TRED Design Pty Ltd v Julie-Anne McCarthy and Bradley McCarthy
[2013] APO 57
•11 November 2013
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
TRED Design Pty Ltd v Julie-Anne McCarthy and Bradley McCarthy [2013] APO 57
Patent Application: 2006301867
Title:Vehicle recovery and traction ladder
Patent Applicant: Julie-Anne McCarthy and Bradley McCarthy
Opponent: TRED Design Pty Ltd
Delegate: Dr S.D. Barker
Decision Date: 11 November 2013
Hearing Date: 22 October 2013 by written submissions
Catchwords: PATENTS – extension of time to file evidence in support – new requirements as a result of "Raising the Bar" – reasons for extension do not contain sufficient information to enable an independent determination of reasonableness and diligence – extension refused
Representation: Patent applicant: Cullens
Opponent:Ahearn Fox
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2006301867
Title:Vehicle recovery and traction ladder
Patent Applicant: Julie-Anne McCarthy and Bradley McCarthy
Date of Decision: 11 November 2013
DECISION
Extension of time refused.
Evidence in answer is due 3 months from the date of this decision.
REASONS FOR DECISION
This matter raises questions of the construction and application of new provisions of the Patent Regulations (the Regulations).
Background
Patent application 2006301867 in the name of Julie-Anne McCarthy and Bradley McCarthy (collectively referred to as McCarthy) was advertised as accepted on 8 November 2012 and a notice of opposition to the grant of a patent was filed in the name of TRED Design Pty Ltd (TRED) on 1 February 2013.
The attorney for TRED filed a statement of grounds and particulars (a SGP) on 30 April 2013. On 9 May 2013 McCarthy requested further and better particulars, and a direction was given by a delegate of the Commissioner on 14 June 2013. An amended SGP was filed on 12 July 2013. On 17 July 2013 McCarthy sought a further direction for further and better particulars, which was made on 2 August 2013. An amendment to the SGP was filed on 30 August 2013.
Evidence in support was due by 30 July 2013. On 30 July 2013 the attorney for TRED asked the Commissioner to extend the time for filing evidence in support (of her own volition) because the evidence in support was due before the amendment of the SGP was completed. A delegate of the Commissioner declined to give such an extension, and advised the attorney for TRED that they could make an application for an extension of time under regulation 5.9(2)(a).
On 4 September 2013 the attorney for TRED requested an extension of the time for filing evidence in support until 30 October 2013. The application for extension of time is reproduced in Annex 1. In summary, the application identifies two reasons why the evidence was not completed in time: persons identified as suitable declarants have proved to be unavailable, and the patent attorney's time was taken up with the provision of further and better particulars. The application for an extension was accompanied by a declaration by Bill Anderson dated 4 September 2013. That declaration is reproduced in Annex 2. That declaration elaborates on these points.
In a letter dated 11 September 2013, a delegate reported that he was not satisfied that an extension was appropriate, and that he intended to refuse the application for extension of time. The delegate provided a statement of reasons that is reproduced in Annex 3. I note particularly the following parts of those reasons:
"I am not satisfied with the detail provided in regard to this criterion. While it is clear that experts have been retained and evidence gathering is underway, there is no indication of measures taken during the period of preparing further and better particulars in order to ensure timely filing of evidence. On the contrary, it appears from the request and accompanying declaration that efforts to gather evidence in support may have been suspended. Such a circumstance is considered to fall short of making all reasonable efforts to comply with the filing requirements.
The filing of a request for an extension of time under Regulation 5.9 (accompanied by the relevant fee) was made more than one month after the delegate for the Commissioner declined to extend the time period for filing evidence in support on their own initiative. I also note that the request was filed more than one month after the expiry of the period for evidence in support. As such, it is not clear that the opponent has made all reasonable efforts to comply with the filing requirements. It would appear pertinent that a party seeking an extension of time to file evidence after the completion of the evidence period make a request as soon as possible. Such action was not taken in the present case and there is no reasonable explanation for the delay in doing so."
"It is also considered that a requirement of this criterion is that in detailing the efforts taken to ensure the timely filing of evidence, a party should provide information as to 'when' certain actions were done, 'how long' those actions took, and 'when and for how long' particular absences/lack of availability occurred. Statements of the request and declaration only refer to actions such as commencing preparation of evidence, sufficient completion of evidence in support for one witness, and unavailability of experts. As such, the opponent has not provided a detailed account of events in order to satisfy the Commissioner that prompt and diligent action occurred in the preparation of evidence, across the entire evidence period."
"The Commissioner does not consider the provision of further and better particulars amounts to exceptional circumstances. The opponent did not comply with the first direction to file further and better particulars, and was subsequently provided with a second opportunity to file sufficient particulars. Directions to provide further and better particulars are common and arise due to the opponent’s failure to provide sufficient particulars at first instance."
TRED was given seven days to request a hearing, and was invited to file any further information at the same time as requesting a hearing. In a letter dated 12 September 2013 the attorney for TRED has asked for a hearing (McCarthy indicated that they wished to attend the hearing) and provided further information. That letter is reproduced in Annex 4. On the same date the attorney for TRED filed evidence in support in the form of an unsigned declaration by Bill Anderson. A signed copy of this declaration was filed on 18 September 2013.
The hearing was conducted by means of written submissions. The attorney for TRED filed a further declaration by Bill Anderson on 17 October 2013 (which is reproduced in Annex 5), and filed submissions on 18 October 2013. McCarthy filed submissions on 18 October 2013. The submissions on behalf of McCarthy essentially agreed with and amplified the views of the delegate in the letter that appears at Annex 3.
The attorney for TRED made an application to serve further evidence on 18 October 2013. The further evidence consists of a declaration by Bill Anderson dated 18 October 2013.
Preliminary matter - are McCarthy entitled to make submissions
The attorney for TRED has made the submission that McCarthy has no right to file submissions, and the submissions filed are inadmissible and must not be considered. I do not accept that there is any merit to this submission.
This matter arises because the delegate of the Commissioner was not satisfied that the extension sought by TRED is appropriate, and not as a result of a formal objection by McCarthy. However, McCarthy is clearly a person with an interest in the outcome of the extension, and it is appropriate to allow them to provide submissions to assist me in making my decision. I will have regard to the submissions on behalf of McCarthy.
The law
On 15 April 2013, the Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (No 1) (the Amendment Regulation) commenced. The Amendment Regulation significantly amended the 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 relevant evidentiary period commenced. Where the evidentiary period commenced before 15 April 2013, the extension is governed by regulation 5.10 of the Regulations as in force immediately prior to 15 April 2013. Where the evidentiary period commenced on or after 15 April 2013 in any opposition commenced before 15 April 2013, or in a substantive opposition commenced after 15 April 2013, the extension is governed by regulation 5.9 of the Regulations as in force on 15 April 2013. This follows from regulation 23.36(2), item 2, of the Amendment Regulation.
The present evidentiary period (for filing evidence in support) commenced on 30 April 2013, i.e. on or after 15 April 2013. Consequently the extension of time is governed by regulation 5.9 of the Regulations as in force on 15 April 2013. Subregulation 5.9(1) gives the Commissioner the power to extend the evidentiary time periods:
The Commissioner may extend an evidentiary period mentioned in regulation 5.8:
(a) if requested in writing by a party; or
(b) on the Commissioner's own initiative.
The power to extend time is a discretion, as evidenced by the use of the word "may". This power is qualified by subregulation 5.9(2), which 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):
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.
The scheme laid down by the Regulations is that an extension of time is only available if I am satisfied that:
·the party has made all reasonable efforts to comply with the time period for filing the evidence, AND despite acting promptly and diligently has been unable to meet that time period, OR
·there are exceptional circumstances that warrant the extension.
This provision is discussed in the Explanatory Statement accompanying the Amendment Regulation (the Statement) as follows:
"A major cause of protracted proceedings is extensions of 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 (3)):
The Commissioner must determine the length of the extended period having regard to what is reasonable in the circumstances.
TRED's submissions on the law
TRED have raised several questions about the construction of the regulation that need to be given careful consideration. Those questions are:
·is the Statement relevant to the construction of the regulation?
·what is the relevance of the public interest in considering extensions of time?
·what is the difference between the "all reasonable efforts" and "acting diligently and promptly" legs of the test?
·are the actions of patent attorneys relevant, or is it only the actions of the "party" that should be considered?
·should the provision be construed broadly, as it is a remedial provision? and
·was it intended that extensions are hard to get?
I will address each of these questions in turn.
Question 1: Is the Statement relevant to the construction of the regulation?
The attorney for TRED has made the unusual statement that
"Guidance for the interpretation is not to be reliant on the Explanatory Memoranda. According to the established principles of statutory interpretation and administrative law, no guidance should be sought in explanatory memoranda."
[para 6 of submissions dated 21 October 2013]and also
"We submit that the Explanatory Statement is a self-serving document which does not accurately reflect the Regulations as made."
[para 5 of submissions dated 21 October 2013]On the contrary, I consider that it is beyond any doubt that it is legitimate to have regard to the Statement. Section 13 of the Legislative Instruments Act and section 46 of the Acts Interpretation Act (the Interpretation Act) makes it clear that the Interpretation Act applies to the interpretation of the Regulations. Section 15AB of the Interpretation Act states that reference may be made to the explanatory materials. I conclude that it is legitimate to have regard to the Statement.
Question 2: What is the relevance of the public interest?
The written submissions filed by the attorney for TRED state that the public interest in determining oppositions on their merits should be considered:
"It was not the intention of the amendments to make extensions of time almost impossible to get, or even difficult. Rather, was to ensure that progress was made throughout the proceedings. In that regard, the Commissioner is required to take into account the requirement that serious oppositions be determined on the merits of properly adduced evidence so that invalid patents not be granted. The amendments do not remove the consideration of the public interest from opposition proceedings."
[para 2.13 of submissions dated 18 October 2013]It is clear that the matters set out in subregulation 5.9(2) are a precondition to the grant of an extension. If these requirements are not met, then an extension cannot be granted, regardless of any consideration of the public interest. However, if the requirements of subregulation 5.9(2) are met, there is still a discretion whether to allow the extension of time (this follows from the use of the term "may" in subregulation 5.9(1)). The public interest will be a legitimate consideration when dealing with the discretion. However, to the extent that TRED submit that the public interest can override the failure to comply with the explicit requirements of subregulation 5.9(2), that submission must be rejected.
The attorney for TRED also made a submission which is essentially that the public interest will always favour the filing of evidence in support, and that will be a sufficient basis for the extension:
“A refusal to allow the evidence in support of an opposition to be considered is obviously completely contrary to the stated purpose of the amendments [being to increase the presumption of validity in granted patents]. On that basis, substance must take precedence over procedural issues. The private interest as well as the public interest demands that evidence which the matter to be heard on the basis of evidence properly admitted and considered [sic].”
[para 2.24 of submissions dated 18 October 2013]While it is true that many of the provisions introduced by the Raising the Bar Act are aimed at raising the standard of granted patents, the amendment to the extension of time provisions was clearly directed to speeding up oppositions. Broad assertions about the public interest cannot be used to sweep aside the words of the regulation and the statements in the Statement.
Question 3: Do the two legs of the test relate to different things
There are two requirements in paragraph 5.9(2)(a). Those requirements are "has made all reasonable efforts to comply with all relevant filing requirements under this Chapter" and "acting promptly and diligently at all times to ensure the appropriate evidence is filed within the period". The attorney for TRED made a submissions as follows:
“Subparagraph 5.9(2)(a)(ii) is subservient to subparagraph 5.9(2)(a)(i) so ‘acting promptly and diligently at all times’ cannot impose a greater burden on a party or on an attorney than does ‘made all reasonable efforts to comply’”
[para 2.25 of submissions dated 18 October 2013]While the two legs are similar, the "reasonable" leg relates to "all relevant filing requirements", whereas the "promptly and diligently" leg relates to the period for filing "the appropriate evidence". Reasonableness appears to relate to conduct over the whole of the opposition, and not just the current evidence stage. I would expect that often where a person has acted reasonably, they will also have acted promptly and diligently (an exception might be where a person was diligently preparing evidence that was unnecessary for the opposition). The question posed by the regulation is whether the person seeking the extension satisfies each leg of the test. Where they fail to satisfy one of the legs, then an extension will not be available (in the absence of exceptional circumstances).
Question 4: Are the actions of patent attorneys relevant?
Regulation 5.9 refers to "the party". This raises the question whether the provision is only concerned with the actions of the party, and not the actions of their agent. There is a general proposition that the acts of an agent are the acts of the principal (Qui facit per alium, facit per se). In the context of patent oppositions, it would seem odd if the actions of an agent were irrelevant, given that most oppositions are handled by patent attorneys. I think that the sensible construction is that "party" means "party and their attorney or agent". However, to the extent that there is an ambiguity, or to confirm this construction, the Statement can be consulted. The passage from the Statement quoted previously makes it clear that the actions of attorneys or agents are relevant to whether or not allow an extension of time.
Question 5: Should the provision be construed broadly?
The attorney for TRED said that regulation 5.9 is a remedial provision and should be construed generously. In this regard they drew an analogy with section 223. It is well established that section 223 is a remedial provision, and consequently "should be applied where it appears to be applicable unless there is some clear indication to the contrary" (Scaniainventor v Commissioner of Patents [1981] FCA 84; 36 ALR 101 at 105). Similarly, regulation 5.9 provides a remedy to extend certain time periods that appear in the Regulations. An extension under regulation 5.9 is a remedy that should be applied whenever the circumstances in the regulation are met, and the provision should not be read down arbitrarily.
A broad construction of remedial provisions is also suggested by Chalk v Commissioner of Superannuation [1994] FCA 1063, 33 ALD 420 at [23] – [24]. The Court recognised that when exercising a broad discretion "it may be 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". However, regulation 5.9 is not a broad discretion of the type considered in Chalk (where the election could be recognised if "the Commissioner is satisfied that in all the circumstances of the case it is desirable"), or even that in Ferocem Pty Ltd v Commissioner of Patents [1994] FCA 981; 28 IPR 243 (where the predecessor of the present regulation merely said the "Commissioner may extend the time"). Regulation 5.9 is drafted in terms that clearly limit when the remedy of an extension of time will be available. It is not permissible to read those limitations out of the provision. I am satisfied that the correct approach is to apply the test that I have identified above, and not to impose any arbitrary limitations that are not found in the regulation.
Question 6: Should extensions be hard to get?
The attorney for TRED stated that the amendment to the Regulations was not intended to make extensions of time harder to obtain:
"The amendments did not impose additional requirements on the parties to satisfy the Commissioner that the party made all reasonable efforts to comply with the filing requirements than what had been established by the practice of the Commissioner prior to the Raising the Bar amendments. Rather, the established precedents in the common law have, in effect, been codified by the current regulation. The Raising the Bar amendments mean that a satisfactory explanation is now a mandatory requirement."
[para 2.8 of submissions dated 18 October 2013]"It was not the intention of the amendments to make extensions of time almost impossible to get, or even difficult. Rather, was to ensure that progress was made throughout the proceedings."
[para 2.13 of submissions dated 18 October 2013]This submission is not consistent with the Statement quoted previously. It is clear that there was an intention to reduce the number of extensions of time by introducing a new test. I think it is undeniable that the new regulations are intended to achieve far more than just making a satisfactory explanation of delay a mandatory requirement. There is no basis for reading down the words of the regulation.
Conclusion on the applicable law
It follows that I need to 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?
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 facts
I will summarise the facts with the relevant dates. I have identified this information in the various declarations by Mr Anderson, and also by reference to information in the official file of this application. Where the date is unknown, this indicated with a "?". I have placed the events in chronological order so far I can determine it from the evidence.
Date
Matter 1 Feb 2013 Notice of opposition filed ? Mr Anderson commences work on the SGP and the leading declaration ? Mr Anderson asks TRED for a list of suitable declarants ? Mr Anderson analyses the prior art to select the most relevant documents 30 Apr 2013 SGP served ? Managing Director of TRED indicated that he did not have time to provide a declaration ? Mr Anderson decides to recast his declaration 9 May 2013 First request of further and better particulars filed by McCarthy 17 May 2013 Delegate proposed a direction for further and better particulars, and gave the parties seven days to comment 20 May 2013 Mr Anderson provided comments on the direction 31 May 2013 Mr Anderson confirmed that he did not request a formal hearing in relation to the direction 14 Jun 2013 Delegate made direction for further and better particulars, allowing four weeks to comply 12 Jul 2013 Mr Anderson filed a request to amend the SGP ? Mr Anderson continued preparation of evidence in support ? Mr Anderson discussed the necessity for an extension of time with Mr Fox 17 Jul 2013 Second request for further and better particulars filed by McCarthy 22 Jul 2013 Delegate proposed a direction for further and better particulars, and gave the parties seven days to comment 29 Jul 2013 Mr Anderson provided comments on the direction 30 Jul 2013 Evidence in support due 30 Jul 2013 Mr Anderson requested the Commissioner extend the time for evidence in support of her own volition 2 Aug 2013 Delegate made direction for further and better particulars, allowing four weeks to comply. The Delegate also refused to extend time of his own volition and advised that an extension should be applied for under reg 5.9 30 Aug 2013 Mr Anderson filed a request to amend the SGP ? Mr Anderson continued with preparation of evidence in support 3 Sep 2013 Third request for further and better particulars filed by McCarthy 4 Sep 2013 Mr Anderson files a request for an extension of time for filing evidence in support from 30 July 2013 to 30 October 2013 5 Sep 2013 Delegate advised he was not satisfied that a direction was appropriate 6 Sep 2013 Mr Anderson commenced leave 11 Sep 2013 Delegate advised that he was not satisfied that an extension of time was appropriate, and that the extension would be refused unless a hearing was requested 12 Sep 2013 Unsigned Anderson declaration (forming evidence in support) filed 12 Sep 2013 Mr Fox requested a hearing 18 Sep 2013 Signed Anderson declaration (forming evidence in support) filed 18 Oct 2013 Further evidence filed
In addition, it is apparent that Mr Anderson worked on the evidence at the same time as he prepared the amendments to the SGP:
"worked on contemporaneously with the preparation of the amended Statement of Grounds and Particulars, not only because of the requirement for reasonable celerity in preparing the amended Statement as well as the Evidence in Support, but also because it was expedient to ensure that as progress was made on the more pressing issue of the Statement of Grounds and Particulars, that the clauses in the leading declaration for the Evidence in Support were consistent with the Statements of Grounds and Particulars."
[para 2.20 of submissions dated 18 October 2013]The declaration that was filed as evidence in support annexes copies of documents that are put forward as citations. The declaration also annexes copies of documents found in the case file of the patent application. The declaration also contains evidence of what Mr Anderson considers is well known, and Mr Anderson's opinions on the grounds of opposition. There is also a large amount of information that seems more likely to be submissions rather than evidence (as foreshadowed in the letter of 12 September 2013).
The final matter to be addressed is why the application for extension of time was not filed until long after the evidence period had run out. Mr Anderson stated that he thought it had been done earlier. I accept that this is the case.
Has the party made all reasonable efforts to comply with all relevant filing requirements?
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.
As can be seen from the chronology above, there is little precise information about what Mr Anderson did and when he did it (except in relation to filing official documents). This clearly makes it difficult to determine the actions taken by Mr Anderson. However, the evidence that Mr Anderson was preparing is clear because it has now been filed.
I have considered the numerous submissions and multiple declarations filed by the attorney for TRED. The facts raise a number of questions in my mind
a) Why wasn't the evidence completed within time?
It was originally intended that a declaration would be prepared by the Managing Director of TRED. When it was determined that this person would be unable to provide a declaration in time, a decision was made to use a different declarant, i.e. Mr Anderson. The decision not to proceed with the Managing Director was both reasonable and appropriate.
A decision was made to engage Mr Anderson as declarant instead of the Managing Director. While Mr Anderson is also a very busy person, it appears that there was an expectation that his other commitments would not prevent him completing his evidence without the need for an extension of time.
It seems that Mr Anderson was unable to complete his declaration, despite starting work on it a few days after filing the notice of opposition, due to other work commitments. It is clear that Mr Anderson works in a busy office, and has recently been required to adapt to a large number changes to the Act and Regulations. I am satisfied that he has, at any time, a large number of important and urgent matters to attend to. However, despite the large number of declarations provided by Mr Anderson, the detail of what he did and when remains unclear. Also, it appears that there was never any consideration of whether it would have been appropriate to engage a different declarant given Mr Anderson's responsibilities.
The evidence establishes that Mr Anderson is of the opinion that the evidence could not have been completed earlier because of his other responsibilities. I do not have enough information to otherwise satisfy myself.
b) Was Mr Anderson preparing evidence that was unnecessary?
To the extent that Mr Anderson's evidence is copies of prior art documents, I would not expect that Mr Anderson would need to prepare copies himself. It should be a relatively easy matter for non-professional staff at Ahearn Fox to prepare copies of the documents.
The evidence also includes comments and analysis. This is evidence that would normally be found in a declaration by a person skilled in the art. In this case, Mr Anderson has taken on that role because the Managing Director would not be available to complete evidence promptly. However, Mr Anderson undertook this role even though he is also a very busy person.
To the extent that the evidence contains submissions that could be made at hearing, it is not evidence. It is unnecessary (and inappropriate) to include argument in the guise of evidence. I note that occasionally declarants cross the line between evidence and submissions, and I am not critical of them for not understanding the distinction. However, Mr Anderson is a patent attorney with responsibility for the opposition. It does not seem reasonable that a person in the position of Mr Anderson would spend time preparing submissions in the form of a declaration.
c) You cannot ask a person to do the impossible
The submissions filed on behalf of TRED state:
"The requirement to act promptly and diligently must take into consideration the surrounding circumstances of the patent attorney acting to avoid instituting a requirement that patent attorney perform beyond what is humanly possible. The principle lex non cogit ad impossibilia (Latin: The law does not compel the impossible) applies."
[para 2.28 of submissions dated 18 October 2013]I agree with this submission. A person needs to act reasonably, and it is not reasonable that a person do the impossible. The focus has to be on what the person actually did, and whether they acted reasonably, promptly and diligently. I do not accept that I should simply accept that it was not possible to prepare the evidence any sooner, without some information that would enable me to form that opinion for myself.
d) The relevance of the further and better particulars
The attorney for TRED relied heavily on the fact that time was spent responding to two directions to provide further and better particulars. This is only an issue because the patent attorney dealing with the opposition is also the sole declarant in support. 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.
Mr Anderson worked on amending the SGP at the same time as he prepared his evidence:
"worked on contemporaneously with the preparation of the amended Statement of Grounds and Particulars, not only because of the requirement for reasonable celerity in preparing the amended Statement as well as the Evidence in Support, but also because it was expedient to ensure that as progress was made on the more pressing issue of the Statement of Grounds and Particulars, that the clauses in the leading declaration for the Evidence in Support were consistent with the Statements of Grounds and Particulars."
[para 2.20 of submission dated 18 October 2013]The letter from Mr Fox dated 12 September 2013 states that the requests for further and better particulars were an abuse of process. In both cases a delegate considered the requests and proposed directions, and gave the attorney for TRED an opportunity to comment. In both cases, the attorney for TRED provided comments that were considered by the delegate. The delegate proceeded to make directions. It is hard to see this as an abuse of process.
Mr Anderson had used a standard template to prepare the SGP. However the problems identified by the delegate appear to relate to the detail in statement, not its general form. I appreciate Mr Anderson's disappointment that further and better particulars were required, but this does not mean that the direction was not properly made.
Once a direction for further and better particulars has been made, it is reasonable that an opponent provide amendment to the statement. The requirement to respond to the direction for further and better particulars would clearly have increased Mr Anderson's workload. Mr Anderson has not stated how long he worked on the amendments. Looking at the first amendment, I can see that extra detail has been provided in relation to the documents D1 to D18. It would be reasonable to assume that this work would have required up to two hours. Similarly, Mr Anderson has not identified how long was required to respond to the second direction for further and better particulars, but presumably it was less than the time required for the first response.
e) Reversal of the order of the SGP and the evidence
The submissions on behalf of TRED say that it is unreasonable that the evidence in support should be filed before the SGP has been finalised by amendment. This argument follows from the fact that evidence in support is due after the SGP has been filed. The fallacy in this argument is that the SGP was filed on 30 April 2013, and the amendment is solely for the purpose of elaborating on the particulars that were provided at that time. The procedures in the Regulations have not been reversed.
I note that if TRED's argument were correct, then an automatic extension of time would be available at any time solely on the basis that an opponent chose to make an amendment to the SGP. To do this would be to ignore the words of the regulation 5.9, and invent a test that has no basis in the Regulations.
f) Time was taken up preparing further evidence
Further evidence was filed on 18 October 2013. It follows that the preparation of the further evidence began at some earlier time. It is unclear when the preparation of the further evidence began, and how long it required. I suspect that the preparation of further evidence took place after the evidence in support was completed (as it is not mentioned before Mr Anderson went on leave), making it irrelevant to the extension of time. However, if the two activities took place at the same time I would require a full explanation of why it was reasonable to prepare further evidence while evidence in support was in progress.
Overall
In assessing whether the attorney for TRED acted reasonably, it is necessary to consider the totality of the situation, not merely each event in isolation. The evidence indicates that the most significant impact on Mr Anderson's time was the preparation of amendments to the SGP (the preparation of further evidence apparently happening at a later time). As noted, it is unclear how long was required to amend the SGP, but it does not appear to be more than a few hours. Mr Anderson's time would also have been taken up in preparing the evidence in support and locating further evidence. I am also unsure how long these activities required. The information available to me does not support the conclusion that the attorney for TRED has acted reasonably.
I note without reaching any final conclusion that TRED was directed to provide further and better particulars (on two occasions), which suggests that they did not act reasonably to comply with the filing requirements in relation to the SGP. I do not need to consider whether this alone would be sufficient to deprive TRED of an extension of time.
Was the failure to file the evidence despite acting promptly and diligently?
In this case the matters discussed in relation to reasonableness are generally relevant to whether the attorney acted promptly and diligently. I do not need to repeat what I have already said.
Were there exceptional circumstances?
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 expert is not an exceptional circumstance."
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.
In the present case TRED has argued that there are exceptional circumstances can be seen in three matters:
amendments to the Regulations
acceptance of the application was an error
the direction to provide further and better particulars was an errora) Amendments to the Regulations
The attorney for TRED said:
"Firstly, it is exceptional that the opponent has had to deal with amendments to the Regulations."
[para 2.37 of submissions dated 18 October 2013]It is true that the attorney for TRED has had to read and understand the new regulations, and adopt new work practices to comply with the changes. It is also true that changes to the opposition procedures are not frequent. While the changes to the Regulations were outside the normal evidentiary process, and outside the control of the party, they came in before the SGP was served. I do not accept that the changes to the Regulations would make it unreasonable to insist on TRED filing their evidence. This is not an exceptional circumstance.
b) Acceptance in error
The attorney for TRED said:
"Secondly, it is exceptional that the opponent has had to deal with an examination in which the record shows that the claims were accepted in error."
[para 2.38 of submissions dated 18 October 2013]I should note that any opponent will have the view that acceptance was in error, otherwise the opposition would be without merit. The acceptance of an application (even if it could be characterised as an error) occurs before the opposition commences, and does not make it unreasonable to insist on the filing of evidence.
c) Further and better particulars
The attorney for TRED argued that the further and better particulars were not required, and as a consequence it was an exceptional circumstance to have to provide them. While it is not appropriate to turn an extension of time proceeding into an appeal against a direction for further and better particulars, I will consider those directions to the extent necessary to satisfy myself whether there could be exceptional circumstances involved.
The attorney for TRED said that the requests for further and better particulars were an abuse of process. A delegate considered that further and better particulars were required, which suggests that this is unlikely. The reasons why the attorney for TRED considered that the further and better particulars were not appropriate include statements that the other side were already on notice of many of the documents in the SGP. I will simply note that it has always been the function of the SGP to set the out the grounds of the opposition and the particulars in sufficient detail to give notice of the case to be met and to define the issues in the opposition. It has never been an accepted principle that an opponent can assume that the applicant ought to know what the case is. I do not agree that there was an abuse of process. I do not accept that the direction was beyond TRED's control, or that it was unreasonable to insist on the filing of evidence.
Overall
I am not satisfied that any of these matters represent exceptional circumstances. Nor does the totality of these matters represent an exceptional circumstance.
Conclusion
I return to the questions that I identified earlier:
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?
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.
The attorney for TRED has repeatedly made the statement "the opponent has acted promptly and diligently at all times". However, despite filing multiple declarations, the attorney for TRED has provided little detail about the steps he took to prepare the evidence. Instead, Mr Fox stated that the delegate's request for such information was "unreasonable". Ultimately, this matter turns on whether I am satisfied that Mr Anderson made all reasonable efforts to comply with all relevant filing requirements, and acted promptly and diligently at all times to ensure the evidence was filed in time, based solely on his assertion that he did and without sufficient evidence to enable me to form an independent opinion that that is correct. I am not satisfied on the basis of the information before me.
An attorney does not need to account for every minute of their day, but they must provide enough information to enable a delegate of the Commissioner to form their own opinion on whether the party has acted reasonably, promptly and diligently. The kind of information that could be provided is a brief account of actions taken (for instance, an outline of what was done, when it was done, how it was done, by whom it was done, as appropriate to the case) covering the period in question.
There are no exceptional circumstances in this case.
It follows that I cannot extend the time for filing evidence in support.
The declaration of Mr Anderson that was filed does not form part of the evidence in support, but will remain on file. The evidence in answer stage commences on the date that the Commissioner notifies the applicant that all evidence in support has been filed. This decision represents notification to the applicant, and the time for filing evidence in answer is 3 months from the date of this decision.
Dr S.D. Barker
Delegate of the Commissioner of PatentsANNEX 1
Reasons provided in the application for extension of time
1. A serious opposition is foreshadowed against Australian Patent Application No 2006301867. The patent application proceeded to acceptance with claims which included features that had been eschewed by the applications in the prosecution of the application to acceptance and do not satisfy the requirements of patentability under the Act.
2. The applicant's divisional application no 2012205168 has been accepted and is also under opposition by the opponent of the present application.
3. The opponent considers that the 'art' relevant to the claimed invention lies in various different fields of endeavour including engineering plastics and automotive parts manufacturing. Persons identified as suitable for providing declaratory material have proved to be unavailable.
4. The applicants have twice asked for further and better particulars and we have twice provided further and better particulars. The imposition of the request for further and better particulars has impacted on our timeframe for preparing Evidence in Support. However, the opponent's Evidence in Support is sufficiently complete for review by one of the witnesses.
5. The opponent has made all reasonable efforts to comply with all relevant filing requirements under Chapter 5 of the Regulations. Despite acting promptly and diligently at all times to ensure the appropriate evidence is filed within the prescribed period, it could not be completed within the prescribed period.
6. The circumstances of the two requests for further and better particulars and the parallel opposition to the divisional application constitute exceptional circumstances beyond the control of the opponent.
7. Further time is required to enable completion of the Evidence in Support.
ANNEX 2
The declaration of Bill Anderson dated 4 September 2013, filed with the application for an extension of time
1. I am a registered patent attorney employed by AHEARN FOX, the firm acting for the opponent to the grant of a patent on the accepted application.
2. When the accepted application was published, searches were conducted to ascertain whether the invention described and claimed was novel and involved an inventive step. The opponent identified several pertinent prior art documents which were made subject of a Notice under Section 27 of the Act.
3. When the accepted application was published as accepted, the opponent was astonished that the claims which were accepted were clearly anticipated by the prior art identified by the Examiner and the Notice under Section 27.
4. The searches mentioned in paragraph 2 were extended and further pertinent prior art documents were identified, and Notice of Opposition was filed. A few days after the Notice of Opposition was filed, I commenced preparation of both a declaration to form part of the Evidence in Support as well as the Statement of Grounds and Particulars. I requested the opponent provide details of suitable people who could provide the declaratory material proposed as part of the Evidence in Support. However, most of my time was taken up in selecting the most pertinent documents from the considerable amount of material revealed by the extended searches.
5. I continued with the preparation of the Statement of Grounds and Particulars using a form of precendent from the firm's files which had been successfully prosecuted in several previous opposition matters, serving the Statement of Grounds and Particulars in due time and filing a copy at the Patent Office. The form of precedent I used had not been subject to objections or Directions before.
6. In the meantime, the applicants objected to the Statement of Grounds and Particulars, and my time was spent in addressing the issues raised therein and I could not complete the Evidence in Support. Further and better particulars were filed within the timeframe set by Directions of the Commissioner.
7. The applicants then objected to the amended Statement of Grounds and Particulars and my time was spent in addressing the issues raised therein and again I was prevented from further progress in the Evidence in Support. Further and better particulars were again filed within the timeframe set by Directions of the Commissioner of Patents.
8. Once the further and better particulars had been filed, I continued with preparation of the Evidence in Support.
ANNEX 3
Reasons of the delegate, contained a letter dated 11 September 2013
Reasons for non-compliance with Regulation 5.9
The extension of time in this case is governed by regulation 5.9 of the Patents Regulations as amended by the Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (No 1). 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.
The Explanatory Statement accompanying the Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (No 1) states:
'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.'
Consequently I have asked myself the following questions:
1. Has the party made all reasonable efforts to comply with the filing requirements?
2. Was the failure to file the evidence in time despite acting promptly and diligently at all times to ensure the evidence is filed in time?
3. Were there exceptional circumstances that warrant the extension?
In regard to the gathering of evidence in support, the opponent’s request for an extension of time and accompanying declaration refers to the fact that they commenced preparation of evidence in support shortly after the notice of opposition was filed and also points out those persons suitable for providing declaratory material have proved to be unavailable. The opponent also indicates that evidence in support is sufficiently complete for review by one of the witnesses.
The main focus of the request for an extension of time is the fact that the opponent was required to provide further and better particulars, and that this process prevented the opponent from completing evidence in support. In the present case, the delegate considered that the first amendment to the statement of grounds and particulars did not comply with the direction and thus provided a second opportunity to file sufficient particulars to which the opponent complied with amendment to the statement of grounds and particulars dated 30 August 2013.
I note that on 30 July 2013 the opponent asked the Commissioner to extend the time for filing evidence in support on her own initiative. The delegate responded to this request in a letter dated 2 August 2013 indicating that the Commissioner did not consider such a direction was warranted under Regulation 5.9 because a case had not been made under Regulation 5.9(2)(a), and because directions for further and better particulars were not exceptional circumstances.
Has the party made all reasonable efforts to comply with the filing requirements?
In terms of actions taken to ensure timely filing of evidence in support the opponent has discussed that preparation of evidence began shortly after the notice of opposition was filed and that persons suitable for providing declaratory material have proved to be unavailable. It is also noted that evidence in support is sufficiently complete for review by one of the witnesses.
I am not satisfied with the detail provided in regard to this criterion. While it is clear that experts have been retained and evidence gathering is underway, there is no indication of measures taken during the period of preparing further and better particulars in order to ensure timely filing of evidence. On the contrary, it appears from the request and accompanying declaration that efforts to gather evidence in support may have been suspended. Such a circumstance is considered to fall short of making all reasonable efforts to comply with the filing requirements.
The filing of a request for an extension of time under Regulation 5.9 (accompanied by the relevant fee) was made more than one month after the delegate for the Commissioner declined to extend the time period for filing evidence in support on their own initiative. I also note that the request was filed more than one month after the expiry of the period for evidence in support. As such, it is not clear that the opponent has made all reasonable efforts to comply with the filing requirements. It would appear pertinent that a party seeking an extension of time to file evidence after the completion of the evidence period make a request as soon as possible. Such action was not taken in the present case and there is no reasonable explanation for the delay in doing so.
Was the failure to file the evidence in time despite the party acting promptly and diligently?
As discussed above the explanation does not provide a detailed indication of actions that were taken to prepare evidence while preparing further and better particulars. I consider it follows that the applicant has not demonstrated prompt and diligent action.
It is also considered that a requirement of this criterion is that in detailing the efforts taken to ensure the timely filing of evidence, a party should provide information as to 'when' certain actions were done, 'how long' those actions took, and 'when and for how long' particular absences/lack of availability occurred. Statements of the request and declaration only refer to actions such as commencing preparation of evidence, sufficient completion of evidence in support for one witness, and unavailability of experts. As such, the opponent has not provided a detailed account of events in order to satisfy the Commissioner that prompt and diligent action occurred in the preparation of evidence, across the entire evidence period.
Were there exceptional circumstances?
The Commissioner does not consider the provision of further and better particulars amounts to exceptional circumstances. The opponent did not comply with the first direction to file further and better particulars, and was subsequently provided with a second opportunity to file sufficient particulars. Directions to provide further and better particulars are common and arise due to the opponent’s failure to provide sufficient particulars at first instance.
Conclusion
Consequently, I am not presently satisfied that an extension of time is appropriate.
ANNEX 4
Information provided in a letter dated 12 September 2013
1. Extension of Time 1.1 We refer to your letter of 11 September 2013 notifying that the Hearing Officer does not believe the application for extension of time filed 4 September 2013 meets the requirements of Regulation 5.9 and that the opponent may make a request to be heard. Accordingly, we hereby make a request to be heard in relation to the application for an extension of time.
1.2 Your letter also states that any further evidence in support of the application for an extension of time should be provided at the same time as requesting a hearing. We intend to provide further evidence but we will not be able to prepare the additional evidence for some time. In that respect, Mr Bill Anderson who has conduct of this matter is currently in Canada and will not return until 6 October 2013. We are in the process of trying to contact Mr Anderson to clarify some points and we hope to be able to provide further evidence by the end of next week.
1.3 In the meantime, we submit that the applicant's first request for further and better particulars was an abuse of process probably aimed at delaying the applicant's attorney preparing the evidence in support. We submit that the Commissioner erred in giving the direction when Regulation 5.5 clearly does not require a Statement of Grounds and Particulars ('SGP') to do any more than what was done by the SGP which was filed. Taking into account the fact that the applicant was on notice of many if not all of the documents cited in the SGP as will be mentioned later in this latter, we submit that the Hearing Officer erred in giving a direction to provide further and better particulars in those circumstances.
1.4 In the meantime, we have today filed evidence in support of the opposition, that evidence being an unsigned statutory declaration by Bill Anderson. The opponent had originally intended to rely on two experts, Mr Anderson and another expert, but the other expert was ultimately found not to be available. Consequently, it was necessary for Mr Anderson to expand the declaration which he was preparing for himself and then to modify it further in the light of the further and better particulars he had filed on 30 August 2013. The further and better particulars became so comprehensive they were practically 'evidence in support' but still the applicant complained as the Hearing Officer is aware.
1.5 We also submit that the applicant's letter of 3 September 2013 requesting the Commissioner to give another direction for further and better particulars was another abuse of process again probably aimed at tying up the opponent's attorney in unnecessary paperwork so as to prevent the opponent's attorney preparing the evidence in support.
1.6 We submit that both directions to provide further and better particulars were inconsistent with the Act and Regulations and should not have been given, and that it would be a denial of natural justice for the Commissioner to refuse to grant an extension of time which has become necessary largely because of directions made by the Commissioner.
1.7 Notably, the opponent is also opposing the applicant's related application No. 2006301867 and substantially the same 'objections' to the SGP in that matter were raised by the applicant. Thus, the applicant has had the opponent's attorney tied up on further and better particulars on two oppositions largely in relation to documents which were cited in a section 27 notice or were documents which would have copies in the applicant's attorneys own files.
1.8 In the 'reasons' attached to the Hearing Officer's letter of 11 September 2013, the Hearing Officer refers to the 'Explanatory Statement' accompanying the Raising the Bar Regulation 2013. However, the Explanatory Statement does not accord entirely with regulation 5.9.
1.9 We submit that regulation 5.9 is a general remedial provision which corresponds generally to s223 at least to the extent that they are both general remedial provisions. In that respect, according to the case law such provisions should be given a broad interpretation or a generous interpretation. That noted, while the Hearing Officer has referred to 'delays caused by a legal representative failing to act promptly or diligently', the regulation refers only to 'the party', 'the parties', 'the Commissioner' and there is no mention of the party's legal representative. This is in contradistinction to s223(2) which refers to 'the person concerned or by his or her agent or attorney'. Thus, clearly, the Explanatory Statement does not accord with the regulation as currently in force.
1.10 The Hearing Officer seems to have failed to appreciate that patent attorneys in small firms generally have more than one client and generally patent attorneys do not have only one matter in progress. In Ahearn Fox, we have three patent attorneys, all of whom draft patent specifications and amendments, prosecute patent applications through the Australian Patent Office, prepare and forward instructions to overseas patent attorneys in relation to overseas applications, correspond with overseas patent attorneys, deal with infringement matters, opposition matters, etc, etc.
1.11 Thus, when the Hearing Officer has to consider whether a party (even if the term 'the party' includes the party's patent attorney), the Commissioner must take into account the circumstances of the attorney involved. In the present case, Mr Anderson has had conduct of a substantial number of matters and has made all reasonable efforts to comply with all relevant filing requirements. Despite acting promptly and diligently at all times, he was unable to have the evidence finalised and filed by the due date. The statutory declaration provided by Mr Anderson in support of the application for an extension of time clearly and concisely sets out the steps which were taken in order to meet the filing requirements. The Hearing Officer should appreciate that in the context of other work being carried out in a patent attorney's office, 'reasonable' means 'reasonable in the circumstances applicable at the time'. In that respect, we note that the 'Raising the Bar Act' has placed additional strain on our practice where we have had to learn new procedures and new methods of filing through electronic means and we believe that has been an ongoing difficulty for patent practices generally. Not only do we have to accommodate these changes for filing in Australia, but New Zealand has similar new requirements and small firms like Ahearn Fox do not have specialised computing departments or specialised filing departments. Rather, the general procedures have to be learned by the attorneys and their secretaries. Those circumstances must be taken into account and clearly the Hearing Officer has not done so.
1.12 The Hearing Officer has referred to the question 'has the party made all reasonable efforts to comply with the filing requirements'. Again, assuming that 'party' includes the party's patent attorney, (which we do not accept), we have commented earlier in this letter on the fact that one expert was found to be not available and Mr Anderson decided to encompass all the material in his own affidavit. Mr Anderson's declaration clearly sets out the progress of the matter from the filing of the Notice of Opposition. In that respect, the delays to the preparation of the evidence in support were largely if not entirely caused by the objections and directions to the SGP in the two opposition matters mentioned earlier in this letter. In the context that Mr Anderson has other files to deal with, they are substantial delaying events.
1.13 The applicant has had notice of all the documents relied on since at least 30 April 2013, seven of the prior art documents (D1, D4, D9, D11, D12, D19 and D20) since the notice under s27 was filed on 10 September 2012, D27 by the same date, the Examiner's reports and responses filed mentioned in documents D21 to D26 since they issued or were filed at various dates from 2012 through October 2012, and the remaining documents at least as early as 30 April 2013. Thus, the applicant has been on notice of the case to answer for approximately twelve months and there can be no prejudice to the applicant by granting the extension of time to file copies of those documents together with a statutory declaration by Mr Anderson which attaches those documents and provides comments and analysis (which could largely be made by way of submissions at the opposition hearing). The Hearing Officer should have taken into account the fact that the applicant's attorney would have had at least 14 of the cited documents on their files and should not have needed any explanation of those documents whatsoever.
1.14 The Hearing Officer's requirement for more evidence as to 'when', 'how long', 'when and for how long, particular actions were taken, took, etc' are unreasonable. Effectively, the Hearing Officer is suggesting that the attorney must account for all his time and provide a record of his day's activities. To consider actions relating to a single file in isolation would otherwise be practically useless.
1.15 Mr Anderson has set out the circumstances for requiring the extension of time and provided a statutory declaration setting out the material facts. In the context of a patent attorney's office that evidence should be sufficient for the Hearing Officer to be satisfied that all reasonable efforts were made to comply with the relevant filing requirements and that Mr Anderson had acted promptly and diligently at all times.
1.16 Additionally, noting that there have been significant changes to the conduct of oppositions due to the commencement of the Raising the Bar Act and that the present matter falls within the transition provisions, we believe there are exceptional circumstances applicable to this case. Moreover, in our view, the Commissioner has erred in making the directions for further and better particulars and the errors by the Commissioner in two instances in this matter also constitute special circumstances.
1.17 Please notify us if you require anything further.
ANNEX 5
Declaration of Bill Anderson dated 17 October 2013
1. I am a registered patent attorney employed by AHEARN FOX ("the firm", "we", "us" etc), being the firm acting for the opponent to the grant of a patent on the opposed application
2. This declaration reiterates and expands upon my declaration of 4 September 2013 which was made in support of the request filed on that date for an extension of time to file Evidence in Support (EIS) of the above opposition.
3. When the opposed application was published, searches were conducted to ascertain whether the invention described and claimed was novel and involved an inventive step. The opponent identified several pertinent prior art documents, and importantly, the pertinent prior art documents anticipated the invention defined by the claims under examination.
4. I maintained a watch on the opposed application prior to its acceptance. On behalf of the opponent, I advised the opponent about of [sic] the issuance of the Examiner's second report dated 15 June 2012 shortly after its inclusion in the eDossier records if [sic] the AUSPAT database. I also advised the opponent of the response dated 24 August 2012 (and filed 27 August 2012) and I was astonished that substantial amendments to the claims had been proposed by the applicant.
5. Pursuant to filing of the proposed amendments to the claims under examination, Daniel P. Fox ("Fox"), principal of the firm, filed a Notice under Section 27 of the Act ("the Section 27 Notice") on behalf of the opponent. The Section 27 Notice included significant prior art which anticipated the claims as proposed to be amended. The Examiner maintained the objections to the claims in the Examiner's third report and accepted the application immediately after receiving a telephone call from the applicant's patent attorney.
6. When the opposed application was published as accepted, both Fox and I, as well as the opponent were astonished because clearly, the claims which had been accepted were anticipated by the prior art identified by the Examiner in the Examiner's second report and also the prior art identified in the Section 27 Notice.
7. At about the same time, my searches revealed related Australian Patent Application No. 2012205168 which had been filed as a divisional from the opposed application prior to acceptance of the opposed application, and a watch was maintained on that application as well.
8. I extended the searches mentioned in paragraph 3 above and I identified further pertinent prior art documents. I advised the opponent on the importance of opposing the opposed application.
9. I prepared and filed Notice of Opposition on 1 February 2013. I had already commenced formulating in my mind the issues relevant to the opposition, and some of the documents to be particularized as relevant prior art documents.
10. A few days after the Notice of Opposition was filed, I commenced preparation of both the Statement of Grounds and Particulars ("the SGP") and a leading declaration to form part of the EIS. In discussions with the opponent, suitable people were identified who could provide the declaratory material proposed as part of the EIS. However, most of my available time was taken up in analysing the prior art documents and selecting the most pertinent documents from the considerable amount of material revealed by the extended searches.
11. I prepared the SGP using a form of precedent from the firm's files which had been developed taking into account the relevant case law. That form had been successfully used in several previous opposition matters. I served the Statement of Grounds and Particulars in due time and filed a copy at the Patent Office. The form of precedent I used had never been subject to objections or directions before the present opposition matter.
12. At that time, the opponent's Managing Director had intended to provide a declaration and I had intended to make a supporting declaration. However, the opponent's Managing Director found that his business commitments would make it difficult to meet the time constraints throughout the opposition process and it became necessary for me to recast the two declarations into one which was suitable for me to execute. I have experience in the design and the redesign, of injection molded products.
13. In the meantime, the applicants objected to the SGP, and my time was spent in addressing the issues raised therein. The Commissioner issued directions to provide further and better particulars. There did not seem to be any basis for issuing the directions to file further and better particulars other than that there were more than ten documents listed in the SGP. In fact, fourteen of the documents in the SGP were already known to the applicant through the Examiner's reports and the Section 27 Notice. In other words, there were only six newly cited prior art documents the applicant had to accommodate.
14. I could not complete the EIS while the issues of the directions and amended "SGP" were being addressed. However, I was able to use some of the material already prepared in the leading declaration for the EIS for the further and better particulars directed by the Commissioner, thereby permitting that the Further and Better Particulars were filed on 12 July 2013, being within the short timeframe set by Directions of the Commissioner. The Further and Better Particulars were in the form of an amended Statement of Grounds and Particulars ("the amended SGP").
15. I continued with the preparation of the EIS after filing the amended SGP, as well as attending to other urgent matters requiring my attention, including attending to a backlog of work which had built up because of the extra time required in meeting the requirements of the Directions.
16. Additionally, at the same time, I discussed the necessity of seeking additional time to file the EIS with Fox because of the volume of work which he and I had at the time including a number of Federal Court matters. Consequently, we decided to request an Extension of Time (EOT) of three months.
17. The applicants then "objected" to the amended SGP and my time was spent in addressing the issues raised therein and again I was delayed from further progress in preparing the EIS. Further and better particulars ("the further amended SGP") were again filed within the timeframe set by the Commissioner's directions, which had set a date for filing the further amended SGP to be filed after the due date for the filing of the EIS.
18. Once the further amended SGP had been filed, I continued with the preparation of the EIS, believing that I had filed the EOT as discussed with Fox the previous month and that the EIS would follow the SGP in time.
19. At that time, my declaration in support of the opposition had been prepared up to the stage that it showed all of the claims were unclear or were either not novel or did not involve an inventive step and that some claims were not fairly based on the provisional specification from which priority was claimed.
20. I had also intended to include evidence covering the fact that the Notice of Entitlement in my view is defective. The declaration was almost ready for execution. However, it was decided that the entitlement issue could be covered in submissions and that the declaration was ready for execution.
21. I was due to go on annual leave from 6 September 2013 to 2 October 2013 inclusive and I was keen to have all matters completed in the opposition, as well as all other work, completed prior to my departure. In checking upon the matter, I became aware that EOT had not been filed as intended, so I prepared and filed the EOT as is a matter of record at the Patent Office, being satisfied that the EIS was ready to be filed.
22. Unfortunately, in the rush to complete other matters before catching my plane to Canada, I omitted to execute the declaration. However, on finding that to be the case, Dan Fox was able to contact me in Banff, Canada as detailed below.
23. I had left my emergency contact details with the firm, including an email address, in case I needed to be contacted while I was away. My wife had arranged for a "global roaming" SIM card in her mobile telephone which permitted contact to be made on a "call back" arrangement by which a party calling our phone would receive firstly a "disconnect" tone, and then our phone would receive firstly a "disconnect" tone, and then both parties would receive a call from an international call centre.
24. My normal email is accessible from a web-based mail server, whereby I can access my email from any internet enabled machine that has a web browser. At the first opportunity to access my email in Vancouver, British Columbia, in Canada on 2 September, there were no urgent matters. At the next available opportunity to access my email in Banff, Alberta, in Canada on 15 September 2013 (Canadian time), I saw that there were two email messages from the firm dated 12 September 2013, one of which included the unsigned declaration. On 15 September 2013 (Canadian time), I received and executed the declaration that I had prepared before on annual leave. However, I was not able to return the executed declaration straight away. I arrived in Kelowna, British Columbia on 16 September 2013 (Canadian time), at which time the executed declaration was transmitted to the firm by facsimile. I was not able to post the original straight away, but the original executed declaration was forwarded by post from Whistler, British Columbia on 17 September 2013 (Canadian time).
25. My annual leave in September 2013 had been planned for at least two years and had been booked in February 2013. It was a celebration of a significant event for my wife and cancellation, postponement or the like was not acceptable. The scheduling of all of my work, including the present opposition, had been planned around my going on leave in September 2013, but as almost always happens, events outside my or the firm's control caused delays and interference. Not the least of those events were the objections to the SGP and those objections caused considerable delay and interference which had not been expected.
26. Since returning to Australia, I have found additional evidence which I am currently analysing with a view to seeking leave to file further evidence if my analysis reveals that it should be brought to the Commissioner's attention.
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