Pacific Enterprises (Aust) Pty Ltd v Assa Abloy Australia Pty Limited
[2013] APO 31
•14 May 2013
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Pacific Enterprises (Aust) Pty Ltd v Assa Abloy Australia Pty Limited [2013] APO 31
Patent Application: 2008243070
Title:A Lockable Chain Winder
Patent Applicant: Assa Abloy Australia Pty Limited
Opponent: Pacific Enterprises (Aust) Pty Ltd
Delegate: Dr S.D.Barker
Decision Date: 14 May 2013
Hearing Date: Written submissions completed on 23 April 2013
Catchwords: PATENTS – application for extension of time to file evidence in support – inadequate explanation of delay – nature and significance of evidence supports extension – extension allowed – no award of costs
Representation: Patent applicant: Phillips Ormonde Fitzpatrick
Opponent:Baxter IP
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2008243070
Title:A Lockable Chain Winder
Patent Applicant: Assa Abloy Australia Pty Limited
Date of Decision: 14 May 2013
DECISION
The time for filing evidence in support is extended to 19 May 2013.
I make no award of costs.
REASONS FOR DECISION
Assa Abloy Australia Pty Limited is the applicant for patent application 2008243070. This application is a divisional of 2003201398. Pacific Enterprises (Aust) Pty Ltd have opposed the grant of a patent. The opposition is at the evidence in support stage, and the opponent has requested an extension of time to file their evidence in support. The applicant has objected, and a hearing was conducted by way of written submissions filed by both parties.
Reasons for the extension of time
The reason for the extension of time was given as:
“We have through our previous patent attorneys started preparing the evidence in support to this matter.
It has been necessary for the applicant to instruct other patent attorneys being Baxter IP to proceed the evidence further and to finalise statutory declarations.
The new attorneys have only recently received files as shown by attached letter of 4 March 2013.
First declaration of EIS intended to be filed this week.
Further time is required for our new patent attorneys to finalise these matters and serve the evidence in support and to determine, prepare and finalise further evidence from experts in the field."
The relevant law
Regulation 5.10(2) of the Patents Regulations 1991 gives the Commissioner the power to extend the time for serving evidence in support. The Commissioner must not grant an extension unless satisfied that the parties have been notified of the application for extension (reg. 5.10(5)(b)), has given the parties a reasonable opportunity to be heard (reg. 5.10(5)(c)(i)), and is reasonably satisfied the extension is appropriate (reg. 5.10(5)(c)(ii)). In the present case the parties have been notified and have had an opportunity to be heard. The only remaining question is whether it is appropriate to extend the time.
The considerations relevant to this question have been considered several times by the Federal Court (Ferocem Pty Ltd v Commissioner of Patents [1994] FCA 981; 28 IPR 243, A Goninan & Co Ltd v Commissioner of Patents [1997] FCA 424; 38 IPR 213 and National Starch & Chemical Co v Commissioner of Patents [2001] FCA 33; 50 IPR 398). In summary, the power to extend time is discretionary, so it is necessary to give genuine and proper consideration to all relevant considerations. (Ferocem at 247-8, Goninan at 220). Relevant considerations include:
a)The reason why the evidence was not served earlier (Ferocem at 247)
b)The public interest in determining a serious opposition on its merits (Goninan at 222)
c)The interests of the parties (Ferocem at 247)
Explanation of delay
Evidence in support was due to be served by 19 March 2013, and the extension that is sought will take this date to 19 May 2013. The only explicit reason for the delay in finalising evidence is the change in patent attorneys by the opponent. The official file shows that on 30 January 2013 the Commissioner was advised that Baxter IP was the new representative of the opponent. However, it seems that Baxter IP did not receive the relevant files relating to the opposition until 4 March 2013. There is no explanation for this delay in transferring the files. In this situation, I have not been provided with a reasonable explanation of the delay in finalising the evidence in support within time.
Public interest
When considering the public interest, it is necessary to form a view as to the nature and significance of the evidence that is being prepared (Goninan at 225-6). The submissions provided for the hearing state that the opponent has three witnesses who will provide evidence. Two of these witnesses are said to be lock experts.
The opponent has filed part evidence in support, being a declaration by their patent attorney Martin Earley and a declaration by Graeme Byrne. The opponent has also stated that they have prepared a declaration by Rana Waitai and have started preparation of a declaration by Damian Tonti-Filippini. The opponent has further stated that the evidence is "particularly relevant in determining what a person skilled in the art considers to be the prior art, the disclosure of the patent documents, the novelty and inventive step if any in the claimed invention".
The description of the nature of the evidence satisfies me that the public interest favours allowing the extension.
Interests of the parties
As is normal in such matters, the parties have differing interests. I recognise that each party has valid reasons to support their differing interests. I can see no logical basis to weigh one interest more than the other. I believe that the interests of the parties are largely offsetting, although not identical.
Conclusion
I am satisfied that there is not an adequate explanation of the delay, but the public interest favours allowing the extension, On balance, I give greater weight to the public interest, and accordingly I am satisfied that the opponent has discharged the onus of justifying an extension. I will allow the extension of time.
Costs
While it is normal for costs to follow the event, that is not a rule that is applied inflexibly. In this case, the opponent has provided an explanation of the nature and significance of the evidence in its submissions for the hearing. The applicant was justified in objecting to the extension, and the award of costs should not penalise them. It is appropriate to make no award of costs.
Dr S.D.Barker
Delegate of the Commissioner of Patents
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