PIHA Pty Ltd v Spiral Tube Makers Pty Ltd
[2010] APO 23
•12 October 2010
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
PIHA Pty Ltd v Spiral Tube Makers Pty Ltd [2010] APO 23
Patent Application: 785507
Title:Encased piping system
Patent Applicant: Spiral Tube Makers Pty Ltd
Opponent: PIHA Pty Ltd
Delegate: Xavier Gisz
Decision Date: 12 October 2010
Hearing Date: Hearing by written submissions
Catchwords: PATENTS - extension of time to serve evidence is support is allowed – regulation 5.10 – explanation of delay in application for extension of time not satisfactory – explanation of delay in hearing submissions is satisfactory
Representation: Patent applicant: Mallesons Stephen Jaques
Opponent:Wrays Patent and Trade Mark Attorneys
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 785507
Title:Encased piping system
Patent Applicant: Spiral Tube Makers Pty Ltd
Date of Decision: 12 October 2010
DECISION
Extension of time until 21 October 2010 to serve Evidence in Support is allowed.
No award of costs is made.
REASONS FOR DECISION
BACKGROUND
Patent number 785507 (the Patent) was advertised as accepted on 22 October 2009. A Notice of Opposition was served on Spiral Tube Makers Pty Ltd (the Applicant) by PIHA Pty Ltd (the Opponent) on 21 January 2010.
A Statement of Grounds and Particulars was served on 22 April 2010 – one day after the deadline for serving the Statement of Grounds and Particulars. The Opponent applied for an extension of time to serve the Statement of Grounds and Particulars under section 223. The extension of time to serve the Statement of Grounds and Particulars was opposed by the Applicant, and on 27 August 2010 a hearing officer determined that the extension of time was allowed.
The deadline for serving Evidence in Support was 21 July 2010. On this day, the Opponent requested an extension of time of three months (until 21 October 2010) under regulation 5.10 to serve the Evidence in Support. The Applicant has objected to this extension of time, and this is the matter which I am determining in the present decision.
The law for extensions of time
The subregulations of regulation 5.10 dealing with extensions of time to serve evidence state:
(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 considerations for deciding whether to grant an extension of time under regulation 5.10 have been investigated in the Federal Court 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 reasons why the evidence was not served earlier is a relevant consideration, but a satisfactory explanation is not a mandatory requirement;
(c) 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;
(d) The public interest is assessed by forming a view as to the nature of the evidence that it is sought to adduce, and the significance of that evidence for the opposition proceedings. The nature and significance of the evidence is assessed having regard to any relevant material available, not just the evidence already on file;
(e) The interests of the opponent, the applicant and any other parties are a relevant consideration.
The Extension
The application for extension of time gives the following circumstances and grounds upon which it is made:
Further time is required for the Opponent to prepare its Evidence in Support in this matter. Significant evidence has been collected. Further time is required to review and consider this evidence for the relevance of the case to hand. It will then be required to identify any further evidence (if necessary) before preparing the required Declarations.
DECISION
Is serving evidence in support appropriate in all circumstances?
I will consider whether to exercise the discretion to extend the time to serve Evidence in Support provided in sub-regulation 5.10(5)(c)(ii) with reference to the considerations given in National Starch (supra), Ferocem (supra) and Goninan (supra).
The broad discretion of regulation 5.10
In Ferocem Pty Ltd v Commissioner of Patents [1994] FCA 981; 28 IPR 243 at 247 Burchett J sought to clarify how the discretion provided in Regulation 5.10 should be exercised when he said:
Regulation 5.10 lays down a perfectly general requirement – that the Commissioner be ‘reasonably satisfied that … an extension of time … is appropriate in all the circumstances’.
The idea that such a broad discretion can validly be reduced by a decision-maker to an insistence upon ‘imperative’ compliance with particular requirements has repeatedly been rejected by the courts.
Thus, the following considerations are to be used as guidance only in this decision.
Explanation of delay
10. In my opinion, the explanation of the delay in preparing the Evidence in Support provided in the application for an extension of time is vague and nonspecific. For example, there is no explanation of why the “significant evidence” collected could not be reviewed and considered in the prescribed three month period. In my opinion, the explanation provided in the application for extension of time does not satisfactorily explain the delay.
11. An additional explanation of the delay is provided in the Opponent’s hearing submissions:
The ongoing actions of Spiral Tube Makers (the applicant) have only compounded the delay in serving evidence in support.
12. I accept that the previous decision dealing with the extension of time to file the Statement of Grounds and Particulars, which was still pending when the application for the present extension of time was made, would have created some uncertainty about whether the opposition would proceed. I also accept that this uncertainty could have caused a delay in the preparation of Evidence in Support. In my opinion, the additional explanation provided in the hearing submissions satisfactorily explains the delay in serving the Evidence in Support.
The public interest
13. In Goninan (supra) Sackville J stated:
In order for the Commissioner or his delegate to give proper, genuine and realistic consideration to the aspect of the public interest I have identified, it is necessary to consider the nature of the evidence the opponent seeks to adduce and the significance of that evidence for the opposition proceedings.
14. The Opponent has not provided or even a summarised the evidence it has collected. However, I note that the Statement of Grounds and Particulars has raised prima facie serious grounds of opposition. Thus it is credible that evidence in support of the grounds will significantly affect the outcome of the opposition. Consequently, I accept the Opponent’s assertion that “Significant evidence has been collected” despite not knowing what the evidence comprises.
15. It is in the public interest that all relevant documents and evidence are considered so as to provide the patent a high presumption of validity. Therefore it is in the public interest that the request to serve Evidence in Support is allowed.
Oppositions should be efficient and not be unduly prolonged
16. The current request for an extension of time is until 21 October 2010. This amounts to a three month extension and a delay of less than two weeks from the date of this decision. In my opinion, this will not unduly prolong the opposition proceedings and amounts to a small inconvenience to the Patent Office.
The interests of the Opponent and the Applicant
17. It is clearly in the interests of the Opponent that they be allowed time to serve Evidence in Support. It is in the interests of the Applicant to have the validity of their patent determined expeditiously. A delay of three months in the entire opposition proceedings should not be particularly inconvenient for the Applicant.
Conclusion
18. I have found that it is in the interests of the public and the Opponent that the extension of time to serve Evidence in Support to be allowed. I have also found that a delay of three months amounts to a small inconvenience to the Applicant and the Patent Office.
19. I have found that the explanation of the delay provided in the hearing submissions is satisfactory. I have also found that the Evidence in Support could have a significant effect on the outcome of the opposition. Balancing all these factors, I think the discretion should be exercised in favour of allowing the extension of time. Thus it is appropriate to exercise the discretion to allow the extension of time until 21 October 2010 to serve Evidence in Support.
Costs
20. The extension of time to serve Evidence in Support is allowed, which counts in favour the Opponent being awarded costs.
21. However, I have found that a satisfactory explanation for the delay in preparing the Evidence in Support was not provided in the application for an extension of time, and was only provided in the hearing submissions. Thus, at the time the Applicant objected to the extension of time there was no satisfactory explanation for the delay. This counts against the Opponent being awarded costs.
22. In my opinion, these two countervailing reasons for costs being awarded to the Opponent cancel each other out. Consequently, no award of costs is made.
Xavier Gisz
Delegate of the Commissioner of Patents
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