Nuseed Pty Ltd v Pacific Seeds Pty Ltd

[2015] APO 79

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Nuseed Pty Ltd v Pacific Seeds Pty Ltd [2015] APO 79

Patent Application:                2009304572

Title:Hybrid plant cell

Patent Applicant:                   Pacific Seeds Pty Ltd

Opponent:  Nuseed Pty Ltd

Delegate:  O L Haggar

Decision Date:  27 November 2015

Hearing Date:  Written submissions filed on 25 September 2015

Catchwords:  PATENTS – section 223(2) – application for an extension of time in which to file a notice of opposition – whether the failure to file a notice of opposition in time was because of a relevant error or omission – whether there was a causal link between the error and omission and the failure to file the notice of opposition in time – whether the discretion conferred by section 223(2) favoured the grant of the extension of time sought – extension of time granted – no award of costs in the circumstances

Representation:  Patent applicant:  Spruson & Ferguson

Opponent:Phillips Ormonde Fitzpatrick

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application:                2009304572

Title:Hybrid plant cell

Patent Applicant:                   Pacific Seeds Pty Ltd

Date of Decision:                   27 November 2015

DECISION

I grant Nuseed Pty Ltd an extension of time until 23 July 2015 in which to file a notice of opposition.  I make no award of costs.

REASONS FOR DECISION

Background

1. Application 2009304572 was filed by Pacific Seeds Pty Ltd (Pacseeds) on 6 October 2009 under the provisions of the Patent Cooperation Treaty.  The application was advertised as accepted on 9 April 2015 which meant that the period prescribed by regulation 5.4(1) for filing a notice of opposition to the grant of a patent expired on 9 July 2015.

2. A notice of opposition was filed by Michael Houlihan on the final day of the prescribed period (the first opposition).  On 23 July 2015 Nuseed Pty Ltd (Nuseed) filed a notice of opposition together with an application under section 223 to extend the time for filing the notice of opposition by two weeks.  The application for an extension of time was accompanied by a declaration made on the same date by Stuart John Bradshaw with Annexures A to C (the Bradshaw declaration).  On 6 August 2015 Pacseeds recorded its objection to the grant of the extension sought.  On 10 August 2015 Nuseed was afforded the opportunity to provide additional evidence to address a matter of concern raised in correspondence from a delegate of the Commissioner, “or any other issues that it considers relevant to the extension of time”.  In response Nuseed filed declarations dated 21 August 2015 by each of Matthew Gallagher (the Gallagher declaration) and Raymond Lewis Evans with Exhibits RLE-1 and RLE-2 (the Evans declaration). 

3. On 11 September 2015 the parties were informed by the Office that the matter was to be heard by written submissions.  Pacseeds filed written submissions on 25 September 2015.  Nuseed advised that it would not be making written submissions and instead intended to rely solely on the declarations that it had filed pursuant to its application under section 223.

   Statutory framework

4. The present proceeding is governed by section 223(2) of the Act which provides:

   “Where, because of:
   (a) an error or omission by the person concerned or by his or her agent or attorney; or
   (b) circumstances beyond the control of the person concerned;   

   a relevant act that is required to be done within a certain time is not, or cannot be, done within that time, the Commissioner may, on application made by the person concerned in accordance with the regulations, extend the time for doing the act.”

5. Nuseed relies on the provisions of paragraph (a).  A “relevant act” for the purposes of section 223 is defined in section 223(11) and relevantly means “an action (other than a prescribed action) in relation to a patent, a patent application, or any proceedings under this Act (other than court proceedings)”.  The prescribed actions that are excluded under section 223(11) are defined in regulation 22.11.  Those actions do not include the filing of a notice of opposition.

6. The scope of an “error or omission” in the context of the equivalent provisions of section 160 of the Patents Act 1952 was considered in Kimberly-Clark Ltd v Commissioner of Patents (No 3) [1988] FCA 421; 13 IPR 569. As stated by Jenkinson J at [9]:

   “It is in my opinion difficult to suppose that only the inadvertences and accidental steps, and not errors resulting from faulty reflection, of the former class of persons were intended by the draftsman to be within s 160(1). Further, the word ‘error’ is not easily assigned a clear meaning restricted by reference to one or several particular categories of flawed mental function. The attempt is likely to lead to the drawing of fine and often unrealistic distinctions. And some errors of judgement by agents and attorneys may be as bizarre and as little to be anticipated as lapses of memory and accidental slips.”

7. Jenkinson J rejected the argument that section 160(2)(a) excluded errors or omissions that were the products of deliberation. Consequently, the concept of what constitutes an error should be interpreted broadly and includes an error of judgement. But Jenkinson J also made the following comments at [10]:

   “By no means every judgement by the ‘person concerned’ or by his ‘agent or attorney’ which can be shown to have been mistaken will answer the description ‘error or omission’ in the ordinary meaning of those words, which in their context carry, in my opinion, a connotation of obviousness in error.”

8. At [11]-[12] Jenkinson J spoke of the causal relationship signified by the introductory phrase “by reason of” in section 160 (cf. the equivalent wording “because of” in section 223) between an error or omission and the failure to do an act. Jenkinson J agreed this meant that the failure to do the act cannot itself be the error or omission by which the failure occurred. It also meant that a deliberate decision not to do the act was not the result of an error or omission.

9. At [17] Jenkinson further found that in order to make out a proper case justifying an extension:

   “… an applicant would in my opinion have to go beyond a disclosure of the processes by which an agent’s errors came to be committed, and would have to expose frankly, inter alia, all the conduct, knowledge, beliefs and mental processes (or, in the case of corporation aggregate, of the relevant officers and other agents) relevant to an understanding of the way the failure to do the act or take the step occurred, or relevant to an evaluation of the reasonableness of that conduct.”  

   Nuseed’s evidence

   The Bradshaw declaration

10. Mr Bradshaw is the Commercial and IP Lawyer of “Nufarm Limited and its related bodies corporate” which include Nuseed.  He explains that “I am responsible for the conduct of this matter [i]n collaboration with my manager, Matt Gallagher”.  Mr Gallagher is the source of the abovementioned Gallagher declaration.

11. Mr Bradshaw states that on 13 April 2015 he met with “Matt Gallagher, Travis Rankin – General Manager (Australia) for [Nuseed], and Greg Buzza – a consultant to [Nuseed]” to discuss opposing the present application.  Mr Bradshaw says that following this meeting he and Mr Gallagher met on 23 April 2015 with two partners from the attorney firm of Phillips Ormonde Fitzpatrick (POF) for the sole purpose of discussing the intention to oppose.  At the same time he worked closely with Mr Buzza between 13 April and 17 June 2015 to identify and assess prior art documents that could be used to support an opposition. 

12. Mr Bradshaw took annual leave between 25 to 28 June 2015, during which time Mr Gallagher is said to have “discussed and confirmed the intended opposition” with Mr Rankin.  On 26 June 2015 Mr Rankin emailed Mr Gallagher and Mr Bradshaw, copying Mr Buzza among others, confirming an internal decision to proceed with the opposition (Annexure A).

13. The Bradshaw declaration continues as follows at [10]:

    “On 10 July 2015, Matt Gallagher realised the due date for filing [Nuseed’s] notice of opposition had passed by one day.  Neither Matt Gallagher or myself diarised the due date for filing [Nuseed’s] notice of opposition.  Our usual practice in the management of patent and trade mark prosecutions and oppositions across a large global portfolio, is to rely on the reminders administered by [Nuseed’s] external providers of legal and patenting and trade mark services.  On this occasion, we received no such communication.”

14. Mr Bradshaw further states that on becoming aware of the first opposition from a review of the AusPat online database on 10 July 2015, he immediately contacted Mr Houlihan (who had filed the first opposition) by email “to request a cooperation between the Applicant and Mr Houlihan’s client/s” (Annexure B).  Mr Houlihan is said to have advised by reply email on 21 July 2015 that his “clients are yet to determine a response to [Nuseed’s] request to collaborate” (Annexure C).   Mr Bradshaw says that as a consequential precautionary measure “[Nuseed] applied for an extension of time of two weeks in which to file its notice of opposition and (in anticipation) [Nuseed] also filed its notice of opposition”.   

    The Evans declaration

15. Mr Evans is a partner of POF and in that role manages “the work of Nufarm Australia Limited and the Nufarm group including Nuseed”.   At [2]-[3] he states that:

    “My firm has conducted a number of oppositions over the last several years for Nufarm in which we have received instructions to oppose patent applications, monitored deadlines and prepared evidence in consultation with Nufarm.  I generally receive instructions from Matt Gallagher … and, in the last six months or so, also from Stuart Bradshaw …”

16. On 17 April 2015 Mr Evans met with Mr Gallagher and Mr Bradshaw where:

    “… Matt Gallagher referred generally to a potential opposition to a patent application and the technical field of the application.  Matt Gallagher asked if we had expertise in plant biotechnology which he explained was the technical field of the patent application.  I recommended that he meet with two patent attorneys of my firm, Justin Dibbens and Scott Whitmore, who have expertise in plant biotechnology.”

17. Arrangements were made for Mr Gallagher and Mr Bradshaw to meet with Mr Dibbens and Mr Whitmore at the business premises of Nufarm on 23 April 2015 (Exhibit RLE-1).  On 21 April 2015 Mr Gallagher sent details of the application Nufarm was contemplating opposing to Mr Evans by email (Exhibit RLE-2) which he in turn passed to Mr Whitmore “to allow consideration of the application” prior to the meeting on 23 April 2015.  Mr Evans received a brief report of the meeting from Mr Dibbens and Mr Whitmore shortly thereafter from which he understood that “no further action was required of my firm by Nufarm in this matter unless we received further instruction.  No diary entry of the due date for opposition was made.”

18. Mr Evans makes the further point that the email of Annexure A “was not received by my firm and we did not receive instructions to file a Notice of Opposition prior to the due date”.  It will be recalled that this email confirmed an internal decision by Nuseed to oppose.   

    The Gallagher declaration

19. Mr Gallagher is the IP Manager and ANZ General Counsel of “Nufarm Limited and its related bodies corporate, including Nuseed”.    

20. Mr Gallagher states that contrary to Mr Evans’ understanding of affairs, it was his expectation that Mr Whitmore or Mr Dibbens would contact him closer to the due date.  He says this expectation was based “on my established dealings with Mr Evans of [POF] which is our only patent attorney firm on all prosecution and opposition matters in Australia”.  At [8] Mr Gallagher expresses the belief that:

    “I had conveyed the significance of this intended opposition to Mr Whitmore and Mr Dibbens, and I had assumed that they had opened a file on this client matter and would follow-up with myself or Stuart Bradshaw closer to the deadline for opposition.”

21. He then surmises that:

    “… given that this was the first meeting between myself and Mr Whitmore and Mr Dibbens collectively, who are based in the Adelaide office of [POF], these tacit understandings and expectations were unclear and neither was Mr Evans in a position to doubt their report.”

22. Mr Gallagher says that on 25 June 2015 he “discussed and confirmed the intended opposition against the accepted patent [sic] with Travis Rankin … and on 26 June 2015 Travis Rankin emailed myself and Stuart Bradshaw … confirming that [Nuseed] wished to oppose the accepted patent”.  This is another reference to the email of Annexure A.  On receiving this email Mr Gallagher’s expectation remained that [POF] would follow-up closer to the due date “at which time we could discuss strategy and proceed to oppose”.      

    Consideration

23. The issues to be considered in the present case that emerge from the requirements of section 223(2) are:

    • whether there has been a relevant error or omission on the part of Nuseed or POF;
    • if so, whether there is a causal link between the failure to file a notice of opposition within the prescribed period and the error or omission; and
    • if so, whether the discretion conferred by section 223(2) to grant Nuseed’s application for an extension of time should be exercised in its favour.

    Analysis of the evidence

24. There is little direct evidence before me on which to determine the issues listed above, and it is most unfortunate in this regard that I do not have the benefit of any evidence from either Mr Whitmore or Mr Dibbens.  Nevertheless, the evidence shows that Nuseed’s “usual practice” in the management of patent and trade marks prosecutions and oppositions was to rely on reminders administered by external providers of legal patenting services (the Bradshaw declaration at [10]).  Mr Bradshaw does not reveal the identity of these “external providers”, but I infer from the Gallagher declaration at [8] that as its only patent attorney firm on all prosecution and opposition matters in Australia (unless conflicted out), the “legal patenting services” in question were provided to Nuseed by POF.  The Evans declaration at [2] confirms that POF has for several years conducted a number of oppositions on behalf of Nuseed.    

25. Pacseeds has submitted that “it is unclear from the evidence filed by Nuseed how this ‘usual practice’ generally affected their behaviour in sending instructions to POF”.  Pacseeds refers as an example to:

    “… the absence of evidence of the frequency and standing arrangement of reminder services rendered by POF to Nuseed in opposition cases (and indeed whether there was any such standing arrangement in this particular case … Without evidence that a policing and reminder system was operating, or was intended to be operating in the present case, and that such a system was the only relevant factor in determining whether instructions were sent to POF, we submit it is not open to the Delegate to find that an error or omission has taken place that caused Nuseed to miss the 9 July 2015 deadline.”

26. I agree with Pacseeds’ principal contention that the evidence does not establish the precise nature of the usual practice adopted by Nuseed in opposition matters.  The only guidance provided by the evidence in relation to this practice is found indirectly in the Evans declaration which strongly suggests that POF (or, more specifically, Mr Evans) would monitor deadlines and prepare evidence only on being given instructions to oppose by Nuseed.  The evidence of Mr Evans is that he would generally receive these instructions from Mr Gallagher and, more recently, also from Mr Bradshaw.  It seems to me that such an arrangement would supplant the need for Nuseed to maintain a policing system of its own.

27. What is clear enough from the evidence is that Nuseed soon became aware that acceptance of the present application had taken place.  The Bradshaw declaration at [4] indicates that Nuseed was additionally conscious of the deadline by which a notice of opposition needed to be filed.  Furthermore, the technical field of the present application was plainly of interest to Nuseed as a consequence of which notification of its acceptance triggered a series of meetings conducted by Mr Gallagher and Mr Bradshaw with other key Nuseed personnel on 13 April, with Mr Evans on 17 April, and with Mr Whitmore and Mr Dibbens, both of whom had relevant technical expertise, on 23 April 2015. 

28. In an email sent to Mr Bradshaw and Mr Gallagher on 20 April 2015, Mr Evans wrote “If you are able to provide details of the application at issue we can run a conflict check and Scott [Whitmore] can have a look at the specification to enable you to make the most of the meeting [on 23 April 2015]”.  Mr Gallagher responded by reply email on 21 April 2015 in which he identified the application number of the “patent [sic] that we are contemplating opposing”.  The evidence establishes to my satisfaction that this advice reflects the main purpose of each of the three meetings attended by Mr Gallagher and Mr Bradshaw during April 2015, namely, to discuss a potential opposition to the present application.      

29. Mr Gallagher attaches particular significance to the meeting on 23 April 2015.  It will be remembered that on discussing this meeting with Mr Whitmore and Mr Dibbens (albeit briefly), Mr Evans was led to understand that as an opposition to the present application was still under consideration by Nuseed, no further action was required of POF “unless we received further instruction”.  However, Mr Gallagher claims that this understanding was not in keeping with his expectation which was that Mr Whitmore or Mr Dibbens would contact him “closer to the deadline for opposing”.  He bases this expectation on his “established dealings with Mr Evans”.  I have some misgivings about this submission.  As I have said in relation to Nuseed’s normal practice in opposition matters, these “established dealings”, so far as can be inferred from the evidence, were only instituted once Nuseed had formed a definite intention to oppose and communicated instructions to that end to POF.  The understanding reached by Mr Evans in light of his discussion with Mr Whitmore and Mr Dibbens about the meeting on 23 April 2015 is consistent with such an arrangement.    

30. It is to be noted in this regard that when the meeting took place Nuseed was still contemplating whether to oppose the present application.  The decision to oppose was not made until Mr Gallagher and Mr Rankin met two days later.  This decision was confirmed by Mr Rankin in an email sent by him on 26 April 2015 to Mr Bradshaw and Mr Gallagher, but for reasons which have been left unexplained was apparently not conveyed to Mr Evans before the due date (the Evans declaration at [11]).  

31. The circumstances that led Mr Bradshaw or Mr Gallagher to check the AusPat online database on 10 July 2015, which is one day after the due date, have also not be explained.  Neither had diarised the due date (the Bradshaw declaration at [10]), and nor had Nuseed instigated a watch on the present application in AusPat or any other database.  Leaving this further evidentiary shortcoming aside, it is most surprising that even on realising that the due date for filing a notice of opposition had passed, Nuseed did not immediately advise POF of its desire to oppose but instead chose to contact Mr Houlihan to explore the possibility of joining the first opposition.  It was only after Mr Houlihan advised on 21 July 2015 that he was unable at that time to commit to such a proposal that Nuseed filed a notice of opposition to ensure that its own interests were protected (the Bradshaw declaration at [13]).  As I have said, the notice when filed was two weeks overdue.

    Was there a relevant error or omission?

32. According to Mr Gallagher, the failure by Nuseed to file a notice of opposition in time was the result of what he has characterised as a “divergence of expectations” arising out of the meeting on 23 April 2015.  Pacseeds disputes that any such divergence occurred, and in any event submits that:

    “… mere assertion of a ‘divergence of expectations’ is not sufficient to demonstrate causation, and in the present case, there is no evidence as to how the alleged ‘divergence of expectations’ weighed on the conduct and knowledge of Nuseed.  For example, we submit there is no disclosure of the circumstances that led to Nuseed failing to instruct POF of their intention to oppose the [present application], despite the email in Annexure A … sent on 26 April 2015.  Mr Gallagher states … that ‘on receiving this email my expectation remained that [POF] would follow-up closer to the deadline’, he does not describe his typical practice of instructing POF, insofar as the delay between an internal company decision regarding proceeding on a matter (in this case, the opposition) and how that decision is translated to Nuseed’s agents, POF.  It is thus not apparent that a failure to receive a reminder from POF before, on or after 26 June [sic: April] 2015 directly caused Nuseed not to write to POF to instruct them to proceed with the opposition.”   

1. Pacseeds further alleges that this is another example of where Nuseeds has not provided a “full and frank” explanation of the events leading to the late filing of the notice of opposition.  It is certainly the case that in the absence of any evidence from Mr Whitmore or Mr Dibbens I am unable to determine exactly what, if anything, Mr Gallagher said to them on 23 April 2015 about his “tacit understandings and expectations”.  It is thus open to speculation whether these had been explained to, but simply misunderstood by, either or both of Mr Whitmore and Mr Dibbens.  However, I consider the version of events that is most consistent with the evidence is that as a result of their discussions with Mr Gallagher, Mr Whitmore and Mr Dibbens had formed the impression, as reported to Mr Evans, that no further action was required of POF unless otherwise instructed by Nuseed.  After all, Nuseed had not by 23 April 2013 reached a decision on whether to oppose.  When viewed in the context of the normal practice which seems to have been followed for “several years” by Nuseed and POF in opposition matters, it is entirely understandable why Mr Whitmore and Mr Dibbens would hold such a belief.

2. Clearly, then, this is not a case in which POF had been told by Nuseed to oppose but did not carry out that instruction (cf. Danby Pty Ltd v Commissioner of Patents and Rib-Loc Group Limited [1988] FCA 43; 12 IPR 151). To the contrary, and as already discussed at length, POF did not receive any instruction to oppose prior to the due date and so had no reason to suppose that it was expected to take any follow-up action before then. I therefore agree with Pacseeds that the failure to file the notice of opposition in time was not because of a relevant error or omission on the part of POF.

3. The question of whether the same can be said of the conduct of Nuseed, and in particular Mr Gallagher, is more problematic.  It is not in dispute that on becoming aware that the present application had proceeded to acceptance, Nuseed quickly engaged in a number of meetings during April 2015 to discuss the possibility of opposing.  Mr Bradshaw and Mr Buzza concomitantly sought to locate relevant prior art to support the potential opposition.  In fact, the reference in Mr Gallagher’s email of 21 April 2015 to Mr Evans to “some s27 observations [already made by Nuseed]” clearly indicates that Nuseed not only had knowledge of, but took a keen interest in, the present application well beforehand.                 

4. Despite this ongoing interest, Nuseed apparently thought no more about the due date for filing a notice of opposition until Mr Bradshaw and Mr Gallagher realised upon checking the AusPat online database on 10 July 2015 that the prescribed period had expired the day before.  The circumstances leading to this seemingly coincidental discovery have not been made at all clear.  I have no difficulty in accepting that Nuseed’s oversight was most likely due to the fact that the reminder(s) Mr Gallagher expected to receive from POF before the due date did not, for the reasons considered earlier, eventuate.  I will have more to say on this shortly.  However, the evidence does not clarify why, in light of this expectation, Mr Gallagher or Mr Bradshaw felt any need to consult the AusPat online database.  At best all that can be said is that there is nothing in evidence to suggest that Nuseed had at any stage lost interest in opposing the present application.

5. Pacseeds has submitted that Nuseed’s reliance on POF for reminders was not an error or omission that per se had caused the notice of opposition to be filed out of time.  I have carefully considered this submission but am not persuaded by it.  In Danby at 153 Pincus J expressed the view that section 160 (the predecessor to section 223) is to be generously applied. That view is mirrored by the remarks of Jenkinson J in Kimberly-Clark that the fact that an error is “bizarre” or not likely “to be anticipated” did not preclude it from consideration.  The same trend of authority has been continued in later cases where errors or omissions resulting from flawed mental functions such as faulty reflection, deliberation or mistaken judgement have all been found to fall within the scope of section 223.  For example, in G S Technology Pty Limited v Commissioner of Patents [2004] FCA 1017 Spender J said at [65] that “Most errors or omissions which lead to a failure to do an act or take a step are the result of negligence or incompetence”. In Oz Technology v Boral Energy Ltd [1999] APO 18 and Stork Pompen BV v Weir Pumps [1988] APO 7; 11 IPR 542, the delegate in each case held that a failure to exercise due diligence or a breakdown in procedure may found a relevant error or omission. The decision of the AAT in Total Peripherals Pty Ltd v IBM andCommissioner of Patents [1988] AATA 784 was of like effect.

6. I am inclined to the view that Mr Gallagher’s conduct falls within this broad categorisation of error or omission.  As I have said, even after Nuseed had formed the definite intention to oppose on 25 June 2015, Mr Gallagher did not instruct POF to take steps to carry out that intention.  He instead acted on the expectation that POF would take follow-up action “closer to the due date”.  In that belief, he was clearly in error.  Furthermore, the decision to oppose was in fact made by Nuseed only two weeks before the due date but, as indicated above, it is quite conceivable that by this time the impending deadline had slipped the memory of Mr Bradshaw and Mr Gallagher.  Most notably, Mr Gallagher’s conduct is not suggestive of a deliberate policy by Nuseed not to oppose (it had in the past actively pursued a number of oppositions), and indeed represents a marked departure from the normal practice which the evidence infers existed between it and POF in opposition matters.

7. As previously discussed, the evidence relied on by Nuseed to justify its application under section 223 has been less than forthcoming in a number of respects.  Nevertheless, and with a particular mind to the beneficial nature of section 223 (Sanyo Electric Co Ltd v Commissioner of Patents [1996] AATA 832), I consider that the evidence sufficiently establishes that there has been a relevant error or omission on the part of Nuseed.

   Was the error or omission causative of the failure to file the notice of opposition in time?

8. For the reasons given above, the late filing of the notice of opposition was in my opinion caused by Mr Gallagher’s error or omission in failing to instruct POF to give effect to Nuseed’s decision to oppose the present application.            

   Should the discretion conferred by section 223(2) be exercised in favour of Nuseed?

9. I have found that there was a relevant error or omission and that Nuseed failed to file its notice of opposition in time because of that error or omission.  I must now determine whether to exercise the discretion to extend time.  In Kimberly-Clark, Jenkinson J agreed that the considerations identified by Bowen CJ in Vangedal-Nielsen v Commissioner of Patents [1980] FCA 163; 33 ALR 144 are relevant: whether there has been a full and frank disclosure of all relevant circumstances; the interests of the parties in refusing or granting the extension; and the public interest, including the question of undue delay.

   Full and frank disclosure

10. Although noticeably lacking in detail, I have found that the evidence adduced by Nuseed is sufficient to support the conclusion that there was a causative error or omission on its part.

    Interests of the parties

11. The competing interests of the parties are not unexpected, but in the present circumstances I think that allowing Nuseed the opportunity to mount what appears to be a serious opposition would be largely offset by the inconvenience subsequently borne by Pacseeds in defending a second opposition.

    Public interest

12. Pacseeds has argued that the public interest has already been safeguarded by the first opposition filed by Mr Houlihan.  I am not convinced by this argument since it presupposes that the opposition contemplated by Nuseed would simply duplicate the same grounds of invalidity and supporting material on which Mr Houlihan intends to rely.  At this early stage, the suggestion of a potential duplication of opposition proceedings is clearly premature. 

    Undue delay

13. Nuseed has requested an extension of two weeks in which to file a notice of opposition.  As alluded to earlier, this delay has largely arisen from the fact that even on becoming aware of the passage of the due date for filing the notice, Nuseed did not immediately advise POF of its desire to oppose but instead explored the possibility of joining the first opposition.  This may have been seen by Nuseed as the only remaining avenue for it to give effect to its intention to oppose.  I also note with interest that Nuseed filed the notice of opposition of its own accord rather than through the agency of POF.  Whatever Nuseed’s motives may have been, the extension it seeks is far from excessive in the context of a patent opposition.

14. Overall, I consider it appropriate to exercise the discretion conferred by section 223(2) in favour of Nuseed.

    Other matters

15. For the sake of completeness I note that Nuseed has not filed a statement of grounds and particulars within the period prescribed by regulation 5.5.  It must be realised here that this period is dependent on when the notice of opposition was filed, and not when the present extension request is determined (G & J Koutsoukos Holdings Pty Ltd v Capral Aluminium Limited [2003] APO 28 at [19]). In other words, Nuseed will need to apply for another extension of time under section 223 in which to file the statement of grounds and particulars supported by full and frank reasons justifying this further extension.

    Conclusion

16. I have found that there was an error or omission on the part of Nuseed which prevented the filing of a notice of opposition in time, and that it is appropriate to allow the extension it has requested in order to remedy this.

    Costs

17. The normal practice is that costs follow the event.  Nuseed has successfully sought an extension of time under section 223 in which to file a notice of opposition.  However, the extension has been allowed primarily on the basis of evidence filed by Nuseed subsequent to the section 223 application.  In these circumstances I think it appropriate that each party bears its own costs.  I therefore make no award of costs.

    O L Haggar
    Delegate of the Commissioner of Patents