Spiral Tube Makers Pty Ltd v PIHA Pty Ltd
[2011] APO 54
•14 July 2011
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Spiral Tube Makers Pty Ltd v PIHA Pty Ltd [2011] APO 54
Patent Application: 785507
Title:Encased piping system
Patent Applicant: Spiral Tube Makers Pty Ltd
Opponent: PIHA Pty Ltd
Delegate: Dr Leslie F. McCaffery
Decision Date: 14 July 2011
Hearing Date: Hearing by written submissions
Catchwords: PATENTS – extension of time to serve evidence in answer is allowed – regulation 5.10 – explanation of delay is satisfactory – nature and significance of the evidence is highly relevant to a correct determination of the opposition – balance of the interests of the parties lies in allowing the requested extension
Representation: Patent applicant: Mallesons Stephen Jaques
Opponent:Bennett+Co
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 785507
Title:Encased piping system
Patent Applicant: Spiral Tube Makers Pty Ltd
Date of Decision: 14 July 2011
DECISION
Extension of time until 21 May 2011 to serve Evidence in Answer is allowed.
Costs awarded against the Opponent.
REASONS FOR DECISION
Application number 785507 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.
This is the third hearing in relation to this opposition. The first resulted from the Statement of Grounds and Particulars being served one day after the deadline. The Opponent applied for an extension of time to serve the Statement of Grounds and Particulars under section 223 which was opposed by the Applicant. The extension of time was allowed following a hearing (Spiral Tube Makers Pty Ltd v PIHA Pty Ltd [2010] APO 16).
Evidence in Support first fell due on 21 July 2010. The Opponent requested an extension of time of three months under regulation 5.10 to serve the Evidence in Support. This was opposed by the Applicant, but was subsequently granted following a hearing (PIHA Pty Ltd v Spiral Tube Makers Pty Ltd [2010] APO 23). Evidence in Support was completed on 21 October 2010.
The three-month deadline for Evidence in Answer was 21 January 2011. The Applicant requested, and was granted, a three-month extension until 21 April 2011. On this date the Applicant served part of its Evidence in Answer (a declaration by Anthony Barry Martin) and requested a further 1 month in which to serve the remainder of its evidence.
On the 5 May 2011 the Applicant served the remainder of its Evidence in Answer (a declaration by Robert John LeHunt). The following day the Opponent filed a Notice of Opposition to the extension of time. This decision is in relation to that opposition.
The Commissioner advised the parties that the present proceedings would be heard by way of written submissions. Both parties filed submissions on 14 June 2011 and submissions in response on 21 June 2011.
Relevant Considerations for Regulation 5.10
The law relating to regulation 5.10 has been thoroughly considered in Ferocem Pty Ltd v Commissioner of Patents (1994) 28 IPR 243, A Goninan and Co Ltd v Commissioner of Patents and Another (1997) 38 IPR 213 and National Starch & Chemical Company v Commissioner of Patents 50 IPR 398, which set out that regulation 5.10 confers a broad discretion that cannot be reduced to imperative compliance with particular requirements. On the contrary, it is necessary to give proper, genuine and realistic consideration to all relevant aspects of the case.
Relevant aspects broadly include the reasons for the delay, the nature and significance of the evidence, and the interests of the parties. I will address each of these factors in my decision.
Reasons for the delay
The onus lies with the party seeking an extension of time to justify the need for the extension with sufficient details of the circumstances and reasons for needing the extensions, but a satisfactory explanation is not a mandatory requirement (Ferocem at 247). The Applicant provided the following reasons for the delay in serving the Evidence in Answer:
1.Preparation of the evidence in answer is in progress and is nearing completion. However, further time is required to complete the preparation of this evidence.
2.The Applicant’s expert, Mr Robert LeHunt, has recently been out of the State on numerous occasions on account of his work commitments. Most recently Mr LeHunt has been in Queensland from the 18th until the 21st April 2011. This absence has had a significant bearing on the Applicant’s ability to finalise its Evidence in Answer prior to 21 April 2011.
3.The expert’s most recent absence was not communicated to the Applicant’s attorney until the week proceeding Mr LeHunt’s departure.
The Opponent submitted that Mr LeHunt’s commitments between the 18th and 21st April 2011 would have little bearing on the Applicant’s ability to serve their evidence by the due date. They argued that the Applicant was aware of Mr LeHunt’s imminent absence on or about 11th April 2011, and had they acted diligently they could have completed evidence in the available time. They further noted that Mr LeHunt’s declaration states that he was provided with fresh instructions on 27 April 2011. They considered this was inconsistent with statements in the request that the evidence was nearing completion. However, the Applicant clarified that they were not informed of Mr LeHunt’s absence until 14 April 2011. This left only one working day before his departure, and he was unavailable on that day.
At first blush the Opponent’s submission that Mr LeHunt’s absence of three days would have little impact on the preparation of evidence has merit. However, Mr LeHunt’s absence was unexpected and by the time the Applicant was aware of it there was no opportunity to complete the evidence by the due date. I also note that the Easter holiday period coincided with this absence and 27 April 2011 was the first working day following Easter. Moreover the evidence was completed within a week of this date, so I consider it reasonable to conclude that the evidence was indeed nearing completion and may well have been completed in time had the unexpected absence not occurred.
On balance I am satisfied that the Applicant has provided a satisfactory explanation of the delay in finalising the Evidence in Answer.
The nature and significance of the evidence
The public interest calls for a balance between the requirements that the Commissioner deal with opposition matters expeditiously and economically and that a serious opposition is dealt with on its merits. In order to make such an assessment, the Commissioner must form a view as to the nature of the evidence that is sought to adduce and the significance of that evidence for the opposition proceedings. In forming this view, the significance of the evidence to be adduced is assessed in the context of the opposition and a prima facie view of its relevance, rather than being an assessment of its merits [Goninan (supra)].
The opponent argued that the declaration by Mr Martin was sufficient to address the issues in the opposition as it provided information on the development of the invention, the sale of products relating to the application and the acceptance of such products in the Australian market. They considered that the requested extension to serve the evidence would unduly push out the time for filing Evidence in Reply and unnecessarily increase the material to which they must reply.
I do not find these submissions persuasive. The Opponent has set out manner of manufacture, novelty, inventive step, failure to comply with section 40 and utility as grounds of opposition. These are also addressed in Evidence in Support. However the Martin declaration does not deal with the substantive issues of the opposition – these are addressed only in Mr LeHunt’s declaration. Clearly the evidence of Mr LeHunt is highly relevant to a correct determination of the opposition.
I therefore consider that the public interest lies in allowing the requested extension of time.
Interests of the parties
The interests of the Opponent lie in having the opposition dealt with expeditiously, and as a consequence lie against allowing the extension. The interest of the applicant is in obtaining the extension in order that it has the opportunity to serve evidence in answer in the opposition. This represents the only opportunity for the applicant to defend their application, and there is an argument that the applicant will be shut out of the opposition because they are precluded from the evidence.
In this regard the Opponent noted that the Applicant allowed its application to lapse for a period of 8 years and that they had only recently taken an interest in the application. They argued that the present request was consistent with a history of delay by the Applicant that was detrimental to their interests.
I sympathise with the Opponent’s submissions regarding the impact on their interests of the previous extensive delays in the prosecution of the present application. However, I note that the Applicant served part of its evidence within the first period of extension, and submitted the remainder of their evidence early in the requested extension. The request is for a relatively short and fixed period of time, and the opposition will not be unnecessarily protracted if it is allowed. I also consider that the actions of the Applicant in filing the completed evidence early in the requested extension are consistent with a serious intention to defend their right rather than a delaying tactic.
In any case, the nature and significance of the evidence is such that the Applicant would essentially be shut out of the opposition if the extension were not allowed. On that basis, I consider that the interests of the Applicant in this case strongly outweigh the interests of the Opponent in this instance.
Conclusion
Taking into account all of the considerations mentioned, I am satisfied that the requested extension is justified. I therefore grant the extension of time to 21 May 2011.
I note that this opposition is only at the stage of Evidence in Answer, but already three separate stages have been the subject of a hearing. Despite this the opposition has progressed relatively quickly. However there seems to be a risk of further objections concerning procedural matters and the opposition will be prevented from proceeding to an early determination of the substantive matters. It should be noted that there is an underlying principle that matters before the Patent Office should be dealt with in an efficient, orderly manner and not be unduly prolonged. The Commissioner is unlikely to view favourably any future actions by either party that run contrary to that principle.
Costs
Costs generally follow the event and I see no reason in the present case to depart from that practice. I therefore award costs according to Schedule 8 against the Opponent, PIHA Pty Ltd.
L. F. McCaffery
Delegate of the Commissioner of Patents
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