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)…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

AGLC: Osmose Australia Pty Limited & TimTech Chemicals Pty Ltd v Koppers Arch Wood Protection (Aust) Pty Limited [2009] APO 2
Case: [2009] APO 2
Decision Date: 30 January 2009

CaseChat Overview and Summary

Osmose Australia Pty Limited and TimTech Chemicals Pty Ltd opposed the grant of patent application No. 2002215690 in the name of Koppers Arch Wood Protection (Aust) Pty Limited. The dispute centred around the grant of an extension of time for the opponents to file a notice of intention to file evidence-in-reply. The matter was heard by Dr. S.D. Barker, a delegate of the Commissioner of Patents. The primary legal issue before the delegate was whether the Commissioner should grant the extension of time requested by the opponents under regulation 5.10(2) of the Patent Regulations 1991. This required consideration of the statutory criteria set out in regulation 5.10(5), including the reasonableness of the explanation for the delay, the public interest in determining the opposition on its merits, and the interests of the parties involved.

The delegate considered the statutory declaration provided by the opponents' patent attorney, Michael Molins, and the declaration by George Griziotis, a qualified Australian patent attorney engaged by the opponents. The explanations given by Molins and Griziotis were accepted as satisfactory. The delegate found that the failure to file the notice of intention was due to an oversight and lapse of memory on the part of Griziotis. The public interest was deemed to favour granting the extension, as the evidence-in-reply was likely to be significant in determining the opposition, which involved chemical treatment of timber. The delegate concluded that the extension of time was appropriate in all circumstances, taking into account the explanations provided and the nature of the opposition. Consequently, the delegate granted the extension of time.

No costs were awarded as the applicant was justified in objecting to the extension, based on the facts presented in the application for extension of time. The delegate's decision was issued on 30 January 2009, with Shelston IP representing the applicant and Molins & Co. representing the opponents.

Orders