Xylotheque Limited v Construction Research & Technology GmbH
[2012] APO 27
•6 March 2012
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Xylotheque Limited v Construction Research & Technology GmbH [2012] APO 27
Patent Application: 2007272060
Title:Stable air-placed concrete accelerator dispersion with a high active substance content
Patent Applicant: Construction Research & Technology GmbH
Opponent: Xylotheque Limited
Delegate: Xavier Gisz
Decision Date: 6 March 2012
Hearing Date: Written submissions filed on 25 January 2012, 1 February 2012 and 2 February 2012
Catchwords: PATENTS - request under subregulation 5.10(2) – request for extension of time to serve evidence-in-answer – satisfactory explanation of delay – public interest is in favour of the granting the extension – interests of parties are offsetting – extension of time is granted
Representation: Patent applicant: Watermark Patent and Trade Marks Attorneys
Opponent:Pappas IP Patent & Trade Mark Attorneys
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2007272060
Title:Stable air-placed concrete accelerator dispersion with a high active substance content
Patent Applicant: Construction Research & Technology GmbH
Date of Decision: 6 March 2012
DECISION
I grant the extension of time to serve evidence-in-answer in respect of the patent application until 23 March 2011.
Costs are awarded against the Opponent.
REASONS FOR DECISION
Background
Patent application 2007272060 in the name of Construction Research & Technology GmbH (the Applicant) was advertised as accepted on 21 January 2010. An opposition to the grant of the patent was filed by Xylotheque Limited (the Opponent) on 21 April 2010. The Opponent completed their evidence-in-support of the opposition on 23 December 2010. The Applicant has been granted three extensions of time (up to 23 December 2011) to serve their evidence‑in‑answer. On 23 December 2011 a fourth extension of time to serve their evidence‑in‑answer was requested by the Applicant. On 10 January 2012 the Opponent opposed this extension of time.
On 12 January 2012 the Delegate informed the parties that a decision would be made on the basis of written submissions and allowed the parties 14 days to provide written submissions, and a further 7 days to provide written submissions in response.
The relevant law
The subregulations of regulation 5.10 dealing with extensions of time to serve evidence state:
(2)The Commissioner may extend the time … :
(a) on the application of a party in the approved form; and
(b) on such reasonable terms (if any) as the Commissioner specifies; and
(c) after the party has served a copy of the application on the other party.
(5)The Commissioner must not … grant an application under subregulation (2) … 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 or her 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, an extension of time or the serving of further evidence is appropriate in all the circumstances.
The considerations for deciding whether to grant an extension of time under regulation 5.10 have been investigated in the Federal Court in Ferocem Pty Limited v Commissioner of Patents (1994) 28 IPR 243, A Goninan and Co Ltd v Commissioner of Patents (1997) 38 IPR 213, and National Starch & Chemical Company v Commissioner of Patents (2001) 50 IPR 398. The relevant considerations arising from these decisions have been set out and followed in numerous Patent Office decisions relating to regulation 5.10, and may be summarised as follows:
(a) The broad discretion afforded by regulation 5.10 cannot be reduced to insistence on imperative compliance with particular requirements;
(b) The reasons why the evidence was not served earlier is a relevant consideration, but a satisfactory explanation is not a mandatory requirement;
(c) The public interest in determining a serious opposition on its merits is a relevant consideration and must be balanced with the requirement that matters before the Patent Office should be dealt with in an efficient, orderly manner and not be unduly prolonged;
(d) The public interest is assessed by forming a view as to the nature of the evidence to be adduced, and the significance of that evidence for the opposition proceedings. The nature and significance of the evidence is assessed having regard to any relevant material available, not just the evidence already on file;
(e) The interests of the opponent, the applicant and any other parties are a relevant consideration.
The application for an extension of time
The Applicant’s request for extension of time provides the following circumstances and grounds upon which it is made:
“A further expert was identified and briefed. However, upon detailed review of the brief the expert indicated that he did not have enough specific knowledge to properly address many of the questions raised. Accordingly, we have found it necessary to secure another expert. This has again proved difficult in view of the very specialized technical field. However, a new expert has now been identified and briefed. The expert is presently in the process of reviewing and considering the material we have provided to him. Further time is requested to allow the expert to finalize his report and for a declaration to be prepared for review and execution by the expert.”
Explanation of the delay
The Applicant’s submissions
A summary of reasons for the delay is given in the Applicant’s submissions at paragraphs 7 to 10 and 13 to 15:
“The principal reason for the delay in serving evidence concerns the identification and retention of expert opinion.
As will be expanded on below, five technical experts have been sequentially identified and engaged (at least in part) during the life of the opposition. Three of the experts have been briefed in detail on the matters surrounding the opposition.
However, all of the experts identified and engaged, with the exception of the current expert, have subsequently relinquished their roles, either on the basis of insufficient expert knowledge in respect of the details of the technology, a realization that they were not free to act as expert due to conflicting interests or insufficient time to devote to the preparation of expert opinion.
The subject matter of the present patent application concerns set accelerators for air placed concrete. It is a highly specialized technical field requiring a detailed knowledge of, not only the chemistry of set accelerators, but of their commercial application. Few individuals have such a background, a view clearly shared by the opponent who stated in their application for an extension of time to serve evidence in support of the opposition, dated 20 October 2010, 'Our attempts to find an Australian expert to assist with Evidence-in-Support were unsuccessful, as the products in this field as at the earliest priority date were primarily researched and developed outside of Australia. We therefore found it necessary to seek an expert outside of Australia'.
…
While it might seem counter-intuitive that the applicant would not be able to easily identify an expert witness in its own field, it should be appreciated that it is preferable to find somebody who is completely independent from the parties of the opposition, and that this may take considerable time.
We submit that there has been a diligent approach to identification, engagement and briefing of experts so as to produce and finalise evidence in a timely manner. A series of unrelated events in respect of potential experts' knowledge or other circumstances have cumulatively contributed to the present delay.
It is clear from the above table that the applicant, from the outset of the opposition, has had an intention to vigorously defend the present accepted patent application, and has every intention of continuing to do so.”
The Opponent’s submissions
The Opponent states in their submissions under the heading ‘Lack of Explanation for Delay’:
“Applicant has had knowledge of the evidence in support for a year, but in the present application states its most recent attempt of seeking an expert is because the previously approached expert doesn't have sufficient knowledge. The Opponent considers that this explanation is not credible.
Both the Applicant and its European and local patent attorneys are well versed in opposition proceedings, and know full well the first thing one does when engaging an expert is to assess whether the expert has sufficient knowledge to be used in such proceedings and whether a conflict of interest exists.
The Opponent believes that an adequate explanation for the delay has not been provided, particularly as the Applicant has already had a whole year to find an expert and draft evidence in answer.
Considering the Applicant and its parent/associated company is the largest chemical company in the world and the largest manufacturer/supplier of accelerators for air placed concrete, the Opponent finds it difficult to believe the Applicant does not have the ability or resources to identify a suitable expert and draft the evidence within the last 12 months.
There is no manufacture of "accelerators" for air placed concrete in Australia. The bulk of expertise and those involved in research and development regarding accelerators is in Europe, which the Opponent understands makes it difficult to source an expert in Australia. Under such circumstances seeking a European expert would be appropriate. Considering the Applicant is itself based in Europe and is faced with opposition proceedings on the corresponding European patent, with "oral proceedings" set down for early March 2012, it is difficult for the Opponent to believe the Applicant has not had a suitable European expert (including if necessary one of its own employees) assess the evidence in support for the purpose of providing evidence in answer.
The Opponent is of the opinion that the Applicant is intentionally withholding or delaying its evidence in relation to the present Australian opposition to best position itself for the European opposition. By this is meant that the Applicant is intentionally withholding or delaying evidence as long as possible, so that Opponent cannot effectively review same for purposes of a submission due 6th February 2012 on the corresponding European opposition proceedings. The Opponent believes the Applicant is relying on extension grounds that not only lack credibility but are not properly explained to justify its request for extension of time.”
Explanation of the delay
The Applicant failed to serve the evidence-in-answer in the time period of 23 September 2011 to 23 December 2011. The circumstances that occurred in this period are given in Table 1 of the Applicant’s submissions and summarised as follows.
Ken Fletcher agreed to provide expert evidence on 6 September 2011 and was briefed on 8 September 2011, however due to work commitments was unable to complete the work until the end of October. On 4 November 2011 Ken Fletcher indicated that he did not have detailed chemical knowledge to answer some of the questions in the Brief. On 2 December 2011, the Applicant determined that Andre Walliser would be a suitable expert and supplied him with a Brief on 6 December 2011. On 23 December 2011, the Applicant applied for an extension of time, stating that Andre Walliser did not have specific knowledge to answer some of the questions in the Brief, also noting that a new expert (Dr Monserrat Alfonso) had been identified and briefed to prepared evidence-in-answer.
10. The Opponent has argued in their submissions that the delay in preparing evidence-in-answer has been a deliberate ploy so that Opponent cannot benefit in reviewing the evidence before making its submissions, due 6th February 2012, on the corresponding European opposition proceedings.
11. The Applicant’s submissions in response state at paragraphs 7, 8, 10, 13, and 17:
“The opponent is of the opinion that the applicant has intentionally withheld or delayed filing its evidence in relation to the present opposition, so that the opponent cannot effectively review the same for purposes of a submission due 6 February 2012 in respect of corresponding European opposition proceedings.
We submit that the corresponding European opposition is of no relevance to the present application for an extension of time to file evidence in answer.
…
We submit that the opponent's accusation of deliberate delay is wholly inaccurate and without foundation. Such tactics have never been discussed between the applicant and the applicant's Australian attorneys.
…
… [I]n respect of the European opposition, as the applicant already responded to the opponent's allegations of lack of inventive step in the response lodged on 12 July 2010 and as the opposition division did not issue any opinion on inventiveness, it is not at all clear what relevance evidence in answer in the Australian opposition would have on the opponent's submissions due by 6 February 2012 in Europe.
…
In view of the above we submit that the present request for an extension of time is genuine and is made in good faith. The corresponding European opposition proceedings have had no bearing on the delay in filing evidence in answer.” (Emphasis added)
12. The Applicant’s denial of this suggestion, and further argument that a strategic advantage for this delay did not even exist, is prima facie reasonable. Since the Applicant has direct knowledge of the circumstances whereas the Opponent does not, the Applicant’s submission on the matter carries more weight than the Opponent’s submission. Consequently I reject the suggestion that the delays are a deliberate strategy to aid in the prosecution of the corresponding European opposition.
13. What has not been adequately explained is why the Applicant did not obtain a declaration from Ken Fletcher or Andre Walliser (or both) in relation to the matters that were within their knowledge. The Applicant could then have sought a declaration from a further person only in relation to the outstanding matters. Apart from this point I consider that the Applicant has been making methodical, if lethargic, progress in the preparation of evidence.
14. I consider the Applicant’s actions in this period display a lack of urgency to prepare and serve the evidence. In particular, I find the two months from the time Ken Fletcher agreed to provide expert opinion to the time he informed the Applicant that he was unable to answer some of the questions surprisingly unhurried. Although the actions of an expert witness is not entirely under the control of the Applicant, the Applicant has a responsibility to keep the expert to a timetable that corresponds with the deadlines of the opposition.
15. Though the Applicant’s management of the circumstances may have caused a delay longer than necessary, I consider that the described circumstances would have still caused a delay regardless of their management. On the whole I am satisfied that the circumstances prevented the Applicant from serving the evidence-in-answer within the prescribed period.
The public interest
Nature and significance of the evidence-in-answer
16. In Goninan (supra) Sackville J stated:
“In order for the Commissioner or his delegate to give proper, genuine and realistic consideration to the aspect of the public interest I have identified, it is necessary to consider the nature of the evidence the opponent seeks to adduce and the significance of that evidence for the opposition proceedings.”
17. From the Applicant’s submissions at paragraph 17:
“Following provision of a Brief to Dr Walliser who then forwarded it to Dr Montserrat Alfonso on 6 December 2011, initial expert opinion was provided on 17 January 2012. The opinion of Dr Alfonso directly contradicts, at least some of the statements by the opponent's expert present in paragraph's [sic] 55 to 75 of the Statutory Declaration of Roar Myrdal (20 December 2010).”
18. A direct contradiction of an expert opinion by another expert will prima facie have a serious effect on the outcome of the opposition. Not allowing that expert opinion to be adduced will diminish the public’s certainty in the Delegate’s decision and ultimately the validity of the patent. Inversely, allowing that expert opinion to be adduced will increase the public’s certainty in the decision and validity of the patent. The public interest is clearly in having certainty in the validity of patents and consequently the public interest is in granting the extension of time in this regard.
Expeditious disposal of the opposition
19. The public interest is also in the expeditious disposal of the opposition. In Ferocem (supra) Burchett J. states:
“The determination of an application for an extension of time under reg 5.10(2) is a balancing exercise between the interests of the persons directly concerned in the application and opposition in question and public interests including the expeditious disposal of matters in the Patents Office, questions of cost and efficiency, the maintenance of proper professional standards by those who deal with the Patents Office and the public interest in having a serious opposition dealt with on the merits rather than shut out in consequence of a failure in procedure.” [emphasis added]
20. The evidence-in-answer was originally due to be served on 23 March 2011. Allowing this extension would mean the delays in serving evidence-in-answer totalling twelve months would have occurred. The opposition has been running for more almost two years, thus the delays in preparing the evidence-in-answer accounts for approximately half of the opposition running time. In view of this, allowing the extension of time is not considered to provide an expeditious disposal of the matter and consequently granting the extension of time is not in the public interest in this regard.
Summary of public interest
21. In determining the public interest I have found the two considerations to be in conflict. On one hand, I have found the nature and significance of the evidence will likely have a significant affect on the outcome of the opposition. On the other hand, I have found that allowing the extension of time will not provide an expeditious disposal of the matter
22. Allowing potentially significant evidence from both parties will provide the public with greater certainty of the validity of the patent. Allowing evidence from only one party will result in a quicker determination of the validity of the patent, but not to the same level of certainty.
23. In my opinion, in this case the public interest is better served by providing certainty rather than speed in the determination of the validity of a patent. Consequently, it is in the public interest that the extension of time be granted.
The interests of the Opponent and the Applicant
24. It is clearly in the interests of the Applicant that they be granted time to serve evidence‑in‑answer. It is in the interests of the Opponent to have the validity of the patent determined expeditiously and thus not granting an extension of time to serve evidence‑in‑answer. I consider that the interests of the Opponent and Applicant lie in opposing directions. The interests of the parties are offsetting.
Balance of considerations
25. I have found that the Applicant has provided a satisfactory explanation of delay in preparing and serving the evidence-in-answer. I have found that the public interest is in favour of the grant of the extension. I have also found that the interests of the parties are offsetting. On balance, it is appropriate the extension of time of three months (until 23 March 2012) is granted.
Costs
26. Costs normally follow the event. On this occasion, I see no reason to depart from this approach. I award costs against the Opponent, Xylotheque Limited, according to Schedule 8 of the Patents Regulations 1991.
Xavier Gisz
Delegate of the Commissioner of Patents
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