Terumo Corporation v B.Braun Melsungen AG
[2009] APO 17
•4 September 2009
ABSTRACTS OF DECISIONS
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No. 2006200679 in the name of B. Braun Melsungen
Title: Spring clip as needle tip protection for a safety IV catheter
Action:Objection by B. Braun Melsungen Inc. to a request for an extension of time under section 223 by Terumo Corporation
Decision: Issued 04 September 2009
Abstract
The Statement of Grounds and Particulars was sent one day late by facsimile. Despite submissions that no consent had been given to transact communications electronically it was found that there was nonetheless an implied consent because there had been a history of the Commissioner sending facsimiles to the Patent Attorney throughout the conduct of the case. Sending the SGP by facsimile constituted service.
The evidence established that the assistant for opponent’s attorney forgot to fax a copy of the SGP to the applicant in timely manner. Forgetting to perform an act constitutes the most basic of errors. It is clear that this error was causative of the delay.
Section 223 extension of time granted.
Costs awarded against B. Braun Melsungen.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No. 2006200679 by B. Braun Melsungen and an objection to Terumo Corporation’s application for a section 223 extension of time to file a Statement of Grounds and Particulars
BACKGROUND
Patent application 2006200679 was filed on 17 February 2006 in the name of B. Braun Melsungen (hereafter Braun). It claims divisional status from AU 783650, filed 4 May 2001.
The application was advertised accepted on 20 November 2008 and a Notice of Opposition was filed by Terumo Corporation (hereafter Terumo) on 20 February 2009. Under regulation 5.4, the opponent then had 3 months to serve a copy of their Statement of Grounds and Particulars (SGP) on the applicant. This set the deadline for serving the SGP at 20 May 2009.
Terumo served their SGP on 21 May 2009, outside of the required time.
An application for an extension of time under sections 223 (2) and 223 (2A) was made by the Opponent on 21 May 2009, with supporting evidence in the form of Statutory Declarations made by Mr Joe Tik Mok, filed on 1 June 2009 (hereafter Mok declaration) and Ms Amanda Kathryn Ojurovic, filed on 1 June 2009 (hereafter Ojurovic declaration). Following an invitation by the delegate, Braun objected to the allowance of the extension. At the hearing Terumo’s application under section 223 (2A) was withdrawn.
The matter was heard in Canberra on 4 August 2009. The opponent was represented by Mr David Clark, assisted by Mr Joe Mok, both of Phillips Ormonde Fitzpatrick Patent Attorneys, Melbourne. Mr Clark and Mr Mok appeared by telephone. The applicant chose not to appear and relied on written submissions made by Mr Leon Allen of Davies Collison Cave, Patent Attorneys, Melbourne.
THE EXTENSION OF TIME
The application for extension of time relies on the Ojurovic and Mok declarations. Mr Mok is a trainee patent attorney and Ms Ojurovic a secretary, both (at the time) with Blake Dawson Patent Attorneys, Sydney. Blake Dawson were responsible for and had carriage of the care and conduct of the present opposition by Terumo. The relevant chronology of events is summarized from the Declarations as follows:
15 May 2009 Mr Mok prepared and emailed a letter to Terumo enclosing the final draft of the SGP in relation to the opposition. The emailed letter stated that “unless you have further comments on the amended section of the SGP, we will serve and file the SGP by the due date of 20 May 2009”.
20 May 2009 No further comments were received from Terumo. Ms Ojurovic was instructed by Mr Mok that the SGP was to be served on that day on the applicant via facsimile to the applicant’s attorney Davies Collison Cave. Ms Ojurovic “forgot to send the SGP to Davies Collision Cave via facsimile before leaving the office for the day, and therefore inadvertently omitted to serve the SGP on that day”.
21 May 2009 Ms Ojurovic informed Mr Mok that the SGP had not been served. A letter enclosing an application for an extension of time was sent to IP Australia. The SGP was faxed to Braun together with a copy of the application for an extension of time at the applicant’s attorney via facsimile.
27 May 2009 Mr Leon K. Allen of Davies Collison Cave, Melbourne acknowledged receipt on 21 May 2009 of the SGP and an application for an extension of time to serve the SGP to both Blake Dawson Patent Attorneys and the Commissioner of Patents.
DECISION
Terumo have requested a one day extension of time under section 223 (2)(a) to file their SGP. The significance of Braun’s present objection lies in the fact that Terumo’s substantive opposition will be dismissed if the extension is refused.
The law on Section 223
Section 223 permits the extension of time periods in limited circumstances. The present request for extension is under section 223 (2)(a). Section 223 (2) reads as follows:
Where, because of:
(a) an error or omission by the person concerned or by his or her agent or attorney; or
(b) circumstances beyond the control of the person concerned;
a relevant act that is required to be done within a certain time is not, or cannot be, done within that time, the Commissioner may, on application made by the person concerned in accordance with the regulations, extend the time for doing the act.
I am guided by the following principles to be found in decided cases, conveniently summarised in Lazer Safe Pty Ltd and Commissioner of Patents [2001] AATA 967 at [11]
“(a) the statutory provision to extend time is beneficial in nature, and should be applied beneficially; (Re Sanyo Electric Co Ltd and Commissioner of Patents (1996) 36 APR 470 at 480)
(b) while the applicant has the burden of placing before the Tribunal the circumstances which it claims will justify the grant of an extension of time, that does not amount to a burden of proof and it is not appropriate that it should be so described; (Re Sanyo supra at 479)
(c) (i) for an extension to be granted, there must have been ‘an obvious error or omission’. Although there is no clear or complete meaning for the words "error or omission", (Kimberley-Clark v Commissioner of Patents & Anor (No.3) 13 IPR 56 (Federal Court of Australia) at 583-4) a distinction should be drawn between:
(A) errors or omissions affecting the carrying out of the parties' intentions; and
(B) the consequences of deliberate decision; (Total Peripherals Pty Ltd v IBM & Commissioner of Patents, AAT No. 13336 (1998) AATA 784 (30 September 1998)
(ii) an error or omission involves some type of flawed mental function in the carrying out of the parties' intentions and does not have to be "accidental or due to an inadvertent source"; (Outokumpu Harjavalta Metals Oy v WMC Resources Ltd (1996) 37 IPR 55 at 58).
(iii) errors or omissions resulting from faulty reflection, deliberation or mistake in judgment fall within the scope of s223; (Outokumpu; supra at 58)
(iv) error or omission may include a breakdown in procedure or a failure to exercise due diligence; (Oz Technology v Boral Energy Ltd (1999) APO 18 (2 March 1999)
(d) there must be a causal or [sic] connection between the error or omission and the relevant act that is required to be done within the stipulated time. In addition, the applicants for an extension must demonstrate that they had an intention to do the relevant required act, and than [sic] an error or omission on their, or their agent's behalf, reasonably could be said to have caused the failure to complete the relevant act in the time prescribed; (see Kimberly-Clark, supra at 579)
(e) (i) the balance of the relevant factors must favour the exercise of the discretion in favour of the applicant for an extension. The Commissioner, in balancing these factors, is entitled to proceed on the basis that it is "more important to consider the consequences of extending or refusing to extend time than to debate the reasons why the act was not done in time; (Re Sanyo, supra, at 479)
(ii) relevant factors include:
(A) whether there has been a frank, comprehensive and clear disclosure of all the circumstances relevant to weighing the discretionary consideration;
(B) whether a serious opposition has been foreshadowed;
(C) whether there has been undue delay in seeking an extension of time;
(D) the interests of the parties in refusing or granting an extension;
(E) the public interest in refusing or granting an extension.”
Has the Statement of Grounds and Particulars been filed?
10. Braun submits that the Commissioner of Patents is not able to grant an extension of time for Terumo to serve the SGP because the provisions of Section 223(2)(a) are not enlivened in the present circumstances. Braun submits
· the Commonwealth Electronic Transactions Act 1999 (hereinafter “the ETA”) provides for information in writing to be given to a person electronically if the person has given consent to the information being sent by way of electronic communication (Section 9(2)(d)). The consent may be implied consent that can be reasonably inferred from the conduct of the person concerned.
· in the present circumstances all correspondence from Terumo to Braun was by post until after the period for service of the SGP had expired
· that no consent to receive information in writing from Terumo via electronic means has been given
· service of the SGP has not been completed
· that sending the SGP by facsimile was not a “relevant act” which had to be done within a certain time and that as a result the Commissioner is not in a position to provide an extension of time for serving the SGP on Braun
11. At the hearing Terumo submitted that despite all previous correspondence being by post there was nonetheless an implied consent to transact communications electronically because there had been a history of the Commissioner sending facsimiles to Davies Collison Cave throughout the conduct of the case. As Davies Collison Cave has not at any point objected to this mode of transmission this has established an implied consent. The implied consent stems from a “general consent”.
12. I agree with Terumo. While no explicit consent had been given to provide information in writing via electronic means there is a clear history of the use of facsimile by Davies Collison Cave and the Commissioner. I further note that the use of facsimile by the Patent Attorney profession and the Commissioner in the conduct of everyday business (including the filing and service of documents) is commonplace.
13. Interestingly, on 27 May 2009 Braun acknowledged receipt of the SGP (21 May 2009) to both Terumo and the Commissioner. Braun have nonetheless asserted that service has not been effected. I find a tension between these points. For a party to confirm that they are in possession of a document and yet deny that it has been served does not to me seem a sensible approach. I find that there was an implied consent to sending the SGP by electronic means and that the SGP was served on 21 May 2009.
Was there an error or omission?
14. The present request for extension is predicated on Ms Ojurovic’s failure to serve the SGP as requested by Mr Mok. Ms Ojurovic declares that this was because “on 20 May 2009, I forgot to send the SGP to Davies Collison Cave via facsimile before leaving the office for the day, and therefore inadvertently omitted to serve the SGP on that day.”
15. It is my view that simply forgetting to perform an act constitutes the most basic of errors. There has clearly been an error or omission for the purposes of s223 of the Patents Act 1990.
Was the failure to lodge the Statement of Grounds and Particulars because of the errors?
16. Having found that there was at least one error or omission, the next question is whether the failure to serve the SGP in time was because of the error. It is sufficient that an error or omission contributed to cause the failure to do the act. The relationship is one of cause and effect. Normally the error will be seen to thwart an intention to do the act.
17. Prior to the final date for serving the SGP a number of events occurred at Blake Dawson. A letter to Terumo was drafted by Mr Mok, the letter was prepared by Ms Ojurovic and the letter emailed with the final draft of the SGP to Terumo. The letter invited comments to the draft SGP and confirmed that service would be timely effected on 20 May 2009. It is clear that Mr Mok and Ms Ojurovic intended to comply with the requirements for service. I am of the view that had Ms Ojurovic not forgotten, the SGP would have been served in time. Indeed, immediately following the recognition of the error the SGP was served and an extension applied for. I am satisfied that Ms Ojurovic’s mistake was causal in the failure to lodge the SGP.
Should the discretion be exercised?
18. I have found that there was at least one error or omission and that the opponent failed to effect timely service of their SGP because of the error(s). I must now consider whether to exercise the discretion to extend time. The relevant considerations are whether there has been a full and frank disclosure of all relevant circumstances; the interests of the parties in refusing or granting the extension; the public interest, including the question of undue delay.
19. Braun has submitted that Terumo have not provided a full and frank disclosure. They have cited as an example the lack of explanation of a normal procedure for monitoring or policing deadlines or of any breakdowns in this procedure. They contend that the Commissioner cannot exclude the possibility that there was a systematic disregard of deadlines or that there has been a lack of disclosure on the part of Terumo and Blake Dawson. I do not agree. Mr Mok and Ms Ojurovic’s Declarations clearly indicate a full awareness of the pending deadlines. Mr Mok and Ms Ojurovic have further demonstrated that appropriate action was taken up to and including part of 20 May 2009. It was only at the final step of service where the error occurred. I find that there has been a sufficient disclosure of the relevant circumstances.
20. The balance of interests of the parties strongly favours granting the extension. The consequence of refusing to grant the extension is dismissal of the substantive opposition. On the other hand, granting the extension will mean that the opposition to the grant of the patent will proceed, protecting the public interest that invalid patents are not granted. The SGP includes manner of manufacture, novelty, inventive step, clarity and fair basis as grounds. From a cursory look at the specification the documents cited appear relevant. A serious opposition appears to be in train. The delay in requesting the extension, once its requirement was determined was not undue. The extension is for one day, not a significant period by any standard.
21. Overall, it is appropriate to exercise the discretion in the present case.
CONCLUSION
22. The opponent has shown the existence of an error or omission that caused the failure to serve the SGP in time. I am satisfied that an extension of time under section 223 (2)(a) is appropriate. I grant the extension under section 223(2) (a).
23. The time for serving evidence in support of the opposition expires three (3) months after the date of the letter from the Commissioner notifying the parties of the grant of this extension.
COSTS
24. Terumo has successfully argued that the extension be granted. In matters before the Commissioner, costs generally follow the event. In this case, I see no reason to depart from this approach and award costs against Braun under Schedule 8 of the Patent Regulations.
Nicole Howard
Delegate of the Commissioner of Patents
04 September 2009
Patent attorneys for the applicant: Davies Collison Cave, Melbourne
Patent attorneys for the opponent : Phillips Ormonde Fitzpatrick, Melbourne
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