Subregulation 5.9(2) states:
The Commissioner may extend the period only if the Commissioner is satisfied that:
(a) the party who intended to file evidence in the period:
(i)has made all reasonable efforts to comply with all relevant filing requirements under this Chapter; and
(ii)despite acting promptly and diligently at all times to ensure the appropriate evidence is filed within the period, is unable to do so, or
(b) there are exceptional circumstances that warrant the extension.
Exceptional circumstances are defined in subregulation (5):
In this regulation:
exceptional circumstances includes the following:
(a) a circumstance beyond the control of a party that prevents the party from complying with a filing requirement under this Chapter;
(b) an error or omission by the Commissioner that prevents a party from complying with a filing requirement under this Chapter;
(c) an order of a court, or a direction by the Commissioner, that the opposition be stayed pending the completion of a related proceeding or action under the Act.
These provisions have been considered by the Commissioner in TRED Design Pty Ltd v Julie-Anne McCarthy and Bradley McCarthy [2013] APO 57 (the TRED decision) and Merial Limited v Novartis AG [2013] APO 65 (the Merial decision). The principles applied in those decisions, which I accept as correct, are that I must ask myself the following questions:
1. Has the party (and their attorney or agent) made all reasonable efforts to comply with all relevant filing requirements?
2. Was the failure to file the evidence in time despite the party (and their attorney or agent) acting promptly and diligently at all times to ensure the evidence is filed in time?
3. Were there exceptional circumstances that warrant the extension?
I can extend the time for filing evidence only if I am satisfied that the answer to questions 1 and 2 is YES, or if I am satisfied that the answer to question 3 is YES. If I am so satisfied, then I must consider whether there are any discretionary reasons why the extension should not be granted.”
As noted in the Explanatory Statement accompanying the Amendment Regulation:
"The Commissioner will not be able to extend time periods unless one of these conditions was made out. The party seeking the extension will bear the onus of convincing the Commissioner of this. Once the conditions in subregulation 5.9(2) are met, the Commissioner still has the discretion to consider whether or not it is appropriate that an extension of time be granted. In applying the test, the Commissioner will not be required to give a direction to extend a period solely because of delays caused by a legal representative failing to act promptly or diligently, by difficulties in obtaining expert evidence that could have been anticipated and acted on or by attempts to settle the proceedings.
Where a party cannot satisfy the Commissioner that an extension is justified under the test, the Commissioner will not have the power to give a short extension to allow the filing of evidence immediately available or to validate evidence filed out of time."
If the Commissioner is satisfied that an extension is appropriate, the Commissioner must then determine the length of the extension (subregulation (3)):
The Commissioner must determine the length of the extended period having regard to what is reasonable in the circumstances.
The application for extension of time
The application for extension of time is reproduced in Annex A. The key issues raised in the reasons are as follows.
Issues relating to the patent attorney
The applicant was originally represented by a patent attorney named Daniel Rosenthal at Griffith Hack. By the time that the opposition commenced Daniel Rosenthal was no longer employed by Griffith Hack. Mr Gates became unhappy with the representation provided by Griffith Hack, and decided to transfer the work to Daniel Rosenthal at IP Gateway.
Issues relating to the drought
Mr Gates also owns a property at Goondiwindi. A drought was declared on 1 March 2014. Mr Gates had to return to his property to hand feed his stock. This occurred during the second half of March and April.
Issues relating to the structure of company
Orekinetics is a small company, and Mr Gates is the only person with responsibility for IP matters. When Mr Gates is unavailable, it seems that no decisions can be made on IP matters.
Issues relating to what Mr Gates was not told
Mr Gates only became aware on 8 May 2014 that the deadline for filing evidence was 7 June 2014, and extensions were likely to be difficult to obtain.
Issues relating to the strategy for defending the application
It appears that nothing was done prior to receiving the evidence in support. Once the evidence in support was received a strategy does not seem to have been developed. Everything had to be done by Mr Gates.
Further information
The Commissioner was not satisfied that an extension was justified, and requested further information. On 26 June 2014 a response was provided. That response is reproduced in Annex B. The further information asserts the following.
Issues relating to the patent attorney
Mr Gates had told his Griffith Hack that he "would likely be away and unavailable in mid to late March. This turned out to be an underestimate. Mr Gates was unable to communicate with Griffith Hack by telephone because of poor communications, and "maintaining the operation of the farm under the exceptional circumstances of the drought was time consuming and draining". Additionally he "continued to have primary responsibility for maintaining the operations of Orekinetics Pth Ltd".
Mr Gates also alleges that the decision to change patent attorneys in May 2014 demonstrates his diligence because he "wanted to ensure that any evidence filed was as appropriate to his case as possible".
Issues relating to the drought
Mr Gates asserts that he spent "much of March and April and into May transporting supplies of hay and feed to the farm". This is longer than the period originally indicated.
Issues relating to the structure of company
Mr Gates reiterated that Orekinetics is a small company with "a mere handful of staff", and "none of the staff at Orekinetics Pty Ltd has a level of experience in patent matters appropriate for dealing with a patent opposition". Due to Mr Gates' absence to work on his farm, the staff were already carrying out extra duties at Orekinetics.
Issues relating to what Mr Gates was not told
Mr Gates alleges that Griffith Hack would have informed him of the deadline for filing evidence in answer if he had not been unavailable to attend a meeting in mid-March 2014 (due to his commitments on the farm).
Mr Gates only became aware on 8 May 2014 that the deadline for filing evidence was 7 June 2014, and extensions were likely to be difficult to obtain.
Other matters
Mr Gates suggests that I take into account the "importance of the role of primary producers in Australia" and "the public interest that small Australian companies be given the opportunity to have a fair hearing in relation to their intellectual property".
Has the party made all reasonable efforts to comply with all relevant filing requirements?
In the Merial decision, the Deputy Commissioner noted:
"that the requirement in paragraph 5.9(2)(a)(i) is intended to import a consideration of the reasonableness of the relevant party’s conduct over the totality of the opposition proceedings rather than its compliance with the particular evidentiary period in question"
It is not clear what strategy Orekinetics had adopted in order to prepare its evidence in answer. They had engaged patent attorneys (initially Griffith Hack and later IP Gateway) to assist with the process. Within the company, however, responsibility lay solely with Mr Gates, and everything had to go through him. In considering the reasonableness of this approach it needs to be taken into account that Orekinetics is a very small company (with only four employees). It is not reasonable to expect a small company to put in place the procedures that would be normal in a large company. In the circumstances, I accept that it was reasonable for all decisions to involve Mr Gates.
The reasonableness of the actions taken by Mr Gates and the patent attorneys is best analysed by considering whether they acted promptly and diligently.
Was the failure to file the evidence despite acting promptly and diligently?
In Fugro Airborne Surveys Corp v Geotech Airborne Limited [2014] APO 23 at [20] I stated that a chronology of the steps taken is usually a good starting point to assess whether a person has acted promptly and diligently:
"A party seeking an extension of time will assist the Commissioner (and advance their own cause) if they provide information about what they did, when they did it, and how long those actions took. When considering such information, it is relevant to consider whether there have been any significant unexplained delays. The presence of significant delays without a reasonable explanation is the antithesis of acting promptly and diligently. "
However, a chronology without an explanation is seldom helpful. As demonstrated by Sportingbet Australia v Tabcorp International Pty Ltd [2014] APO 21, a lengthy chronology may fail to reveal why things were done, or why things were not done. The Commissioner will be assisted by an explanation - a narrative that explains the strategy being followed, how the events fit into that strategy, problems confronted and how the strategy was modified as necessary. As stated in Clarus Therapeutics, Inc. v Lipocine, Inc [2014] APO 50 at [21]:
"What is missing is a narrative that puts those actions into context. For example, that explains the objective of the evidence gathering activities to the extent that efforts toward and failure to achieve that result can be understood. In not providing this Clarus appears to be expecting the Commissioner to read between the lines and potentially does not appreciate that it bears the onus of satisfying the Commissioner."
Once the facts are understood, the question is whether the evidence preparation was undertaken promptly and diligently. However, that assessment must have regard to the full range of commitments the person has, and there is no requirement for a person to do the impossible. In the TRED decision at [51] I said:
"A person needs to act reasonably, and it is not reasonable that a person do the impossible. The focus has to be on what the person actually did, and whether they acted reasonably, promptly and diligently."
Where a person encounters delays, that is not fatal to an extension of time if the person did what was reasonable to overcome the delays. As the delegate said in Shelford Services Pty Limited v Baylor Research Institute [2014] APO 20 at [19]:
"Any significant gaps or delays in a chronology, where relevant action would generally be expected, should be explained. The nature of the delay and what was done to attempt to mitigate the delay would be a relevant consideration for an extension of time. An explanation of the unforeseen and what was done to mitigate that would generally be considered favourably."
However, a person must explain the circumstances in which they were operating in order for the Commissioner to take them into account. In the TRED decision at [51] I went on to say:
"I do not accept that I should simply accept that it was not possible to prepare the evidence any sooner, without some information that would enable me to form that opinion for myself."
Once these matters are understood, it must be remembered that "promptly and diligently" is not setting a standard of perfection. In Osmose New Zealand v Zelam Limited [2014] APO 49 at [22] I said:
"While it might have been possible to carry out some activities faster, the time taken is not outside the range of prompt and diligent given the work that was involved."
In the present case the broad chronology is as follows.
6 Sept 2013 Notice of opposition filed 6 Dec 2013 Statement of grounds and particulars filed 7 Mar 2014 Commissioner sends acknowledgement that evidence in support is complete 13 Mar 2014 Evidence in support forwarded to Mr Gates 14 Mar 2014 Mr Gates requested consultation with Griffith Hack Late Mar 2014 Mr Gates out of Brisbane Mar – Apr 2014 Mr Gates required to spend time on his farm Late Mar – Apr 2014 Mr Gates commenced review of evidence in support 7 May 2014 Mr Gates met with Griffith Hack 8 May 2014 Griffith Hack inform Mr Gates of the deadline for filing evidence in answer was 7 June 2014 9 – 14 May 2014 Mr Gates gave consideration to changing his patent attorney 15 May 2014 Mr Gates changed patent attorney 21, 22 May 2014 Files transferred from Griffith Hack to IP Gateway 21 – 24 May 2014 Mr Rosenthal out of the office 26 May to 10 Jun 2014 Mr Rosenthal working intensively on evidence in answer
It is apparent that Mr Gates commenced consideration of the evidence in support soon after it became available. However, it seems that the work of preparing evidence in answer only commenced with urgency on or about 8 May 2014. The significant period of delay was from the completion of evidence in support until 8 May 2014. The reasons for delay on Mr Gates part were twofold: drought and patent attorney.
Drought issues
It is a matter of fact that a drought declaration was made on 1 March 2014 relating to the Goondiwindi area. The declaration was made in response to the deteriorating drought situation across Queensland.
It is clear that Mr Gates was not able to focus on his responsibilities with regard to the opposition because of the ongoing drought. Difficulties associated with the drought required him to be present on his farm, and to be personally involved in feeding livestock.
Should Mr Gates have delegated either his responsibilities for the opposition or the management of his farm? In the short term, there was no one who could quickly take over responsibility for the opposition. Similarly, even if Mr Gates could delegate some of his responsibilities for the management of his farm, it is unrealistic to expect him to totally step back from the operation of the farm. Consequently it was not reasonable to suggest that Mr Gates should have delegated either responsibility in the short term (especially as he was not aware of the urgency of the opposition - see below).
Patent attorney issues
Mr Gates requested a meeting with Griffith Hack immediately after receiving the evidence in support. It seems likely that Griffith Hack would have informed Mr Gates of the due date for evidence at this meeting. However, the meeting did not take place (due to the drought issues discussed above) and it was not until 7 May 2014 that Mr Gates was able to meet with Griffith Hack. The evidence shows that Mr Gates acted quickly once he became aware of the deadline.
The failure of Griffith Hack to inform Mr Gates of the due date for evidence was because of Mr Gates' unavailability. Mr Gates was unavailable in part because he was not aware of the due date for evidence. Whether this was due to a failure on the part of the patent attorney or Mr Gates' distraction due to the drought is immaterial. It places Mr Gates' inaction into context. It explains why he did not put in place alternative arrangements for dealing with either the farm or the opposition.
Overall
In the TRED decision and the Merial decision, the Commissioner had to consider whether persons had acted promptly and diligently despite evident periods of delay. In those cases the parties provided explanations that were inadequate, in effect asking the Commissioner to assume diligence without disclosing enough of the basis for that conclusion. Consequently the extensions of time were not allowed. The present case is different. Orekinetics have provided an explanation of the relevant facts. This information has enabled me to be satisfied that, in the circumstances, Orekinetics acted reasonably and failed to file its evidence in answer despite acting promptly and diligently.
Mr Gates drew attention to the fact that he is a farmer, and Orekinetics is a small Australian company. The Regulations draw no distinction between different types of applicants. There is no basis for allowing an extension of time solely on the basis of these matters. However, they are part of the context, and as such have been taken into account.
Were there exceptional circumstances?
Orekinetics rely heavily on the drought conditions to argue that exceptional circumstances exist in this case. While it is unnecessary to consider this point (given my conclusion above), I will make a few observations in the light of the extensive submissions of the parties.
In the TRED decision I stated that exceptional circumstances were:
"matters outside the normal evidentiary process, and outside the control of the party, where it would be unreasonable to insist on a party filing their evidence"
A drought is a natural event that is outside the normal evidentiary process, and outside the control of Orekinetics. In a period of extreme drought, would it be unreasonable to insist on Orekinetics filing their evidence in answer?
A drought does not prevent the preparation of evidence, but it can influence the time available to a person to prepare evidence. It is not reasonable to totally suspend the preparation of evidence during the period of a drought. Instead, the preparation of evidence should continue to be prosecuted as promptly and diligently as possible in the circumstances. This is consistent with the approach I have adopted above.
Conclusion
I am satisfied that an extension of time is appropriate.
Finally, I need to consider what length of extension is reasonable in the circumstances. The extension sought was until 22 August 2014. I consider this a reasonable extension in the circumstances. I note that the evidence was filed in this time.
Costs
It is normal for costs to follow the event. In this case Orekinetics have been successful, and I can see no reason depart from the norm. I will award costs against Mineral Technologies.
Dr S.D. Barker
Delegate of the Commissioner of PatentsAnnex A
Copy of the application for an extension of time
The grounds for this application are as follows:
1. Australian Patent Application No. 2011253825 (the Patent Application) was filed and prosecuted by the Brisbane Office of Griffith Hack Patent & Trade Mark Attorneys (Griffith Hack).
2. The Attorney who acted in the filing and prosecution of the Patent Application was Daniel Rosenthal, although the parent application (2006202868) was prepared and filed by a different attorney.
3. By the time the opponent filed an opposition to the grant of a patent on this application Daniel Rosenthal was no longer working for Griffith Hack. Orekinetics Investments Pty Ltd (the Applicant) was notified of the opposition by other attorneys at Griffith Hack with whom it had not previously worked.
4. Mr Peter Gates is a director of Orekinetics Investments Pty Ltd (Orekinetics) the Applicant and is the sole inventor of the invention to which the Patent Application relates.
5. The Applicant, together with an associated operating company Orekinetics Pty Ltd (hereinafter collectively referred to as Orekinetics) is a small and medium enterprise based in SE Queensland. It operates in a niche area and has been extremely successful. Orekinetics currently has four employees and therefore has very limited human resources. Further Mr Peter Gates has sole and exclusive responsibility for IP matters within Orekinetics. This includes liaising with patent attorneys and managing and executing all projects that relate to patents. Mr Gates therefore had sole responsibility within Orekinetics for handling the opposition and for liaising with Griffith Hack and providing instructions to Griffith Hack in relation to the opposition.
6. Griffith Hack forwarded a copy of the Evidence in Support to the Applicant on 13 March 2014.
7. On Friday 14 March 2014 Mr Peter Gates responded to the evidence received from Griffith Hack and requested a consultation with Griffith Hack to discuss the evidence and steps that needed to be taken by the Applicant to contest the opposition.
8. Mr Gates was required to be out of Brisbane in the second half of March 2014. Griffith Hack was unable to arrange a consultation with Mr Gates to discuss the evidence before he had to leave Brisbane.
9. Mr Gates is the owner of a substantial farming operation dose to Goondiwindi, QLD.
10. In March and April 2014 the area was in drought conditions. The area including Goondwindi and Western Downs has been formally 'drought declared' as of 1 March 2014 by the Queensland State Government As explained, for example on the webpage a drought declaration is an official acknowledgment by the government that an area or property is drought-stricken and is triggered by severe climatic circumstances likely to occur no more than once every 10-15 years. A Department of Agriculture, Fisheries and Forestry flyer for a drought assistance event, which confirms the drought declared status of Goondiwindi as of 1 March, can be viewed at and a copy is attached.
herewith.11. Mr Gates was required to spend time at the farming operation in March and April assisting in the performance of important and urgent operations necessitated by the drought conditions, including, by way of example, the hand feeding of 650 breeders and young cattle.
12. During the second half of March and during April 2014, while away from Brisbane, Mr Gates commenced a detailed review of the evidence in support, despite his other pressing responsibilities. This included studying the statement of grounds and particulars and the evidence in support including the statutory declarations of Dr Anthony Farmer and Owen Lickiss.
13. Mr Gates urgently sought a professional consultation with Griffith Hack to take place as soon as he returned to Brisbane. As a result a meeting took place between Mr Gates and Griffith Hack at their offices in Brisbane on 7 May 2014.
14. The Applicant received an email from Griffith Hack relating to the meeting and proposed action in relation to the opposition on the afternoon of 8 May 2014. The email stated that the deadline for filing the Evidence in Answer was 7 June 2014 and included the sentences "Please note that it is important that we have your instructions in the next week because Australian patent laws changed in early 2013. The changes have resulted in it becoming difficult to obtain extensions of time to lodge evidence."
15. This was the first point at which the Applicant or Mr Gates became aware that the deadline for filing the Evidence in Answer was 7 June 2014, that urgency was required to prepare and serve this evidence by 7 June 2014, or that extensions of time for filing the Evidence were difficult to obtain.
16. At the meeting with Griffith Hack, and upon consideration of the email of 8 May 2014, Mr Gates became concerned that he would not obtain the desired level of representation from Griffith Hack. He considered that compared to Daniel Rosenthal who had filed and actively prosecuted the Application, the attorneys assigned to the case had little background or knowledge of the application.
17. Mr Gates was concerned whether the attorney assigned to the case had sufficient experience in oppositions. Mr Gates was also concerned that the attorney had no experience in working with inventions in this field of technology, e.g. mineral processing.
18. Over the next few days, from 9 May to 14 May 2014, Mr Gates gave consideration to the option of having input from Daniel Rosenthal, who had a background of working on the case. On or around ·14 May 2014 Mr Gates decided that it was important to have Daniel Rosenthal involved in the opposition. By then, Daniel Rosenthal was working at IP Gateway Patent & Trade Mark Attorneys Pty Ltd (lP Gateway) and Mr Gates contacted him at this firm to discuss the matter.
19. Mr Gates sent an email to Daniel Rosenthal on the evening of 14 May 2014, and discussed the opposition with him in a telephone conversation of 15 May 2014. IP Gateway was instructed to take carriage of the opposition 15 May 2014, and this was confirmed in writing on 16 May 2014. IP Gateway applied to be entered as address for service for the application on the following working day, 19 May 2014.
20. Mr Gates instructed Griffith Hack to transfer the files to IP Gateway Patent & Trade Mark Attorneys on 15 May 2014. IP Gateway was in contact with Griffith Hack on that date, by email and telephone regarding the transfer. Transfer of the files to IP Gateway was effected by Griffith Hack on 21 May 20·14 and 22 May 2014.
21. In the discussions with Daniel Rosenthal on 15 May 2014, Mr Gates was advised that the due date for filing evidence in answer was due on 7 June 2014 and that the situation was urgent.
22. On confirmation of the urgency, Mr Gates committed extensive time resources to the evidence in answer.
23. In particular Mr Gates reviewed the state of the art in Australia over the period of 2000 to 2005 being the lead up to the priority date. This involved reviewing manuals and procedures that existed at this time, It also involved speaking to other people in the industry who were working in the industry in Australia at the material time. Mr Gates had many contacts in the industry because the applicant was one of the leading suppliers of electrostatic separators in Australia at the relevant time.
24. In essence, Mr Gates' objective was to establish what, if any, practices had been adopted in relation to cleaning of the ionising wires of electrostatic separators at the material time. Mr Gates was a person skilled in the relevant art at the material time, and his opinion of the practices adopted and common general knowledge at the relevant time is very different to that set out in the Opponent's Evidence in Support. The Evidence in Support makes assertions regarding such practices in Australian minerals processing plants, and about what was common general knowledge, but includes no documentary evidence from the relevant time regarding to support these assertions. One of Mr Gates' primary objectives was the difficult task of finding contemporaneous documentary evidence to support or refute his own view in contrast to that put forward in the Evidence in Support.
25. During the course of Mr Gates' investigations he established that there were two handbooks/operator manuals relating to electrostatic separators (other than Orekinetics' electrostatic separators) that discussed how they were managed and in particular how they dealt with deposits on the wires.
26. Mr Gates has located one of these handbooks and proposes to use it. In evidence in answer in this opposition. Mr Gates has not yet been able to obtain a copy of the second handbook that he has identified. However he has undertaken concerted efforts to obtain this handbook and believes that he will in fact be able to obtain a copy of this handbook.
27. While Mr Gates has not yet had the opportunity to review the second handbook, subject to obtaining and checking it, he believes it will form part of the evidence in answer in this opposition.
28. As advised to Mr Gates prior to IP Gateway being instructed to take carriage of the matter, Daniel Rosenthal was out of the office, and away from Brisbane, for an event arranged well in advance, between 21 and 24 May, and returned to the office on Monday 26 May 2014.
29 Between 26 May and the present Daniel Rosenthal has also been working intensively on the evidence in answer. In particular Daniel has been carrying out the following:
a. Detailed study of art cited by the opponent;
b. Detailed study of Statement of Grounds served by the opponent;
c. Detailed study of statutory declarations served by the opponent;
d. Detailed study of the law relating to manner of manufacture, novelty and inventive step as it applies to this application;
e. Consideration of the state of the art in Australia back in 2005;
f. Identification of persons skilled in the relevant art at the relevant time who may be prepared to provide evidence of relevance to the opposition;
g. Detailed consideration of questions that may be asked of such persons in order to obtain their opinions on issues of relevance to the opposition.30. In this regard Mr Gates and Mr Rosenthal have identified and contacted a person believed to be skilled in the relevant art at the relevant time, who can provide evidence, including evidence of common general knowledge in the art. The contacted person has indicated agreement to provide evidence. It was hoped that evidence could be obtained from this person in time to meet the filing deadline, but when contacted the person was, apparently that day, embarking on intercontinental travel. While this person has indicated a willingness to progress preparation of the evidence while overseas, this has not been possible during actual transit. Preparation of the evidence continues on an urgent basis. However, further time is required to receive evidence from this and if possible other persons, prepare declarations, settle the declarations and submit them as evidence.
31. Accordingly the Applicant has at all times acted as promptly and diligently as reasonably possible in attending to this matter. The Applicant has also made steady progress in the evidence. Despite these efforts, largely to circumstance outside its control and the sheer size and scope of this task, additional time is required to finalise the evidence.
32. Further, exceptional circumstances, outside the control of the Applicant, have resulted in delay. We draw attention to the drought conditions prevalent at Mr Gates' farming operation which required his urgent presence and attention to avoid likely permanent damage or death of cattle. Drought that results in a drought declaration is, by the very nature of the drought and the criteria of the drought declaration as outlined above, an exceptional occurrence.
33. Further the situation has been exacerbated by the need to change attorneys at this time and also the necessarily very limited personnel resources of the Applicant The fact that the attorney who filed and prosecuted the application which is being opposed was no longer with the firm of attorneys which the applicant had used for many years is a further circumstance outside the control of the applicant. Orekinetics employs a staff of four people and Mr Gates has to handle all patent matters himself wlthout assistance from other staff.
34. Applicant makes the point that its electrostatic separator technology which it developed in about the year 2000 has been spectacularly successful. It is a market leader in its product segment in Australia and indeed around the world. It is used in the separation of minerals primarily in the mineral sands industry, The Applicant's customers and clients include BHP Billiton, Rio Tinto, Iluka Resources, Richards Bay Minerals, and many others.
35. The invention which forms the subject of the opposed patent application relates to a cleaner accessory for its highly successful mineral separator equipment The invention has been successfully commercialised already and the !evei of sales for the product is predicted to continue to increase.
36. Finally we reiterate the applicant has been extremely successful in developing and then successfully commercialising a cutting edge technology in the minerals separation area. Further the technology has been successfui!y exported and has been a solid export revenue earner for Australia.
37. In the circumstances it is respectfully submitted that the applicant should be given an opportunity to fully present its case for patent grant in the opposition. It is also submitted that it is in the public interest that the extension be granted so that the merits of the Application can be fully examined and tested in opposition proceedings. Accordingly discretion to allow an extension of the time for evidence in answer should be exercised in favour of the applicant.
38. An extension of two and a half months is requested. This is considered appropriate as it represents the difference between the normal three month period for serving evidence in answer and the time the attorneys currently acting for the applicant have already had to consider the evidence in support and the statement of grounds and particulars, and prepare evidence in answer.
Annex B
Further information provided on 26 June 2014.
Mr Gates has supplied some further detail regarding his duties at the farm properties, and this is summarised below.
Mr Gates spent much of March and April and into May transporting supplies of hay and feed to the farm in his truck and getting crop in to feed cattle. He reports that these were "desperate times" given the number of cattle on the farm. The lightened condition of the breeder cattle forced early weaning of all calves, down to as small as 50kg, then these weaned calves had to be yard fed with grain and hay throughout March and April until they were mature enough, and feed was available, to tum them back onto pasture.
Mr Gates actually has two farming properties. One 160 acres in the Numinbah Valley behind the Gold Coast which runs about 60 stud breeder cattle and breeds bulls for use on Ellangabba at Goondiwindi which is 11000 acres of grazing and cropping, Mr Gates looks after the Numinbah property entirely on his own. At Ellangabba he has a manager and Mr Gates' son to run 650 head of cattle and crop 2500 acres as well as manage an extensive property development program including a very large irrigation and water infrastructure development for which approval was obtained in February 2014.
By 14 March 20'14, both properties were in drought (although the Numinbah property was not formally drought declared), having received exceptionally low rainfall over the summer period, and Ellangabba had received well below average rainfall (in the bottom 10 decile) for the immediately preceding 12 month period since April 2013, the last effective rain having been received in March 2013.
During March and April 2014 no hay or feed supplies were available locally to Ellangabba, and across Queensland, there was a genuine national crisis with dwindling or exhausted feed supplements and hay supplies. Mr Gates carted around 30T or more of feed supplements and hay to sustain breeder cattle while grain stored on farm was prepared and milled to feed the young weaned calves. This required hand feeding of over 150 calves during the period.
Mr Gates reports that the farms finally received a break in the season in April but that this is often the most difficult time for weakened cattle leading to substantial losses as they chase green pick and are further weakened. Carting water to cattle across the property and confining them to feed and barley stubble on the property continued into April. Once some rain was received, planting crop became an urgent priority. Mr Gates repmts working from before sunrise until after sunset, at least six days a week, in March and April to maintain cattle, and even longer hours during planting of crop in April, which was a 24 hour a day endeavour.
In addition to that, Mr Gates' communication facilities are "not great" on Ellangabba ruling out mobile communications on many parts of the property. Internet connections are also unreliable and rely solely on high gain antennas for mobile reception of signals from towers around 30km away.
We believe it is difficult for those who have not been in similar circumstances to fully appreciate just how difficult, time consuming and draining the circumstances and responsibilities would have been through March and April 2014.
While we submit that Mr Gates did act promptly and diligently, we note that this is NOT a requirement for an extension of time to be granted utilising the provisions of Reg 5.9(2)(b). We strongly contend that had the exceptional circumstances of drought on Mr Gates' farms (and government declared drought at Ellangabba) not occurred, the evidence in answer would have been filed on time. By way of illustration, Mr Gates responded to Griffith Hack (on 14 March 2014, as set out in the request for extension of time filed on 10 June 2014) in an attempt to arrange a meeting the day after receiving the evidence in support from Griffith Hack. We strongly believe that in the absence of the drought affliction of his properties he would have taken the necessary action to progress the timely collection and filing of evidence, and we do not see any reason for the Commissioner not to be satisfied that this is the case. Thus the circumstances in this matter appear to be exactly the type of circumstances that Reg 5.9(2)(b) is intended to be applied to.
Put another way, if the extension of time is not granted, and evidence in answer is not timely filed and duly considered, it appears that on any objective viewing of the circumstances the sole, or main contributory, factor in this would be the exceptional circumstances of the drought affliction of Mr Gates' farm. Again, this appears to be the exact type of situation that the provisions of Reg 5.9(2)(b) are intended to avoid.
We therefore submit that the provisions of Reg 5.9(2)(b) alone allow an extension of time to be granted in this matter, irrespective of specific consideration of whether the Commissioner is satisfied that the requirements of Reg 5.9(2)(a) are met We also believe that it is appropriate to grant an extension of time, both in the interests of just conduct and consideration of the opposition and, also, given the widely acknowledged difficulty and importance of the role of primary producers in Australia.
Notwithstanding this, we submit that the requirements of Reg. 5.9(2)(a) are also met, and provide the following information on the issues raised by the delegate.
In relation to the Delegate's concern that the information previously provided does not explain why Mr Gates was "unable to communicate/discuss the matter with his attorney in Griffith Hack over the phone or why he did not delegate the task to one of his other staff members" we provide the following additional information.
Mr Gates was unable to discuss the matter with his attorney over the phone because maintaining the operation of the farm under the exceptional circumstances of the drought was time consuming and draining, including responsibilities that fell well outside what most people would consider normal, or even tolerable, working hours. In addition to his out-of the-ordinary responsibilities at the farms, Mr Gates continued to have primary responsibility for maintaining the operations of Orekinetics Pty Ltd. Being the Managing Director of a small company may be considered a very time consuming and demanding role even in the absence of other responsibilities, but in addition to this role Mr Gates was also taking care of livestock and crops under unusual and exceptionally adverse and time critical conditions.
Despite this, in relation to the opposition Mr Gates found time to consider the statement of grounds and particulars and perform research into what was the state of the art at the relevant time. To expect more of Mr Gates during this exceptionally busy and stressful period appears to be tantamount to expecting a superhuman effort We submit that it is not reasonable (or within the intention of the provisions for extension of time for filing evidence) to require such a superhuman ievei of action from a party to an opposition.
Mr Gates cannot reasonably be expected to have delegated dealing with the opposition to "other staff'. The patent applicant is Orekinetics Investments Pty Ltd, and this company has no other staff to whom actions relating to the patent Opposition could have been delegated.
Although reference was made to Orekinetics Pty Limited (which is NOT the patent applicant) in the original request for extension of time in order to illustrate the operation of the company that commercialises the invention to which the opposed application is directed, it must be appreciated that this company is not the patent applicant.
Further, as set out in the EQT request, Mr Gates had sole responsibility for IP, and none of the staff at Orekinetics Pty Ltd has a level of experience in patent matters appropriate for dealing with a patent opposition. To consider that critical lP issues should be handled by anyone other than the responsible Director/Owner of a small company that employs a mere handful of staff is to misunderstand how such small businesses are normally run. Further, given the relative lack of experience of any of the other staff at Orekinetics Pty Ltd, Mr Gates considered (quite reasonably) that briefing another member of staff on the issues, attempting to educate them to the level required to have the required discourse with the attorneys, being briefed by the staff member in order to enable decision making etc, would have been more intensive of time and concentration than dealing direct with the attorneys. Further, due to Mr Gates absence and onerous responsibilities at the farms, the small staff at Orekinetics Pty Ltd were already providing extra assistance in the running of Orekinetics Pty Ltd and working at well beyond their normal capacities. Therefore an attempt to delegate responsibilities and activities relating to the opposition would have been potentially inappropriate (since the staff were not staff of the patent applicant company), likely ineffective, or at best inefficient, and an unreasonable imposition on staff who were already performing in excess of their normal duties and responsibilities.
In relation to the Delegate's concern that "the fact that Mr Gates became aware of the deadline for filing the evidence in answer only 2 months after the evidence in support was filed does not appear to be indicative of having made all reasonable efforts to comply with all filing requirements or as having acted promptly and diligently" we provide the following information and comments.
We respectfully but firmly contend that the fact that Mr Gates only became consciously aware of the exact deadline for filing evidence in answer after two months does not lead to a conclusion that there was a failure to act diligently and promptly, or otherwise detract from the merits of the extension of time request.
Mr Gates had retained a well-regarded firm of patent attorneys and had reviewed their correspondence. The communication informing Mr Gates that the evidence in support had been filed was sent promptly by email (on 13 March 2014) and was brief, presumably to avoid any delay in relaying the evidence in support to Mr Gates. The email suggested a meeting within the following few days to discuss the evidence.
The deadline for filing evidence in answer would no doubt have been discussed in detail in any such meeting. In the normal course of events this would therefore have occurred within the following few days.
However, in this case the follow up consultations were delayed or set back due to the exceptional circumstances on the farms, which have been well documented and well explained. Had these exceptional circumstances not occurred, the follow up consultations with the attorneys would have happened a lot sooner. This would have ventilated the need to prepare and file the evidence in answer a lot sooner.
The attorneys dealing with the matter could not reasonably have been expected to have foreseen the exceptional circumstances or that a meeting to discuss the opposition would have been substantially delayed. We submit that the approach of keeping the communication reporting filing of the evidence in support brief and deciding to discuss the deadline for filing of the evidence in answer at the same time as discussing other aspects of the evidence in support and the opposition in general, especially when such a discussion was expected to take place in the following few days, cannot be taken to indicate any lack of promptness or diligence.
Griffith Hack had been told by Mr Gates that he would likely be away and unavailable in mid to late March. Griffith Hack sent a follow up email on 31 March 2014 suggesting a meeting in early April. As a result of the exceptional circumstances outlined above, Mr Gates was not in a position to accept such a meeting. Mr Gates reports that communications were resumed in "late April or early May" culminating in detailed discussions of 7 May 2014. We submit that this sequence of events, given the circumstances, does not lead to a conclusion that there was any lack of promptness or diligence.
In relation to Mr Gates' actions it does not appear reasonable to infer that the date on which he became aware of the exact deadline for filing evidence in answer indicates any lack of promptness or diligence on his part.
Mr Gates had, promptly and diligently, tried to arrange a meeting as soon as he heard from his attorney that the evidence in support had been filed. This further supports the view that in the absence of the exceptional circumstances in play such a meeting would have occurred very soon after filing of the evidence in support. Mr Gates then arranged the detailed discussions with his attorneys as soon as he was reasonably able in view of the exceptional circumstances that applied.
The fact of not being aware of the exact due date for filing evidence for an initial two month period occurred because of the exceptional circumstances that existed and that have been explained, and not because of any lack of promptness or diligence. Mr Gates' lack of knowledge of the exact deadline is not of itself indicative that he or his attorneys had failed to act promptly or diligently. .Applicant submits that this is not adverse to the merits of the extension request.
Promptness and diligence are of course relative terms. Their measure is dependent upon the circumstances. A deadline of two days when a person has no other responsibilities during that period requires faster action in order to be prompt and diligent than a deadline of six months during which the person has overw1elming and exceptionally unusual additional responsibilities.
Applicant submits that the delegate must view the totality of events and not look at single events in isolation of the prevailing circumstances.
In relation to the Delegate's concern that "Mr Gates' decision to change Attorney firms with less than 3 weeks for the deadline for filing the evidence is again not indicative of having acted promptly and diligently, given that this would require the new Attorney to start the process of finding experts and preparation of evidence all over again" we provide the following additional information and comments.
The decision to change attorneys was not taken lightly, and Mr Gates had not intended to change attorneys until prompted to do so by considerations after the discussions of 7 May 2014 and email of 8 May 2014. Mr Gates wanted to ensure that any evidence filed was as appropriate to his case as possible. This can be taken as a sign of diligence, in contrast to Mr Gates taking the position that it was better to stick with a less preferred attorney, less familiar with the patent application which is the subject of the opposition, and have less appropriate evidence presented. indeed, Reg. 5.9(2)(a)(ii) specifically refers to "the appropriate evidence", which could be taken as an indication that the appropriateness or otherwise of the evidence is a factor affecting considerations under this subsection. Once consideration was given to a change of attorneys, the decision was taken quickly (in less than a week) and implemented more or less immediately. We therefore submit that the choice to change attorneys exhibits both diligence and promptness.
In summary, we submit that the provisions of Reg 5.9(2)(b) alone allow an extension of time to be granted in this matter, irrespective of specific consideration of whether the Commissioner is satisfied that the requirements of Reg 5.9(2)(a) are met However, we additionally submit that the requirements of Reg 5.9(2)(a) are indeed met, for the reasons set out in the original request for the extension of time and augmented and clarified by the content of this letter.
Further, the following facts also favour granting the extension of time in this case it is important and in the public interest that farms be supported, and that those who own and run farms should not be penalised for doing so, especially in times of drought It is also important and in the public interest that small Australian companies be given the opportunity to have a fair hearing in relation to their intellectual property. The size and staffing of the Applicant company and the connected company Orekinetics Pty Ltd were described in the extension of time request. The small size of the companies made it impossible to cater to the demands of conducting an opposition in the exceptional circumstances of Mr Gates' absence. (In contrast, the opponent's website states that it is "A Downer Company". Downer EDI is an ASX listed company (ASX code: DOW) with a market capitalisation of around two billion dollars.)
Further, it does not appear to us that the opponent would be substantially inconvenienced by grant of the extension of time. To the best of the applicant's knowledge the opponent has not sold any electrostatic separators in Australia since 2005. The opponent's website (at provides "reference lists" detailing sales of electrostatic separators, specifically a reference list for high tension roll machines (which is available at images/Reference-Ust-HTR-Dec-2010.pdf) and a separate reference list for electrostatic plate and screen separators (which is available at images/Reference-List-ESP-ESS-Dec-2010.pdf) copies of which are attached. Although these lists appear to have been last updated in December 2010, they appear consistent with the applicant's view that the opponent has not sold any electrostatic separators in Australia since 2005.
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