UON Pty Ltd v Taranis Power Group Pty Ltd - [2019] APO 6

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
UON Pty Ltd v Taranis Power Group Pty Ltd [2019] APO 6

Patent Application: 2017213531

Title:An electrical system for driving a pump

Patent Applicant:                   Taranis Power Group Pty Ltd
Opponent:  UON Pty Ltd
Delegate:  R Subbarayan
Decision Date:  5 February 2019
Hearing Date:  Written submissions filed on 12 December and 19 December 2018

Catchwords: PATENTS – extension of time to file evidence in support – Commissioner’s intention to refuse the extension – whether there were exceptional circumstances – whether the opponent acted promptly and diligently - provisions of both subregulation 5.9(2)(a) and subregulation 5.9(2)(b) enlivened – extension granted

Representation: Patent attorney for the applicant: Patenteur Pty Ltd
Patent attorney for the opponent: protectmyidea.com.au

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2017213531

Title:An electrical system for driving a pump

Patent Applicant: Taranis Power Group Pty Ltd
Date of Decision: 5 February 2019
DECISION
I am satisfied that the reasons provided by the opponent for the extension of time are sufficient to enliven the provisions of both subregulation 5.9(2)(a) and subregulation 5.9(2)(b). I grant an extension of time until 16 November 2018 to file evidence in support.
REASONS FOR DECISION
Background

This matter relates to patent application 2017213531, in the name of Taranis Power Group Pty Ltd (Taranis), which was advertised as accepted on 21 December 2017. A notice of opposition to the grant of the patent was filed by UON Pty Ltd (UON) on 19 March 2018. The statement of grounds and particulars (SGP) was filed on 19 June 2018. The SGP lists the grounds of opposition as entitlement, novelty, clarity and disclosure.
While not directly relevant to the present opposition, it is worth noting that UON has also filed on 16 January 2018, a request under s36 of the Patents Act requesting that the Commissioner declare that UON Pty Ltd and not Taranis is the eligible person for the grant of the patent on the grounds that the subject matter of the present invention was obtained from UON by one of the co-inventors during his employment with UON. On 15 June 2018, the Commissioner issued a direction that had the effect of aligning the evidentiary timetable of the s 36 matter with the evidentiary timetable of the s 59 opposition.
Evidence in support for the s59 opposition was due on 19 September 2018. Part evidence in support was filed on 19 September 2018.
On the same day UON also filed a request for an extension of time until 19 November 2018 to file additional evidence in support together with a declaration dated 18 September 2018 from Jim Waterreus (Waterreus) briefly setting out the reasons for the extension. Mr Waterreus is the Principal Electrical Engineer of UON.
The Commissioner wrote to UON that the information provided in the declaration does not satisfy her that the extension of time should be granted and requested UON to provide further information in support of their request.
UON filed further information in the form of a declaration from Mark Vincent Keogh dated 27 September 2018 (Keogh #1). Mr Keogh is the Managing Director of UON.
As this further information was still not sufficient to justify the request for an extension, the Commissioner wrote to UON on 3 October 2018, inviting them to provide further information in support of their request.
Taranis wrote to the Commissioner on 5 October 2018 that they were being prejudiced by the delay tactics employed by UON.
UON filed on 12 October another declaration from Mr Keogh dated 12 October 2018 (Keogh #2).
The Commissioner was still not satisfied that the requirements for granting an extension had been met and wrote to UON on 7 November 2018 that she intends to refuse the request for an extension of time and that UON may request to be heard on this matter within 7 days of her letter.
On 13 November 2018, UON wrote to the Commissioner requesting to be heard. The Commissioner wrote to the parties on 28 November 2018 that the hearing will be done through written submissions and setting out a timetable for submissions from UON and Taranis.
Written submissions from UON comprise a declaration from Mr Keogh dated 12 December 2018 (Keogh #3) and submissions dated 19 December 2018 from Mr Fidel Dela Paz, UON’s patent attorney (UON submissions).
Written submissions from Taranis comprise submissions dated 12 December 2018 from Mr Neal Schutte, Taranis’s patent attorney (Taranis’ submissions).
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 Patents Regulations 1991 (the Regulations) as they apply to patent oppositions. The law governing extensions of time to file evidence in a patent opposition depends upon the date on which the opposition commenced. Where the evidentiary period commenced on or after 15 April 2013, as in the present case, the extension is governed by regulation 5.9 of the Regulations as in force on 15 April 2013.
Subregulation 5.9(2) states:
The Commissioner may extend the period only if the Commissioner is satisfied that:
(a) the party who intended to file evidence in the period:
(i) has made all reasonable efforts to comply with all relevant filing requirements under this Chapter; and
(ii) despite acting promptly and diligently at all times to ensure the appropriate evidence is filed within the period, is unable to do so; or
(b) there are exceptional circumstances that warrant the extension.
Exceptional circumstances are defined in subregulation (5):
In this regulation:
exceptional circumstances includes the following:
(a) a circumstance beyond the control of a party that prevents the party from complying with a filing requirement under this Chapter;
(b) an error or omission by the Commissioner that prevents a party from complying with a filing requirement under this Chapter;
(c) an order of a court, or a direction by the Commissioner, that the opposition be stayed pending the completion of a related proceeding or action under the Act.
These provisions have been considered by the Commissioner in TRED Design Pty Ltd v Julie- Anne McCarthy and Bradley McCarthy[1] (the TRED decision) and Merial Limited v Novartis AG[2] (the Merial decision). The principles applied in those decisions, which I accept as correct, are that I must ask myself the following questions:
1. Has the party (and their attorney or agent) made all reasonable efforts to comply with all relevant filing requirements?
2. Was the failure to file the evidence in time despite the party (and their attorney or agent) acting promptly and diligently at all times to ensure the evidence is filed in time?
3. Were there exceptional circumstances that warrant the extension?
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.
[1] [2013] APO 57; (2013) 105 IPR 291.
[2] [2013] APO 65; (2013) 105 IPR 133.
The Explanatory Statement accompanying the Amendment Regulation (the Statement) confirms the seriousness of this test:
"A major cause of protracted opposition proceedings is extensions to the various time periods for providing evidence. The law has developed in such a way as to significantly narrow the Commissioner's discretion to disallow extensions. As a result, oppositions are normally subject to multiple extensions of time and extend over many years, contrary to the interest of the public and parties in resolving oppositions faster.
New subregulation 5.9(2) addresses this issue by introducing a new test for determining whether an extension of time for filing evidence is justified. The Commissioner will not be able to extend time periods unless one of these conditions was made out. The party seeking the extension will bear the onus of convincing the Commissioner of this. Once the conditions in subregulation 5.9(2) are met, the Commissioner still has the discretion to consider whether or not it is appropriate that an extension of time be granted. In applying the test, the Commissioner will not be required to give a direction to extend a period solely because of delays caused by a legal representative failing to act promptly or diligently, by difficulties in obtaining expert evidence that could have been anticipated and acted on or by attempts to settle the proceedings.
Where a party cannot satisfy the Commissioner that an extension is justified under the test, the Commissioner will not have the power to give a short extension to allow the filing of evidence immediately available or to validate evidence filed out of time.
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."
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.
The application for extension of time
The following is a general summary of the actions taken by UON in the preparation and filing of the evidence in support.
·In January 2018 Mr Keogh asked Mr Waterreus to compare the claims of the accepted application with the disclosure in the specification of UON’s patent application AU 2017210650 that was filed on 5 August 2017. Based on this comparison which was completed around 22 February, UON decided to oppose the present application and also filed proceedings in the Supreme Court of Western Australia against Taranis and Mr Hoascar. The notice of opposition was filed on 19 March 2018.
·Mr Waterreus was also then asked to provide expert evidence in relation to the present opposition as he is one of a very limited number of leading experts in Australia in Variable Speed Drives (VSD) technology UON, which is the field of the invention.
·Mr Waterreus developed health issues in February 2018 and was admitted to hospital and over the next few months underwent several test and investigations. He however continued to work for UON remotely from Queensland but at reduced hours.
·Even when UON was advised on 19 June 2018 that evidence in support was due on 19 September 2018, it was UON’s continued intention to use Mr Waterreus as their expert witness as he continued to work remotely and it was Mr Keogh’s belief that Mr Waterreus had already done most of the work on his evidence.
·Mr Waterreus was diagnosed with prostate cancer on 11 July and after further tests underwent surgery on 18 August.
·Around that time UON’s patent attorney asked to get in touch with Mr Waterreus to make sure his evidence is completed on time. It was only then it became apparent that Mr Waterreus still needed to do much more work than what UON had initially thought.
·On 6 September Mr Waterreus informed Mr Keogh that while he would not be able to complete his evidence by 19 September, he would be able to complete it within a further 2 months.
·At this point Mr Keogh considered using other UON engineers to complete the evidence in support but they either did not have the appropriate experience in VSD technology or were committed to other projects and would not have the time to work on the evidence.
·UON also considered engaging experts from outside of UON but decided that at this late stage they would still not be able to complete the evidence in time. UON has also indicated that they made a deliberate decision not to involve any experts their legal team was using for the Supreme Court proceedings as it could compromise their status as independent experts in those proceedings.
·On 19 September 2018, UON filed part evidence in support including the claim comparison prepared by Mr Waterreus and a declaration by Mr Keogh and also a request under s223 to extend the time to complete the evidence in support by 2 months.
·Mr Waterreus further evidence that relates to clarity and disclosure of the claims of the opposed application was finally prepared in the form of a declaration dated 16 November 2018 and filed with the Commissioner on 19 November 2018.
Regulation 5.9(2)(b - Was the failure to file all of the evidence due to exceptional circumstances?
It is clear from my summary of UON’s explanation for not having been able to file all of their evidence in support by the regulated deadline that the main cause of this failure is the health issues of UON’s expert Mr Waterreus. The Commissioner appears to have therefore taken the view that UON is relying only on the exceptional circumstances provisions of subregulation 5.9(2)(b).
“The declaration filed in support of the request relates to health issues of the Opponent’s declarant, and so I understand the present request to be directed to reg 5.9(2)(b)[3].”
[3] Commissioner’s letter to the parties dated 25 September 2018
All of the Commissioner’s assessment and rejection of the request for the extension of time is therefore primarily in relation to subregulation 5.9(2)(b). I will therefore consider this subregulation before I consider subregulation 5.9(2)(a) relating to promptness and diligence in the preparation of evidence.
The Commissioner in rejecting the request for an extension was of the view that the fact the Mr Waterreus had experienced significant health issues is not a circumstance that in itself prevented UON from filing the evidence by the due date.
“While it is clear that Mr Waterreus has experienced significant health issues during the evidentiary period which would understandably have prevented him from finalising the evidence in support, it is not clear that this is a circumstance that in itself prevented the Opponent from complying with the due date. That is, was it possible that another expert could have been located to complete the evidence when it became apparent that Mr Waterreus would be unable to? When did it become clear that Mr Waterreus would not be able to complete the evidence in time? Based on the chronology provided it would seem that this would have been early in the evidentiary period. What steps did the Opponent take to investigate other possible experts? In the absence of this information it is not possible to form a view as to the extent to which Mr Waterreus’ health problems prevented the Opponent from filing its evidence in support in time.
Accordingly, at this point I am not satisfied that the circumstances described prevented the Opponent, as opposed to its preferred expert, from complying with the due date for filing evidence in support”[4].
“It is not uncommon for experts to become unavailable during the opposition process. I don’t consider this situation to fall outside the normal evidentiary process. As noted by the Delegate at Paragraph 64 in Julie-Anne McCarthy and Bradley McCarthy v TRED Design Pty Ltd [2013] APO 57 (11 November 2013), with my emphasis added:
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”[5].
[4] Commissioner’s letter to the parties dated 25 September 2018
[5] Commissioner’s letter to the parties dated 7 November 2018
The Commissioner was also of the view that the declarations from Mr Keogh does not explain what steps UON had taken to engage other experts in the period from when Mr Waterreus’s health deteriorated around 29 June 2018 to when the evidence was due.
“While I note that other engineers were considered, but determined to either not have the relevant background, experience, or unavailable due to time commitments, travel and location, no further information is provided. Specifically, what steps the Opponent had taken, from the relevant date, in an attempt to comply with the due date. It would also be helpful the steps taken by the Opponent was accompanied with a timeline”[6].
[6] Commissioner’s letter to the parties dated 3 October 2018
Taranis has submitted that “Mr. Waterreus’ health concerns are clearly a circumstance out of Mr. Waterreus’ control, but this is not a circumstance out of the Opponent’s control to provide its evidence on time’ and that as the delegated noted in TRED, the “…sudden unavailability of an expert is not an exceptional circumstance”[7].
[7] Taranis’ submissions at page 2
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). The one that is relevant to the present case is that of item (a), namely “a circumstance beyond the control of a party that prevents the party from complying with a filing requirement under this Chapter”.
While the regulations do not provide further guidance on or examples of what could be considered to be ‘circumstance beyond the control of a party’, the Statement notes that “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” and “Commissioner will not be required to give a direction to extend a period solely because of delays caused … by difficulties in obtaining expert evidence that could have been anticipated and acted on…” (my emphasis)
It is therefore quite clear that in the appropriate circumstances the sudden unavailability of experts or difficulties in obtaining expert evidence can be considered to be exceptional circumstances. The question that I therefore need to ask is whether the inability of Mr Waterreus to complete his evidence by 19 September 2018 was beyond the control of UON in that it was something that could not have been anticipated and acted upon.
The main concerns of the Commissioner in rejecting the extension are that it is unclear when UON realised that Mr Waterreus could not complete his evidence in time and when they did realise this it is not clear what efforts were made to engage other experts who could complete the evidence before the deadline. I will now consider each of these concerns.
When did UON realise that Mr Waterreus would not be able to complete his evidence within time?
While Mr Waterreus health issues started in February 2018 and he had to undergo numerous tests and investigations, he advised Mr Keogh that he could continue to work for UON at reduced hours. Mr Keogh therefore believed at this time that Mr Waterreus would be able to complete his evidence before the deadline of 19 September 2018 as Mr Waterreus had already completed the claim comparison with the prior art.
Mr Waterreus underwent a successful medical procedure in June 2018 but other serious medical issues were also suspected with further tests revealing prostate cancer on 11 July 2018. This was then followed by further tests and finally surgery that took place on 18 August 2018. It is only when Mr Keogh spoke to Mr Waterreus on 27 August 2018 after his surgery, Mr Waterreus indicated to Mr Keogh that he would continue to be in the post-operative recovery phase for the next few weeks and as he still had a fair bit of work to do on his evidence he would not be able to complete it within time and requested Mr Keogh to seek an extension of time.

In my view, it is quite clear that UON realised only in the last week of August 2018 that Mr Waterreus would not be able to complete his evidence by the deadline of 19 September 2018
What efforts were made to engage other experts who could complete the evidence before the deadline?
It is clear from Mr Keogh’s declaration of 12 December that UON did consider using other UON engineers but they either lacked the relevant expertise in the technology or were committed to other projects with deadlines
“22.1 UON engineers Kean Teoh and Edward Lim were considered but I was of the view they did not have necessary experience or expertise to give opinion evidence in relation to Taranis’ Patent Application. Kean has been qualified for 15 years in Electrical design/installations. Edward has been qualified for 19 years in electrical Metering and power quality. However, neither has particular expertise in VSD technology, rotating machines and alternators that I considered necessary for the expert opinion.
22.2 I also considered requesting that UON engineer Luke Dennis give evidence. Luke has worked for UON for 7 years in the capacity as electrical project engineer for installation works. During June– September 2018, Luke was working remotely at Marandoo on a Dewatering Project. Luke was committed to deliver that project in time. Projects have bank guarantees which can be at risk if the project deadline slips. As a project key engineer, Luke was not available to provide evidence.”[8]
[8] Keogh #3 at [22]
Mr Keogh has also stated that when Mr Waterreus informed him in the last week of August 2018 that he may be unable to completer his evidence in time, “it was too late to seek evidence from another expert, even f there was someone with the necessary expertise.”[9]
[9] Keogh #3 at [23]
As UON clearly believed till the end of August 2018 that Mr Waterreus would be able to complete his evidence, I see no compelling reason for them to have considered engaging another expert before that time. While Mr Waterreus had health issues since February 2018, the diagnosis of cancer and the need for surgery was not made till the latter half of July 2018. This gave UON only around 7 weeks to find and engage a new expert in this field and then for that expert to provide their evidence. I accept that it was unrealistic to expect UON to locate and engage an alternate expert and for that expert to provide their evidence in such a short timeframe.
Conclusion on subregulation 5.9(2)(b)
While Mr Waterreus developed health issues from February 2018, he was able to continue working while undergoing tests and treatment and he firmly believed that he would be able to complete his evidence on time. Mr Waterreus’ diagnosis with cancer and the need for surgery was completely unrelated to his previous health issues and it was therefore clearly something unexpected and beyond his control. UON believed based on Mr Waterreus’ advice that they would be in a position to complete their evidence in time till at least late July 2018 and it was therefore reasonable for them to not have engaged other experts. Despite this it appears that they did explore this possibility but could not find an expert with the relevant expertise or the time. It was the unexpected new major health issue of Mr Waterreus and the lack of a reasonable amount of time to engage and get the evidence from another expert thereafter that eventually prevented them for completing the evidence in support by the deadline. Clearly these circumstances were unexpected and beyond the control of UON and in my view can be considered as exceptional circumstances within the meaning of subregulation 5.9(2)(b)
Subregulation 5.9(2)(a) – Was the failure to file all of the evidence despite making all reasonable efforts and acting promptly and diligently
The delegate of the Commissioner in his letter of rejection dated 7 November 2018, also briefly considered whether an extension of time is appropriate under subregulation 5.9(2)(a).
“For the benefit of the Opponent, I have considered whether an extension is appropriate under 5.9 (2) (a). I note that where an extension is sought under Reg 5.9 (2) (a), it is a requirement that Opponent to make “all reasonable efforts” to comply with relevant filing requirements, and to have acted “promptly and diligently at all times”. Despite the request of the two previous delegates to provide a timeline of the events to assist in consideration, the Opponent has yet to provide any detail to as to what steps and when they were taken with respect to finding experts. As such, I can only assume that the Opponent was resigned to relying on Mr Waterreus for evidence the entire period allotted for filing evidence in support. Therefore, it would appear that there were no efforts made to engage another expert beyond establishing that there were none that could be relied on immediately. As such, I am not satisfied I can enliven the extension under Reg 5.9 (2) (a).”
Taranis has submitted that the conduct of UON in combining the evidence schedules of the S36 and S59 oppositions should be considered as unreasonable conduct.
“The Opponent has strongly objected to the alignment of the S36 and S59 evidence schedules in their letter of 11 April 2018, wherein any delays were deemed highly unacceptable and prejudicial to their commercial interests. Opponent’s desire to expedite the opposition was further maintained in their letters of 1 May 2018 and 5 June 2018. At the hearing of 14 June 2018, Opponent again indicated their desire to expedite the resolution of these opposition proceedings, prompting the Hearing Officer to encourage the parties to proceed expeditiously in the completion of their respective evidence.
As instigator of both S36 and S59 oppositions, it is not unreasonable to expect the Opponent to have their case in order, particularly as the majority of Evidence in Support provided to date are affidavits dated 2016 and 2017 on related Supreme Court proceedings between the Opponent and Applicant. However, only part of Opponent’s Evidence in Support was filed right at the deadline for doing so, with now a further request for extension of time.
As a result, given that the Opponent was somewhat aware of Mr Waterreus’s unfortunate health concerns for some time and nonetheless failed to make suitable arrangements, shows that the Opponent had not made reasonable efforts, or acted promptly and diligently at all times”[10].
[10] Taranis correspondence of 5 October 2018
Taranis also questioned why Mr Keogh or Mr Anthony Reid could not have provided evidence when it became clear that Mr Waterreus could not complete his evidence in time.
In further support hereof, Opponent mentions in its submission of 13 November 2018 that “No other experts with the relevant experience and expertise were available at the relevant time”. However, in Opponent’s Statement of Grounds and Particulars in this opposition, it is clearly alleged that the patent application under opposition lacks novelty in light of Opponent’s patent application no. 2017210650, which lists Mark Vincent Keogh and Anthony Carl Reid as inventors. If no suitably experienced outside experts were considered out of possible prejudice in another legal matter, following the unforeseen unavailability of Opponent’s Principal Electrical Engineer Mr. Waterreus, would it not be a reasonable effort when acting promptly and diligently at all times to at least consider expert evidence provided by the inventors of the alleged anticipating invention?
While the health issues cited by UON would suggest that UON is primarily seeking an extension under the exceptional circumstances provisions of subregulation 5.9(2)(b), in my view just because it is an health issue does not preclude it from also being considered under the provisions of subregulation 5.9(2)(a), As long as UON is able to demonstrate that despite acting promptly and diligently at all times to ensure the evidence is filed within the period, it was unable to do so, then the provisions of subregulation 5.9(2)(a) can also be enlivened. So I will also therefore consider whether an extension of time should be granted under these provisions.
Has the party made all reasonable efforts to comply with all relevant filing requirements?
The general principles to be applied in relation to this requirement has been summarized by the Delegate in BASF SE v The Lubrizol Corporation [2017] APO 10 at [16] as follows:
“The requirement in paragraph 5.9(2)(a)(i) imports a consideration of reasonableness of the relevant party’s conduct over the totality of the opposition proceedings, rather than its compliance with the particular evidentiary period in question, which is addressed by the specific requirement of paragraph 5.9(a)(2)(ii). If a party has been prompt and diligent in relation to the preparation and filing of evidence, it will normally have made all reasonable efforts to comply. It is therefore unnecessary to consider separately whether the opponent has made all reasonable efforts to comply with the evidentiary time limit”.
While UON did object to the alignment of the evidence schedules for the s36 and s59 proceedings, I see nothing unreasonable in UON wanting to finalise the s36 entitlement matter as early as possible. While the Commissioner still decided to align the schedules, this was more to do with regard to efficient use of the resources of the Commissioner and the parties rather than any unreasonableness in UON’s request to not align the schedules. UON filed both the Notice of Opposition and the Statement of Grounds and Particulars within the time specified in the regulations. I am therefore satisfied that UON has made all reasonable efforts to comply with the relevant filing requirements prior to the evidentiary period.
Was the failure to file all of the evidence despite acting promptly and diligently?
As noted in earlier decisions such as TRED and BASF, in deciding whether a party has acted promptly and diligently in preparing and filing their evidence 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, how long did it take) covering at least the period in question, an explanation of any significant delays and the nature of the evidence that they are preparing..
It is clear from the various declarations of Mr Keogh that UON had decided to use Mr Waterreus as their expert witness once they had decided to oppose the present application. The notice of opposition was filed on 19 March 2018 and by this time Mr Waterreus had already developed health issues. However he continued to work for UON, albeit at reduced hours, and had advised Mr Keogh that he would still be able to complete his evidence, Mr Keogh therefore decided to continue with Mr Waterreus as UON’s expert witness. While in retrospect this may have been a poor decision, I think it is quite reasonable for Mr Keogh to have persisted with Mr Waterreus given his expertise in this technology and Mr Waterreus own belief that he would still be able to provide evidence despite his health issues.
The SGP was filed within time on 19 June 2018, which meant that UON had until 19 September 2018 to file their evidence in support. The day after the filing of the SGP, Mr Waterreus’s health condition appears to have worsened requiring him to be hospitalised and undergo further procedures and testing. This led to him being diagnosed with aggressive prostate cancer which required surgery that then took place on 18 August 2018. This was followed by a 6 week post-operative recovery process. This last episode of hospitalisation, testing, surgery and recovery has clearly coincided with the 3 month period starting from the date of filing of the SGP to file the evidence in support. Despite the further deterioration of Mr Waterreus health from 20 July 2018, UON still chose not to engage other experts to complete the evidence in support within this time.
The Commissioner appears to have taken the view that promptness and diligence on the part of UON would have required UON to seek and engage the services of another expert when Mr Waterreus health deteriorated towards the end of July 2018 rather than just hope that Mr Waterreus would get better and be able to complete his evidence.
While Mr Keogh’s initial declaration may have been quite vague about UON’s diligence in trying to locate another expert to complete their evidence in support, paragraphs 22 and 23 of Mr Keogh’s declaration of 12 December 2018 that I have quoted earlier, clearly indicate that UON did consider using one of their other engineers but they either lacked the relevant expertise in VSD technology or were already committed to other projects. Furthermore as noted earlier, it was not until late August 2018 that Mr Waterreus advised Mr Keogh that he would be unable to complete his evidence within time and I accept that would have been too short a timeframe to get evidence from a totally new expert even if it was an in-house expert such as Mr Keogh himself or Mr Reid as suggested by Taranis.
However there is one aspect of Mr Keogh’s actions that may suggest a lack of diligence. I am referring to Mr Keogh’s statement that he was initially of the belief that Mr Waterreus had “not much left to do (only about 10% at most)”[11] but then subsequently realised that “much more work needed to be done to complete Jim’s evidence and that my understanding that it was 90% complete was incorrect”[12]. While this may suggest that Mr Keogh had not really discussed with Mr Waterreus as to how much work was involved till their attorney enquired about it in August 2018 and it could be argued that due diligence would have required Mr Keogh to have done this much earlier especially when he was aware of Mr Waterreus’ health issues, I do note that Mr Waterreus had indicated to Mr Keogh in the initial stages that he could still complete his evidence in time. In my view it was quite reasonable for Mr Keogh to have accepted this without questioning how much work was still required.
[11] Keogh # at [15]
[12] Keogh # at [18]
While Mr Keogh’s declarations may lack a formal timeline of what considerations were made, what actions were taken and when, in my view there is adequate information in these declarations to satisfy the Commissioner that there was no serious lack of promptness or diligence on the part of UON. Any perceived lack of promptness or diligence can be explained by UON’s continued belief that Mr Waterreus would get better and be able to complete his evidence within time.
I also note that UON has completed their evidence in support by filing another declaration from Mr Waterreus on 16 November 2018, which is within the extension sought. This also suggests that had it not been for the further deterioration of his health in July 2018, Mr Waterreus would have been able to complete his evidence in time. A quick perusal of this declaration reveals that this discusses the s40 grounds of clarity and the construction of certain terms in the claims.
Conclusion on subregulation 5.9(2)(a)
UON decided to use Mr Waterreus as their expert early in the proceedings and also filed part evidence in support from him within the deadline for filing their evidence. Despite his health issues, Mr Waterreus had been confident that he could complete the rest of his evidence within time. However his health deteriorated towards the end of July requiring major surgery and post-operative care. This is when he advised UON that he would be unable to complete his evidence in time and by this time it was too late for UON to engage an expert who could provide his evidence before the deadline. I do not consider that are any significant unexplained delays. I am satisfied that UON has acted promptly and diligently in the circumstances.
Discretionary Matters
As noted earlier, even if all the mandatory requirements of paragraph 5.9(2)(a) or 5.9(2)(b) have been met, an extension is not automatic; the Commissioner should then consider whether there are any reasons why the extension should not be granted. The new declaration of Mr Waterreus is clearly relevant to the ground of clarity and claim construction. I can see no reason not to exercise my discretion to grant the extension.
Conclusion
I am satisfied that UON has met the requirements of both subregulations 5.9(2)(a) and 5.9(2)(b). The requested extension was till 19 November 2018; however UON completed their evidence in support on 16 November 2018. I therefore grant an extension of time to 16 November 2018 for UON to file all of their evidence.
R Subbarayan
Delegate of the Commissioner of Patents