Quaker Chemical Corporation v T & T Global Solutions Pty Ltd
[2014] APO 69
•24 October 2014
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Quaker Chemical Corporation v T & T Global Solutions Pty Ltd [2014] APO 69
Patent Application: 2012304245
Title:Method for detecting fluid injection in a patient
Patent Applicant: T & T Global Solutions Pty Ltd
Opponent: Quaker Chemical Corporation
Delegate: Greg Powell
Decision Date: 24 October 2014
Hearing Date: Written Submissions, completed on 10 October 2014
Catchwords: PATENTS – extension of time to file evidence in answer – Regulation 5.9 – whether the applicant has acted promptly and diligently at all times – explanation of actions during significant length of time at start of evidentiary period missing – cannot be satisfied that actions were prompt and diligent at all times – exceptional circumstances – no exceptional circumstances evident – extension of time refused.
Representation: Patent applicant: Silberstein & Associates Pty Ltd, Sydney.
Opponent:Freehills Patent Attorneys, Melbourne.
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2012304245
Title:Method for detecting fluid injection in a patient
Patent Applicant: T & T Global Solutions Pty Ltd
Date of Decision: 24 October 2014
DECISION
Extension of time refused.
The time period for filing evidence in answer has expired. As no evidence in answer was filed, no evidence in reply is required. The matter can now be set for hearing.
No award of costs.
REASONS FOR DECISION
Background
This matter relates to patent application 2012304245 in the name of T & T Global Solutions Pty Ltd (T&T). The application was advertised as accepted on 22 August 2013 and a notice of opposition to the grant of a patent was filed by Quaker Chemical Corporation (QCC) on 22 November 2013.
The Commissioner notified T&T of completion of evidence in support on 26 May 2014. Consequently, evidence in answer from T&T was due on 26 August 2014. On 26 August T&T filed a request for an extension of time of one month to 26 September 2014 in which to file evidence in answer.
Notwithstanding a letter from QCC indicating that they consented to an extension of time of one month, on 1 September 2014 the delegate wrote to T&T indicating that, based on the explanation provided, he was not satisfied that an extension of time under regulation 5.9 was justified. The delegate invited T&T to file further comments to address the delegate’s concern.
In response to that invitation T&T responded stating that the explanation provided with their request, along with the advanced stage reached in preparing T&T’s evidence provided “a more than adequate basis for the operation of Regulation 5.9 to be determined by the Commissioner in the Applicants’ favour”.
Following this response, the delegate notified T&T on 8 September 2014 that he considered that an appropriate case for an extension of time had not been made out and provided reasons why. The delegate invited T&T to request to be heard, which they duly did on 15 September 2014. At the same time as requesting to be heard, T&T also requested that the opposition be stayed pending the outcome of the hearing on the extension of time. The Commissioner responded indicating that a stay was not appropriate, specified that the matter would be heard by written submissions and provided a timetable for submissions from T&T and QCC.
On 29 September 2014, T&T responded with a further letter stating that they were “unconvinced that this is a matter which can be properly heard solely on the basis of written submissions” as well as repeating their previous submission that the explanation provided for the extension of time request was “more than adequate” for the Commissioner to grant the extension of time.
On 3 October 2014, I wrote to T&T indicating that there was no need for this matter to be heard orally. I noted that the Commissioner has the power under regulation 22.22 to decide that a hearing can be solely by way of written submissions. I stated that the matter to be decided by this hearing was a simple and straightforward matter in relation to an extension of time and an oral hearing was not required. Noting the correspondence from T&T, I provided a further short period of time for T&T and QCC to provide written submission for the hearing. No party has supplied any written submissions. Consequently this matter will be determined on the basis of the explanation provided by T&T when they filed their request.
Applicable law
On 15 April 2013, the Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (No 1) (the Amendment Regulation) commenced. The Amendment Regulation significantly amended the Patents Regulations (the Regulations) as they apply to patent oppositions. The law governing extensions of time to file evidence in a patent opposition depends upon the date on which the opposition commenced. Where the opposition commenced on or after 15 April 2013 (as in the present case), the extension is governed by regulation 5.9 of the Regulations as in force on 15 April 2013.
Subregulation 5.9(2) states:
The Commissioner may extend the period only if the Commissioner is satisfied that:
(a) the party who intended to file evidence in the period:
(i)has made all reasonable efforts to comply with all relevant filing requirements under this Chapter; and
(ii)despite acting promptly and diligently at all times to ensure the appropriate evidence is filed within the period, is unable to do so, or
(b) there are exceptional circumstances that warrant the extension.
Exceptional circumstances are defined in subregulation (5):
In this regulation:
exceptional circumstances includes the following:
(a) a circumstance beyond the control of a party that prevents the party from complying with a filing requirement under this Chapter;
(b) an error or omission by the Commissioner that prevents a party from complying with a filing requirement under this Chapter;
(c) an order of a court, or a direction by the Commissioner, that the opposition be stayed pending the completion of a related proceeding or action under the Act.
These provisions have been considered by the Commissioner in TRED Design Pty Ltd v Julie-Anne McCarthy and Bradley McCarthy [2013] APO 57 and Merial Limited v Novartis AG [2013] APO 65. The principles applied in those decisions, which I accept as correct, are that I must ask myself the following questions:
1.Has the party (and their attorney or agent) made all reasonable efforts to comply with all relevant filing requirements?
2.Was the failure to file the evidence in time despite the party (and their attorney or agent) acting promptly and diligently at all times to ensure the evidence is filed in time?
3.Were there exceptional circumstances that warrant the extension?
I can extend the time for filing evidence only if I am satisfied that the answer to questions 1 and 2 is YES, or if I am satisfied that the answer to question 3 is YES. If I am so satisfied, then I must consider whether there are any discretionary reasons why the extension should not be granted.
As noted in the Explanatory Statement accompanying the Amendment Regulation:
"The Commissioner will not be able to extend time periods unless one of these conditions was made out. The party seeking the extension will bear the onus of convincing the Commissioner of this. Once the conditions in subregulation 5.9(2) are met, the Commissioner still has the discretion to consider whether or not it is appropriate that an extension of time be granted. In applying the test, the Commissioner will not be required to give a direction to extend a period solely because of delays caused by a legal representative failing to act promptly or diligently, by difficulties in obtaining expert evidence that could have been anticipated and acted on or by attempts to settle the proceedings.
Where a party cannot satisfy the Commissioner that an extension is justified under the test, the Commissioner will not have the power to give a short extension to allow the filing of evidence immediately available or to validate evidence filed out of time."
It is very clear from the wording of regulation 5.9 that the considerations that were applied to requests extensions of time under the previous regulation 5.10 in force prior to 15 April 2013 are not part of the primary considerations for requests under present regulation 5.9. Regulation 5.9 requires a party to establish that they made all reasonable efforts and acted promptly and diligently when preparing their evidence. Having established that, and noting the discretionary nature of extensions of time under regulation 5.9, factors such as the interests of the parties and the public interest may then form part of the Commissioner’s consideration of whether to grant an extension and for what length of time.
Application for Extension of Time
T&T’s application for the extension of time states the following (paragraph formatting is my own):
“(1)Silberstein & Associates (S&A) took over responsibility for this patent application and for handling the opposition from Meskin IP (the previous attorneys) when a request was made on 8 July 2014 to record S&A as the address for service for the patent application.
(2)As of that date (8 July 2014), the Applicants (and Meskin IP) had not yet prepared Evidence in Answer because they were obtaining advice and considering all available options. As soon as the Applicants fully appreciated the need to prepare Evidence, they promptly transferred responsibility for the application to S&A, which was a firm they were instructing in relation to other matters.
(3) Since taking over responsibility for the file, S&A:
(a)immediately took steps to compile copies of all relevant documents and material, including from Meskin IP, both in relation to the file and in relation to the opposition;
(b)promptly upon receipt of that material, reviewed all of those materials and prepared a strategy for responding to the evidence in support;
(c)had numerous telephone calls and face-to-face meetings with the Applicants in order to fully acquaint itself with the technology and its applications and to obtain instructions;
(d)concurrently with those calls and face-to-face meetings, formalised an evidence plan, which included identification of suitable kinds of experts.
(e)by 22 July 2014, had already begun identifying potentially suitable experts, researching to obtain their respective contact details and starting to reach out to the experts to determine their willingness to give evidence and their availability;
(f)by 2 August 2014, had confirmed with 1 out of the 5 experts that he would give evidence and were corresponding with a 2nd (of the 5 experts) who is based overseas; by 6 August 2014 two (2) further experts (out of the 5) had confirmed they would be prepared to give evidence; and by 8 August, the 5th expert had confirmed he would be prepared to give evidence.
(g)sent out formal expert retainer letters within the next two (2) calendar days and by 15 August, four (4) out of the five experts had had initial interviews.
(h)over the ensuing week (ending 22 August 2014) had several written and/or telephone discussions with several of the experts, working toward finalising their respective Declarations. However, two of the experts were on holidays and/or travelling overseas for part of the time since 18 August 2014 and, for one in particular, their travel adversely affected having their Declaration being finalised.
(4)In further support of this application, the Applicants note the unqualified consent of the Opponent to an extension of time of 1 month being granted; as embodied in a pre-emptive letter sent to the Commissioner of Patents from Freehills Patent Attorneys (on behalf of the Opponent), dated 25 August 2014. That letter was produced as a result of discussions between the Applicants and the Opponent.”
Has the party made all reasonable efforts to comply with the time period? Was the failure to file the evidence despite the party acting promptly and diligently?
While paragraph 11 above lists these questions as separate, it is often the case that consideration of whether a party has made reasonable efforts to comply with a time period overlaps to a substantial degree (if not totally) with the consideration of whether a party has acted promptly and diligently. In TRED at [28], the delegate of the Commissioner noted that:
“I would expect that often where a person has acted reasonably, they will also have acted promptly and diligently”
In the present case, the consideration of whether T&T and its attorneys made reasonable efforts is best analysed by considering whether they acted promptly and diligently.
It is immediately apparent from paragraph (2) of the explanation that, while the period for filing evidence in answer began on 26 May 2014, between then and 8 July 2014 no detail is provided as to the actions of T&T and/or their attorney(s) at the time that would support a finding of prompt and diligent action on the part of T&T and their attorney. While there are vague statements alluding to “obtaining advice and considering all available options”, there is no cogent account of what was done, when it was done, how long it took and who was involved. In Fugro Airborne Surveys Corp v Geotech Airborne Limited [2014] APO 23 the delegate stated:
“A party seeking an extension of time will assist the Commissioner (and advance their own cause) if they provide information about what they did, when they did it, and how long those actions took. When considering such information, it is relevant to consider whether there have been any significant unexplained delays. The presence of significant delays without a reasonable explanation is the antithesis of acting promptly and diligently.”
As noted by the delegate in Mineral Technologies Pty Ltd v Orekinetics Investments Pty Ltd [2014] APO 63:
“… a chronology without an explanation is seldom helpful. As demonstrated by Sportingbet Australia v Tabcorp International Pty Ltd [2014] APO 21, a lengthy chronology may fail to reveal why things were done, or why things were not done. The Commissioner will be assisted by an explanation – a narrative that explains the strategy being followed, how the events fit into that strategy, problems confronted and how the strategy was modified as necessary. As stated in Clarus Therapeutics, Inc. v Lipocine, Inc [2014] APO 50 at [21]:
"What is missing is a narrative that puts those actions into context. For example, that explains the objective of the evidence gathering activities to the extent that efforts toward and failure to achieve that result can be understood. In not providing this Clarus appears to be expecting the Commissioner to read between the lines and potentially does not appreciate that it bears the onus of satisfying the Commissioner." ”
The present request contains what I believe could be termed a significant period of time (~6 weeks) without a reasonable explanation as to what happened in that period. It may well be that there was significant work done with complex issues requiring a lot a time. However, information that may address this gap in the explanations is missing. It remains the case even after T&T was given 3 opportunities to provide it (see paragraphs 3, 5 and 7 above). Indeed, given that T&T changed attorneys once they “fully appreciated the need to prepare Evidence”, it is not unreasonable to conclude that almost no action was taken to gather evidence while T&T were with their previous attorney.
As is clear from the principles developed by the Commissioner in deciding extension of time requests, a party (which include attorneys) is expected to act promptly and diligently at all times to ensure timely filing of evidence; not just for the time that the current attorney had carriage of the matter. While I appreciate that T&T’s current attorney would not be aware from their own records of what had occurred while the previous attorney was responsible for this matter, this information must, nevertheless, be provided. As such, it must be concluded that that extension of time is not justified as T&T and/or their agent(s) have not been prompt and diligent at all times.
That conclusion, whatever else may be said about the rest of the explanation, means that my answer to questions 1 and 2 set out in paragraph 11 above must be “No”. For completeness, I will review that remainder of the explanation, but, whatever the outcome, my answer does not change.
The explanation for the actions taken once T&T had changed attorneys on 8 July is not at a high level of detail. Once the transfer of attorneys had occurred, the explanation notes in paragraphs 3(a)–(d) that, in the period of 8–22 July, actions in relation to compiling material, review and preparation of a strategy, telephone calls and meetings, formulating and evidence plan, and beginning identification and contact of experts proceeded. However, the explanation provides little information with respect to when these actions occurred, who was involved and how long the actions took. A similar thing can be said with respect to paragraphs 3(e)–(g) covering the period of 22 July – 15 August, when experts were contacted and, by the end of the period, 4 of the 5 experts they were retained. Little information on when the different experts were contacted and how their retention progressed through the period is supplied. The same applies to paragraph 3(h) for the period from 15–22 August, when several discussions were held with several experts. There is no further detail in regard to when the discussion occurred, what was their content, with which experts they occurred and the actions taken to mitigate the lack of availability in the period of two of the experts.
As noted in the Explanatory Memorandum, the party seeking the extension bears the onus of convincing the Commissioner that action has been prompt and diligent. Providing enough information to show this is crucial.
Notwithstanding what has been said in Fugro and Mineral Technologies (supra), I note that in Novartis Vaccines & Diagnostics, Inc. v Wyeth Holdings Corporation [2014] APO 65 the delegate stated at [18]:
“However, it is clear that there can be no absolute measure upon how much information is required to be satisfied that a person has acted promptly and diligently. In Osmose New Zealand v Zelam Limited [2014] APO 49 (Osmose) at [18] and [22] respectively, the delegate noted when considering the time taken to engage an expert:
“The fact that some activities took place over several months does not automatically mean that Zelam have not been prompt and diligent.”
“While it might have been possible to carry out some activities faster, the time taken is not outside the range of prompt and diligent given the work that was involved.” “
In the present case I recognise that the individual time periods in paragraph 22 are quite short – 2 weeks, slightly less than 4 weeks and one week, respectively. It is quite clear that a lot was done in those individual periods. They dates and activities can be set out as follows:
8-22 July 2014 review of material, preparation of a strategy for responding to the evidence in support, “numerous” meetings between the current attorney and T&T to obtain instructions and understand the technology, formalising an evidence plan and identifying suitable experts
22 July – 15 August reaching out to the identified experts to determine their willingness to give evidence and their availability, receiving confirmation of willingness to give evidence from the contacted experts (by 2 August, 6 August and 8 August), sending out retainer letters (by 10 August) and having initial interviews with four of the experts
15–22 August several interviews with some of the experts working towards finalising their declarations, noting that 2 of the experts were had been holidaying/travelling since 18 August
To my mind, notwithstanding the lack of a significant level of detail in paragraphs 3(a)–(h), I am satisfied that the approach to gathering evidence set out in these paragraphs was entirely reasonable. It will always be difficult to state with any certainty what level of detail is required. As noted in Fugro (supra) a “reasonable explanation” will be required for “significant delays”. In the present case, a two-week period to review the material of the case, meet with T&T and identify action is, to my mind, prompt and diligent action. The same can be said for identifying and beginning to interview experts within a period of less than 4 weeks. It is clear that the preparation of evidence once T&T changed attorneys was always moving forward and not stagnating. I emphasise that I am not laying down any hard and fast rules about periods of time that do not require a significant level of detail in the explanation. I am merely stating that the level of detail in the present explanation is reasonable enough to satisfy me that T&T and their current attorney have been prompt and diligent.
From the foregoing, while I am satisfied that T&T and its current attorney have acted promptly and diligently, I cannot be so satisfied with respect to T&T and the previous attorney. While T&T maintain that they have provided enough information, I disagree. Information as to what they did, when they did it, and how long those actions took is missing in the initial period between 26 May and 8 July 2014. I cannot be expected to “read between the lines” to make up for deficiencies in the explanation. As regulation 5.9 requires all parties to act promptly and diligently at all times, it follows that the answer to questions 1 and 2 set out in paragraph 11 above is “No”.
Exceptional circumstances
It is clear from the explanation provided by T&T to support their request for an extension of time that there are no exceptional circumstances as defined in subregulation 5.9(5). They point to no circumstance beyond their (or their attorney’s) control, no error or omission by the Commissioner and no order of a court, or a direction by the Commissioner, that prevented, or excused, them from complying with the filing requirements for evidence in answer. Moreover, none can be inferred from the explanation. While I note there is mention of 2 experts being away from 18 August, given the level of detail provided I can only conclude that this was not unexpected and that T&T would have been aware of this when the experts were retained. As such, it would not have been beyond control.
As such, my answer to question 3 set out in paragraph 11 above is “No”.
CONCLUSION
I have found that there is not enough evidence to show that T&T made all reasonable efforts and acted promptly and diligently at all times to ensure their evidence in answer was filed within the period allowed. Moreover, there are no exceptional circumstances that warrant granting an extension. It follows that I have no discretion and the extensions must be refused.
The period for filing evidence in answer ended on 26 August 2014. Since there was no evidence filed in answer to the oppositions, there is no requirement for evidence in reply. This matter can now be set for hearing.
COSTS
In the present case, only T&T requested to be heard and neither party filed written submissions. While it is the usual practice that costs follow the event, there are no costs to award QCC. As such I make no award costs.
Greg Powell
Delegate of the Commissioner of Patents
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