Reflex Instruments Asia Pacific Pty Ltd v Minnovare Limited
[2016] APO 68
•11 October 2016
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Reflex Instruments Asia Pacific Pty Ltd v Minnovare Limited [2016] APO 68
Patent Application: 2012101210
Title:Drill hole orientation apparatus
Patent Applicant: Minnovare Limited
Opponent:Reflex Instruments Asia Pacific Pty Ltd
Delegate:Dr S.D. Barker
Decision Date: 11 October 2016
Hearing Date: Written submissions completed 19 August 2016
Catchwords: PATENTS – extension of time to file evidence in answer – regulation 5.9(2) – whether there were exceptional circumstances that warrant an extension – extension refused
Representation: Patent applicant: Lord and Company
Opponent:Gilbert +Tobin, Solicitors
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2012101210
Title:Drill hole orientation apparatus
Patent Applicant: Minnovare Limited
Date of Decision: 11 October 2016
DECISION
Extension of time refused.
The Commissioner will not proceed to arrange a hearing of the opposition until a decision has been made in relation to regulation 5.23.
I award costs according to Schedule 8 of the Patents Regulations against Minnovare Limited.
REASONS FOR DECISION
This matter relates to a request for an extension of time to file evidence in answer and is determined under regulation 5.9 of the Patents Regulations (the Regulations) as amended on 15 April 2013 by the Intellectual Property Legislation Amendments (Raising the Bar) Regulation 2013 (No 1) (the Amendment Regulation).
Background
An application for innovation patent number 2012101210 was filed by DHS (Aust) Pty Ltd on 8 August 2012, and the patent was granted on 6 September 2012. The ownership was subsequently changed to Minnovare Pty Ltd and more recently to Minnovare Limited (Minnovare). The patent was examined and certified on 11 September 2013.
A request for a re-examination of the patent was filed on 15 November 2013 by a third party. The patent was re-examined and an adverse report was issued on 22 January 2014. Minnovare filed amendments in response the Examiner's report on 6 March 2014. The filed amendments, which were considered to overcome the objections raised in the Examiner's adverse report, were advertised and subsequently allowed on 5 November 2014. The allowance of the amendments concluded the re-examination process.
A notice of opposition, statement of grounds and particulars and evidence in support were filed by Reflex Instruments Asia Pacific Pty Ltd (Reflex) on 29 March 2016. A notification (the Notice Letter) was sent electronically by IP Australia to Lord & Company (Lord & Co), the patent attorneys of Minnovare, on 30 March 2016 confirming the filing of the notice of opposition, statement of grounds and particulars and evidence in support by Reflex. Copies of all the above mentioned documents filed by Reflex on 29 March 2016 were attached to the Notice Letter. The Notice Letter stated that evidence in answer was due by 30 June 2016. The Notice Letter was accessed electronically by Lord & Co on 31 March 2016. No evidence in answer was filed by Minnovare by 30 June 2016.
An officer from IP Australia contacted Lord & Co on 6 July 2016 to confirm that no evidence in answer had been filed. On 7 July 2016 Lord & Co filed an application for an extension of time of one month to file evidence in answer. A declaration dated 7 July 2016 by Mr Kelvin Ernest Lord of Lord & Co formed part of the application for an extension of time.
Based on the information in Mr Lord's declaration, a delegate of the Commissioner was not satisfied that an extension of time was warranted. On 15 July 2016, the delegate notified the parties of his intention to refuse the application for extension of time.
Minnovare filed a request on 22 July 2016 for an oral hearing on the intention to refuse the application for extension of time. The Commissioner determined that in the particular circumstances of the case an oral hearing was not required and notified the parties on 29 July 2016 that the hearing would proceed based upon written submissions.
Minnovare disagreed with the Commissioner's decision to deny an oral hearing and repeated its request on 1 August 2016 to be heard orally on the intention to refuse the application for extension of time. The request also stated that in the event that the request for 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.
A delegate of the Commissioner determined that a hearing on the intention to refuse the application for extension of time would proceed by written submissions. The delegate notified the parties of his determination on 2 August 2016. The delegate also noted that a procedure to consider invoking regulation 5.23 would be followed if that became necessary.
On 11 August 2016 Minnovare filed written submissions dated 10 August 2016 and provided the following declarations:
Mr Kelvin Ernest Lord dated 7 July 2016 (Lord # 1);
Mr Kelvin Ernest Lord dated 11 July 2016 (Lord # 2);
Mr Michael Charles Ayris dated 20 July 2016; and
Mr Thomas Callum McCraken dated 25 July 2016The declarations of Mr Lord are reproduced in Annex 1 and Annex 2. The declarations by Mr Michael Charles Ayris and Mr Thomas Callum McCraken have been filed as the evidence in answer that is the subject of the extension of time.
Reflex filed written submissions on 12 August 2016 in opposition to Minnovare's request for an extension of time to file evidence in answer. Reflex filed further submissions on 19 August 2016 in response to Minnovare's written submissions dated 10 August 2016.
Minnovare filed written submissions on 19 August 2016 in response to Reflex's written submissions of 12 August 2016.
The law
On 15 April 2013, the Amendment Regulation commenced. The Amendment Regulation significantly amended 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. This follows from regulation 23.36(2), item 2, of the Regulations.
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[1] (the TRED decision) and Merial Limited v Novartis AG[2] (the Merial decision). 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?[1] [2013] APO 57; 105 IPR 291.
[2] [2013] APO 65; 105 IPR 133.
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 Statement):
"A major cause of protracted proceedings is extensions of the various time periods for providing evidence. The law has developed in such a way as to significantly narrow the Commissioner's discretion to disallow extensions. As a result, oppositions are normally subject to multiple extensions of time and extend over many years, contrary to the interest of the public and parties in resolving oppositions faster.
New subregulation 5.9(2) addresses this issue by introducing a new test for determining whether an extension of time for filing evidence is justified. 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."
If the Commissioner is satisfied that an extension is appropriate, the Commissioner must then determine the length of the extension (subregulation (3)):
The Commissioner must determine the length of the extended period having
regard to what is reasonable in the circumstancesI note that paragraph (a) of the subregulation is concerned with actions of "the party", which includes the actions of attorneys or agents.[3]
[3] [2013] APO 57; 105 IPR 291 at 297 [29].
The application for extension of time
The circumstances relevant to Minnovare's application for extension of time relate to failure of Lord & Co to fully recognise that opposition proceedings had been commenced by Reflex in regard to innovation patent 2012101210 despite having received notification of the opposition. Mr Lord states in Lord # 1:
"On or near to 30 March 2016, a letter from IP Australia was sent via e-mail to Lord and Company's principal docketing email address, [email protected], confirming that a Notice of Opposition, Statement of Grounds and Particulars and Evidence in Support had been filed by Reflex Instruments Asia Pacific Pty Ltd on 29 March 2016 in opposition to the Patent (the 'Notice Letter').
The Notice Letter was received by Lord and Company and duly filed electronically into a computerised document filing system operated by the firm. However, the Notice Letter was not (but should have been) printed and put into an established internal docketing and attorney notification procedure operated by Lord and Company. As a result of this omission, the Notice Letter was not brought to my attention when received, or any other persons employed by Lord and Company responsible for matters pertaining to the Patent.
As a consequence of this error or omission, Lord and Company failed to inform the Patentee about the Opposition and to seek their instructions about the matter. As a farther consequence, Lord and Company did not prepare and file Evidence in Answer on behalf of the Patentee by the applicable deadline of 30 June 2016.
On 6 July 2016, Lynda Tobes from IP Australia contacted Lord and Company by telephone as a matter of courtesy in order to enquire and confirm why no Evidence in Answer had been filed. Following this telephone call, the Opposition was first brought to my attention."
From this I conclude that the notice of opposition, statement of grounds and particulars and the evidence in support were received by Lord & Co and entered into their computerised document filing system. The normal practice was then to print a copy of the Notice Letter and enter information into an internal docketing and attorney notification procedure. It was this step that did not happen. As a consequence, Minnovare were not informed of the opposition, and evidence preparation did not take place.
Minnovare's submissions dated 10 August 2016 pressed consideration of only regulation 5.9(2)(b) in regard to the application for extension of time – that is, there were exceptional circumstances that warrant the extension. In the alternative, Minnovare submit that regulation 5.23 can be relied on as a means for having the evidence in answer considered in the opposition. I will address this point at the conclusion of my decision.
Were there exceptional circumstances that warrant the extension?
In the TRED decision, I noted that exceptional circumstances are:
"matters outside the normal evidentiary process, and outside the control of the party, where it would be unreasonable to insist on a party filing their evidence." [4]
[4] [2013] APO 57; 105 IPR 291 at 303 [64].
Minnovare submitted that the circumstances of administrative error leading to missing the deadline for filing evidence in answer constitutes exceptional circumstances that warrant an extension of time.[5] Minnovare also submitted that the failure of Lord & Co's established system to prevent an administrative error is a matter outside the normal evidentiary process that could not be reasonably foreseen.[6]
[5] The applicant's written submissions dated 10 August 2016 at [11].
[6] The applicant's written submissions dated 10 August 2016 at [13].
The failure to process the Notice Letter in the normal way within Lord & Co was clearly the reason the process to prepare and file evidence in answer did not even get started. The failure arose in the normal process of handling an opposition to an innovation patent, rather than outside of the normal evidentiary processes. There is nothing to suggest that the failure was a result of an external event outside the control of Lord & Co, such as a computer system failure, a power failure or the sudden illness of a person. 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. In this situation an extension of time is not available.
Other matters
While the alternative basis of the extension (i.e. regulation 5.9(2)(a)) has not been argued, it is worth a brief consideration. It is apparent that Lord & Co had a process for handling Notice Letters. The details of that process are set out in Lord # 1, and based on what is disclosed it is arguably a reasonable process. It is also apparent that the Notice Letter was received and entered into that process, but the process broke down when a copy of the Notice Letter was not printed and/or put into the internal docketing procedure. The question is whether the handling of the opposition could still be regarded as prompt and diligent despite this error. There is no doubt that diligence does not require perfection,[7] but there needs to be behaviour that is within the range of prompt and diligent.[8] Even the failure to take a critical step could be reasonable, prompt and diligent. However, there is insufficient detail available as to the normal process and what is believed to have gone wrong to allow me to conclude that the failure to file evidence was despite acting reasonably, promptly and diligently. I have decided not to investigate this further since I am aware that another delegate is favourably disposed to invoking regulation 5.23.
[7] Mineral Technologies Pty Ltd v Orekinetics Investments Pty Ltd [2014] APO 63 at [33].
[8] Osmose New Zealand v Zelam Limited [2014] APO 49 at [18].
Minnovare submitted that it is not possible to see any prejudice that could be suffered by Reflex should an extension of time be allowed because the intended evidence in answer for the present case mirrors the evidence in answer for the related standard patent application 2013203365 that is also being opposed by Reflex.[9] Furthermore, Minnovare submitted that it acted promptly once alerted to the error that evidence in answer had not been filed for the present case, and has now completed filing the evidence.[10] Minnovare also submitted that public interest favours the granting of an extension of time because disallowing the evidence in answer when there are significant disputes over the state of the art will inevitably result in a hearing that is effectively one sided and would lead to an erroneous decision (which could lead to the necessity for an appeal).[11]
[9] The applicant's written submissions dated 10 August 2016 at [7]-[8], [25].
[10] The applicant's written submissions dated 10 August 2016 at [26]-[28].
[11] The applicant's written submissions dated 10 August 2016 at[29]-[33].
These considerations seem more relevant to the former extension of time provisions. It is clear from the Statement that regulation 5.9(2) was introduced to address the issue of protracted opposition proceedings due to extensions of various time periods for providing evidence. It is also clear that the Commissioner is not able to extend time periods unless the conditions of the provision are made out. Therefore, I consider that the submissions of Minnovare with regard to the issues of (i) lack of prejudice to Reflex, and (ii) public interest favouring the granting of an extension of time, do not overcome the fact that the conditions of regulation 5.9(2) have not been made out.
Conclusion
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 Callum McCraken, filed respectively on 21 July 2016 and 25 July 2015, are not part of the evidence in answer in relation to the opposition.
The Commissioner will not proceed to arrange a hearing of the opposition until a decision has been made in relation to regulation 5.23.
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 applicant Minnovare.
Dr S.D. Barker
Delegate of the CommissionerANNEX 1: The declaration of Mr Lord dated 7 July
I, Kelvin Ernest Lord of 4 Douro Place, West Perth, Western Australia 6005, hereby declare as follows:
l. I am a Registered Patent and Trade Marks Attorney and the sole principal of Lord and Company, a firm of Registered Patent and Trade Marks Attorneys having a place of business at 4 Douro Place, West Perth, Western Australia 6005 ('Lord and Company').
2. Lord and Company acts on behalf of Minnovare Limited (the 'Patentee'), the patentee of Certified Innovation Patent Number 2012101210 (the 'Patent'), and is recorded as the address for service for the Patent.
3. I make this Declaration in support of an application made by Lord and Company, of even date, to extend the period in which to file Evidence in Answer for the Opposition matter brought by Reflex instruments Asia Pacific Pty Ltd in relation to the Patent.
4. On or near to 30 March 2016, a letter from IP Australia was sent via e-mail to Lord and Company's principal docketing email address, [email protected], confirming that a Notice of Opposition, Statement of Grounds and Particulars and Evidence in Support had been filed by Reflex Instruments Asia Pacific Pty Ltd on 29 March 2016 in opposition to the Patent (the 'Notice Letter').
5. The Notice Letter was received by Lord and Company and duly filed electronically into a computerised document filing system operated by the firm. However, the Notice Letter was not (but should have been) printed and put into an established internal docketing and attorney notification procedure operated by Lord and Company. As a result of this omission, the Notice Letter was not brought to my attention when received, or any other persons employed by Lord and Company responsible for matters pertaining to the Patent.
6. As a consequence of this error or omission, Lord and Company failed to inform the Patentee about the Opposition and to seek their instructions about the matter. As a further consequence, Lord and Company did not prepare and file Evidence in Answer on behalf of the Patentee by the applicable deadline of 30 June 2016.
7. On 6 July 2016, Lynda Tobes from IP Australia contacted Lord and Company by telephone as a matter of courtesy in order to enquire and confirm why no Evidence in Answer had been filed. Following this telephone call, the Opposition was first brought to my attention.
8. The deadline of 30 June 2016 was missed solely due to an error or omission by Lord and Company and the Patentee was not in any way responsible for missing the deadline. I, therefore, submit that an extension of time in which to prepare and file Evidence in Answer for the Patentee in this opposition matter is justified.
9. In the circumstances, I believe that Evidence in Answer will be able to be prepared and filed on behalf of the Patentee within one (1) month.
I believe that the statements in this dec1aration are true and correct in every particular.
ANNEX 2: The declaration of Mr Lord dated 11 August 2016
I, Kelvin Ernest Lord of 4 Douro Place, West Perth, Western Australia 6005, hereby declare as follows:
1. I am a Registered Patent and Trade Marks Attorney and the sole principal of Lord and Company, a firm of Registered Patent and Trade Marks Attorneys having a place of business at 4 Douro Place, West Perth, Western Australia 6005 ('Lord and Company').
2. Lord and Company acts on behalf of Minnovare Limited (the 'Patentee'), the patentee of Certified Innovation Patent Number 2012101210 (the 'Patent'), and is recorded as the address for service for the Patent.
3. I make this Declaration in support of the application made by Lord and Company on 7 July 2016 to extend the period in which to file Evidence in Answer for the Opposition matter brought by Reflex Instruments Asia Pacific Pty Ltd in relation to the Patent.
4. I hereby confirm that the table set forth below accurately documents the events taking place following the expiration of the due date for filing Evidence in Answer for the Opposition matter.
30 June 2016 Evidence in Answer due 6 July 2016 IP Australia contacts Lord and Company by telephone, as a matter of courtesy, to enquire and confirm why no Evidence in Answer has been filed 7 July 2016 Lord and Company files request to extend deadline for filing Evidence in Answer to 30 July 2016;
Lord and Company commences preparation of Evidence in Answer, consisting of two written Declarations15 July 2016 Letter sent from IP Australia to Lord and Company informing Lord and Company that extension of time is refused 18 July 2016 Lord and Company instructs external counsel to assist with hearing on refusal of extension of time 19 July 2016 Final version of first written Declaration sent by Lord and Company to first Declarant for signing 20 July 2016 Final version of second written declaration sent by Lord and Company to second Declarant for signing 21July2016 Executed written declaration from second Declarant received by Lord and Company and filed at IP Australia 22 July 2016 Lord and Company files request for an oral hearing on IP Australia's decision to refuse extension 25 July 2016 Executed written declaration from first Declarant received by Lord and Company and filed at IP Australia, completing Proprietor's Evidence in Answer I believe that the statements in this declaration are true and correct in every particular.
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