Taranis Power Group Pty Ltd v LAA Industries Pty Ltd;Allied Pumps Pty Ltd v LAA Industries Pty Ltd;Stephen Anderson v LAA Industries Pty Ltd - [2020] APO 41

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Taranis Power Group Pty Ltd v LAA Industries Pty Ltd;
Allied Pumps Pty Ltd v LAA Industries Pty Ltd;
Stephen Anderson v LAA Industries Pty Ltd
[2020] APO 41

Patent Application: 2017210650

Title:Motor starting and control system and method utilised by directly connected islanded reciproacting engine powered generators

Patent Applicant: LAA Industries Pty Ltd
Opponent 1: Taranis Power Group Pty Ltd

Opponent 2:  Allied Pumps Pty Ltd
Opponent 3:  Stephen Anderson
Delegate:  Dr A. Lim
Decision Date:  14 September 2020
Hearing Date:  Written submissions filed on 18 June 2020 and 25 June 2020

Catchwords: PATENTS – extension of time to file evidence in answer –subregulation 5.9(2) – whether applicant has made all reasonable efforts to meet filing requirements – whether applicant has acted promptly and diligently at all times – whether there are exceptional circumstances that warrant an extension – applicant has failed to discharge the onus of establishing the requirements of subregulation 5.9(2) have been met – extension refused

Representation: Patent attorney for applicant: Fidel Dela Paz of protectmyidea.com.au
Counsel for opponent 1: A. E. McDonald
Patent attorney for opponent 1: Neal Schutte of Patenteur Pty Ltd
Counsel for opponent 2: T. Cordiner, QC; M. Evetts, instructed by MinterEllison
Patent attorney for opponent 3: Stephen Anderson of Anderson IP

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2017210650

Title:Motor starting and control system and method utilised by directly connected islanded reciproacting engine powered generators

Patent Applicant: LAA Industries Pty Ltd
Date of Decision: 14 September 2020
DECISION
The request for an extension of time to file evidence in answer is refused.
For the avoidance of doubt, this decision serves as the notification under paragraph 5.8(4)(b) of the Patents Regulations 1991. Evidence in reply is due two months from the date of this decision.
Costs according to Schedule 8 are awarded against LAA Industries Pty Ltd for each opposition brought, separately, by Taranis Power Group Pty Ltd, Allied Pumps Pty Ltd and Stephen Anderson against the extension of time.
REASONS FOR DECISION
Background

The matters relate to requests for an extension of time to file evidence in answer for three separate oppositions regarding patent application number 2017210650 (the application). The application in the name of LAA Industries Pty Ltd (LAA) was examined and advertised accepted on 28 February 2019. A notice of opposition (NOP) to the grant of a patent was filed by three different parties (opponents) on 28 May 2019. The first NOP is in the name of Taranis Power Group Pty Ltd (Taranis). The second NOP is in the name of Allied Pumps Pty Ltd (Allied). The third NOP is in the name of Stephen Anderson (Anderson).
Each of Taranis, Allied and Anderson filed a statement of grounds and particulars (SGP) and accompanying documents referenced in the SGP on 28 August 2019. On 29 August 2019, a delegate of the Commissioner acknowledged receiving the SGP of all three opponents and directed that the documents that accompanied the SGPs will be treated as evidence in support of the opposition.
Evidence in support (EIS) was filed and completed by each of Taranis, Allied and Anderson on 28 November 2019.
Evidence in answer (EIA) was due on 02 March 2020. LAA requested an extension of time (EoT) of three months, until 02 June 2020, for filing the evidence in answer for each of the three oppositions. Three separate EoT requests, one for each of the three oppositions, were filed by LAA on 25 February, 27 February and 28 February 2020.
The declarations and exhibits filed in support of each EoT request are identical and summarised in the table below.

Declarant Exhibits Date/Document set Reference

Mark Vincent Keogh MK 1
MK 2
25 February 2020

First set of declarations and exhibits
Keogh #1

James Waterreus None Waterreus #1

Fidel Dela Paz FDP 1 Dela Paz #1

Mark Vincent Keogh MK 1-1 to 1-5
MK 2-1 to 2-2
MK 3
MK 4
MK 5-1 to 5-4
MK 6-1 to 6-4
25 March 2020

Second set of declarations and exhibits
Keogh #2

James Waterreus JW Waterreus #2

Fidel Dela Paz None Dela Paz #2

Mark Vincent Keogh MK 1
MK 2-1 to 2-9
MK 3
MK 4
01 May 2020

Third set of declarations and exhibits
Keogh #3

In order to understand the context in which the declarations are made, I note that Mr Mark Vincent Keogh is the managing director of LAA and also the managing director of UON Pty Ltd.[1] The application was originally filed in the name of UON Pty Ltd (UON) and was subsequently assigned to LAA who is now the applicant. UON is a sister company of LAA.[2] Mr James Waterreus is the principal engineer of both LAA and UON.[3] Mr Fidel Dela Paz who is the patent attorney for LAA in the current matter,[4] was also the patent attorney for UON in an opposition regarding patent application number 2017213531, in the name of Taranis, and opposed by UON (Taranis ’531 opposition).[5]
[1] Keogh #1 at [1], [7]; Keogh #2 at [3].
[2] Keogh #2 at [3].
[3] Wattereus #1 at [1].
[4] Dela Paz #1 at [1].
[5] [2020] APO 34.
Since the information filed by LAA in support for each EoT request is identical as is the period of extension—02 March 2020 to 02 June 2020—for convenience, I will deal with all three EoT requests collectively in this decision and refer to them as the “EOT”.
After LAA filed the EOT and the first set of declarations and exhibits dated 25 February 2020,[6] a delegate of the Commissioner considered the EOT and responded to LAA in a letter dated 11 March 2020. The delegate observed that the support for the EOT appears to be premised on the fact that (a) the declarants were involved in various activities during the period to file EIA, and (b) there are three concurrent oppositions afoot, and therefore LAA had insufficient time to gather the EIA in full. The delegate stated:
“…there is simply no explanation as to what has been done so far, when it was done and how long it took, with any explanation of delays, in particular how the activities concerned created delays in gathering evidence rather than a mere assertion that there was insufficient time.
I also observe that the lack of explanation of an overall strategy for the collection of evidence is an important consideration here…”[7]
[6] The declarations and exhibits are summarised in the table in paragraph [5] of this decision.
[7] Letter from a delegate of the Commissioner dated 11 March 2020, page 2.
Based on the information before him, the delegate was of the view that it was not appropriate to grant the EOT. The delegate invited LAA to address the matters outlined in his letter and to provide additional information to support the EOT.
LAA filed the second set of declarations and exhibits dated 25 March 2020.[8] The delegate of the Commissioner considered the additional information and then wrote another letter to LAA dated 17 April 2020. The delegate observed:
·There is no indication as to what actions LAA did to mitigate the known time constraints and responsibilities of Mr Keogh and Mr Waterreus so as to allow them to be able to file the EIA on time;
·There is very little information as to the manner in which Mr Keogh and Mr Waterreus approached the preparation of the EIA—how the work was actually done, when was the work done and how far they had got with the evidence—in order to assess whether LAA had acted reasonably, promptly and diligently at all times in compiling the EIA;
·It was unclear why, in view of the known constraints on their time, Mr Keogh and Mr Waterreus were spending significant amounts of time preparing for a one-day hearing for the Taranis ’531 opposition when the evidentiary periods of that opposition had finished in April 2019;
·It was unclear why Mr Waterreus was providing detailed evidence in response to the SGPs when all three opponents had filed EIS; and
·LAA’s claim that there are three concurrent oppositions afoot on the current application provides an unconvincing basis for exceptional circumstances that warrant an extension.
[8] The declarations and exhibits are summarised in the table in paragraph [5] of this decision.
The delegate was not satisfied that the EOT should be granted based on the information before him. However, in light of the above-mentioned observations he made, the delegate considered it was appropriate to allow LAA a further opportunity to provide more information to support the EOT before determining whether to grant or refuse the EOT.[9]
[9] Letter from a delegate of the Commissioner dated 17 April 2020.
In response to the delegate’s letter, LAA filed the third set of declarations and exhibits dated 01 May 2020.[10] Subsequently, a different delegate of the Commissioner considered the EOT and information filed and responded to LAA in a letter dated 25 May 2020 stating:
“Based on the applicant’s further information and the other information filed earlier in support of the extension of time I am now satisfied that it is appropriate to grant the extension of time on the basis that the applicant made all reasonable efforts to meet the time period and was unable to do so despite acting promptly and diligently.
I therefore intend to grant the extension subject to whether any of the opponents formally objects to the extension of time.”
[10] The declarations and exhibits are summarised in the table in paragraph [5] of this decision.
Taranis, Allied and Anderson all formally objected to the EOT and requested to be heard.[11] LAA, Taranis, Allied and Anderson filed written submissions on 18 June 2020. The parties subsequently filed reply written submissions on 25 June 2020. In the present case, it is convenient and appropriate to address the matters of all parties in one decision since the facts regarding LAA’s actions in regard to its approach to preparation and filing of EIA—which I will discuss below—are very similar, if not identical, in all three oppositions.
[11] Taranis wrote a letter to the Commissioner dated 28 May 2020. Allied wrote a letter to the Commissioner dated 01 June 2020. Anderson filed, on 01 June 2020, a request to be heard in relation to the EOT.
The applicable law
On 15 April 2013, the Intellectual Property Legislation Amendments (Raising the Bar) Regulation 2013 (No 1) (the Amendment Regulation) commenced. The Amendment Regulation significantly amended the Patents Regulations 1991 (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 evidentiary period 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.

These provisions have been considered by the Commissioner in TRED Design Pty Ltd v Julie- Anne McCarthy and Bradley McCarthy[12] (TRED) and Merial Limited v Novartis AG[13]. 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?

[12] TRED, [2013] APO 57; (2013) 105 IPR 291.
[13] [2013] APO 65; (2013) 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.

The Explanatory Statement accompanying the Amendment Regulation (the Statement) confirms the seriousness of this test:

“A major cause of protracted opposition proceedings is extensions to 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 5.9(3)):

The Commissioner must determine the length of the extended period having
regard to what is reasonable in the circumstances.

I note that paragraph (a) of subregulation 5.9(2) is concerned with actions of “the party”, which includes the actions of attorneys or agents.[14]
[14] TRED, [2013] APO 57; (2013) 105 IPR 291 at [29].
The application for extension of time
LAA submitted it was unable to prepare and file its EIA in time because of the following reasons:
·LAA was required to review three sets of EIS with many declarations and exhibits for three concurrent and separate oppositions in a three-month period, the time allocated for a typical opposition with a single opponent;[15]
·Investment of the Macquarie Group in the business of UON (Macquarie Group investment) and the due diligence related to this investment consumed a lot of Mr Keogh’s time in 2019;[16]
·The ongoing proceedings in the Supreme Court of Western Australia (Supreme Court matter) that UON is involved in against Taranis and a previous UON employee took considerable time within the evidentiary period;[17]
·The preparation for the hearing of the Taranis ’531 opposition on 19 February 2020 took significant time and preparation;[18]
·The business and time commitments of Mr Keogh and Mr Waterreus meant that they both had limited availability to work on the EIA;[19] and
·Scheduled annual leave and the Christmas shut down period during the evidentiary period caused delays in gathering information for the EIA. Mr Keogh stated that between 23 December 2019 and 05 January 2020, the Christmas shut down period, key personal (James Waterreus, principal engineer, and Carl Reid, a co-inventor) were on annual leave, and he also had prior scheduled annual leave from 01 February to 16 February 2020.[20] Mr Dela Paz had scheduled annual leave from 23 February to 29 February 2020 which had been booked on 12 September 2019.[21]
[15] LAA’s written submissions, filed 18 June 2020, at [7].
[16] LAA’s written submissions, filed 18 June 2020, at [30].
[17] LAA’s written submissions, filed 18 June 2020, at [33].
[18] LAA’s written submissions, filed 18 June 2020, at [34].
[19] LAA’s written submissions, filed 18 June 2020, at [24]-[29].
[20] Keogh #1 at [9].
[21] Dela Paz #1 at [2]; Keogh #1 at [10].
As previously explained, UON is a sister company of LAA and Messrs Keogh and Waterreus are employees of both LAA and UON. LAA submitted the availability of Messrs Keogh and Waterreus due to UON matters will affect their availability for LAA matters.[22] I consider it is reasonable to expect that UON matters will place time constraints on the availability of Messrs Keogh and Waterreus for preparing LAA’s EIA. However, I would note that LAA has described itself to have four fulltime staff in Australia and two fulltime staff in China, and a turnover of less than $10 million per year [23] UON is described to have an estimated turnover of $100 million per year.[24] Since UON is a sister company of LAA and noting the dual roles of Messrs Keogh and Waterreus in the companies, I consider it is reasonable to infer that the resources available to LAA would be more than company size itself would indicate. I also consider that the employees of LAA would not be unaware of the pressures of running oppositions and litigation, these being part of their responsibilities in UON matters. LAA also had the benefit of both a patent attorney and a solicitors’ firm. Therefore, I consider that LAA is not a business that was affected by limited resources, as was the case in Mineral Technologies Pty Ltd v Orekinetics Investments Pty Ltd (Mineral Technologies), where one person had the primary responsibility of maintaining the operations of the business.[25] Therefore, the considerations regarding limited resources of a business in Mineral Technologies do not apply in this case.
[22] LAA’s written submissions in reply to Anderson, filed 25 June 2020, at [6].
[23] LAA’s written submissions in reply to Allied, filed 25 June 2020, at [40].
[24] ibid.
[25] [2014] APO 63.
I will now summarise the facts with the relevant dates. I have identified this information in the various declarations and exhibits filed by Messrs Keogh, Waterreus and Dela Paz. I have included specific dates where these are known. I have placed the events in chronological order so far as I can determine it from the evidence.

Date Matter

19 December 2016 onwards Ongoing Supreme Court matter against previous UON employee.[26]

February 2019 to December 2019 Investment deal between Macquarie Group and UON commenced in February 2019 and was settled in December 2019.[27] From August 2019 to December 2019, Mr Keogh was heavily involved in the due diligence review related to the Macquarie Group investment.[28]

28 May 2019 Three notices of oppositions filed—one from each of Taranis, Allied and Anderson.

28 August 2019 SGP and accompanying documents filed by each of Taranis, Allied and Anderson.

After LAA received the SGPs and accompanying documents on 29 August 2019
Mr Keogh

·     reviewed the SGPs; and

·     started making notes on the ground of prior secret use with the help of Akiko Carlton, Associate Managing Director of LAA. [29]

Mr Waterreus

·     reviewed the SGPs and accompanying documents and noted two documents appeared relevant and the other documents were less relevant. He made notes regarding the documents and compared them against the features of LAA’s application.[30]

09 September 2019 A delegate of the Commissioner advised UON that its request to stay the Taranis ’531 opposition is refused. A hearing was subsequently scheduled for 19 February 2020.[31]

September 2019 to February 2020 Time was spent on preparations for the hearing of the Taranis ’531 opposition, scheduled for 19 February 2020.[32]

28 November 2019 EIS filed and completed by each of Taranis, Allied and Anderson.

29 November 2019 Mr Keogh contacted lawyer, Martin Bennett of Bennett & Co, who has been handling Supreme Court matter and the Taranis ’531 opposition, to seek advice.[33]

December 2019 Settlement of Macquarie Group investment deal on 02 December 2019. Finalisation of outstanding documents in December 2019 was characterised to have taken a lot of time.[34] There is, however, no information on actually how much time was taken to make the finalisation.

December 2019 Mr Waterreus was asked in December 2019 to assist with EIA.[35] He had availability to work on EIA 03-04, 10, 12, 17 December 2019.
A description of the nature of the work of Mr Keogh and Mr Waterreus from 03 December 2019 to 02 March 2020 is outlined in MK 3 and MK 4, filed 01 May 2020. Copies of MK 3 and MK 4 are reproduced in Annex A and Annex B of this decision.

02, 04 December 2019 Mr Dela Paz had availability to work on EIA.[36]

03-04 December 2019 Mr Keogh had partial availability to work on EIA.[37]

16-23 December 2019 Bellevue Mine project for UON—Mr Keogh makes a site visit as he was the only experienced person to oversee completion of work.[38]

23 December 2019 to 05 January 2020 Christmas shut down; on annual leave.[39]

12 January 2020, 14-16 January 2020, 20-24 January 2020 Mr Waterreus was available to work on EIA.[40]

14-16 January 2020, 20-24 January 2020 Mr Keogh had partial availability to work on EIA.[41]

14-16 January 2020, 20 January 2020 Mr Dela Paz had availability to work on EIA.[42]

28-29 January 2020 Mr Keogh facilitated training for General Motor Control operation.[43]

January 2020 Mr Keogh contacted two engineers who are experts in the field and approached them to assist in preparation of EIA. Both could not assist with preparation of the EIA by the due date.[44]

01 February 2020 to 16 February 2020 Mr Keogh on scheduled annual leave but was involved in the correspondence, submissions, replies and preparation of hearing for Taranis ’531 opposition.[45]

17-19 February 2020 3-day trip for hearing of Taranis ’531 opposition in Canberra on 19 February 2020.[46]

23 February to 29 February 2020 Mr Dela Paz on scheduled annual leave booked on 12 September.[47]

24, 26, 28, 29 February 2020 and 01 and 02 March 2020 Mr Keogh was available to work on EIA.[48]

24, 26, 27, 28, 29 February 2020 and 01 and 02 March 2020 Mr Waterreus was available to work on EIA.[49]

01 and 02 March 2020 Mr Dela Paz was available to work on EIA.[50]

25 February 2020 Request for EOT filed by LAA including first set of declarations and exhibits.

26, 27, 28 February 2020 and 01 and 02 March 2020 Amy Rumble from Bennett & Co was available to work on EIA.[51]

27 February 2020 and 01 and 02 March 2020 Martin Bennett and Taleesha Elder from Bennett & Co were available to work on EIA.[52]

02 March 2020
Evidence in answer due
Filed part of EIA in response to opposition by Taranis, Allied and Anderson. The documents filed include declarations and exhibits from:

·     Mr Keogh, Mr Waterreus and Mr Dela Paz for the opposition by Taranis;

·     Mr Waterreus and Mr Dela Paz for the opposition by Allied; and

·     Mr Waterreus and Mr Dela Paz for the opposition by Anderson.

03 March 2020 Filed part of EIA in response to opposition by Taranis, Allied and Anderson. The documents filed include declarations from Mr Keogh and exhibits for oppositions by Allied and Anderson. LAA explained that the documents were filed minutes after the due date of 02 March 2020 because of delays caused by email issues.[53]

05 March 2020 Filed part of EIA in response to opposition by Taranis, Allied and Anderson. The documents filed include exhibits from Mr Dela Paz for all three oppositions.

11 March 2020 Delegate advised he was not satisfied EOT should be granted and provided LAA an opportunity to provide more information.

25 March 2020 Second set of declarations and exhibits for EOT filed.

17 April 2020 Delegate advised he was not satisfied EOT should be granted and provided LAA a further opportunity to provide more information.

01 May 2020 Third set of declarations and exhibits for EOT filed.

25 May 2020 A different delegate advised intent to grant EOT.

28 May 2020 Taranis formally objected to EOT and requests to be heard.

01 June 2020 Allied and Anderson objected to EOT and requested to be heard.

02 June 2020
LAA files further declarations and exhibits as part of the EIA. The further documents filed included declarations from:

·     Mr Keogh dated 02 June 2020;

·     Mr Waterreus dated 02 June 2020;

·     Mr Dela Paz dated 02 June 2020;

·     Pavalan Jeeva dated 02 June 2020; and

·     Leighton Brunn dated 28 February 2020.

[26] MK 1-4, filed 25 March 2020.
[27] Keogh #2 at [7].
[28] Keogh #1 at [9].
[29] Keogh #2 at [2].
[30] Waterreus #2 at [2].
[31] Keogh #2 at [5]; MK 1-5, filed 25 March 2020.
[32] Keogh #2 at [5].
[33] Keogh #2 at [9]; MK 5-1, filed 25 March 2020.
[34] Keogh #2 at [7].
[35] Waterreus #1 at [5].
[36] MK 5-1, filed 25 March 2020.
[37] ibid.
[38] Keogh #2 at [8]; MK 2, filed 25 Feb 2020.
[39] Keogh #2 at [13].
[40] MK 5-1, filed 25 March 2020.
[41] ibid.
[42] ibid.
[43] MK 5-3, filed 25 March 2020.
[44] Keogh #2 at [14].
[45] Keogh #1 at [9].
[46] Keogh #1 at [10]; Exhibit MK 2, filed 25 Feb 2020.
[47] Dela Paz #1 at [2]; Exhibit FDP 1.
[48] MK 5-1, filed 25 March 2020; MK 3, filed 01 May 2020.
[49] MK 5-1, filed 25 March 2020; MK 4, filed 01 May 2020.
[50] MK 5-1, filed 25 March 2020.
[51] ibid.
[52] ibid.
[53] LAA’s written submissions, filed 18 June 2020, at [14], [37].
Facts about matters other than LAA’s EIA

The chronology set out above and the evidence show that the key matters apart from LAA’s EIA which concerned Messrs Keogh, Waterreus or Dela Paz included:
·the Macquarie Group investment in UON which commenced in February 2019 and was settled in December 2019;
·hearing of the Taranis ’531 opposition on 19 February 2020; and
·an ongoing Supreme Court matter against previous UON employee which commenced in December 2016.
Facts about LAA’s actions relating to EIA in the period after the three SGPs were filed, 29 August 2019 to 28 November 2019
Mr Keogh
From the chronology set out above and the evidence referenced therein, I infer Mr Keogh reviewed the SGPs and made notes sometime after LAA received these documents on 29 August 2019. Mr Keogh stated that he knew at the time Mr Waterreus was going to focus on evidence for lack of novelty and inventive step, Mr Dela Paz would assist with clarity and he would mainly focus on prior secret use. [54] It is unclear from the evidence whether or not Mr Keogh communicated his plans to Mr Waterreus and Mr Dela Paz, and if he did communicate his plans, there is no evidence when specifically did he do this. In any case, I do not consider Mr Keogh’s plans constitutes a strategy for collection of evidence. This is because Mr Keogh’s statements do not indicate that he considered the time it would take gather the evidence, any difficulties that may be anticipated or what approach LAA would take to manage the three concurrent oppositions.
[54] Keogh #2 at [2].
From the evidence the only action Mr Keogh took, in regard to work on the EIA, in the period from 29 August 2019 to 28 November 2019 is that he reviewed the SGPs and made notes on the ground of prior secret use with the help of Akiko Carlton, Associate Managing Director of LAA.[55] There is no evidence on how much time he spent reviewing the SGPs and making notes. There is also no evidence about nature or extent of his notes.
Mr Waterreus
[55] ibid.
From Mr Waterreus’ second declaration, I infer that sometime after LAA received the SGPs and accompanying documents on 29 August 2019, Mr Waterreus reviewed these documents and noted two documents cited in the SGPs appeared relevant. Mr Waterreus stated he made notes regarding the documents and compared them against the features of LAA’s invention.[56] It is unclear from Mr Waterreus’ declarations whether he made notes about all the documents cited in the SGPs, or only two, as Mr Waterreus goes on to say:
“The SGP also cited other less relevant documents and included other mentioned additional documents such as the SmartGen Controller information. However, at that time, there was no information on the context of how the Opponents were citing such information and how they will be used. I am familiar with most of the information in the additional documents and so no other preparation was required from me regarding that information.”[57]
[56] Waterreus #2 at [2].
[57] Waterreus #2 at [3].
Mr Waterreus does not indicate how much time he spent reviewing the prior art documents and making notes. There is no evidence about nature or extent of his notes.
Mr Waterreus further stated:
“I started preparation of points for my Evidence in Answer from the filed SGPs.
On 29 November 2019, Evidence in Support (EIS) was filed by the three Opponents. The context needed as mentioned above was not available until the Evidence in Support was filed. This provided a 3 month period up to 2 March 2020 for the Applicant to File Evidence in Answer.
On the 2nd December 2019, in addition to the two full time duties detailed in the paragraphs below, I started preparing Declarations in answer to the SGPs…”[58] (emphasis added)
[58] Waterreus #2 at [5]-[7].
It is unclear what work was actually done when Mr Waterreus prepared points for EIA from the SGPs and whether this was part of the task of taking notes when he reviewed the SGPs and accompanying documents sometime after LAA received the SGPs and accompanying documents on 29 August 2019. There is no further information about the nature and extent to the Mr Waterreus’ work on preparation of points for EIA.
The statements that Mr Waterreus was of the view there was no context regarding how the opponents were going to use the information filed as the SGP and accompanying documents, and that this context was only available when the EIS was filed,[59] seem to suggest that Mr Waterreus deferred any substantial work on the EIA until the EIS was filed. I think it is reasonable to infer this was the case. This interpretation would be consistent with Mr Waterreus’ statement that he started preparing declarations in answer to the SGPs on 02 December 2019, and also with the statement in his first declaration that he was asked in December 2019 to assist with preparation of the EIA.[60]
Mr Dela Paz
[59] Waterreus #2 at [3], [6].
[60] Waterreus #1 at [5].
There is no evidence that Mr Dela Paz worked on the EIA in the period from 28 August 2019 to 28 November 2019. There is also no evidence as to what steps LAA took to manage the three concurrent oppositions.
Facts about LAA’s action relating to EIA during the three-month evidentiary period for EIA, 29 November 2019 to 02 March 2020
I will now use the declarations and exhibits of Messrs Keogh, Waterreus and Dela Paz to determine what actions each declarant took during the three-month evidentiary period for EIA. Before I start, I note that there are discrepancies in regard to which day and how many days the declarants were available to work on the EIA. Mr Waterreus stated he started preparing declarations in answer to the SGPs on 02 December 2019 and had only 15 available days to review the SGPs and EIS and to prepare the declarations for his EIA.[61] Exhibit MK 5-1, filed 25 March 2020, indicates that Mr Waterreus was not available to work on the EIA on 02 December 2019 and the notes in the exhibit state he had 20 available days to work on the EIA. However, counting the number of available days, as indicated in the exhibit, revealed Mr Waterreus was available to work on the EIA on 21 days. Exhibit MK 4, filed 01 May 2020, also contains these discrepancies.
[61] Waterreus #2 at [7], [13].
In response to the opponents’ submissions,[62] LAA submitted that any error in the number of days stated as available for EIA work was an honest error.[63] I accept that the recollection of Mr Waterreus regarding the number of available days may have been imperfect. I also consider it reasonable to accept that Mr Waterreus started preparing his declarations on 02 December 2019. Whether or not I attribute additional days to Mr Waterreus' work on the EIA is not determinative to the conclusions in my decisions. Similarly, counting the number of available days for EIA work which were indicated for Messrs Keogh and Dela Paz revealed a one-day discrepancy with the total number as noted in the exhibits themselves.[64] These discrepancies are also not determinative to the conclusions of my decision. For my analyses, I think it is reasonable to count the number of days each declarant was indicated available to work on the EIA from Exhibit MK 5-1, filed 25 March 2020 and Exhibits MK 3 and MK 4, filed 01 May 2020. I note I have used Exhibit MK 5-1, filed 25 March 2020, to count the total number of days each declarant was indicated to have worked on the Taranis ’531 opposition because Exhibits MK 3 and MK 4, filed 01 May 2020, show only a subset of those days for which each declarant spent time on the Taranis ’531 opposition and when they were available to work on the EIA.
Mr Keogh
[62] Allied’s written submissions, filed 18 June 2020 at [81]; Anderson’s written submissions, filed 18 June 2020 at [8].
[63] LAA’s written submissions in reply to Allied, filed 25 June 2020 at [48].
[64] Exhibit MK 5-1, filed 25 March 2020; Exhibit MK 3, filed 01 May 2020.
From the chronology set out above and the evidence referenced therein, Mr Keogh contacted his lawyer, Martin Bennett from Bennett & Co, on 29 November 2019 to seek advice.[65] This was the day after the three sets of EIS were filed. Mr Keogh does not specify in his declaration whether the advice he sought was in relation to the EIA or other matters Mr Bennett and his company were assisting Mr Keogh with. The exhibits of the invoice itemisation from Bennett & Co were in relation to the Taranis ’531 opposition and the Supreme Court matter.[66] The evidence does not indicate when LAA retained Bennett & Co to work on the EIA.
[65] Keogh #2 at [9]; MK 5-1, filed 25 March 2020.
[66] MK 5-2, filed 25 March 2020.
A time schedule provided by Mr Keogh indicates that staff from Bennett & Co worked on the EIA on 26 February 2020, half a week before the due date of the EIA.[67] Mr Bennett and Ms Taleesha Elder were indicated to be available to work on the EIA on Thursday 27 February 2020, Sunday 01 March 2020 and Monday 02 March 2020.[68] Ms Amy Rumble was indicated to have been available to worked on the EIA on 26, 27, 28 February 2020 and 01 and 02 March 2020.[69] Mr Keogh stated in his declaration that Mr Bennett had very limited availability to work on matters related to the three concurrent oppositions.[70] Apart from reviewing the drafts of work done by Mr Keogh and Mr Waterreus on the EIA, the evidence does not provide any details as to what staff from Bennett & Co were requested to do, when they actually commenced work on the EIA, what they actually did in relation to the EIA and how much time they actually spent on the EIA.[71]
[67] MK 5-1, filed 25 March 2020.
[68] ibid.
[69] ibid.
[70] Keogh #2 at [10].
[71] MK 3, filed 01 May 2020; MK 4, filed 01 May 2020.
During the evidentiary period, Mr Keogh indicated that he had 11 days where he was partially available for EIA work and 6 days where he was available for EIA work.[72] Mr Keogh stated that the EIA work was done mainly after hours and at night.[73] Mr Keogh stated that:
“The EIA preparation work included a review of my qualifications, the history of UON, how the invention came about, identifying the need in the industry, identifying the problem to be solved, identifying the requirements for the solution, development of the invention, initial development, commencement of development, identifying the key people who assisted in the development, confidentiality arrangements regarding the invention, history of research and testing, description of UON’s test tank, history and outline of the facts regarding the hire to Onsite Rental Group, further changes to the invention as a result of the trial, and descriptions of the inventive concept, inventive step and how the invention works, along with the associated documents and diagrams.”[74]
[72] MK 3, filed 01 May 2020.
[73] Keogh #2 at [12]; MK 5-1, filed 25 March 2020; MK 3, filed 01 May 2020.
[74] Keogh #2 at [16].
Mr Keogh spent time on nine days in the period 29 November 2019 to 22 January 2020 reviewing the three sets of SGPs and EIS, made notes for the EIA and met with Mr Waterreus to discuss the EIA work both of them had done.[75] Mr Keogh then spent time on two days working on a draft towards the EIA on 23 and 24 January 2020.[76] A month later on 24 February 2020, Mr Keogh completed his draft towards the EIA in response to the opposition by Taranis.[77] He completed his draft towards the EIA in response to the oppositions by Allied and Anderson on 26 February 2020.[78] On 28 February 2020, Mr Keogh sent his drafts to Bennett & Co for review. Further work was done revising his drafts on 29 February 2020, 01 and 02 March 2020 before filing with IP Australia on 02 March 2020. In summary, Mr Keogh spent time in his 17 available days during the evidentiary period working on his part of the EIA—one day in November 2019, two days in December 2019, eight days in January 2020, four days in February 2020 and two days in March 2020.[79]
[75] MK 3, filed 01 May 2020.
[76] ibid.
[77] ibid.
[78] ibid.
[79] ibid.
Apart from providing the number of days Mr Keogh was available to do EIA and a general outline of the reviewing the SGP and EIS, making notes, starting and completing a draft of the EIA, the evidence does not provide any further details. There is no information about what Mr Keogh considered he needed to do in order to address the matters raised in the three sets of EIS, the time he anticipated it would take to gather the information to address these matters, the time he actually spent doing this on his available days, or a strategy that would be adopted to ensure the necessary information would be obtained such that the EIA would be filed on time.
A brief perusal of the declarations that were prepared by Mr Keogh and filed on 02 and 03 March 2020 as part of the EIA reveals that Mr Keogh’s declarations addressed matters in all three oppositions relating to the invention including how it developed and how it works, and the issues related to secret use raised in the opposition by Taranis .[80] As expected, the matters relating to the invention are the same in all declarations responding to the three opponents. There is no information about where Mr Keogh considered he was up to in the EIA work and what was the nature of further work intended to be done to complete the EIA in order to justify why a three-month extension of time was required to complete the EIA. There is also no evidence about the steps Mr Keogh took before 02 March 2020 to prepare the further declarations filed on 02 June 2020. The other documents in the application for EOT do not provide further assistance in this regard.
[80] Mr Keogh’s declarations that formed part of the EIA, filed 02 and 03 March 2020, were also filed on 01 May 2020 as Exhibits MK 2-1, MK 2-2 and MK 2-3.
Sometime in January 2020, Mr Keogh contacted two engineers who are experts in the field and approached them to assist in preparation of EIA. One possible expert did not have time available to complete the EIA by the due date.[81] The other possible expert was not available during the evidentiary period.[82] Despite multiple opportunities offered to LAA to provide more information, there has been no further information on exactly when in January 2020 the two engineers were contacted and the reasons for why they were contacted at this later stage.
[81] Keogh #2 at [14].
[82] ibid.
During the evidentiary period for EIA, Mr Keogh spent time on 15 days—12 days in January 2020 and 3 days February 2020—preparing for the one-day hearing of the Taranis ’531 opposition.[83] I note that the evidentiary period for the Taranis ’531 opposition had completed on 18 April 2019, more than 7 months prior to the commencement of the evidentiary period for EIA of the opposition for the current application.
Mr Waterreus
[83] MK 5-1, filed 25 March 2020.
From the chronology set out above and the evidence referenced therein, Mr Waterreus spent time on two of his available days, 03 December and 04 December 2019, reviewing the SGP and EIS from Taranis and made some notes. About a week later, on 10 December and 12 December 2019, Mr Waterreus spent time doing research on the SGP and EIS from Taranis.[84] The following week, on 17 December 2019, he started drafting his part of the EIA in response to the SGP and EIS from Taranis. Subsequently, on 12, 14 and 15 January 2020, nearly a month later, Mr Waterreus continued the work on the draft EIA in response to Taranis. He adopted a similar method of reviewing, researching the SGP and EIS from Allied and Anderson and drafting his part of the EIA in response. Mr Waterreus spent time on his 10 available days, in the period between 16 January 2020 and 28 February 2020, working on the EIA in response to EIS from Allied and Anderson before sending drafts of his work to Bennett & Co on 29 February 2020. He subsequently spent time on two days, 01 and 02 March 2020, revising his part of the EIA.[85]
[84] MK 4, filed 01 May 2020.
[85] ibid.
Mr Waterreus spent time in his 21 available days during the evidentiary period working on the EIA—5 days in December 2019, 9 days in January 2020, 5 days in February 2020 and 2 days in March 2020.[86] Apart from providing the number of days Mr Waterreus was available to do EIA and a general description of the reviewing, making notes, researching the SGP and EIS, starting and completing a draft of the EIA, the evidence does not provide any further details. There is no information about what Mr Waterreus considered he needed to do in order to address the matters raised in the three sets of SGPs and EIS, the time he anticipated it would take to gather the information to address these matters, the time he actually spent doing this on his available days, or a strategy that would be adopted to ensure the necessary information would be obtained such that the EIA would be filed on time.
[86] ibid.
Mr Waterreus stated that on 02 December 2019 he started preparing declarations in answer to the SGPs and he had limited time during the evidentiary period to review the SGPs and EIS.[87] Therefore, I conclude that Mr Waterreus spent his available time for EIA work, during the evidentiary period, addressing the matters contained in both the SGPs and the EIS to prepare the declarations filed on 02 March 2020. He took this approach of answering to the grounds in the SGPs even though the EIS had been filed. There is no information about where Mr Waterreus considered he was up to in the EIA work, what was the nature of further work intended to be done to complete the EIA and why a three-month extension of time was required. There is no evidence about the steps Mr Waterreus took before 02 March 2020, to prepare the further declarations filed on 02 June 2020.
[87] Waterreus #2 at [7], [13], [16]-[19].
During the evidentiary period for EIA, Mr Waterreus spent time on 26 days preparing for the one-day hearing of the Taranis ’531 opposition—14 days in January 2020 and 12 days in February 2020.[88] It is unclear exactly how much time Mr Waterreus actually spent on the Taranis ’531 opposition, what he actually did and the reasons for spending this amount of time since there is no evidence on these matters. However, the time Mr Waterreus spent on the Taranis ’531 opposition was clearly not insignificant.
Mr Dela Paz
[88] MK 5-1, filed 25 March 2020.
MK 5-1, filed 25 March 2020, indicated that Mr Dela Paz had time on 9 days to do EIA work during the evidentiary period. He stated that he prepared evidence which was filed on 02 March 2020.[89] However, there is no information when each part of the evidence was produced and how long it took to produce each part. There is no information about where Mr Dela Paz considered he was up to in the EIA work, what was the nature of further work intended to be done to complete the EIA and why a three-month extension of time was required. There is no evidence about the steps Mr Dela Paz took before 02 March 2020, to prepare the further declarations filed on 02 June 2020.
[89] Dela Paz #2 at [3].
Mr Dela Paz characterises his preparation of evidence to include gathering and filing of relevant documents, reviewing the declarations of Mr Rosewarne and Mr Spirovski, answering relevant points of the declarations with rebuttals, reviewing the relevant cited prior art, analysing the claims of the application and making comparisons of how the claims are novel over the references.[90]
[90] Dela Paz #2 at [4]-[5]; Mr Dela Paz’s declarations that formed part of the EIA, filed on 02 March 2020, were also filed on 01 May 2020 as Exhibits MK 2-7. MK 2-8 and MK 2-9 in support of the EOT.

Mr Dela Paz on was on scheduled annual leave from 23 February to 29 February 2020, and this leave was booked on 12 September 2019.[91]
[91] Dela Paz #1 at [2]; Exhibit FDP 1.
Exhibit MK 5-1 indicates that during the evidentiary period for EIA, Mr Dela Paz spent time on 7 days in February 2020 on the Taranis ’531 opposition.[92]
Has the party (and their attorney or agent) made all reasonable efforts to comply with all relevant filing requirements?
[92] MK 5-1, filed 25 March 2020.
In deciding whether a person has made all reasonable efforts to comply with all relevant filing requirements, it is necessary to understand the actions that they have taken (for instance, what was done, when it was done, how it was done, by whom it was done) covering at least the period in question, and the nature of the evidence that they are preparing.[93]
[93] TRED, [2013] APO 57 at [40]; (2013) 105 IPR 291.
The requirement in paragraph 5.9(2)(a)(i) imports a consideration of reasonableness of the relevant party’s conduct over the totality of the opposition proceedings, rather than its compliance with the particular evidentiary period in question, which is addressed by the specific requirement of paragraph 5.9(a)(2)(ii).[94] If a party has been prompt and diligent in relation to the preparation and filing of evidence, it will normally have made all reasonable efforts to comply.[95] An opinion as to the reasonableness, promptness and diligence of a party can be formed based on an explanation of what the party has done, when it was done, and how long it took, and an explanation of any significant delays.[96] Once the facts are understood, the question is whether the evidence preparation was undertaken promptly and diligently. However, that assessment must have regard to the full range of commitments the person has, and there is no requirement for a person to do the impossible.[97] However, a party must explain the circumstances in which they were operating in order for the Commissioner to take them into account.[98]
[94] Innovia Security Pty Ltd v Visual Physics LLC, [2014] APO 15 at [18]; (2014) 106 IPR 568.
[95] BASF SE v The Lubrizol Corporation, [2017] APO 10 at [16].
[96] TRED, [2013] APO 57 at [76]; (2013) 105 IPR 291; BASF SE v The Lubrizol Corporation, [2017] APO 10 at [20].
[97] Mineral Technologies, [2014] APO 63 at [30], [41]; TRED, [2013] APO 57 at [51].
[98] Mineral Technologies, [2014] APO 63 at [32]; TRED, [2013] APO 57 at [51].
I have previously set out the facts of what LAA has done in regard to work done towards the EIA. The facts raise a number of questions in my mind which I will now consider. In my consideration I have taken into account all the submissions and multiple declarations filed by LAA regarding the EOT. I have also considered all the submissions of Taranis, Allied and Anderson regarding the EOT.
Why did LAA persist with Messrs Keogh and Waterreus as declarants for the EIA despite their limited availability?
Mr Keogh stated that he is involved in the day-to-day running of both LAA and UON, and he mainly worked on the EIA after hours and during the night. [99] Mr Keogh also stated he is a licensed electrical contractor for statutory compliance for UON which required him to attend to unanticipated urgent matters which came up regularly and these matters took away from his time to attend to matters he had scheduled.[100] There is no further information about these urgent matters or how much of Mr Keogh’s time was consumed by these urgent matters. Mr Waterreus stated that EIA work was additional to his usual 5 am to 6 pm duties as an engineering manager and principal engineer for LAA and UON.[101] While I accept that Mr Keogh and Mr Waterreus had limited availability to work on the EIA and had to spend time after hours doing this work, this could have been expected given their known daily employment responsibilities. Given the regularity with which urgent matters arose for Mr Keogh in his role as an electrical contractor, I infer this demand on his time would have been known at the time LAA made its choice of experts. It is reasonable to infer that LAA had an expectation that Messrs Waterreus’ and Keogh’s other commitments would not prevent them completing their evidence without the need for an extension of time.
[99] Keogh #2 at [12].
[100] Keogh #3 at [2], [4].
[101] Waterreus #2 at [13].
Mr Keogh stated that being a co-inventor and managing director of LAA, he is the only person in the company who has first-hand knowledge of all the facts concerning the invention, its history, development and answering the ground of secret use. He also stated as preparing evidence was a task that was additional to his normal duties, he worked on the evidence outside of working hours as there was simply no other time available.[102]
[102] Keogh # 3 at [3].
Mr Waterreus was described to be chosen as LAA’s primary expert because of his role as principal engineer for both LAA and UON, has extensive experience in the field of the invention, and was also a primary expert in the Taranis ’531 opposition.[103] As part of the reasons for requesting a stay of the Taranis ’531 opposition, the invention of LAA’s current application was characterised as being “substantially the same invention as that claimed” in the application of the Taranis ’531 opposition.[104] Mr Wattereus was therefore stated to be already familiar with the invention in the current application and LAA wanted to “give him every opportunity to provide evidence”.[105]
[103] LAA’s written submissions in reply to Taranis, filed 25 June 2020, at [4].
[104] Exhibit MK 1-2, filed 25 March 2020, at item 8(l). Exhibit MK 1-2 is a letter from UON’s patent attorney, Mr Dela Paz, to IP Australia, dated 22 May 2019. The letter requested for a stay of the Taranis ’531 opposition and provided as part of the reasons the substantial similarity of the invention of the current patent application (2017210650) to that of Taranis’ patent application 2017213531. In the letter, UON submitted that it would be appropriate and necessary for the opposition to the current patent application to be heard and determined together with the proceedings of the Taranis ’531 opposition.
[105] LAA’s written submissions in reply to Taranis, filed 25 June 2020, at [4].
I consider that given the knowledge and expertise of Messrs Keogh and Waterreus, and their involvement with the invention of the current application, it was reasonable for LAA to persist with its choice of experts for the EIA which it considered appropriate.
Was it reasonable that Mr Waterreus spent time addressing matters in the SGPs when the EIS had been filed?
I also previously discussed that Mr Waterreus spent his available time for EIA work, during the evidentiary period, addressing the matters contained in both the SGPs and the EIS to prepare the declarations filed on 02 March 2020, after the EIS was filed.
Given the cost of engaging appropriate experts and drafting declarations, it may be reasonable for applicants to defer such actions until the EIS is filed.[106] However, an applicant who is seeking an extension of time to file EIA is reasonably expected to demonstrate that it had started considering how it would defend its case at an early stage.[107]
[106] Shelford Services Pty Limited v Baylor Research Institute, [2014] APO 20 (Shelford Services) at [18]; Sportingbet Australia v Tabcorp International Pty Ltd [2014] APO 21, (Sportingbet) at [28].
[107] ibid.
The delegate in Shelford Services also stated:
“Any significant gaps or delays in a chronology, where relevant action would generally be expected, should be explained. The nature of the delay and what was done to attempt to mitigate the delay would be a relevant consideration for an extension of time. An explanation of the unforeseen and what was done to mitigate that would generally be considered favourably. A failure to file evidence due to foreseen or foreseeable circumstances would generally not be considered favourably, and effort to address such circumstances in an application or submissions for an extension of time would generally be counter-productive.”[108]
[108] Shelford Services, [2014] APO 20 at [19].
In the present case, both Messrs Waterreus and Keogh are in-house experts and not external experts whom LAA had to consider engaging. Given the reasons previously discussed, I infer LAA made its choice of experts with the knowledge of the experts’ foreseeable work commitments and limited availability to work on the EIA. As also previously discussed, there is no evidence about the nature and extent of Mr Keogh’s and Mr Waterreus’ work on the EIA in the period before the EIS was filed. There is also no evidence regarding whether LAA had considered taking actions to mitigate the constraints on Messrs Keogh’s and Waterreus’ time to enable them to complete their part of the EIA on time. Therefore, I consider there is insufficient evidence to demonstrate that LAA had started considering how it would defend its case at an early stage.
In response to the issue, raised by the delegate, of why Mr Waterreus was providing detailed responses to the SGPs when the opponent had filed the EIS, [109] LAA explained that evidence not provided during the evidence period could not be raised at the hearing and LAA’s strategy was thorough and answered all points raised by the opponents, in the SGPs and the EIS declarations.[110] LAA’s overall strategy was submitted to be:
“Mark Keogh being co-inventor and Managing Director of LAA directed his evidence to the invention in general, its history and development, and answering the prior secret use ground. James Waterreus as the expert directed his evidence mainly towards novelty, inventive step and section 40 grounds. Fidel Dela Paz as the patent attorney directed his evidence towards filing of the relevant documents and rebuttals against the opponents Declaration points and an opinion as to the novel features defined in the claims.”[111]
[109] Letter of the delegate dated 17 April 2020.
[110] LAA’s written submissions, filed 18 June 2020, at [18]-[19].
[111] LAA’s written submissions, filed 18 June 2020, at [20].
I accept LAA’s explanation that it wished to address points in the SGPs in addition to the EIS. I consider that it is reasonable to expect that an applicant would wish to ensure issues, for example section 40 issues which could be raised in both the SGPs and EIS, were thoroughly addressed in the EIA.
However, this raises questions about the approach of Mr Waterreus. As previously discussed, I consider Mr Waterreus deferred any substantial work on the EIA until after the EIS was filed. Moreover, there is no evidence about the strategy he adopted after the EIS was filed. Since there is also no evidence on the nature or extent of Mr Waterreus’ work on the EIA before the EIS was filed, it is unclear whether Mr Waterreus could have taken advantage of any work he might have done before the EIS was filed when he worked on the EIA after the EIS was filed. To put it another way, I do not have enough information to assess whether Mr Waterreus’ overall approach in addressing both the SGPs and EIS was reasonable, prompt and diligent.
In response to Allied’s written submissions regarding the lack of detail regarding the work of Messrs Waterreus and Keogh in reviewing the SGPs and making notes in the period before the receiving the EIS,[112] LAA submitted that Messrs Waterreus and Keogh are engineers and do not record the exact times they take for the tasks they do unlike legal practitioners, and any notes made during these tasks contain confidential information of discussions between LAA employees which do not have to be produced.[113]
[112] Allied’s written submissions, filed 18 June 2020, at [56].
[113] LAA’s written submissions in reply to Allied, filed 25 June 2020, at [26], [29], [47].
More details regarding any work LAA’s declarants had done before receiving the EIS could have provided a context for assessing reasonableness, promptness and diligence of LAA’s actions, given the foreseeable circumstances LAA faced including the three concurrent oppositions. A person 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 about where the party has acted reasonably, promptly and diligently.[114] A brief account of what actions were taken, when it was done, how it was done, by whom it was done, as appropriate to the case could be provided.[115] The account could be framed in more general terms without disclosing any confidential information.
[114] TRED, [2013] APO 57 at [76].
[115] ibid.
Why did LAA contact additional experts in January 2020?
Mr Keogh stated that “it was not until January 2020 that we could refocus on contacting other possible expert witnesses” because he was handling the Macquarie Group investment, the Supreme Court matter and the Taranis ’531 opposition in the period between August 2019 and December 2019.[116]
[116] Keogh #3 at [5]-[7].
There is no information regarding when in January 2020 the experts were contacted. The only evidence is that two engineers were contacted in January 2020 and both could not assist in the preparation of the EIA by the due date.[117] This was at least one month after the EIS had been filed.
[117] Keogh #2 at [14].
In response to the opponents’ submissions that LAA had failed to contact potential experts until about half-way through the evidentiary period,[118] LAA submitted that part of the difficulty was that there are very few experts in the field in Australia who can provide relevant evidence due to the highly specialised area of the invention, and the highly competitive nature of the industry meant that experts would be unavailable because of commercial conflicts of interest.[119] LAA additionally submitted that any delay in contacting other potential experts included identifying such experts, ruling out those who were not available, not appropriate due to lack of relevant knowledge and experience, or not able to be an expert because of commercial conflict of interests.[120] LAA further submitted that the two engineers were contacted in January “with the view of obtaining their opinion.”[121]
[118] Taranis’ written submissions, filed 18 June 2020, at [20]; Allied’s written submissions, filed 18 June 2020, at [18]; Anderson’s written submission, filed 18 June 2020, at [13].
[119] LAA’s written submissions, filed 25 June 2020, in reply to Taranis at [5], in reply to Allied at [15], in reply to Anderson at [16].
[120] LAA’s written submissions, filed 25 June 2020, in reply to Taranis at [7], in reply to Allied at [17], in reply to Anderson at [18].
[121] LAA’s written submissions, filed 25 June 2020, in reply to Allied at [18], in reply to Anderson at [19].
Given the reasons for LAA’s choice of Messrs Keogh and Waterreus as experts to prepare evidence, discussed previously, it would have been helpful for LAA to have provided the reasons for why it would start looking for additional experts half-way through the evidentiary period. The explanation that LAA submitted in response to the opponents raises the question of why LAA would be identifying additional experts at a later stage rather than starting this process earlier. I infer from LAA’s submissions it was aware of the limited number of experts in the field and possible delays due to the work involved to engage suitable experts. Had LAA now realised that it had be unreasonable in its expectations of Messrs Keogh and Waterreus completing their evidence by the due date, given their work responsibilities?
There is no evidence that LAA requested or involved its patent attorney or solicitors to assist in identifying and contacting possible additional experts.
I consider that the evidence and submissions of LAA do not adequately explain the approach it took to its choice of experts and do not allow me to form my own opinion about whether LAA has acted reasonably, promptly and diligently.
What were the reasons for the limited availability of LAA’s patent attorney?
Apart from 7 days of scheduled leave in February 2020, there is very little information for why Mr Dela Paz, LAA’s patent attorney, had limited availability after the EIS was filed. [122] Mr Dela Paz submitted that his ability to work in the EIA was affected by the unavailability of Messrs Keogh and Waterreus, and he worked on the EIA during the evidentiary period.[123] However, there is no further information on what Mr Dela Paz actually did. There is also no information about his actions regarding any approaches that might have been considered for work on the EIA before the EIS was filed. Mr Dela Paz was also the patent attorney for UON in the Taranis ’531 opposition. Since Mr Dela Paz also had the benefit of knowing how the Taranis ’531 opposition was progressing, I infer he was aware of the foreseeable timelines of all four oppositions and in a position to anticipate the pressures of this situation. There is no evidence regarding what actions Mr Dela Paz took in the knowledge of these pressures, for example, whether he alerted LAA to these pressures, or raised with LAA the options it might wish to consider in regard to preparation of EIA. If Mr Dela Paz had limited availability to assist LAA with its EIA, it is unclear why LAA could not have employed more assistance at an earlier stage from the solicitors of Bennett & Co.
[122] Dela Paz #1 at [2]; MK 5-1, filed 25 March 2020.
[123] LAA’s written submissions in reply to Taranis, filed 25 June 2020, at [15].
It is unclear what were the reasons that led Mr Dela Paz, as a declarant for LAA, to be unable to complete his part of the EIA on time. Given the characterisation of the nature of his task for EIA work in LAA’s overall strategy, quoted above, it would seem the filing of the relevant documents, providing counter-arguments to assist in defending his client’s case and providing opinions as to the novel features defined in claims were part of the normal duties of Mr Dela Paz in his role as a patent attorney. There is no evidence that he faced conflicting pressures to the level as those expressed by Messrs Keogh and Waterreus.
I consider that the evidence and submissions of LAA do not adequately explain the actions its patent attorney took in relation to preparation of the EIA and do not allow me to form my own opinion about whether LAA has acted reasonably, promptly and diligently.
How did spending time on the Taranis ’531 opposition affect LAA’s ability to prepare EIA?
As previously discussed, the time Messrs Waterreus and Keogh spent on the one-day hearing for the Taranis ’531 opposition during the evidentiary period for the EIA was not insignificant—Mr Waterreus spent time on 26 days, and Mr Keogh spent time on 15 days. The time spent on the Taranis ’531 opposition is relevant to the EOT matters to the extent this time spent took away from the experts’ limited available time for EIA. An understanding of the reasons for spending time on another opposition when the evidentiary period of that opposition had long passed could have assisted in providing a context for assessing the reasonableness, promptness and diligence of the actions of LAA in preparing its EIA.
In his letter dated 17 April 2020, the delegate of the Commissioner raised this issue with LAA and noted that preparation for a hearing would normally be largely undertaken by the party’s legal representatives rather than by the party or party’s witnesses. LAA’s written submissions explained that Mr Bennett was the lead legal representative who needed to be re-briefed on the background, development and technical aspects of the invention. Therefore, significant time was spent by Mr Keogh and Mr Waterreus, who had the necessary expertise, to provide Mr Bennett with this information.[124] LAA also submitted that Mr Bennett needed assistance in understanding the details concerning UON’s previous employee. [125] I infer that the LAA’s submission regarding details concerning UON’s previous employee relates to the ground of entitlement which was also heard during the one-day Taranis ’531 opposition.[126] It is unclear why Mr Bennett would need assistance on details concerning UON’s previous employee since these matters are also the subject of the ongoing Supreme Court matter for which Mr Bennett has care of.[127]
[124] LAA’s written submissions, filed 18 June 2020, at [34]; Keogh #3 at [13].
[125] ibid.
[126] [2020] APO 34; Keogh #2 at [3]-[4].
[127] LAA’s written submissions, filed 18 June 2020, at [33]; Keogh #3 at [4].

While I can accept that Mr Bennett needed to be briefed on the matters for the Taranis ’531 opposition before the hearing, spending time accruing over a 2 to 3-week period, seems disproportionate. This is because Mr Bennett would have had available to him the evidence which he could have read and then clarified any technical points with Messrs Waterreus and Keogh. It is also not clear whether LAA considered requesting Mr Dela Paz to assist with briefing Mr Bennett on technical matters for the Taranis ’531 opposition.
There is insufficient explanation for why Messrs Waterreus and Keogh diverted significant amounts of time to preparing for the one-day hearing for the Taranis ’531 opposition rather than use their limited available time to progress LAA’s EIA. LAA’s evidence and submissions do not adequately explain the actions its experts took in relation to preparation for the hearing for the Taranis ’531 opposition and do not allow me to form my own opinion about whether LAA has acted reasonably, promptly and diligently.
Did LAA have a clear strategy for filing its EIA on time?
The overall strategy LAA submitted indicates which parts of the EIA the declarants would work on but does not indicate how LAA would gather its evidence to ensure its EIA was completed and filed on time. LAA could have benefitted from providing more explanation about the strategy it adopted, particularly given the time constraints of LAA’s declarants. Since LAA only broadly described which parts of the EIA the declarants worked on, I have analysed the actions of LAA to understand how LAA approached the preparation of its EIA.
In response to Taranis’ submissions that LAA had prioritised the Supreme Court matter and the hearing of the Taranis ’531 opposition over LAA’s EIA work,[128] LAA submitted that “the work performed for all three matters was ongoing but priority is given to the matters facing immediate deadlines at the time.”[129]
[128] Taranis’ written submissions, filed 18 June 2020, at [26].
[129] LAA’s written submissions in reply to Taranis, filed 25 June 2020, at [22].
While I accept that giving priority to the matter with the immediate deadline is an approach a party can take when faced with multiple deadlines, it does not automatically follow that LAA’s strategy was one which progressed its EIA in a reasonable, prompt and diligent manner.
Unexplained declarations from additional declarants
The further evidence filed on 02 June 2020 include declarations from two additional declarants—Pavalan Jeeva, dated 02 June 2020, and Leighton Brunn, dated 28 February 2020. There is no explanation for why the declarations of Leighton Brunn were not filed by 02 March 2020. There is also no evidence regarding what steps these additional declarants took before 02 March 2020, to prepare the declarations, when they commenced work on their declarations and how long it took to prepare the declarations. There is also no explanation for why an extension of time is required to prepare these declarations.
There is no information regarding the additional declarants and the manner in which their declarations were prepared to enable me to assess whether LAA’s actions in regard to the preparation of these additional declarations were reasonable, prompt and diligent.
The EIA declarations themselves do not fully explain the manner in which LAA’s experts undertook the preparation of evidence
LAA submitted that in the three-month period, between 02 December 2019 and 02 March 2020, it was able to produce nine declarations for the three oppositions, and that “[t]he number of EIA Declarations prepared and filed, and the depth and thoroughness of each Declarations reflects the significant time and effort exerted to prepare each Declaration, which could only be prepared by the Applicant having acted with promptness and diligence at all times it was able to, to ensure the appropriate evidence was filed.”[130]
[130] LAA’s written submissions, filed 18 June 2020, at [14]-[15].
The documents filed by LAA on 02 and 03 March 2020 represent the end results of what LAA had accomplished in the three-month period, between 02 December 2019 and 02 March 2020. While the end result of producing documents tells me that LAA had made efforts in preparing its EIA, the documents themselves do not inform me about what actions were taken to gather the information for each part of the evidence, when each part of the evidence was produced, how long it took to produce each part of the evidence, whether there any difficulties encountered or any other issues that may have impacted preparation of the evidence.
A brief perusal of the declarations filed by LAA on 02 and 03 March 2020 reveals that there is overlap in content where the declarants address grounds or prior art citations which are common to all three separate oppositions. This is not unexpected given that LAA is defending the invention of the same patent application for all three oppositions. However, I consider the effort expended by LAA’s declarants in preparing the EIA was not three times that required for a single opposition.
I consider that the ability to produce the EIA declarations in itself does not adequately explain the manner in which the experts undertook their preparation of the evidence and does not allow me to form my own opinion about whether LAA has acted reasonably, promptly and diligently.
Other matters that concerned LAA’s declarants
As I previously discussed when LAA made the choice of experts for the EIA, it could reasonably have foreseen their responsibilities and time constraints, but still had an expectation that Messrs Keogh’s and Waterreus’ other commitments would not prevent them completing their evidence without the need for an extension of time.
All declarants have responsibilities in addition to providing evidence and are not expected to focus solely on the preparation of evidence. However, there is an expectation that the preparation of evidence proceeds reasonably, and that there will be diligence and promptness by the persons involved. A declarant is expected to work within that framework.[131]
[131] TRED, [2013] APO 57 at [52].
Mr Keogh stated that the Macquarie Group investment in UON was meant to be concluded in August 2019 but the process continued till December 2019 and consumed a lot of his time.[132] The investment deal was settled on 02 December 2019 but Mr Keogh stated there were outstanding documents to be finalised in December 2019 which took a lot of time. There is no evidence on how much time Mr Keogh spent finalising these documents and whether other employees of UON could have assisted with this. Whilst LAA could foresee from August 2019, around the time when the SGPs were filed, that Mr Keogh would be involved in an ongoing investment deal which impacted on his time to work on the EIA, there is no evidence that LAA took actions to mitigate this foreseeable constraint. There is insufficient evidence to allow me to form an opinion on whether the actions of LAA were reasonable, prompt and diligent.
[132] Keogh #2 at [7].
Mr Keogh stated that the Bellevue mine project for UON took up 8 days of his time in December 2019 because he was the only experienced person to oversee the completion of this work which UON had a contractual obligation to finish before 23 December 2019.[133] Since there was a contractual obligation to complete the Bellevue mine project by a certain date, I infer this date would have been known to LAA sometime in advance of December 2019. There is no evidence that LAA took actions to mitigate this foreseeable constraint on Mr Keogh’s time. There is insufficient evidence to allow me to form an opinion on whether the actions of LAA were reasonable, prompt and diligent.
[133] Keogh #2 at [8].
The Supreme Court matter that UON was involved in had been ongoing since December 2016.[134] Bennett & Co was the solicitors’ firm retained to handle this matter.[135] Mr Keogh stated that he spent time, as UON’s managing director, consulting with Bennett & Co on matters relating to the Supreme Court matter.[136] There is no evidence as to what Mr Keogh actually did, the time he spent on the Supreme Court matter and whether other employees of UON could have assisted. There is no evidence that LAA took actions to mitigate this foreseeable constraint on Mr Keogh’s time. There is insufficient evidence to allow me to form an opinion on whether the actions of LAA were reasonable, prompt and diligent.
[134] MK 1-4, filed 25 March 2020.
[135] Keogh #3 at [6], MK 5-2, filed 25 March 2020.
[136] Keogh #3 at [7].
I consider the scheduled leave of LAA’s declarants and the Christmas shut-down period were foreseeable events which ought not to have delayed the preparation of LAA’s EIA.
Overall
In the present case, I accept that Messrs Keogh and Waterreus had many demands on their time and consequently had limited availability to work on LAA’s EIA. Therefore, in the context of this case a key question I have to ask is whether LAA’s declarants used the time they had available to them to progress LAA’s EIA in a reasonable, prompt and diligent manner. In my overall determination I have considered the totality of LAA’s actions including how the declarants had used their available time to prepare LAA’s EIA and taken into account the realities of each declarant’s normal business and professional responsibilities to provide a context in which they operated. As noted previously, LAA is not a company affected by limited resources, it is not unaware of the pressures of being involved in patent opposition matters or litigation and it had the benefit of the advice of a patent attorney and a solicitors’ firm.
For the reasons discussed previously, there is not enough information to satisfy me that LAA had made all reasonable efforts to comply with the filing requirements of its EIA by the due date.
Was the failure to file the evidence despite acting promptly and diligently?
The matters discussed in relation to reasonableness are generally relevant to whether the party had acted promptly and diligently. While I acknowledge that LAA’s declarants made efforts in preparing the declarations which were filed in March 2020, there is insufficient explanation regarding a number of LAA’s actions which makes it difficult for me to assess whether LAA acted promptly and diligently at all times. Consequently, I am not satisfied that LAA had acted promptly and diligently at all times to ensure that appropriate EIA was filed within the required period.
Conclusion regarding an extension of time under paragraph 5.9(2)(a)
I am not satisfied that LAA had acted reasonably, promptly and diligently in filing evidence to warrant an extension under paragraph 5.9(2)(a).
Were there exceptional circumstances?

100. The Statement says:
“New subregulation 5.9(5) provides an inclusive list of circumstances that may be considered by the Commissioner as exceptional circumstances for the purpose of subregulation 5.9(2)(b).
A change in circumstance may not in itself be exceptional. For example, if a preferred expert becomes suddenly unavailable but other experts could be called on to complete the evidence in time, then the sudden loss of the preferred is not an exceptional circumstance.”

101. Some guidance as regarding what would be regarded as an exceptional circumstance, the delegate in TRED stated:
“The matters that are specified as exceptional circumstances are circumstances beyond the control of a party, an error or omission by the Commissioner, an order of a court and directions by the Commissioner. These matters give some guide to the other situations that would be regarded as exceptional circumstances: 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. This is consistent with the explanation in the Statement that the loss of an expert is not an exceptional circumstance.”[137]
[137] TRED, [2013] APO 57 at [64].

102. More recently, in UON Pty Ltd v Taranis Power Group Pty Ltd, the delegate considered that “a circumstance beyond the control of a party” has a characteristic of “something that could not have been anticipated and acted upon”.[138]
[138] [2019] APO 6 at [27].
103. LAA submitted that:
“having three concurrent oppositions, and considering the number, volume and length of the EIA Declarations filed by the three opponents which need to be reviewed, assessed and answered within the 3 month period after filing of the EIA, is an exceptional circumstance.”[139]
[139] LAA’s written submissions, filed 18 June 2020, at [39].

and
“the number, volume and length of the EIA [sic] Declarations filed on this date were beyond the control of the Applicant which prevented them from thoroughly reviewing and answering each of the EIS Declarations by the deadline.”[140]
[140] LAA’s written submissions, filed 18 June 2020, at [41].

104. Taranis and Allied have referred me to Sportingbet Australia v Tabcorp International Pty Ltd [2014] APO 21 (Sportingbet). In that case, the opponent had cited 67 prior art documents, amounting to 2,963 pages and had filed 325 pages of expert evidence with 730 pages of exhibited material.[141] The delegate in Sportingbet stated:
[141] Taranis’ written submissions, filed 18 June 2020 at [30]; Allied’s written submissions, filed 25 June 2020 at [30].
“Other than those circumstances explicitly identified in 5.9(5), the term ‘exceptional circumstances’ encompass matters outside the evidentiary process and outside the control of the party, where it would be unreasonable to insist on a party filing their evidence (TRED at [65]).
Many oppositions before the Commissioner involve a substantial body of evidence. Although it may be outside Tabcorp’s control, the nature and complexity of the evidence falls clearly within the evidentiary process. Therefore, I do not consider the evidence in these oppositions to constitute an exceptional circumstance.”[142]
[142] Sportingbet, [2014] APO 21 at [71]-[72].

105. I accept that having to face three concurrent oppositions presented difficulties to LAA and more work was involved in answering three sets of EIS. In the present case, however, there is overlap of the alleged grounds and the prior art citations in the three separate oppositions. As previously discussed, the work of preparing LAA’s EIA was not three times that required in a single opposition. Therefore, I consider the circumstances LAA faced were not to such a degree that they were simply unable to file their evidence on time or it would have been unreasonable to insist that they do so. The nature and complexity of the EIS before LAA and having to face three concurrent opponents would seem to be similar to the evidentiary processes encountered in other oppositions. I am not satisfied that the circumstances are exceptional.
106. In the present case, while LAA clearly has no control over there being three concurrent oppositions to its application, LAA clearly has control over its own actions to ensure that it could file its EIA on time. As discussed previously, LAA was on notice from 28 May 2019 that it was facing three concurrent oppositions. When the three SGPs were filed 28 August 2019, LAA was provided with information regarding the alleged grounds and prior art citations for the three oppositions. LAA could broadly anticipate the due dates for the SGPs, EIS and EIA as the process and timeline for filing documents is set out in the Regulations and it had the benefit of legal representation. I have also previously discussed that LAA could foresee the other commitments it had to face. I consider the circumstances LAA faced in the present case are not matters that could not have been anticipated and acted upon.
Conclusion regarding an extension of time under paragraph 5.9(2)(b)
107. I am not satisfied that there are exceptional circumstances that warrant an extension of time under paragraph 5.9(2)(b).

Conclusion
108. I am not satisfied that LAA has met the requirements of either paragraphs 5.9(2)(a) or 5.9(2)(b). LAA bears the onus of establishing the requirements of subregulation 5.9(2) are met. It has failed to do so. It follows that I cannot extend the time for filing evidence in answer.
109. I note that the documents which were filed as part of LAA’s EIA and filed out of time include:
·Declarations from Mr Keogh and exhibits for the oppositions by Allied and Anderson, filed 03 March 2020;
·Exhibits from Mr Dela Paz for all three oppositions, filed 05 March 2020; and
·Declarations from Messrs Keogh, Waterreus and Dela Paz, and declarations from the two additional declarants, filed 02 June 2020, for all three oppositions.

Even though I have refused LAA’s request for an extension of time to file its evidence, this does not necessarily mean that the documents filed out of time cannot be made available to the Commissioner in deciding the oppositions. Other documents may be introduced at any stage during the opposition proceedings by the Commissioner under regulation 5.23. While a party does not have a right to urge the Commissioner to make use of this power, the party can request the power be exercised. However, the power conferred by regulation 5.23 is discretionary. The discretionary process provided by regulation 5.23 is a separate process to the matter considered in this decision that I will not consider.
Costs
110. It is normal for costs to follow the event. I see no reason to depart from this approach. However, in this case there are three opponents. I award costs according to Schedule 8 against LAA for each opposition brought, separately, by Taranis, Allied and Anderson against the extension of time.
Dr A. Lim
Delegate of the Commissioner of Patents
Annex A: Exhibit MK 3, filed 01 May 2020, provided to describe the nature of the work done by Mr Mark Keogh (Mark)
Annex B: Exhibit MK 4, filed 01 May 2020, provided to describe the nature of the work done by Mr James Waterreus (Jim)
Page 1 of 2 of MK 4
Page 2 of 2 of MK 4

Declarant	Exhibits	Date/Document set	Reference
Mark Vincent Keogh	MK 1 MK 2	25 February 2020 First set of declarations and exhibits	Keogh #1
James Waterreus	None		Waterreus #1
Fidel Dela Paz	FDP 1		Dela Paz #1
Mark Vincent Keogh	MK 1-1 to 1-5 MK 2-1 to 2-2 MK 3 MK 4 MK 5-1 to 5-4 MK 6-1 to 6-4	25 March 2020 Second set of declarations and exhibits	Keogh #2
James Waterreus	JW		Waterreus #2
Fidel Dela Paz	None		Dela Paz #2
Mark Vincent Keogh	MK 1 MK 2-1 to 2-9 MK 3 MK 4	01 May 2020 Third set of declarations and exhibits	Keogh #3

Date	Matter
19 December 2016 onwards	Ongoing Supreme Court matter against previous UON employee.[26]
February 2019 to December 2019	Investment deal between Macquarie Group and UON commenced in February 2019 and was settled in December 2019.[27] From August 2019 to December 2019, Mr Keogh was heavily involved in the due diligence review related to the Macquarie Group investment.[28]
28 May 2019	Three notices of oppositions filed—one from each of Taranis, Allied and Anderson.
28 August 2019	SGP and accompanying documents filed by each of Taranis, Allied and Anderson.
After LAA received the SGPs and accompanying documents on 29 August 2019	Mr Keogh · reviewed the SGPs; and · started making notes on the ground of prior secret use with the help of Akiko Carlton, Associate Managing Director of LAA. [29] Mr Waterreus · reviewed the SGPs and accompanying documents and noted two documents appeared relevant and the other documents were less relevant. He made notes regarding the documents and compared them against the features of LAA’s application.[30]
09 September 2019	A delegate of the Commissioner advised UON that its request to stay the Taranis ’531 opposition is refused. A hearing was subsequently scheduled for 19 February 2020.[31]
September 2019 to February 2020	Time was spent on preparations for the hearing of the Taranis ’531 opposition, scheduled for 19 February 2020.[32]
28 November 2019	EIS filed and completed by each of Taranis, Allied and Anderson.
29 November 2019	Mr Keogh contacted lawyer, Martin Bennett of Bennett & Co, who has been handling Supreme Court matter and the Taranis ’531 opposition, to seek advice.[33]
December 2019	Settlement of Macquarie Group investment deal on 02 December 2019. Finalisation of outstanding documents in December 2019 was characterised to have taken a lot of time.[34] There is, however, no information on actually how much time was taken to make the finalisation.
December 2019	Mr Waterreus was asked in December 2019 to assist with EIA.[35] He had availability to work on EIA 03-04, 10, 12, 17 December 2019. A description of the nature of the work of Mr Keogh and Mr Waterreus from 03 December 2019 to 02 March 2020 is outlined in MK 3 and MK 4, filed 01 May 2020. Copies of MK 3 and MK 4 are reproduced in Annex A and Annex B of this decision.
02, 04 December 2019	Mr Dela Paz had availability to work on EIA.[36]
03-04 December 2019	Mr Keogh had partial availability to work on EIA.[37]
16-23 December 2019	Bellevue Mine project for UON—Mr Keogh makes a site visit as he was the only experienced person to oversee completion of work.[38]
23 December 2019 to 05 January 2020	Christmas shut down; on annual leave.[39]
12 January 2020, 14-16 January 2020, 20-24 January 2020	Mr Waterreus was available to work on EIA.[40]
14-16 January 2020, 20-24 January 2020	Mr Keogh had partial availability to work on EIA.[41]
14-16 January 2020, 20 January 2020	Mr Dela Paz had availability to work on EIA.[42]
28-29 January 2020	Mr Keogh facilitated training for General Motor Control operation.[43]
January 2020	Mr Keogh contacted two engineers who are experts in the field and approached them to assist in preparation of EIA. Both could not assist with preparation of the EIA by the due date.[44]
01 February 2020 to 16 February 2020	Mr Keogh on scheduled annual leave but was involved in the correspondence, submissions, replies and preparation of hearing for Taranis ’531 opposition.[45]
17-19 February 2020	3-day trip for hearing of Taranis ’531 opposition in Canberra on 19 February 2020.[46]
23 February to 29 February 2020	Mr Dela Paz on scheduled annual leave booked on 12 September.[47]
24, 26, 28, 29 February 2020 and 01 and 02 March 2020	Mr Keogh was available to work on EIA.[48]
24, 26, 27, 28, 29 February 2020 and 01 and 02 March 2020	Mr Waterreus was available to work on EIA.[49]
01 and 02 March 2020	Mr Dela Paz was available to work on EIA.[50]
25 February 2020	Request for EOT filed by LAA including first set of declarations and exhibits.
26, 27, 28 February 2020 and 01 and 02 March 2020	Amy Rumble from Bennett & Co was available to work on EIA.[51]
27 February 2020 and 01 and 02 March 2020	Martin Bennett and Taleesha Elder from Bennett & Co were available to work on EIA.[52]
02 March 2020	Evidence in answer due Filed part of EIA in response to opposition by Taranis, Allied and Anderson. The documents filed include declarations and exhibits from: · Mr Keogh, Mr Waterreus and Mr Dela Paz for the opposition by Taranis; · Mr Waterreus and Mr Dela Paz for the opposition by Allied; and · Mr Waterreus and Mr Dela Paz for the opposition by Anderson.
03 March 2020	Filed part of EIA in response to opposition by Taranis, Allied and Anderson. The documents filed include declarations from Mr Keogh and exhibits for oppositions by Allied and Anderson. LAA explained that the documents were filed minutes after the due date of 02 March 2020 because of delays caused by email issues.[53]
05 March 2020	Filed part of EIA in response to opposition by Taranis, Allied and Anderson. The documents filed include exhibits from Mr Dela Paz for all three oppositions.
11 March 2020	Delegate advised he was not satisfied EOT should be granted and provided LAA an opportunity to provide more information.
25 March 2020	Second set of declarations and exhibits for EOT filed.
17 April 2020	Delegate advised he was not satisfied EOT should be granted and provided LAA a further opportunity to provide more information.
01 May 2020	Third set of declarations and exhibits for EOT filed.
25 May 2020	A different delegate advised intent to grant EOT.
28 May 2020	Taranis formally objected to EOT and requests to be heard.
01 June 2020	Allied and Anderson objected to EOT and requested to be heard.
02 June 2020	LAA files further declarations and exhibits as part of the EIA. The further documents filed included declarations from: · Mr Keogh dated 02 June 2020; · Mr Waterreus dated 02 June 2020; · Mr Dela Paz dated 02 June 2020; · Pavalan Jeeva dated 02 June 2020; and · Leighton Brunn dated 28 February 2020.