Timtech Chemicals Pty Ltd v Osmose (Australia) Pty Ltd - [2008] APO 13

ABSTRACTS OF DECISIONS
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No. 2003302613 in the name of OSMOSE (AUSTRALIA) PTY LTD

Title: Surface treatment for wood and wood products

Action: Opposition under Section 59 of the Patents Act by TIMTECH CHEMICALS PTY LTD and an application for an extension of time under Regulation 5.10(2) to serve Evidence-in-Support

Decision: Issued 28 May 2008.
Abstract

Found that the opponent had provided insufficient explanation for the delay in filing evidence which would support a case justifying the requested extension of time but that a satisfactory explanation was provided on further questioning. Regarding the public interest the nature and significance of the evidence sought to be adduced would clearly favour the grant of an extension of time. In the matter of the private interest of the parties, the opponents’ interests are best served by the grant of an extension, whereas the applicant’s interests are best served by a refusal of the extension. The effect of any delay on the efficient and orderly administration of the Patent Office lay against allowing the extensions, but this was not considered to be significant.
Finally after due consideration of all relevant matters, the granting of an extension of time to 10 June 2008 to the opponent to file evidence in support was found to be appropriate in all the circumstances.
In the matter of the request for extension of time I found that the opponent did not provide a proper explanation for the delay in filing of evidence in support. This was provided at the hearing after questioning. If adequate explanations had been provided for the delay, there was every possibility that the applicant would not have opposed the request for extension to file evidence in support. However I determined for the request that the grant of an extension was justified in all the circumstances. Also I considered that the statement of grounds and particulars provided a clear indication that there was a serious opposition in train. Hence, considering all circumstances, no award of costs was made and each party was required to bear their own costs.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No. 2003302613 by Osmose (Australia) Pty Ltd, opposition under section 59 by Timtech Chemicals Pty Ltd and objection to an application under regulation 5.10(2) for an extension of time in which to serve Evidence-in-Support.

BACKGROUND

Patent application 2003302613 in the name of Osmose (Australia) Pty Ltd (henceforth Osmose) was filed on 5 December 2003, examined and accepted on 6 July 2007.
A notice of opposition was filed by Timtech Chemicals Pty Ltd (henceforth Timtech) on 11 September 2007. A Statement of Grounds and Particulars was filed on 10 December 2007. Arch Wood Protection Pty Ltd and Weyerhaeuser Australia Pty Limited filed notices of opposition on 18 October 2007 and 19 October 2007 respectively and Statements of Grounds and Particulars on 18 January 2008 and 21 January 2008 respectively. Evidence in support was due to be filed by Timtech on 11 March 2008. By a letter dated 10 March 2008 the opponent requested an extension to 10 June 2008 to file evidence in support. The applicant objected to the application for an extension of time and requested a hearing in the matter.
The matter was heard in Canberra on 16 April 2008. Osmose was represented by Michael Molins, patent attorney, Molins & Co, Sydney. Timtech was represented by Peter Fisher, counsel, accompanied by Meron Lewis of Fisher Adams Kelly, Brisbane. Both parties appeared by telephone.
Submissions by the parties
The parties provided written submissions and also made oral submissions via telephone at the hearing. I shall refer to those submissions wherever relevant in my decision.
DECISION
The law on extensions of time
The time for serving evidence in support of an opposition is 3 months from the date of serving the Statement of Grounds and Particulars (regulation 5.8). This time can be extended under regulation 5.10(2):
(2)       The Commissioner may:
(a)       on the application of a party in the approved form; and
(b)       on such reasonable terms (if any) as the Commissioner specifies:
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 paragraph 5.4(1)(a).
This provision must be read in conjunction with regulation 5.10(5):
(5)       The Commissioner must not give a direction under subregulation (1) or grant an application under subregulation (2) or (4) unless the Commissioner:
(a)if he or she proposes to grant an application by a party - is reasonably satisfied that the other party has been notified of the application; and
(b)if he or she proposes to act on his own motion - ensures that the parties are notified of the proposed action; and
(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, and extension of time or the serving of evidence is appropriate in all the circumstances.
Consequently, it is a prerequisite to any decision that the Commissioner must ensure that the other party has been notified, and that both parties have had the opportunity to make representations. In the present case the other party has been notified, and all parties have been given the opportunity to make representations.
An extension can only be granted if the Commissioner is reasonably satisfied that it is appropriate. In exercising this discretion I am guided by the decisions of Burchett J in Ferocem Pty Ltd v Commissioner of Patents (1994) AIPC 91-057; 28 IPR 243, Sackville J in A Goninan & Co Ltd v Commissioner of Patents (1997) AIPC 91-330; 38 IPR 213 and Goldberg J in National Starch & Chemical Co v Commissioner of Patents (2001) AIPC 91-697, 50 IPR 398. The general principles that flow from these decisions are:
a)The power is discretionary:     Regulation 5.10 confers a broad discretion, which cannot be reduced to imperative compliance with particular requirements. It is necessary to give genuine and proper consideration to all relevant considerations. (Ferocem at AIPC 38,208; IPR 247-8, Goninan at AIPC 39,434; IPR 220)
b)Explanation of delay: The reasons why the evidence was not served earlier are a relevant consideration, but a satisfactory explanation is not a mandatory requirement. (Ferocem at AIPC 38,207-8; IPR 247)
c)The public interest:     The public interest in determining a serious opposition on its merits is a relevant consideration. (Goninan at AIPC 39,435-6; IPR 222)
*         In order to do this, it is necessary for the Commissioner to form a view as to the nature of the evidence that it is sought to adduce, and the significance of that evidence for the opposition proceedings. (Goninan at AIPC 39,438; IPR 225-6)
*         The significance of the evidence is assessed having regard to any relevant material available, not just the evidence itself. (National Starch at [33])
*         The public interest is not protected merely because some evidence has already been served. (Goninan at AIPC 39,438; IPR 225)
d)The interests of the party seeking the exercise of discretion:   The interests of the party seeking the exercise of discretion are a relevant consideration. (Ferocem at AIPC 38,208; IPR 247)
e)The interests of other parties: It is relevant to consider the disadvantage to the other party of delays in determining the opposition, and the effect of delays on the efficient and orderly administration of the Patents Office. (Ferocem at AIPC 38,208; IPR 247, Goninan at AIPC 39,436; IPR 222)
Explanation of the delay
In their application for extension of time Timtech stated:
1.Further time is required for the Opponent to finalize its Evidence-in-Support in this matter.
2.In recent months, an expert witness has been identified and initial discussions have been conducted. Initial comments have been provided by the expert witness.
3.Additional time is required for the receipt of further comments from the expert witness, the drafting of the expert witness comments into the required statutory declaration format and execution and service.
4.The Opponent continues to work assiduously towards finalization and service of Evidence-in-Support.
Timtech’s written submissions prior to the hearing (filed 7 April 2008) added the following matter to the explanation of the delay. I have summarised the relevant portions as follows:
·As evidenced from the statement of grounds and particulars novelty and inventive step have a major role in the opposition and hence gathering of evidence must be undertaken in a careful and well considered manner.
·Timtech’s expert witness is a busy person involved in business, academia and consulting, who has not been able to dedicate large portions of time to this matter. He also resides remotely from Brisbane and thus is not available at all times for interviewing and the review of prior art
When specifically questioned at the hearing, the opponent expanded on the above statement as follows:
·The application relates to a narrow field in which it has proved difficult to identify a suitably skilled independent expert witness.
·The witness, now identified is Dr John French, an adjunct professor at a Sunshine Coast university and a resident of that area.
·Dr French has academic, business and consultancy obligations that restrict his availability. Consequently the process of interviewing him proven difficult and the gathering of the evidence delayed.
·At this point an interview has taken place with Dr French.
·Dr French is currently attempting to corroborate the prima facie publication dates of certain non-patent literature documents identified in the Statement of Grounds and Particulars. Evidence of their dates of publication is not available in Australia so Dr French has been engaged to contact overseas libraries to garner this evidence.
·The opponent was unwilling to provide documentary evidence of Dr French’s ongoing availability and stated that it considered that provision of that level of evidence at a first extension of time was irregular, and that a statement from the attorney that efforts are being made to handle the matter in a timely manner has in the past proved sufficient.
·The opponent is seeking from their expert his views as to:
othe common general knowledge in the field at the priority date,
othe construction of the specification and claims of the application,
othe construction of the cited documents, and
othe novelty and inventiveness of the claims in the light of the cited documents
The applicant responded both in writing and orally, which I have summarised as follows:
·Circumstances justifying an extension of time have not been clearly identified.
·There is no indication of why “initial discussions” have not progressed more quickly or have been in any sense, delayed or hindered.
·Additional time is sought but no specifics of why the opponent may have been delayed, hindered, inconvenienced or otherwise prevented from moving forward.
·The opponent appears to be skirting the issue of whether or not their previous work has been assiduous.
The opponent has identified a large number of documents in the Statement of Grounds and Particulars relevant to issues of novelty and inventive step. The opponent has also listed three matters that they allege constituted part of the common general knowledge at the relevant date in Australia indicating that evidence will be adduced to support the same. The opponent has indicated that independent witnesses in the relevant art are scarce and that the availability of the witness chosen is limited due to the witness’s other commitments. They have also referred to remote location of the witness. The explanation of the delay in the application for extension of time does not clearly indicate any matters which prevented the opponent from progressing the preparation of evidence in support. The statement that, “In recent months, an expert witness has been identified and initial discussions have been conducted. Initial comments have been provided by the expert witness”, does not show any serious effort by the opponent to expedite matters. Further, in this modern day and age of e-mail, video conferencing, etc. the remote location of the witness should not present a barrier to the preparation of evidence. However the detailed explanation provided on further questioning has shown that a serious effort is being made given the paucity of independent witnesses (not shown to be incorrect by the applicant). Further the extent of work to be done by the single witness (establishment of common general knowledge, construction of the citations, construction of the opposed specification and claims, etc.) given the documentation listed seems to be fairly extensive. Overall I am satisfied, given the information now made available, that there is a proper explanation for the delay.
The Public Interest
The applicant submitted that in view of Goninan (supra) the delegate needs to consider the nature and significance of the evidence sought to be adduced. They further stated that, “The Opponent has provided no information whatsoever regarding its evidence or its significance and it is therefore impossible for the Commissioner to consider any public interest capable of being balanced against the interests of the parties.”
The opponent submitted, “It is well established that the public interest calls for a balance in opposition proceedings between expeditious processing and said opposition being dealt with on its merits. In order to determine the opposition on its merits the Commissioner or her delegate must be able to consider the nature and significance of the evidence. It is also in the best interest of the public to prevent unnecessary restriction of the activities of other parties from using technology that is arguably already known.” They also reiterated the teaching of Ferocem (supra) that, it is a matter of “public interest that a serious opposition by a person entitled in fact to oppose the grant of a patent should be dealt with on the merits, rather than it should be shut out in consequence of a failure in procedure, lamentable though the failure may be.”
In order to determine the extent to which the public interest impacts on determining a serious opposition on its merits I have to assess the nature of the evidence (that it is sought to adduce) and the significance of that evidence on the current opposition proceedings. The opponent had only filed a Statement of Grounds and Particulars in this matter prior to its request. This has raised matters of novelty, inventive step, section 40 issues and entitlement. Supporting arguments have been provided for section 40 and entitlement issues and sixteen documents (including patent documents) and alleged common general knowledge have been cited for novelty and lack of inventive step. Having considered the Statement of Grounds and Particulars I am satisfied that a serious opposition is in train even though the opponent has not yet filed their evidence in support.
The grounds of novelty and inventive step would require expert evidence for establishing the state of the art and what constituted the common general knowledge in Australia at the relevant date (see National Starch (supra) at para 29). I consider that the filing of any evidence in support which addresses serious issues of novelty and inventive step is likely to be of high significance for a proper determination of the opposition and, therefore, definitely in the public interest. I find that a refusal of the extension would work against a proper determination of the opposition and thus go against the public interest.
Interests of the Opponent
The opponent's case would clearly be prejudiced if I were to refuse the extension and thus preclude it from serving evidence in support of the opposition. The stages of the serving of evidence in answer and evidence in reply would then proceed in the absence of arguments and expert evidence from the opponent in the matters of novelty, inventive step, section 40/fair basis and entitlement. This could potentially impact on the rights of the opponent and public at large in terms of the monopoly finally granted. The opponent's interests clearly lie in a proper determination of the validity or otherwise of the patent application and a clear indication of the monopoly ground that they cannot encroach upon. I conclude that the opponent's interests lie in obtaining an extension of time to enable it to file evidence in support of its opposition.
Interests of the Applicant
The private interests of the applicant in this matter will best be served when it is able to defend its patent application. A proper determination of the opposition (either a grant/refusal/suggested amendments to the specification) will help it with determining future actions in respect of its patent application. At this juncture the applicant has only the notice of opposition and a Statement of Grounds and Particulars to consider. In the absence of detailed submissions from persons skilled in the art for the opposition, the applicant is disadvantaged in that it does not have the full case before it that it has to answer. Also any unnecessary protraction of the opposition proceedings is to the applicant’s disadvantage, as it cannot proceed to a full commercial exploitation of its patent application. I conclude that a delay in the proceedings is clearly against the interests of the applicant.
Interests of the Patent Office
The effect of a delay arising from the extension sought on the efficient and orderly administration of the Patent Office lies against allowing the extension, but this is not a significant consideration.
Expeditious Disposal
The public interest requires that oppositions should be dealt with expeditiously. The opponent had indicated that one significant factor delaying the filing of evidence in support was the establishment of publication/accession dates for the documents identified for the purposes of novelty and inventive step. They contended that technical libraries had the material available but were unable to provide a firm accession date. The opponent had asked their witness to use his overseas contacts to try and determine publication/accession dates in overseas libraries. The applicant suggested that they could accept the dates provided on the documents as prima facie accession dates to expedite matters. The opponent saw that this could considerably reduce the time required to finalise their evidence in support and sought the delegate’s view on how the Commissioner would treat such a step if taken by both parties to expedite matters. The Commissioner has to deal with the evidence filed for an opposition on its merit. In such matters corroborated evidence carries a higher weight than uncorroborated evidence. The potential evidence under scrutiny here could comprise documents listed by the opponent in their Statement of Grounds and Particulars. Some of these documents may have a publication date stated on the document itself which is a specific date or year of publication. The issue here is whether there is supporting evidence to show that such a document became publicly available on a particular date. If the applicant accepts the date on the document as the publication date in Australia then this evidence will be considered as establishing a publication date.
Is the Extension of Time appropriate in all the circumstances?

I shall now consider the various factors and how they impact on a final decision in this matter. The explanation of the delay in the application for extension of time does not clearly indicate any matters which prevented the opponent from progressing the preparation of evidence in support. However the detailed explanation provided on further questioning has shown that a serious effort is being made given the paucity of independent witnesses (not shown to be incorrect by the applicant). Further, the extent of work to be done by the single witness (establishment of common general knowledge, construction of the citations, construction of the opposed specification and claims, etc.) given the documentation listed seems to be fairly extensive. Overall I am satisfied, given the information now made available, that there is a proper explanation for the delay.
Regarding the public interest, on a proper consideration of:
·the statement of grounds and particulars,
·the nature of the evidence the opponent seeks to adduce, and
·the significance of that evidence for opposition proceedings,
I found that an extension of time would clearly be in the public interest.
I did find that a satisfactory explanation had been provided belatedly by the opponent for the delay in filing evidence in support. I find that the interests of the opponent as weighed up against those of the applicant are fairly equal. The interests of the Patent Office are not of major significance. I have determined that a serious opposition is in train and that the evidence likely to be adduced, at a later stage, which addresses serious issues of novelty and inventive step would be of high significance for a proper determination of the opposition and therefore definitely in the public interest. The applicant submitted that if I were to grant an extension of time, then only a short Ferocem type extension should be granted to enable the opponent to file any evidence they have at hand. The applicant questioned the need for a three month extension in view of the apparent lack of effort on the opponent’s part to expedite matters. I have considered the matter and in view of the information provided by the opponent at the hearing regarding matters they are currently progressing with a single witness I am satisfied that the request for a three month extension is justified. Considering all relevant matters, I find that the granting of an extension of time to the opponent until 10 June 2008 to allow for the filing of evidence in support would be appropriate in all the circumstances. At the time of issuing this decision, I am not aware of the opponent having filed any evidence. Consequently I grant the opponent an extension of time up to 10 June 2008 to file evidence in support of its opposition.
CONCLUSION
In the matter of a request for extension of time to file evidence in support by the opponent Timtech Chemicals Pty Ltd, I have determined that an extension of time be granted up to 10 June 2008 to file evidence in support.
COSTS
The power to award costs, which is based on section 210 and regulation 22.8, is discretionary and consequently I must take all relevant considerations into account.
The opponent made submissions that costs should follow the event. The applicant argued that the opponent’s failure to provide valid reasons for seeking an extension of time justifies the award of costs to the applicant.
I have found that the opponent did not provide a satisfactory explanation for the request for an extension of time. Detailed explanations were only provided on further questioning. It is quite likely that had the applicant been provided with these explanations they would not have opposed the application. Further, the statement of grounds and particulars has raised serious grounds of novelty and inventive step and sixteen documents have been identified as being relevant to these matters. Clearly a serious opposition is in train and the applicant is fully aware of this. Considering all relevant circumstances I do not make an award of costs and direct that each party bear its own costs in this matter.
Jacob Elijah
Delegate of the Commissioner of Patents
28 May 2008
Patent attorneys for the applicant : Molins & Co, Sydney
Patent attorneys for the opponent : Fisher Adams Kelly, Brisbane