Stramit Corporation Pty Limited v BlueScope Steel Limited
[2022] APO 82
•21 December 2022
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Stramit Corporation Pty Limited v BlueScope Steel Limited [2022] APO 82
Patent Application: 2015234361
Title:A Cladding Sheet
Patent Applicant: BlueScope Steel Limited
Opponent: Stramit Corporation Pty Limited
Delegate: K. Wagg
Decision Date: 21 December 2022
Hearing Date: Written submissions filed on 30 September 2022
Catchwords: PATENTS – Extension of time to file evidence in answer – Reg 5.9 – amendments during opposition proceedings – anticipation of a stay with no alternative plan is not all reasonable efforts to comply with filing requirements – prompt and diligent action not established – extension refused.
Representation: Patent attorney for the Applicant: Wrays Pty Ltd
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2015234361
Title:A Cladding Sheet
Patent Applicant: BlueScope Steel Limited
Date of Decision: 21 December 2022
DECISION
Extension of time to file evidence in answer refused.
REASONS FOR DECISION
Background
Patent application number 2015234361 (the patent application), in the name of Bluescope Steel Limited (the applicant) was advertised as accepted on 20 April 2017. A notice of opposition to the grant of the patent application (the substantive opposition) was filed by Stramit Corporation Pty Limited (the opponent) on 20 July 2017. Evidence in support was completed on 22 January 2018 and evidence in answer was due to be filed by 23 April 2018.
On 17 April 2018 the applicant filed s 104 amendments (the first amendments) to the patent application and requested a stay of the substantive opposition pending the outcome of the first amendments. An application for an extension of time to file evidence in answer (the first application) was also filed on 23 April 2018.
A delegate of the Commissioner (the delegate) responded to the request for a stay on 03 May 2018. In that letter the delegate proposed that if the parties agreed and the opponent made an undertaking to not oppose the amendments, a stay of two weeks after a direction of the Commissioner would be granted. Otherwise, the delegate proposed to stay the opposition until two weeks after the Commissioner advised the parties of the fate of the amendments, at which time the evidence in answer would be due. He gave the parties 7 days to respond. The applicant agreed to that proposal on 10 May 2018 however, the opponent sought another 7 days to consider the amendments and their impact on the substantive opposition. The Commissioner gave the opponent until 17 May 2018 to respond.
The opponent responded indicating their intention to oppose the first amendments and consequently on 17 May 2018 the substantive opposition was stayed pending the outcome of the amendments.
Evidence was completed for the opposition on the first amendments on 25 March 2019. However, the applicant withdrew the first amendments and filed a second set of amendments (the second amendments) under s 104 on 9 April 2019. The applicant also requested that the stay be extended to the second set of amendments. In response on 12 April 2019, the delegate noted that as per the earlier direction, evidence in answer would be due in two weeks, however, the same considerations as per the letter of 17 May 2018 would apply in connection with the second amendments. That is, in the event the opponent failed to provide an undertaking not to oppose the second amendments, the substantive opposition would be stayed until two weeks after the parties were advised of the fate of the second amendments by the Commissioner, at which time evidence in answer would be due. No undertaking was provided and consequently the stay was extended to the second set of amendments on 24 April 2019. The opponent opposed the second amendments on 23 July 2019.
The second amendments were heard by way of written submissions and were refused on 28 March 2022 by the Commissioner in Stramit Corporation Pty Limited v Bluescope Steel Limited [2022] APO 21. On 23 May 2022 the parties were advised by the Commissioner that the second amendments were refused and that the due date for filing evidence in answer was 6 June 2022.
On 2 June 2022 the applicant filed a third set of amendments under s 104 which largely matched the first amendments. The applicant requested a stay until two weeks after the amendment’s outcome was known. The delegate, on 6 June 2022, however, provided the same reasoning provided for the first set of amendments where the opponent was invited to make an undertaking not to oppose the amendments. This included the provision of a short stay of two weeks for the filing of evidence in answer in the event the opponent provided the requested undertaking. The parties were also invited to provide any comments on the course proposed by the delegate within 7 days of the date of the letter i.e. 7 days from 6 June 2022.
On 14 June 2022 the opponent made the undertaking not to oppose the amendments. Given that the undertaking was provided, the delegate made a direction on 15 June 2022 that evidence in answer for the substantive opposition is due on 29 June 2022. The applicant did not respond to the delegate’s letter of 6 June 2022 within the 7-day period provided.
The applicant also requested, on 6 June 2022, an extension of time of one month, i.e. from 6 June 2022 to 6 July 2022 to file evidence in answer on the substantive opposition. However, the applicant withdrew this extension request on 16 June 2022 in view of the direction for a stay until 29 June 2022 made on 15 June 2022. The applicant then filed a further request for an extension of time of one month to file evidence in answer on 29 June 2022.
The delegate responded to this extension of time request with a letter of 6 July 2022 requesting further information from the applicant in order to make a decision under Reg 5.9(2). The applicant filed a response on 20 July 2022. The delegate was not satisfied with the response and stated that the Commissioner intended to refuse the extension on 22 July 2022, giving the applicant 7 days to request to be heard. On 29 July 2022 the applicant responded to the intention to refuse but did not request to be heard. The delegate noted that no request to be heard was made in a phone call with the applicant’s representative on 2 August 2022, at which the applicant’s representative made it apparent that they did wish to be heard. The delegate indicated that this request should be put in writing and the request to be heard was filed on 2 August 2022. The delegate subsequently responded on 4 August 2022 to the letter of 29 July 2022 and the request to be heard, indicating that refusal was still appropriate and that the matter would likely be referred to a hearing. The delegate also requested the opponent to inform the Commissioner if they wished to be a party. The opponent did not request to be heard and took no part in this hearing.
This decision relates to the extension of time of one month from 29 June 2022 to 29 July 2022 to file evidence in answer on the substantive opposition. The applicant filed written submission on 30 September 2022.
I note that evidence in answer (out of time) was filed on 29 July 2022.
The 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 5.9(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.
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."
These provisions have been considered by the Commissioner in TRED Design Pty Ltd v Julie-Anne McCarthy and Bradley McCarthy [2013] APO 57 (the TRED decision) and Merial Limited v Novartis AG [2013] APO 65 (the Merial decision). The principles applied in those decisions, which I accept as correct, are that I must ask myself the following questions:
- Has the party (and their attorney or agent) made all reasonable efforts to comply with all relevant filing requirements?
- 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?
- 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.”
If the Commissioner is satisfied that an extension is appropriate, the Commissioner must then determine the length of the extension (subregulation 5.9(3)) having regard to what is reasonable in the circumstances.
The demonstration of prompt and diligent action was noted in TRED at [76]:
“An attorney does not need to account for every minute of their day, but they must provide enough information to enable a delegate of the Commissioner to form their own opinion on whether the party has acted reasonably, promptly and diligently. The kind of information that could be provided is a brief account of actions taken (for instance, an outline of what was done, when it was done, how it was done, by whom it was done, as appropriate to the case) covering the period in question.”
It was stated by the delegate in Fugro Airborne Surveys Corp v Geotech Airborne [2014] APO 23 (Fugro) at [20] that a chronology of the steps taken is usually a good starting point to assess whether a person has acted promptly and diligently:
“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.”
In Osmose New Zealand v Zelam Limited [2014] APO 49 (Osmose) the delegate noted at [18] and [22] that:
“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.”
The request for an extension of time
It is useful to look at the chronology of events referenced in the applicant’s submissions. I find it useful to set this out in a table so I have done so below.
| Date | Action | Work to meet filing requirements. |
| 22 Jan 2018 | Evidence-In-Support filed | Applicant (and applicant’s former attorneys) undertook an internal review of declarations |
| 17 April 2018 | Applicant filed a request to amend the specification. | |
| 24 April 2018 | Applicant requested a stay of the opposition | |
| 17 May 2018 | Opposition stayed and the amendments opposed | |
| 9 April 2019 | After evidence in reply to the opposition to the amendments was complete the applicant withdrew the opposed amendments, filed further amendments, and requested the stay be extended. | |
| 24 April 2019 | Stay extended in view of further amendments | |
| 28 March 2022 | Amendments refused | |
| 23 May 2022 | Applicant informed that evidence in Answer will be due by 6 June 2022 | |
| 2 June 2022 | Applicant files further amendments and requests a stay | From 2 June to 23 June 2022 the IP manager at the Applicant was away traveling, predominantly in the UK. |
| 6 June 2022 | Delegate proposes an undertaking by Opponent not to oppose the amendments | Applicant was not expecting the Opponent to agree to the undertaking |
| 14 June 2022 | Opponent made the undertaking | One declarant, Michael Celeban who was working with the IP Manager was on leave from 16 June to 24 June 2022. |
| 15 June 2022 | Delegate stayed the Opposition until 29 June 2022 | Contacted the Delegate on 16 June 2022 |
| 21 June 2022 | Meeting was conducted with the business group of the Applicant and its attorneys | |
| 27 June 2022 | Meeting held with the IP Manager and two experts. |
The period from 22 January 2018 to 17 April 2018
It is clear that after review of the evidence in support, including consultation between the applicant’s former attorneys, the applicant’s IP manager, and technical experts within the applicant, which I understand occurred between 22 January 2018 and 17 April 2018, little work was done on the preparation of the evidence in answer. Instead, it would appear that the applicant focused on the preparation of amendments during this period, with the applicant’s submissions at [7] indicating:
“the Applicant elected, without admission and for reasons of commercial expediency, to request an amendment to the claims of this application... The Applicant’s view is that these amendments also would result in certain of the issues raised by the evidence in support in the opposition being irrelevant... those issues would not need to be addressed in the Applicant’s evidence in answer, but only if the amendments were allowed and not successfully opposed.”
The stays
The letter from the delegate on 6 June 2022 asking the opponent to make an undertaking was similar to a letter sent by a delegate on 3 May 2018 in relation to the first amendments. The difference being that on 14 June 2022 the opponent made the undertaking whereas in 2018 the amendments were opposed.
The letter of 3 May 2018 stated:
“when amendments are made while an application is under opposition, it is typical that the only parties with an interest in opposing the amendments are the parties opposing the grant of the patent. Accordingly, if the opponent makes an undertaking not to oppose the amendments, the evidentiary stages of the opposition can continue on the presumption that the amendments will be allowed. Given that the due date for filing evidence in answer is imminent, a stay from 23 April 2018 until two weeks from the date a direction was made would be required for the filing of evidence in answer. If the opponent does not make an undertaking not to oppose the amendments, I would be inclined to stay the opposition until two weeks after the Commissioner notifies the parties of the allowance, refusal or withdrawal of the amendments, at which time evidence in answer would be due.”
The letter from the delegate of 6 June 2022 has an almost identical paragraph.
The applicant had close to a full three months from 22 January 2018 to 17 April 2018 and appears to have only reviewed evidence in support in this time and decided to propose amendments. If the opponent had agreed to the undertaking in the letter of 3 May 2018, I believe it is likely that the applicant would have similarly been seeking an extension of time to complete the preparation of evidence in answer then. I have no further information at hand that would make me believe otherwise apart from the fact that by July 2022 the applicant was still not in a position to meet the filing requirements. There appears to have been a reliance on a stay being made.
I note that there was a change in representation and of the applicant’s IP manager in mid-2020, which the applicant submitted led to significant discontinuity in the handling of the opposition, and the new attorneys and IP manager conducted a number of consultations in 2020 and 2021 in order to familiarise themselves with the matter. However, it is not apparent that this happened during a period of active preparation of evidence in answer or impacted upon any strategy in place for preparation of evidence.
The period from 28 March 2022 to 29 June 2022
The direction made on 24 April 2019 to stay the substantive opposition in view of the amendments that were refused in opposition stated:
“...the opposition be stayed until two weeks after the Commissioner notifies the parties that the presently filed amendments are allowed, refused or withdrawn, at which time evidence in answer would be due.”
Those amendments were refused with the decision on 28 March 2022: Stramit Corporation Pty Limited v Bluescope Steel Limited [2022] APO 21. Therefore, given the above direction it would seem reasonable for the applicant to operate as though evidence in answer would be due reasonably soon after the decision, as formal notification of refusal would follow at some point after expiry of the period to appeal the decision. In this regard, I understand that the IP manager consulted with the attorneys and internal experts regarding whether the original assessment regarding the evidence in support remained valid. It appears that it was decided after receiving the formal notification to file amendments again rather than progress the evidence in answer, submitting at [18] that:
“in answer to the notice dated 23 May 2022 the Applicant prepared and filed a new request to amend the claims of the present application on 2 June 2022 … the Applicant’s new amendment request endeavoured to correct the editorial omission from the proposed amendment filed on 9 April 2019.”
It appears that work began on the preparation of evidence in answer with the meeting of 21 June 2022. I note that agents have stated that the IP Manager for the applicant had been overseas in June, and that one of the declarants was away until 23 June 2022. However, there appears to have been no plan to prepare evidence in the absence of the IP Manager or the declarant in June. Furthermore, the decision to refuse the amendments was issued on 28 March 2022 and there is no indication that any efforts were made to prepare evidence in the period from 28 March 2022 until the first meeting on 21 June 2022. Instead, it appears there was an expectation that a stay would be granted with no contingency plan should that not be the case.
Is there an expectation that evidence be prepared during a stay?
It should be noted that the Applicant found the ultimate timeframe for evidence preparation wholly inadequate, referring to the two week period after the outcome of the amendments was known. The applicant was aware with the direction of 24 April 2019 that the amendments could be allowed, refused or withdrawn and that despite any one of these three outcomes, the evidence in answer would follow within two weeks of notification of the outcome by the Commissioner. At no time in the past two years did the applicant make representations that should the amendments be refused the two week period would not be sufficient. To the contrary, the stay provided by the direction of 24 April 2019 was in the form requested by the applicant.
I note that the delegate stated in the letter of 4 August 2022 that:
“while the claims on file were naturally indeterminate while the s104 opposition was on foot, any EIA is necessarily directed towards the evidence in support (“EIS”). While it is not unsurprising that the Applicant would seek to file EIA through the lens of the claims in question, the fact that a lengthy stay is put in place, as is the Commissioner’s usual practice in these circumstances, is considered sufficient to allow an Applicant to put in place contingencies to ensure the EIA is in fact filed upon expiry of the stay. That is the length of the stay is considered sufficient for the Applicant to undertake significant work on the EIA prior to the fate of the amendments being known, such that the EIA can be filed on time once the fate of the amendments is apparent. In that regard the Applicant has not provided anything to suggest it was in fact gathering evidence during the stay that expired on 6 June 2022, but rather appeared to be focused on amendments to the claims. It is not reasonable for an Applicant to focus on amendments to the exclusion of evidence gathering: see ExxonMobil Upstream Research Company v Shell Internationale Research Maatschappij B.V. [2014] APO 22 (“ExxonMobil”) at [19]. In view of this, simply stating that the deadline of 6 June 2022 was “not suitable for filing Evidence in Answer” in no way demonstrates that the Applicant was unable to file the EIA on time despite acting reasonably and promptly and diligently”
In my view a stay does halt proceedings, however, given that the applicant knew, regardless of the outcome, there would be two weeks to complete their evidence in answer once notified of the fate of the amendments then the stay does appear to be an excellent opportunity to progress the evidence to the extent reasonable, and indeed the stay per se operates to extend the time to file evidence in answer by virtue of subregulations 5.9(2)(b) and 5.9(5)(c). It is difficult to see how it is reasonable for a party to fail to utilise the period of the stay to progress its evidence to the extent possible/necessary, knowing that evidence is due upon expiry of the stay. Nor is it reasonable for the applicant to argue that the two weeks concerned is inadequate after expiry of that period, when the applicant did not protest the nature of the direction that brought that period into play prior to the direction being made.
Has the applicant made all reasonable efforts to comply with all relevant filing requirements? Was the failure to file the evidence despite prompt and diligent action at all times?
Importantly, it is necessary to consider the applicant’s conduct over the totality of the evidentiary period. It is clear from the submissions that the strategy pursued in this opposition by the applicant was to focus on amendments rather than the preparation of evidence in answer. This meant that the applicant was relying on stay pending the outcome of the last set of amendments being granted, despite there being no guarantee of this. Indeed, given that the opponent made an undertaking not to oppose the amendments, a further lengthy stay was not granted.
Given that it would appear only a review/assessment of evidence in support had taken place from 22 January 2018 to 17 April 2018 and then a decision to focus on amendments rather preparation of evidence in answer until 21 June 2022, I do not consider this to be making all reasonable efforts to comply with the requirement to file evidence in answer. Instead, it would appear to be relying on a strategy of amendments and stays at the expense of preparation of evidence in answer.
A similar issue arose in ExxonMobil Upstream Research Company v Shell Internationale Research Maatschappij B.V. and this was outlined to the applicant in the letter of 4 August 2022. In that case the Deputy Commissioner stated:
It is readily apparent that the information provided by Shell’s attorney is inadequate to demonstrate that Shell has acted promptly and diligently toward the preparation of evidence. It seems that Shell’s efforts have been directed primarily toward preparing amendments to the claims and the extent to which attention has been given to the collection of evidence is not at all clear.
This is not to say that it is inappropriate for an applicant to pursue such amendments in the light of evidence in support however it is not in my view consistent with an applicant acting promptly and diligently at all times for it to focus on amendments to the exclusion of evidence gathering or for it to assume that the amendments will produce a stay which will result in the deferment of the evidentiary stage or indeed that the amendments will induce the opponent will withdraw.
Rather I would expect an applicant to demonstrate that it had promptly pursued amendments and that it otherwise took reasonable steps to prepare evidence to address the opposition at least to the extent that it was relevant to the claims as proposed to be amended. If such steps were taken in the present case these are not at all apparent.[1]
[1] [2014] APO 22 at [18]-[20]
In the current case I have only been told that evidence in support was reviewed in the original evidentiary period. There are no further submissions on whether any evidence was prepared on the proposed amendments or what prompt and diligent actions led to the amendments being filed. Nor is there any specific information on what steps were taken to meet the filing requirements. While a reasonable plan for the preparation of evidence may take account of, or be thwarted by, absence of key personnel, the absence of key personnel surrounding the due date for filing evidence in answer does not seem to have arisen in the context of such a plan, and there is a dearth of information about the applicant’s actions at all times during the period for filing evidence in answer as a whole. Consequently, I am not satisfied the applicant failed to file evidence in answer despite acting promptly and diligently.
Are there exceptional circumstances?
The applicant submitted that in the event that the hearing officer does not find the above circumstances warrant an extension based on subregulation 5.9(2)(a) then they believe an error or omission was made by the Commissioner enlivening subregulation 5.9(2)(b). The applicant referred to a phone call between the Attorney for the applicant and a Delegate of the Commissioner on 16 June 2022. I believe that phone concerned the possibility of a request for an extension of time from 29 June 2022 instead of the withdrawn request from 6 June 2022 and a general explanation of the process involved with amendments filed during opposition. I fail to see any error or omission by the Commissioner, nor do I see how this conversation could have caused an inability to file evidence in time. Even if it resulted in the extension being requested from 29 June 2022 that does not mean that efforts to prepare evidence in answer did not need to be made before that time.
Discretionary considerations
The Commissioner only has discretion under reg 5.9(2) when she is satisfied that the party has made all reasonable efforts to comply with the filing requirements and they have acted promptly and diligently at all times. I am not so satisfied and I therefore have no discretion to allow an extension of time.
Conclusion
I am not satisfied that all reasonable efforts have been made to comply with the filing requirements nor am I satisfied the onus of demonstrating prompt and diligent action on behalf of the applicant has been discharged. I refuse the extension of time.
Keith Wagg
Delegate of the Commissioner of Patents
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