RTI Pty Ltd v Scantech International Pty Ltd - [2014] APO 4

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
RTI Pty Ltd v Scantech International Pty Ltd [2014] APO 4

Patent Application: 2006220232

Title:On-belt analyser system

Patent Applicant:  Scantech International Pty Ltd
Opponent:  RTI Pty Ltd
Hearing Officer:  Karen Ayers
Decision Date:  28 January 2014
Hearing:  Written submissions filed by 2 January 2014
Catchwords:  PATENTS – extension of time to file evidence in answer – reg 5.10 – reasonable explanation provided - nature and significance of some of the evidence justifies extension – extension granted

Representation: Patent applicant: Davies Collison Cave, Melbourne
Opponent:Fisher Adams Kelly, Brisbane

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2006220232

Title:On-belt analyser system

Patent Applicant:  Scantech International Pty Ltd
Opponent:  RTI Pty Ltd
Date of Decision:  28 January 2014
DECISION
The applicant is granted an extension of time to 12 February 2014 to file evidence in answer.
REASONS FOR DECISION
Background

Patent application 2006220232 was filed by Scantech International Pty Ltd under the provisions of the PCT on 1 March 2006 claiming priority from both an Australian provisional application (2005900951) and a US basic application (60/658195) filed on 1 and 2 March 2005 respectively. The standard application was published accepted on 21 June 2012 and a notice of opposition was filed on 19 September 2012 by RTI Pty Ltd. The opponent served their Statement of Grounds and Particulars on 1 February 2013 and completed their evidence in support on 12 February 2013.
Evidence in answer was initially due on 12 May 2013. Since then, the applicant has been granted 2 extensions to complete their evidence covering the period up to 12 November 2013. The current extension is for a further 3 months up to 12 February 2014. The opponent has objected to this extension with Commissioner advising both parties that this objection would be based on written submissions rather than an oral hearing.
The relevant law
As a consequence of the Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 there are substantial changes to Chapter 5 of the Patents Regulations 1991. In the case of the present application, as already noted, evidence in support was completed on 12 February 2013. This means that the period for evidence in answer commenced on that date. As this was prior to 15 April 2013 when the Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 commenced, it follows that the current extension of time request is governed by regulation 5.10 of the Patents Regulations as in force immediately before 15 April 2013. Another consequence of the amendments to Chapter 5 is that evidence that is required to be served on or after 15 April 2013 is to be filed with the Commissioner rather than served. Consequently in this decision I will make reference to the filing of evidence where that is to happen on or after 15 April 2013.
Regulation 5.10(2) of the Patents Regulations gives the Commissioner the power to extend the time for filing evidence in answer. The Commissioner must not grant an extension unless satisfied that the parties have…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

Continue reading RTI Pty Ltd v Scantech International Pty Ltd

Details

AGLC: RTI Pty Ltd v Scantech International Pty Ltd [2014] APO 4
Case: [2014] APO 4
Decision Date: 28 January 2014

CaseChat Overview and Summary

In the case of RTI Pty Ltd v Scantech International Pty Ltd, the Australian Patent Office was asked to decide whether to grant an extension to Scantech International Pty Ltd (the applicant) for filing evidence in response to an opposition filed by RTI Pty Ltd (the opponent) against a patent application. The opposition was related to a patent application for an on-belt analyser system, which was filed by Scantech International Pty Ltd. The Commissioner of Patents, Karen Ayers, granted the applicant an extension to file their evidence in answer until 12 February 2014.

The legal issues the court had to decide involved the proper interpretation and application of the Patents Regulations 1991, specifically regulation 5.10, which governs the extension of time for filing evidence in answer. The Commissioner was required to consider the reasons for the delay in filing the evidence, the public interest in determining the opposition on its merits, and the interests of the parties.

The Commissioner's reasoning and outcome involved examining the applicant's explanations for the delay in filing their evidence in answer. The Commissioner considered the inherent difficulties in obtaining experts in a narrow and highly specialised field and the applicant's efforts to find experts when unforeseen problems arose. The Commissioner found that the applicant had acted diligently and in good faith and that the nature and significance of the evidence to be filed supported the extension of time. The Commissioner also noted that the public interest and the interests of the parties supported granting the extension.

The final orders of the Commissioner were to grant the applicant an extension until 12 February 2014 to file their evidence in answer and to award costs against the opponent RTI Pty Ltd according to Schedule 8.

Orders