Woven Image Pty Limited v Autex Industries Limited
[2011] APO 29
•10 May 2011
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Woven Image Pty Limited v Autex Industries Limited [2011] APO 29
Patent Application: 2006201764
Title:Fibre Panel
Patent Applicant: Woven Image Pty Limited
Opponent: Autex Industries Limited
Delegate: Greg Powell
Decision Date: 10 May 2011
Hearing Date: Written submissions filed on 29 and 30 March 2011
Catchwords: PATENTS – request under subregulation 5.10(2) – request for extension of time to serve evidence in support – no satisfactory explanation of delay – delay largely of the opponent’s making –interests of parties support an extension – interest of the opponent in filing evidence outweighs generic disadvantage to applicant of delaying grant and any infringement proceedings – public interest supports an extension – opponent clearly running a serious opposition – extension granted – no costs awarded
Representation: Patent applicant: Hodgkinson McInnes Patents
Opponent:Pipers Patent Attorneys
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2006201764
Title:Fibre Panel
Patent Applicant: Woven Image Pty Limited
Date of Decision: 10 May 2011
DECISION
I allow the opponent an extension of time until 7 May 2011 to serve evidence in support.
I make no award of costs.
REASONS FOR DECISION
Background
Patent application 2006201764 directed to a Fibre Panel was filed on 27 April 2006 by Woven Image Pty Limited. The patent application proceeded to acceptance and was advertised accepted on 21 January 2010.
Autex Industries Limited filed a notice of opposition to the patent application on 8 April 2010. A statement of grounds and particulars was served on 7 July 2010. The service of evidence in support was originally due on 7 October 2010.
The opponent sought, and was granted, 2 further extensions of time until 7 March 2011 in which to serve evidence in support. On 2 March 2011, the opponent filed an application for extension of time to serve evidence in support. The extension sought was from 7 March 2011 to 7 May 2011. This application was opposed by the applicant by a letter dated 14 March 2011.
On 16 March 2011, the Patent Office wrote a letter advising the parties that an oral hearing was not required and that the hearing would be based upon written submissions. Consequently, the parties were invited to file written submission in relation to this matter to the Commissioner and to the other side within fourteen days from the date of the letter. The parties were also given seven days (after the fourteen days time) to provide submission-in-response to the Commissioner and to the other side.
The opponent and applicant filed their written submissions on 29 and 30 March 2011 respectively. No submissions in response were received.
I note that, since requesting an extension of time, the opponent has filed with IP Australia (and served on the applicant) 5 more declarations as further evidence in support. As recognised by the applicant, these have been served after the initial deadline of 7 March 2011.
THE APPLICATION FOR AN EXTENSION OF TIME
In summary, the reasons given for the extension of time are:
(i)a number of the potential witnesses were unavailable during the summer holiday period; and
(ii)the supervising attorney, James Piper, was in hospital in February 2011 undergoing a cardioversion which restricted his ability to supervise the collection of evidence.
RELEVANT LAW
The time for serving Evidence in Support expires 3 months from the date of serving the Statement of Grounds and Particulars (regulation 5.8). This time can be extended under regulation 5.10(2):
(2)The Commissioner may:
(a)on the application of a party in the approved form; and
(b)on such reasonable terms (if any) as the Commissioner specifies:
extend the time within which the party may take a step prescribed in this Chapter, not being a step that is taken under regulation 5.3 or paragraph 5.4(1)(a).
This provision must be read in conjunction with regulation 5.10(5):
(5)The Commissioner must not give a direction under subregulation (1) or grant an application under subregulation (2) or (4) unless the Commissioner:
(a)if he or she proposes to grant an application by a party - is reasonably satisfied that the other party has been notified of the application; and
(b)if he or she proposes to act on his own motion - ensures that the parties are notified of the proposed action; and
(c)in either case:
(i)gives the parties a reasonable opportunity to make representations concerning the application or proposed action; and
(ii)is reasonably satisfied that a direction, and extension of time or the serving of evidence is appropriate in all the circumstances.
Consequently, it is a prerequisite to any decision that the Commissioner must ensure that the other party has been notified, and that both parties have had the opportunity to make representations. In the present case the opponent has been notified, and both parties have been given the opportunity to make representations.
An extension can only be granted if the Commissioner is reasonably satisfied that it is appropriate in all the circumstances. In exercising this discretion I am guided by the decisions of Burchett J in Ferocem Pty Ltd v Commissioner of Patents (1994) AIPC 91-057; 28 IPR 243, Sackville J in A Goninan & Co Ltd v Commissioner of Patents (1997) AIPC 91-330; 38 IPR 213 and Goldberg J in National Starch & Chemical Co v Commissioner of Patents (2001) AIPC 91-697, 50 IPR 398. The general principles that flow from these decisions are:
a)The power is discretionary: Regulation 5.10 confers a broad discretion, which cannot be reduced to imperative compliance with particular requirements. It is necessary to give genuine and proper consideration to all relevant considerations. (Ferocem at AIPC 38,208; IPR 247-8, Goninan at AIPC 39,434; IPR 220)
b)Explanation of delay: The reasons why the evidence was not served earlier are a relevant consideration, but a satisfactory explanation is not a mandatory requirement. (Ferocem at AIPC 38,207-8; IPR 247). It is relevant to consider the disadvantage to the other party of delays in determining the opposition, and the effect of delays on the efficient and orderly administration of the Patents Office. (Ferocem at AIPC 38,208; IPR 247, Goninan at AIPC 39,436; IPR 222)
c)The public interest: The public interest in determining a serious opposition on its merits is a relevant consideration. (Goninan at AIPC 39,435-6; IPR 222)
* In order to do this, it is necessary for the Commissioner to form a view as to the nature of the evidence that it is sought to adduce, and the significance of that evidence for the opposition proceedings. (Goninan at AIPC 39,438; IPR 225-6)
* The significance of the evidence is assessed having regard to any relevant material available, not just the evidence itself. (National Starch at [33])
* The public interest is not protected merely because some evidence has already been served. (Goninan at AIPC 39,438; IPR 225)
d)The interests of the party seeking the exercise of discretion: The interests of the party seeking the exercise of discretion are a relevant consideration. (Ferocem at AIPC 38,208; IPR 247)
DISCUSSION
Explanation of the delay
The opponent’s submissions on the explanation expanded on what was given in the extension of time request. They pointed out that they had tried to locate witnesses in the December 2010 – January 2011 period but were hampered given the fact that this was a holiday period in New Zealand with many businesses closing down during January. When the businesses opened at the end of January and early February, Mr Piper was in hospital.
With regard to Mr Piper, the opponent submitted that he was charged with the responsibility for interviewing witnesses and conducting the opposition. While Mr Piper had been able to return to work at the end of February/early March 2011, he had been under doctor’s orders not to travel overseas (including Australia).
Regarding the unavailability of witnesses in the Christmas vacation period, the applicant noted that, despite this situation, there had been a number of months outside this period in which to finalise the collection of evidence.
With respect to the unavailability of Mr Piper, the applicant submitted that it did not understand why the evidence in support could not have been finalised under the supervision of another attorney employed by Pipers Patent Attorneys. They noted that previous requests for an extension of time had been supported by a statutory declaration by Michael Costa Gambitsis, a patent attorney employed by Pipers. The applicant noted that Mr Gambitsis had indicated that he had been involved in interviewing potential witnesses in relation to the opposition. The applicant asked why Mr Gambitsis could not have finalised the remaining evidence.
I believe the applicant has raised pertinent arguments.
Concerning locating witnesses, while it is often said that the Christmas/New Year holiday period slows down (or completely halts) contact with witnesses, as the applicant has pointed out, there were at least 5 months prior to this period in which the opponent could have located witnesses (assuming that they did not start to locate witnesses until after the Statement of Grounds and Particulars was served). Waiting to locate witnesses until a period of time which is notorious for witness non-availability does not suggest diligence and the delay in locating witnesses in this period would seem to be largely of the opponent’s own making.
Regarding the unavailability of Mr Piper, while I am sympathetic to the plight of Mr Piper, I do not see how his absence could have caused a delay. As noted by the applicant, Mr Gambitsis was involved in collecting evidence. The opponent noted that this had occurred in the past while Mr Piper was overseas. I have been given no reason why Mr Gambitsis was incapable of continuing to collect evidence while Mr Piper was absent in hospital given that he had done so while Mr Piper was absent overseas. Furthermore, while Mr Piper may have been under doctor’s orders not to travel after he was discharged from hospital, I do not see how this could have prevented him (or Mr Gambitsis) from having contact with his witnesses. There are other means of communication available besides travelling to meet the witness in person. Given these actions of the opponent (or their attorneys) the delay would, again, seem to be of the opponent’s own making.
On balance, I do not think there has been a satisfactory explanation of the delay.
Interests of the parties
The applicant noted that its interests were highly prejudiced by delay in determining the opposition. The applicant submitted that they had reason to believe that exploitation within the scope of the currently pending claims could be commencing shortly in Australia. They submitted that, while refusing the extension of time might effectively block the opponent from proving its grounds of opposition, they did not think it would entirely unjustified given that a number of declarations had already been filed before the end of 2010, and they thought that the opponent was simply engaging in a delaying tactic for commercial reasons.
Under this heading the opponent simply submitted that both the applicant and they had sold products falling within the scope of claim 1 (as they understand it), and that the opponent had been selling one such product for 10 years and another for 4 years.
On balance the interest of the parties supports granting the extension. While it cannot be said that there is a zero risk of prejudice to the applicant, there seems to be no specific disadvantage to them beyond not being able to begin infringement proceedings immediately. Noting that the date of grant of a patent does not alter the date from which infringement can be claimed (as per section 57 of the Patents Act), this disadvantage does not carry significant weight. The effect of not allowing the extension, thereby denying the opponent the opportunity to put evidence before the Commissioner as to whether the application is valid in light of previous sales of certain products, would seem to outweigh the delay that has occurred in this case.
Public Interest
The public interest in determining a serious opposition on its merits is a relevant consideration. In order to do this, it is necessary for the Commissioner to form a view as to the nature of the evidence that it is sought to adduce, and the significance of that evidence for the opposition proceedings [A Goninan & Co Ltd v Commissioner of Patents (supra)]. The other arm of the public interest is the expeditious disposal of matters before the Patent Office. Considerations under this heading involve a balancing act. The question that could be asked in making a decision is “Is the delay worth it?” Will the evidence be of such relevance that the delay is excusable because the outcome of the substantive opposition will be that much better for its presence?
The applicant made no submissions on the public interest. The opponent submitted that it was in the public interest “that all relevant material be brought to bear on the interpretation of the claims of this opposed application, and that all relevant instances of prior use be located, disclosed and defined so that the substantive hearing can consider all relevant matters.”
Given the number of declarations filed prior to the extension request and subsequent to it, it is clear that the opponent is running a serious opposition primarily on the ground that the application is invalid due to prior use of the claimed invention. Extending the time to allow the evidence to be received should lead to a more correct and just decision.
Regarding the second arm of the public interest with respect to expeditious disposal of matters, while I recognise that granting an extension would introduce a delay, I am heartened by Mr Piper’s words in his letter of 15 March 2011 when he acknowledged the applicant’s objection to the extension request. In that letter Mr Piper said:
“… the Opponent requests that the current extension of time of two months be granted, but accepts that the Applicant will not consent to any further extensions of time, and thus is prepared to undertake to complete its evidence within the requested deadline expiring on 7 May 2011.”
Given the activity with service of various declarations (particularly the activity after requesting the extension), it is appears the opponent is endeavouring to file all evidence within the requested period, and it is unlikely that the opponent will need further extensions (possibly absent force majeure). Given the nature of the evidence and that the delay will likely be short, in my opinion the public interest supports an extension of time.
CONCLUSION
Taking all relevant considerations into account, I allow the opponent an extension of time until 7 May 2011 to serve evidence in support.
While the explanation of the delay was not satisfactory, the interest of the parties and the public interest justify an extension.
COSTS
Neither party made submissions on costs. In proceedings such as these it is usually the case that costs follow the event. As the applicant has been unsuccessful this would normally mean that costs should be awarded against them. However, I note that the explanation was not satisfactory and the delay is largely of the opponent’s own making. In view of these considerations I think it is appropriate that each party bear it owns costs. Therefore, I make no award of costs.
GREG POWELL
Delegate of the Commissioner of Patents
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