Telstra Corporation Limited v Overture Services, Inc - [2006] APO 5

ABSTRACTS OF DECISIONS
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No. 776059 in the name of Telstra Corporation Limited

Title: Search System

Action: Application by Overture Services, Inc. for an extension of time under Regulation 5.10(2) to serve evidence in support, and objection thereto by Telstra Corporation Limited

Decision: Issued 24 February 2006.
Abstract

A serious opposition is foreshadowed, preparation of expert evidence in support has been progressed without undue delay and further time is needed to finalise expert evidence, the nature of which is of significance to determination of the opposition. Consequently, at this stage of the proceedings, the opponent’s and public’s interests in having the opposition proceed on its merits hold sway over the patent applicant’s and public’s interests in having the matter decided earlier and in a more efficient and orderly manner.
The extension of time to 25 February 2006 for Overture Services, Inc. to serve evidence in support is allowed.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No. 776059 in the name of Telstra Corporation Limited and an application under Regulation 5.10(2) for an extension of time to serve evidence in support of an opposition by Overture Services, Inc.

BACKGROUND

Patent application 776059 in the name of Telstra Corporation Limited (Telstra) was filed on 30 June 2000 as 55139/00 and was advertised accepted on 26 August 2004. A notice of opposition to the grant of the patent was filed by Overture Services, Inc. (Overture) on 26 November 2004. The statement of ground and particulars was served on 25 February 2005.
Overture applied for extensions, each of 3 months, to 25 August 2005 and 25 November 2005 in which to serve evidence in support, which were granted without objection. Telstra has objected to the instant application to extend the time for service of evidence in support by a further 3 months to 25 February 2006.
Both parties have relied on written submissions only. Mr. John Brass, patent attorney of Spruson&Ferguson, Sydney, represented Overture. Mr. David Webber, patent attorney of Davies Collison Cave, Melbourne, represented Telstra.
APPLICATION FOR EXTENSION OF TIME
4.   Overture’s first application for an extension of time under Regulation 5.10(2) to serve evidence in support of their opposition gave the circumstances and grounds as follows:

“Discussions have been held with a number of potential experts to assist in preparing the evidence in support. These discussions are continuing and further time is required to complete interviews and engage experts. One of the potential experts has been travelling overseas during the last month and has thus been unavailable.”
5.   Overture’s second application for an extension of time gives the circumstances and grounds as follows:

“Since the previous application for extension of time, two experts have been engaged.

One of the experts has not yet been provided with a copy of Australian Patent Application No. 776059 or any prior art documents in order to determine the expert’s view as to the common general knowledge in the field at the relevant time. A consequence of this approach is that it is relatively more time consuming. However, preparation of an initial Statutory Declaration from this expert has commenced.

The other expert has been overseas in recent weeks and is expected to shortly commence a review of Australian Patent Application No. 776059 and prior art documents.

For the foregoing reasons, further time is required to complete preparation of the Opponent’s evidence.”
6.   Overture’s third and instant application for an extension of time gives the circumstances and grounds as follows:

“One expert has been subject to unexpected additional work commitments due to promotion and has travelled overseas in the past 3 months. More time is thus needed to prepare this expert’s evidence.

Another expert has completed a review of the specification relating to Australian Patent Application No. 776059. Preparation of a declaration by this expert has progressed significantly in spite of the expert also travelling overseas during the past 3 months.

Partial evidence in support is being served on the Applicant. However, more time is needed to complete preparation of the Opponent’s evidence.”
GROUNDS OF OPPOSITION
7.   Overture's grounds of opposition are that
·the invention is not a patentable invention, in that it lacks the required threshold of inventiveness, is not novel and does not involve an inventive step
·the specification does not comply with s.40(2) and (3), and
·the nominated person is not entitled to the grant of a patent for the alleged invention.
with particulars having been provided in respect of the first two grounds of opposition, including reference to 20 documents and statements about common general knowledge.
RELEVANT LAW
8. The relevant provisions under the Patents Act 1990 for extending the time in which to serve evidence in support are subregulations 5.10(2) and 5.10(5) as follows:
(2)The Commissioner may extend the time within which the party may take a step prescribed in this Chapter (not being a step that is taken under regulation 5.3 or 5.3AA, paragraph 5.4(a) or subparagraph 5.8(1)(a)(i)):
(a) on the application of a party in the approved form; and
(b) on such reasonable terms (if any) as the Commissioner specifies; and
(c) after the party has served a copy of the application on the other party.
(5)The Commissioner must not give a direction under subregulation (1) or grant an application under subregulation (2) or (4) unless the Commissioner:
(a) …
(b) …
(c) in either case:
(i) gives the parties a reasonable opportunity to make representations concerning the application or proposed action; and
(ii) is reasonably satisfied that a direction, an extension of time or the serving of further evidence is appropriate in all the circumstances.
The law relevant to the determination of the instant matter has been conveniently elaborated as follows:
“(a)The broad discretion afforded by Regulation 5.10 cannot be reduced to insistence on imperative compliance with particular requirements;
(b)The exercise of this discretionary power requires proper, genuine and realistic consideration of all the relevant aspects that pertain to the application;
(c)The provision of a satisfactory explanation of the delay is a relevant consideration, but is not mandatory;
(d)The public interest in determining a serious opposition on its merits is a relevant consideration and must be balanced with the requirement that matters before the patent office should be dealt with in an efficient, orderly manner and not be unduly prolonged; and
(e)The interests of the opponent, the applicant and any other parties are a relevant consideration.”
[Kaiser Aluminium & Chemical Corporation v The Reynolds Metal Co (1969) 120 CLR 136; Ferocem Pty Limited v. Commissioner of Patents (1994) 28 IPR 243; A Goninan and Co Ltd v Commissioner of Patents and Another (1997) 38 IPR 213; National Starch & Chemical Company v Commissioner of Patents [2001] FCA 33]
SUBMISSIONS
Both parties provided written submissions only, which I will refer to where appropriate in my decision.
DISCUSSION
Telstra has submitted that the partial evidence in support and the instant application for extension of time to serve evidence in support were served on 30 November 2005 and 1 December 2005, respectively, both outside of the current time limit for filing evidence in support of 25 November 2005.
“Accordingly, the Opponent should show that special circumstances exist which prevented the application being made in time.”
I simply note that the application for extension of time was made in time with the Commissioner on 25 November 2005 and, as the application was served on Telstra on 1 December 2005, the Commissioner’s delegate is now considering extending the time limit as allowed for by paragraph 5.10(2)(c). Whether the partial evidence in support has been filed in time will be determined by the instant decision of the Commissioner’s delegate.
From the grounds and particulars of the opposition and from the explanation of progress in preparing expert evidence in support provided in the applications for extension of time, I consider that it is prima facie apparent that a serious opposition is foreshadowed. The circumstances presented by Overture in its application to justify the instant third application are consistent with the circumstances presented in its previous applications for extension of time and relate to preparation of expert evidence.
I refer to the following comments by Sackville J. in A Goninan and Co Ltd v Commissioner of Patents and Another (1997) 38 IPR 213:
“In order for the commissioner or his delegate to give proper, genuine and realistic consideration to the aspect of the public interest I have identified, it is necessary to consider the nature of the evidence the opponent seeks to adduce and the significance of that evidence for the opposition proceedings. I do not mean to suggest that the evidence has to be scrutinised in the same way as would occur at a hearing on the merits. But unless the delegate forms a view as to the issues addressed by the proposed evidence, and whether that evidence is likely to be important in the opposition proceedings, it is difficult to see how proper consideration can be given to the public interest in having such proceedings being determined on their merits.”
The presented circumstances of obtaining statutory declarations from expert witnesses are prima facie relevant to the grounds and particulars of the opposition. The disclosures of patent and other documents for the purposes of determining novelty under the Patents Act 1990 are as interpreted by the person skilled in the relevant art. Consequently, it is a necessary legislative consideration in s.59 opposition matters whether corroborated expert evidence is warranted and/or required to properly determine the claims of the opposed patent application and any anticipatory disclosures. [Ore Concentration Company (1905) Ltd v Sulphide Corporation Ltd (1914) 31 RPC 206; Bloch and Ilford Ltd’s Patent (1936) 53 RPC 92; The General Tire & Rubber Co v The Firestone Tyre and Rubber Company Limited & Others (1972) RPC 457; Populin v HB Nominees Pty Ltd (1982) 41 ALR 471] Similarly, for determination of inventive step under s.7 of the Patents Act 1990. Consequently, the nature of the evidence for which the extension of time is sought is inherently relevant to the determination of the opposition on its merits, at which determination the content of that evidence would be fully assessed to the extent appropriate.
The circumstances presented by Overture in its instant application are consistent with Overture’s submissions. Overture’s submissions do not change or supplement the circumstances presented in its application; Overture’s submissions presenting the difficulty in initially identifying relevant, appropriate and available experts, and detail of the circumstances of each of the experts including relevant dates, all of which act to corroborate the circumstances presented by Overture in its instant application.
The circumstances presented by Overture in its instant application relate to preparation of expert evidence in the form of statutory declarations. I refer to Re: Neville William Lyons (carrying on business as Mitty's Authorised Newsagency) v The Registrar of Trade Marks (1983) 78 FLR 217, where Beaumont J. said
" Further, I think that the delegate was entitled to have regard to the notorious fact that opposition proceedings usually involve the gathering of evidence from third parties and this usually takes considerable time."
While the matter before Beaumont J. was the delegate's decision in respect of an application for extension of time for the opponent to file evidence in support of their opposition to registration of a trade mark, the consideration before Beaumont J. is directly relevant to the instant consideration. Evidence, in the form of statutory declarations from appropriately skilled practitioners in the relevant industry(s), to establish the disclosure of an anticipatory document or the state of the common general knowledge, years prior at the priority date of the accepted patent claims, is also notorious for taking considerable time.
Overture’s instant application also includes the following statement in support:
“Partial evidence is being served on the Applicant.”
As submitted by Telstra, the partial evidence in support only comprises documents referred to in the Statement of Grounds and Particulars, being copies of documents D8 to D20 together with a straightforward covering statutory declaration. It is prima facie apparent that there has been undue delay in filing the partial evidence in support more than 9 months after the documents were listed in the Statement of Grounds and Particulars. Were the experts’ evidence being progressed in the same manner, it would be quite apparent that the instant application for extension of time should be refused. However, at this stage, I consider that the experts’ evidence in support is being progressed with due professional diligence and without undue delay.
While it is well known that the gathering of evidence from third parties in patent opposition matters usually takes considerable time, Overture 's instant application for an extension of time would extend the period for it to file evidence in support of its opposition from the initial 3 months provided in the legislation to 12 months in total. Such a delay is of serious concern, both to the patent applicant's interests and to the public interest of expeditious and efficient completion of matters before the Patent Office, and consequently obligates the continued attention of Overture in avoiding any unnecessary delays.
DECISION
In summary of my discussion above, I consider that a serious opposition is foreshadowed, preparation of the expert evidence in support has been progressed without undue delay and further time is needed to finalise the expert evidence, the nature of which is of significance to determination of the opposition. Consequently, at this stage of the proceedings, I consider that the opponent’s and public’s interests in having the opposition proceed on its merits hold sway over the patent applicant’s and public’s interests in having the matter decided earlier and in a more efficient and orderly manner. Accordingly, I grant the opponent Overture Services, Inc an extension of time to 25 February 2006 in which to file evidence in support.
COSTS
The normal practice is that costs should follow the event. In the present matter, I have decided that the extension of time was allowable in accordance with the determined law on the circumstances and considerations presented in, or known at the time of, the application for extension of time. Consequently, I award costs to Overture Services, Inc.
Bill Major
Delegate of the Commissioner of Patents
24 February 2006
Patent attorneys for the applicant: Davies Collison Cave, Melbourne
Patent attorneys for the opponent: Spruson&Ferguson, Sydney