Osmose Australia Pty Limited & TimTech Chemicals Pty Ltd v Koppers Arch Wood Protection (Aust) Pty Limited - [2009] APO 2

ABSTRACTS OF DECISIONS
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No. 2002215690 in the name of Koppers Arch Wood Protection (Aust) Pty Limited

Title: Material and method of treatment of timber

Action: Opposition to the grant of an Extension of Time to file a Notice of Intention to file Evidence-in-Reply by Osmose Australia Pty Limited and TimTech Chemicals Pty Ltd

Decision: Issued 30 January 2009.
Abstract
Extension of time granted.

The notice of intention was not filed due to a failure to recall to memory that the notice had to be filed by 19 October 2008.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No. 2002215690 by Koppers Arch Wood Protection (Aust) Pty Ltd and an extension of time to file a notice of intention to file evidence in reply by Osmose Australia Pty Limited and TimTech Chemicals Pty Ltd

BACKGROUND

Australian patent No. 2002215690, in the name of Koppers Arch Wood Protection (Aust) Pty Limited, was filed on 17 December 2001 and was accepted on 15 December 2004. On 5 April 2005 a notice of opposition was filed by Osmose Australia Pty Limited and TimTech Chemicals Pty Ltd. A statement of grounds and particulars was filed on 7 July 2005.
Evidence-in-support was completed on 5 September 2006. The Applicant filed evidence-in-answer on 18 September 2008. The evidence-in-answer was acknowledged as received by the Opponent’s attorneys (Molins & Co.) on 19 September 2008. IP Australia acknowledged that the completed evidence-in-answer was received on 19 September 2008, and informed the Opponent that they had one month from the date of service of evidence-in-answer to file evidence-in-reply or a notice of intention under the provisions of regulation 5.8(4).
On 24 October the Opponents were informed via email by IP Australia that the time for filing the notice of intention had lapsed. The email asked the Opponent whether they had served a notice of intention on the Applicant but failed to inform IP Australia.
On the 30 October 2008 the Opponent filed an extension of time under the provisions of regulation 5.10(2) to serve the notice of intention to file evidence-in-reply (the notice) together with a Statutory Declaration by Michael Molins outlining the reasons why the notice was not filed within the prescribed time.
IP Australia acknowledged receipt of the Opponent’s application for an extension of time on 30 October 2008. On 7 November 2008 the Applicant objected to the extension of time. The parties agreed to deal with the matter on the basis of written submissions. The Opponent provided submissions in the form of a declaration by George Griziotis, a patent attorney. The Applicant provided written submissions.
THE LAW
The relevant parts of the Patent Regulations 1991 are regulations 5.10(2) and 5.10(5).
(2) The Commissioner may extend the time within which the party may take a step prescribed in this Chapter (not being a step that is taken under regulation 5.3 or 5.3AA, paragraph 5.4 (a), subparagraph 5.8 (1) (a) (i) or regulation 5.9A):
(a)       on the application of a party in the approved form; and
(b)       on such reasonable terms (if any) as the Commissioner specifies; and
(c)       after the party has served a copy of the application on the other party.
(5) The Commissioner must not give a direction under subregulation (1) or grant an application under subregulation (2) or (4) unless the Commissioner:
(a)if he or she proposes to grant an application by a party -- is reasonably satisfied that the other party has been notified of the application; and
(b)if he or she proposes to act on his or her own motion -- ensures that the parties are notified of the proposed action; and
(c)in either case:
(i)gives the parties a reasonable opportunity to make representations concerning the application or proposed action; and
(ii)is reasonably satisfied that a direction, an extension of time or the serving of further evidence is appropriate in all the circumstances.
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 (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.
DECISION
Explanation of the delay
The application for an extension of time stated:
The circumstances in which, and the grounds upon which, this application is made are set forth in the accompanying Statutory Declaration. [the Molins Declaration]
Molins states in the second sentence of paragraph 3 of his Statutory Declaration:
I left the matter of attending to the service of our Notice of Intention to file Evidence in Reply to my assistant a qualified Australian patent attorney, who I instructed and presumed would file the Notice by the due date of 19 October 2008
Griziotis (who is the qualified Australian patent attorney mentioned in Molins’s Statutory Declaration) states at paragraphs 2 – 5 of his declaration:
2. I have been contracted by Molins & Co., Patent Attorneys, to assist in the prosecution of this Patent Opposition on behalf of Osmose Australia Pty Ltd and TimTech Chemicals Pty Ltd, and had responsibility for ensuring that the Notice of Intention to serve Evidence-in-Reply was filed with IP Australia by the due date of 19 October 2008.
3. Following receipt of the balance of the Evidence-in-Answer of the Applicant on 19 September 2008, I was instructed by Michael Molins to notify the Opponents of the due date within which to serve on the Applicant our Evidence-in-Reply and to handle all other matters that needed to be completed before such Evidence-in-Reply could be served.
4. The drafting of the notification to the Opponents, for which I was responsibility [sic] and which was subsequently e-mailed to the Opponents did not include any mention of the due date of 19 October 2008 for filing with IP Australia a Notice of Intention to serve Evidence-in-Reply. This was an error on my part, borne out of my oversight in not recalling to memory and consequently my failure to diarise, the requirement for filing such a Notice in a timely manner when it is intended that the Opponent serve Evidence‑in‑Reply.
5. My oversight in not recalling to memory the requirement for filing such a Notice by 19 October 2008 continued until I was advised by Michael Molins sometime early in the week following Friday 24 October 2008 that such a Notice needed to have been filed by 19 October 2008.
It appears that Griziotis was instructed by Molins to file a notice, but subsequently he did not recall that the notice had to be filed by 19 October 2008. This lapse of memory led to the failure to file the notice in time.
The Opponent would have become aware that the notice of intention had not been filed in the prescribed time on, or shortly after, 24 October 2008 when the Opponents were informed via email by IP Australia that the time for filing the notice of intention had lapsed. The Molins Declaration states on paragraph 4:
As soon as I discovered that the due date had been missed, I took immediate steps to file and Application for Extension of Time to serve the Notice of Intention.
The Opponent filed the extension of time on 30 October 2008. The time between the Opponent being informed that the notice had not been received and their application for an extension of time is six days. I believe six days is a reasonable period of time to investigate the failure to file the notice and to prepare the documents necessary for filing an extension of time.
I am satisfied that there is a satisfactory explanation of the delay.
The public interest in the extension of time
In the present case the public interest has two elements that must be balanced: (a) expeditious resolution of the disagreement between the parties, and (b) determining the opposition on its merits. In this regard, it is appropriate to consider the nature and significance of the evidence that will be served as evidence-in-reply. The opponent has not specified the nature and significance of the evidence it intends serving. As noted in the National Starch case, this is not the end of the matter, and it is necessary to have regard to the patent specification, the grounds and particulars of the opposition, and evidence already filed. The technology of the application is chemical treatment of timber. The grounds of opposition include anticipation. It follows that evidence is likely to be significant in the determination of the opposition. There is already evidence in support and answer, and if the evidence to be filed is properly in reply, it will be prima facie relevant, on the assumption that the evidence in answer is relevant. I believe that, in this case, the public interest weighs in favour of extending the time.
The interests of the parties
It is normal for the interests of the parties to be opposed, and largely offsetting. I am not aware of any circumstances in the present case that lead to a different result.
CONCLUSION
The power to grant an extension of time under regulation 5.10(2) is discretionary. The discretion is guided by regulation 5.10(5)(c)(ii) which requires that the Commissioner not grant an extension of time unless reasonably satisfied that the extension is appropriate in all circumstances.
I have found that the errors by the Opponent’s attorney directly resulted in the failure to file the notice of intention. I have also found the public interest is in favour of allowing the extension rather than expediting the process by not allowing the extension. I am satisfied that an extension of time is appropriate in all circumstances. Consequently, I grant the extension of time.
COSTS
The power to award costs, which is based on section 210 and regulation 22.8, is discretionary and consequently I must take all relevant considerations into account. No submissions were made in relation to costs.
In reaching my decision I have relied on facts in the Griziotis declaration, which was only provided with the submissions. Consequently, although the Opponent has been successful, the Applicant was justified in objecting, based on the facts in the application for extension of time. In these circumstances, it is appropriate to make no award of costs.
Dr S.D.Barker
Delegate of the Commissioner of Patents
30 January 2009
Patent attorneys for the applicant : Shelston IP
Patent attorneys for the opponent : Molins & Co.