Reflex Instruments Asia Pacific Pty Ltd v Minnovare Limited
[2017] APO 8
•21 February 2017
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Reflex Instruments Asia Pacific Pty Ltd v Minnovare Limited [2017] APO 8
Patent Application: 2012101210
Title:Drill hole orientation apparatus
Patent Applicant: Minnovare Limited
Opponent: Reflex Instruments Asia Pacific Pty Ltd
Delegate: Isaac Tan
Decision Date: 21 February 2017
Hearing Date: Written Submissions completed 21 Dec 2016.
Catchwords: PATENTS – whether evidence was filed under chapter 5 – whether regulation 5.23 is applicable after refusal under regulation 5.9 – the most appropriate course of action - whether to rely on information pursuant to regulation 5.23 - circumstances leading up to evidence not being filed earlier – what does the evidence show – is the evidence likely to be crucial on the delegate’s decision – the public interest in having the information considered – the balance of convenience of the parties if the information is considered– costs awarded against the opponent – regulation 5.23 invoked
Representation: Applicant: Lord & Company
Opponent:Gilbert + Tobin
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2012101210
Title:Drill hole orientation apparatus
Patent Applicant: Minnovare Limited
Date of Decision: 21 February 2017
DECISION
It is appropriate to invoke regulation 5.23 and consult the declarations by Michael Charles Ayris dated 20 July 2016 and Thomas Callum McCracken dated 25 July 2016.
Reflex Instruments Asia Pacific Pty Ltd is provided two (2) months from the date of this decision to file evidence in response.
REASONS FOR DECISION
This matter relates to an opposition for innovation patent application 2012101210 in the name of Minnovare Limited (Minnovare) disputing the Commissioner’s intention to exercise powers under regulation 5.23 of the Patent Regulations (the Regulations) as amended 15 April 2013 by the Intellectual Property Legislation Amendments (Raising the Bar) Regulation 2013 (No 1) (the Amendment Regulation).
Background
This present opposition concerns material intended to be filed as evidence in answer consisting of declarations by Michael Charles Ayris dated 20 July 2016 and Thomas Callum McCracken dated 25 July 2016 (collectively “the documents”), and whether the documents should be consulted as part of the present opposition under regulation 5.23.
On 11 October 2016, the patent office issued a decision, Reflex Instruments Asia Pty Ltd v Minnovare Limited [2016] APO 68 (the “earlier decision”) refusing the Minnovare’s request for an extension of time to file evidence in answer. The background of the circumstances pertaining to this request is covered in this decision.[1]
[1] Reflex Instruments Asia Pty Ltd v Minnovare Limited [2016] APO 68 at [2 – 13]
Minnovare’s request also stated that in the event that the request for an extension of time was refused, Minnovare seeks to rely on regulation 5.23 as a means for having the evidence in answer considered in the opposition.
In the earlier decision, the delegate concluded[2]:
I am not satisfied that there were exceptional circumstances that warrant an extension of time.
As a result the period for filing evidence in answer ended on 30 June 2016 and the declarations of Mr Michael Charles Ayris and Mr Thomas McCraken, filed respectively on 21 July 2016 and 25 July 201[6], are not part of the evidence in answer in relation to the opposition.
The Commission will not proceed to arrange a hearing of the opposition until a decision has been made in relation to regulation 5.23.
[2] Ibid at [31 – 33]
On 11 October 2016, a delegate of the Commissioner determined that the material intended to be filed as evidence in answer was appropriate to be consulted under regulations 5.23 and provided the parties fourteen days to provide comments. On 25 October 2016 the Opponent, Reflex Instruments Asia Pacific Pty Ltd (Reflex) provided comments on why the Commissioner should not exercise her power under Reg 5.23. The delegate disagreed and wrote back on 7 November 2016 providing Reflex fourteen days to request to be heard.
Reflex filed a request to be heard on 21 November 2016. In the request, Reflex requested an oral hearing on the basis that the nature of the matter is “of such complexity, importance and controversy” that an oral hearing is required. In support, Reflex referred to the length of the letters sent in relation to the matter. On 28 November 2016, a delegate of the Commissioner determined that an oral hearing was not required and that the hearing would proceed based upon written submissions.
On 29 November 2016, the parties were notified of the schedule to file written submissions. The letter stated:
·I allow the opponent until 9 December 2016 to file submissions
·I allow the patentee until 16 December 2016 to file submissions
·I allow the opponent until 21 December 2016 to file a response
Evidence
The parties filed the following submissions in support of the present opposition:
·Two submissions by Reflex filed respectively on 9 December 2016 (RS 1) and 21 December 2016 (RS 2).
·One submission by Minnovare filed 16 December 2016 (MS).
The Regulations
Regulation 5.7 sets out that:
(1) A party who intends to file evidence in a substantive opposition must:
(a) file the evidence within the relevant evidentiary period mentioned in regulation 5.8; and
(b) if the party files all the evidence before the end of the period – notify the Commissioner of the fact
Regulation 5.8 refers to the evidentiary periods for filing evidence in support, evidence in answer and evidence in reply. While evidence filed outside of the appropriate evidentiary period will generally not be considered during the opposition, regulation 5.9 provides for a party to request the commissioner to extend the period for filing evidence.
Where evidence is not filed within the appropriate evidentiary period, this evidence is not automatically disregarded. While this evidence that is not filed within the relevant evidentiary period is not considered part of an opposition, the Commissioner may exercise discretion to rely on documents that are not formally in evidence.
This power is set out in Regulation 5.23 which states:
(1) For the purpose of deciding an opposition, the Commissioner may consult a document that:
(a) is relevant to the opposition; and
(b) has not been filed under this Chapter; and
(c) is available in the Patent Office.
(2) If the Commission proposes to rely on the document, the Commissioner must give the parties:
(a) notice of the Commissioner’s intention to do so; and
(b) a copy of, or access to, the document; and
(c) an opportunity to give evidence or make representations about the document.
Regulation 5.23 appears under chapter 5 of the regulations which deals with opposition matters. The intent of this provision is explained in the Explanatory Statement accompanying the Amendment Regulation[3]:
The Regulation addresses the issue of unreasonable delay in oppositions by repealing the further evidence provisions from the Patent Regulations. Following the restructuring of Chapter 5 by item 2, parties will be able to provide any document to the Patent Office at any stage under new regulation 5.23. The Commissioner will be able to consult the document and then have the discretion to determine the most appropriate course of action in light of the information contained within the document. However, it is not intended that regulation 5.23 is to be used as a substitute for the repealed further evidence provisions.
[3] Explanatory Statement for the Intellectual Property Legislation Amendments (Raising the Bar) Regulation 2013 (No 1) at Page 21
Is the evidence filed under chapter 5
Before I can decide whether it is appropriate to invoke regulation 5.23 and consult the documents as part of the present opposition, I must first determine if the documents were filed under chapter 5.
On this point, Reflex[4] states:
Each Declaration was filed by Minnovare as evidence in Answer to Reflex’s opposition to the Patent. However, the Declarations were filed after the due date for evidence in answer, being 30 June 2016. These facts are set out and accepted by the delegate in the October Letter, p.2.
[4] RS 1 at [40]
Minnovare[5] disagrees and submits that it is not merely sufficient that the documents were filed, but that they must be filed in accordance with Chapter 5. That is, the documents must be filed within the evidentiary period set out in regulation 5.8. Although this period may be extended under regulation 5.9, an extension of time request was refused in the earlier decision. While the documents were submitted in relation to the extension of time request, Minnovare[6] submits:
By merely submitting the documents to the Commissioner and the Opponent for the purpose of consideration requests relating Regulations 5.9 and 5.23 the Patentee has not filed them under Chapter 5. As the extension of time to file the documents as evidence under Regulation 5.9 was refused the documents have not been filed in accordance with the requirements of Chapter 5.
[5] MS at [9 – 12]
[6] Ibid at [13]
In response, Reflex states[7]:
The fact that the Declarations are now not in evidence cannot retrospectively correct the fact that they were filed by Minnovare in July 2016. Minnovare’s submissions on this issue can be tested, and answered, by considering regulation 5.9. Pursuant to regulation 5.9, the filing date of late-filed evidence is not ignored nor retrospectively altered. Rather, if an extension of time to file evidence is granted under regulation 5.9, the relevant evidentiary period for filing evidence set out in regulation 5.8 is extended so that the filing date of the evidence is deemed to be within the evidentiary period. For example, had Minnovare’s request for an extension of time pursuant to regulation 5.9 been granted, rather than refused, the Commissioner would not have altered the filing date of the Declarations to be the date of the extension decision. The filing date of those Declarations would have remained in July 2016, but the evidentiary period for filing of evidence in answer set out in regulation 5.8(2) would have been extended beyond 30 June 2016 so that the July 2016 filing date would have been regarded as being within the relevant evidentiary period in compliance with regulations 5.7 and 5.8.
[7] RS 2 at [6]
From this, it is clear that there are two scenarios I must consider. Are documents considered to be filed under chapter 5 if they are:
(a)Filed as evidence in answer albeit outside the relevant evidentiary period; or
(b)Filed in relation to a request for an extension of time under regulation 5.9.
To first consider scenario (a), regulation 5.7(1)(a) sets out that evidence in a substantive opposition must be filed within the relevant evidentiary period. However this period may be extended under regulation 5.9.
If the extension of time request was successful (which is not the case here), then the documents will be considered filed within the relevant evidentiary period and hence filed under chapter 5. Documents filed under chapter 5 are excluded from consideration under regulation 5.23.
However as the extension of time request was refused, the documents are hence filed outside of the relevant evidentiary period. Therefore the documents do not comply with the requirements of regulation 5.7 and are not considered to be filed under chapter 5.
Reflex’s argument on this point appears to be based on the intention under which a document was filed. While Reflex is not incorrect in their explanation of filing dates, I do not agree that just because a document is filed with the intention that said document be considered as evidence, automatically implies that the documents are filed under chapter 5. Rather, only documents which comply with regulation 5.7 can be considered as evidence in a substantive opposition and hence filed under chapter 5.
Although scenario (b) was not addressed in great detail, it is still worth a brief consideration. Under regulation 5.22, the Commissioner may give a direction in relation to an opposition in which Chapter 5 applies. On 29 July 2016, a letter was issued setting out how the hearing for an extension of time request was to be conducted. In the letter, both parties were provided fourteen days from the date of the letter to file submissions, and a further seven days to provide submissions in response.
The 29 July 2016 letter sets out the respective deadlines within which written submissions must be filed to be considered as evidence in the regulation 5.9 matter.
In the earlier decision, the delegate noted[8]:
The declarations of Mr Lord are reproduced in Annex 1 and Annex 2. The declarations by Mr Michael Charles Ayris and Mr Thomas Callum McCra[c]ken have been filed as evidence in answer that is the subject of the extension of time.
[8] Reflex Instruments Asia Pty Ltd v Minnovare Limited [2016] APO 68 at [11]
The distinction here is that while the documents were filed in relation to the extension of time request under regulation 5.9, they are not considered to be filed under regulation 5.9. Rather, they are filed as evidence in answer. As the extension of time request was refused, the documents are not considered evidence in answer, and therefore not filed under chapter 5.
In the alternative, Minnovare[9] submits that the documents subject to the present opposition are identical to evidence filed correctly as evidence in answer in the corresponding standard patent application AU 2013203365 (the “365 documents”) and should be consulted under regulation 5.23. While this option was not extensively argued, it is still a point I must address.
[9] MS at [3 - 4]
On this point, Reflex[10] submits that the 365 documents are filed under chapter 5 and that[11]
Regulation 5.23(1)(b) is not limited to the opposition proceeding in which a consultation under regulation 5.23 is being considered.
[10] RS 1 at [41]
[11] Ibid at [39]
I do not dispute that the 365 documents were filed under chapter 5. However to interpret regulation 5.23 as to apply to any evidence filed under chapter 5 for any opposition at any time is in conflict with the intention of regulation 5.23 as described in the Explanatory Statement accompanying the Amendment Regulation[12] and places too great and unreasonable restriction on the Commissioner’s discretion.
[12] Explanatory Statement for the Intellectual Property Legislation Amendments (Raising the Bar) Regulation 2013 (no 1) at Page 21
Is regulation 5.23 applicable
In Merial Limited v Bayer Intellectual Property GmbH [2015] APO 16 (the “Merial decision”), the delegate considered whether to rely on information under regulation 5.23. In this decision, the delegate noted that[13]:
Guidance as to the interpretation of this regulation can be drawn from both the Explanatory Statement and the context of the Patents Act and the Regulations. Regulation 5.23 is not the only provision dealing with information brought to the attention of the Commissioner. Under section 97, the Commissioner can carry out re-examination on her own initiative. Reexamination is available either before or after grant, whereas regulation 5.23 can only operate while an opposition is proceeding. It is in the public interest for highly significant information to be considered within an existing opposition and not wait for re-examination after the opposition is concluded. Less significant information should be allowed to wait until after the opposition has been concluded (considering that amendments resulting from the opposition may overcome the deficiency).
[13] Merial Limited v Bayer Intellectual Property GmbH [2015] APO 16 at [22]
Reflex[14] submits that the Commissioner has no power to consult further evidence under regulation 5.23 particularly in circumstances where the Commissioner has refused an extension of time under regulation 5.9 as exercise of the power in circumstances where further evidence was rejected would be contrary to the legislative purpose.
[14] RS 1 at [22 - 23]
In support, Reflex[15] refers to the intent of regulation 5.9 as set out in the Explanatory Statement accompanying the Amendment Regulation[16]:
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.
and that[17]:
However, it is not intended that regulation 5.23 is to be used as a substitute for the repealed further evidence provisions.
[15] Ibid at [25 – 26]
[16] Explanatory Statement for the Intellectual Property Legislation Amendments (Raising the Bar) Regulation 2013 (No 1) at Page 19
[17] Ibid at Page 21
Minnovare[18] disagree and submits that regulation 5.23 was intended to confer a broad discretion upon the Commissioner to consider the document and determine the most appropriate course of action. That is, Minnovare supports what the delegate stated in the Merial decision[19]
I conclude that a decision under regulation 5.23 must have regard to the nature of the information and whether the information is likely, if not certain, to change the outcome of the opposition in a significant way.
[18] MS at [14 – 17]
[19] Merial Limited v Bayer Intellectual Property GmbH [2015] APO 16 at [24]
Deviating from the circumstances around the Merial decision, Minnovate submits that the above statement must be viewed in context and that in the present situation[20]:
A more appropriate question to ask would be is it, in all the circumstances, in the public interest to consult the information in the documents rather than allow the matter to proceed to hearing with no material beyond the evidence in support to be considered? In order to answer this question the documents must be considered and it ought to be asked if consulting the information in them will be likely to significantly inform the final decision maker’s considerations.
[20] MS at [17]
I agree with Reflex that the purpose of regulation 5.9 and regulation 5.23 is to reduce delays in the resolution of patent applications caused by extensions of time period for providing evidence, and that regulation 5.23 is not intended to be used as a substitute for the repealed further evidence provision.
However there is nothing in regulation 5.23, regulation 5.9 or in the Explanatory Statement accompanying the Amendment Regulation which suggests that exercise of the Commissioner’s discretion under regulation 5.23 is controlled by the provisions of regulation 5.9, nor that it should be applied in such a restrictive manner.
As I’ve set out above, evidence that is filed outside of the relevant evidentiary period and an extension of time request refused is considered to not be filed under chapter 5. Therefore I see no reason why the documents cannot be consulted under regulation 5.23.
Should the evidence be consulted under regulation 5.23
The Explanatory Statement accompanying the Amendment Regulation [21] states:
The Commissioner will be able to consult the document and then have the discretion to determine the most appropriate course of action in light of the information contained within the document.
[21] [21] Explanatory Statement for the Intellectual Property Legislation Amendments (Raising the Bar) Regulation 2013 (no 1) at Page 21
On this point, I must determine the most appropriate course of action to deal with the information contained in the documents. Information not considered during opposition may be considered at the conclusion of the opposition with re-examination under section 97. However information contained in statutory declarations which seek to rebuttal evidence on file is more appropriately addressed during opposition.
Therefore I consider it appropriate to consult the documents, being statutory declarations as part of the present opposition proceedings.
In the Merial decision, the delegate posed the following test for determining whether information should be consulted under regulation 5.23. In this decision, the delegate stated[22]:
I conclude that a decision under regulation 5.23 must have regard to the nature of the information and whether the information is likely, if not certain, to change the outcome of the opposition in a significant way.
If the new information is not likely to change the outcome of the opposition in a significant way, there is little advantage gained by bringing it into the opposition. The procedures for evidence laid down in regulation 5.23 will introduce delay to the opposition. On the other hand, if the new information is not relied on in the opposition the Commissioner can reconsider the information at the conclusion of the opposition, and re-examine the application if any new amendments resulting from the opposition have not already addressed the issue. In other words, the new information needs to be significantly better than what is already in evidence. Where the new information is a new citation, it should be considered whether it is likely that the ground of lack of novelty or lack of inventive step in the light of the citation would be made out, and whether the ground would not otherwise have been made out.
[22] Merial Limited v Bayer Intellectual Property GmbH [2015] APO 16 at [24 – 25]
However just because there is an absence of evidence does not imply that any evidence available to the Commissioner in support of the relevant party should automatically be consulted under regulation 5.23. If this was the case then, as Reflex pointed out in their submission[23]:
… a delinquent party would have two opportunities to obtain an extension of time: regulation 5.9 and, if unsuccessful, regulation 5.23. The delinquent party will thereby introduce two processes into the extension of time regime and re-introduce repealed further evidence provision, thereby increasing delays in opposition proceedings and the workload of the Office.
[23] RS 1 at [33]
While there is an absence of case law on how to deal with the present situation, there are similar provisions under the Trade Marks system which deals with evidence filed out of time.
Under the Trade Marks Regulations 1995 (the “Trade Marks Regulation”), the equivalent provision to regulation 5.23 is provided by Trade Marks Regulation 21.19 which states:
(1) If:
(a) information that is available to the Registrar is relevant to proceedings before the Registrar; and
(b) the Registrar has reason to believe that the information is not known to a party to the proceedings; and
(c) the Registrar proposes to take the information into account in making a decision in the proceedings;
before making the decision the Registrar must:
(d) provide the information to the party; and
(e) give the party a reasonable opportunity to make representations about the information.
(2) For the purpose of paragraph (1)(e), the representations may be made in writing, or at a hearing or by such other means as the Registrar reasonably allows.
Similar to regulation 5.23, the intent of Trade Marks Regulation 21.9 is set out in the Explanatory Statement accompanying the Amendment Regulation[24]:
Current regulation 21.19 provides a general discretionary power to the Registrar to inform herself of any information available to the Registrar by reference to any document available in the Trade Marks Office. Following the restructuring of the Trade Marks Regulations by item 11, the Registrar will still have the discretion to consider whether the information is relevant and whether it should be taken into account. However, it is not intended that the provisions of current regulation 21.19 be used as a substitute for the repealed further evidence provisions.
[24] Explanatory Statement for the Intellectual Property Legislation Amendments (Raising the Bar) Regulation 2013 (No 1) at Page 29
In Fed Square Pty Ltd v Federation IP Pty Ltd [2015] ATMO 42, the delegate refused a request for an extension of time to file evidence. However, the delegate determined that it was appropriate to consult the evidence under Trade Marks Regulation 21.19 on the basis that[25]:
As a result, the likely eventuality of not allowing the material to be considered in the proceedings is that the opposition proceeds under the section 44 ground of opposition, and in the event the Opponent is unsuccessful, it must appeal to the Federal Court to have the matter decided on whatever grounds and evidence it then formally relies on. Alternatively, the opposition may be withdrawn and the Opponent is still forced to prosecute the matter through the courts. Of course this is a risk that all parties take if they fail to submit their evidence by the due date. On these facts not allowing the material to be considered seems to be at odds with the broader purpose of the relevant ‘Raising the Bar’ amendments, which were to “reduce delays in the resolution of patent and trademarks applications” and to “streamline the opposition process”.
[25] Fed Square Pty Ltd v Federation IP Pty Ltd [2015] ATMO 42 at [44]
However the delegate cautioned that[26]:
The implications of evidence not being filed at all should inform the parties’ decisions made around the preparation of the evidence, and it is not sufficient to simply show that such evidence is relevant and there is a possibility that the opposition may fail without it. To allow regulation 21.19 to be utilized in that way may render the requirements for the current extension of time provision otiose. Rather, there must be further circumstances that make it reasonable for the material to be taken into account.
[26] Ibid at [55]
I will also note the approach taken by the delegate in Retimans (Canada) Ltd v Hachette Filipacchi Presse [2016] ATMO 54 where the delegate considered the following matters in order to determine whether it was appropriate to exercise discretion under Trade Marks Regulation 21.19:
·The relevance and probative value of the evidence
·Why the evidence was not filed earlier
·The public interest in having proceedings before the Registrar executed with efficiency and certainty
·The inconvenience to the parties
·Whether a delay in proceedings is likely to occur if additional evidence is allowed.
Lastly, I will note what is said in the Trade Marks Examiner Manual[27]:
The delegate will not consider out of time evidence as a matter of routine. The party filing the evidence must make a compelling case in favour of it being considered. The issues the filing party needs to address in its submissions include:
1.Why the evidence was filed after the due date
2.If the evidence stage in proceedings has concluded and the matter is ready for determination, why the evidence was not filed earlier
3.What the evidence shows
4.Why that information is crucial to the delegate’s decision
5.Why it is in the public interest to have the information considered
6.What is the balance of convenience for the parties if the information is considered
[27] Trade Marks Examiner Manual Part 51 Paragraph 2.6
I am satisfied that the approach taken by the Trade Marks Office is consistent with the Merial decision, and is a useful framework. Thus in order for me to determine if I should invoke regulation 5.23, I must form a broad view of the circumstances and potential implications should I decide to invoke or not to invoke regulation 5.23.
To form this view, I will do so by considering the following matters:
1.The circumstances leading up to the evidence not being filed earlier
2.What does the evidence show
3.Is the information likely to be crucial to the delegate’s decision
4.The public interest in having the information considered
5.The balance of convenience of the parties if the information is considered
The circumstances leading up to the evidence not being filed earlier
Minnovare submits[28] that the reason that the evidence was not submitted in time was due to administrative error on the part of the Patentee’s agent. Once the error was identified, the Patentee’s agent took prompt action in order to rectify the matter.
[28] MS at [25 – 30]
On this point, Minnovare states[29]:
It is conceded that the failure to file the Ayris Declaration and the McCracken Declaration was lamentable.
and that:
The error was the result of a genuine mistake on the part of the Patentee’s agent. There was no deliberate abuse of process or other motivation or cause contrary to the public interest in the proper conduct of administrative processes by the Commissioner.
[29] MS at [30]
In the earlier decision, while the delegate refused Minnovare’s request for an extension of time, the delegate noted[30]:
Rather, it appears to have been a human error by a staff member. While I have no doubt the error was unintentional, that is not sufficient to characterise it as an exceptional circumstance.
[30] Reflex Instruments Asia Pty Ltd v Minnovare Limited [2016] APO 68 at [27]
It is clear from the circumstances that Minnovare has been acting in good faith and in my mind, positively supports that I invoke regulation 5.23.
What the evidence shows
On this point, Minnovare[31] provided an overview of the documents with a brief explanation on the significance of the documents. Reflex[32] disagrees and submits that the documents are unlikely to change the outcome of the opposition in a significant way and that the documents are not significantly better than what is already in evidence. That is, the evidence already filed by Reflex as evidence in support.
[31] MS at [18 – 24]
[32] RS 1 at [65 – 67]
I have reviewed the documents and I am satisfied that:
·The declarant’s qualifications and experience are relevant to the subject matter of the present opposition;
·The length and level of detail is of the quality expected for evidence filed during an opposition, and;
·The issues it covers appears to address and contest the evidence already on file.
I am satisfied that the documents contain information that is appropriate for the Commissioner to consult under regulation 5.23.
Is the information likely to be crucial to the delegate’s decision
As I indicated above, the documents appear to address and contest the evidence filed by Reflex. In other words, the information contained in the documents is relevant. But the question is whether the information is of an appropriate level and quality that it can be regarded as crucial to the delegate’s decision. For instance, does the information clearly contest the evidence already on file, or is it mere speculation that is unlikely to have any impact on the delegate’s decision.
I note what was said by the delegate in the 11 October 2016 letter:
The question of whether the declarations of Mr Ayris and Mr McCraken filed in relation to the present application is likely, if not certain, to change the outcome of the opposition in a significant way is not one I can ultimately answer. This is because that would require an analysis comparing the outcome of the opposition with and without the declarations — an option that is not available. However, I consider that it is reasonable for me to conclude that the specific nature of the declarations of Mr Ayris and Mr McCraken is such that the information contained within the documents is likely, if not certain, to significantly inform a decision maker’s considerations. Without the declarations, the opponent’s evidence in support would be uncontested.
I agree with the delegate’s reasoning and conclude that based on what the documents show, it is likely to be crucial to on the delegate’s decision and is therefore appropriate for consideration under regulation 5.23
The public interest in having the information considered
The public interest lies in the efficient and orderly processing of matters before the Patent Office, and in ensuring invalid patents are not granted.
If I invoke regulation 5.23, there will be a considerable delay in deciding the opposition. However, if the documents are not consulted there is a real risk that the opposition will not be correctly determined on its merits. On balance, the public interest is a neutral consideration.
The balance of convenience of the parties if the information is considered
If the documents are not consulted, then the present matter will be set for hearing.
Alternatively if the documents are consulted, Reflex will be provided an opportunity to give evidence or make representations about the documents before setting the present matter for hearing.
I accept that Reflex would be at inconvenience in that they would have to prepare additional evidence for this opposition and the hearing of the matter would be delayed. However I am aware that evidence in this opposition is near identical to the documents were filed in a corresponding opposition to AU 2013203365 where Reflex is also the opponent. In this corresponding opposition, I also note that responding evidence has already been filed by Reflex.
While the facts and grounds of the present opposition and the corresponding opposition will differ, there are also many similarities. Therefore, I consider it to be a minor inconvenience for Reflex to prepare responding evidence in the present opposition if the documents are consulted under regulation 5.23.
Conclusion
Having considered the above matters, on balance I find that Minnovare have made out a compelling case that it is appropriate to consult the documents under regulation 5.23.
I will allow Reflex two (2) months from the date of this decision to file evidence in response.
Costs
It is normal for cost to follow the event, and I see no reason to depart from this norm. I will award costs in accordance with Schedule 8 of the Regulations against the opponent Reflex Instruments Asia Pacific Pty Ltd.
Isaac Tan
Delegate of the Commissioner of Patents
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