Zenon Environment Inc. v Memcor Australia Pty Ltd - [2006] APO 24

ABSTRACTS OF DECISIONS
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No. 2003271311 in the name of ZENON ENVIRONMENTAL INC.

Title: Cyclic Aeration System For Submerged Membrane Modules.

Action: Opposition under Section 59 of the Patents Act by MEMCOR AUSTRALIA PTY LTD and an application for an extension of time under Regulation 5.10 to serve evidence in support.

Decision: Issued 30 June 2006 .
Abstract

The opponent was found to have provided unsatisfactory explanations for the delay in completing the service of evidence in support. On the other hand the balance of the interests of the parties, and the public interest, indicated an extension of time was appropriate.
The requested extension of time until 20 July 2006 was granted for Memcor to complete the service of evidence in support.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent application 2003271311 by ZENON ENVIRONMENTAL INC, and opposition thereto, under Section 59, by MEMCOR AUSTRALIA PTY LTD, and an application for an extension of time under Regulation 5.10 to serve evidence in support.

BACKGROUND

Zenon Environmental Inc. (“Zenon”) filed patent application 2003271311 on 19 December 2003. The application was advertised accepted on 28 April 2005.
Memcor Australia Pty Ltd (“Memcor”) filed a notice of opposition on 20 July 2005 to the grant of a patent on application 2003271311. A statement of grounds and particulars in support of the opposition followed on 21 October 2005.
On 19 January 2006 Memcor filed an application for an extension of time to 20 April 2006 to serve evidence in support of the opposition. That extension of time was subsequently allowed.
On 20 April 2006 Memcor filed a second application for an extension of time to 20 July 2006 to serve evidence in support. Zenon has objected to the grant of this extension. On 24 April 2006 Memcor served partial evidence in support on Zenon. Memcor has served this evidence out of time. This evidence would only be part of the opposition if I allow the second application for an extension of time.
The objection to the extension of time to 20 July 2006 to serve evidence in support was set for a hearing. The hearing was held in Canberra on 19 June 2006. Mr Barry Hess of counsel, instructed by Mr John McCormack, patent attorney of Griffith Hack, represented Zenon. Mr Jack Redfern and Mr Matt Ward, patent attorneys of Shelston IP, represented Memcor. Both parties appeared by phone.
RELEVANT LAW
The requirements for granting an extension of time to serve evidence are set out in regulation 5.10(2) which states:
(2)The Commissioner may 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 5.3AA, paragraph 5.4(a) or subparagraph 5.8(1)(a)(i)):
(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…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2006] APO 24
Decision Date: 30 June 2006

CaseChat Overview and Summary

In Zenon Environment Inc. v Memcor Australia Pty Ltd, the dispute centered around an opposition to a patent application by Zenon Environmental Inc., which was opposed by Memcor Australia Pty Ltd. The case involved an application for an extension of time to serve evidence in support of the opposition, a matter that was heard and decided by a delegate of the Commissioner of Patents. The central legal issues revolved around whether the reasons provided by Memcor for the delay in serving evidence were satisfactory, and whether granting an extension of time would be appropriate considering the interests of both parties and the public interest.

The delegate considered the reasons provided by Memcor for the delay in serving evidence. Memcor cited difficulties in securing an expert and the unavailability of their expert due to teaching commitments as reasons for the delay. The delegate found these reasons to be inadequate, noting that while these factors might present some difficulties, they were not exceptional enough to justify the significant delay that had occurred. Additionally, Memcor's progress in serving evidence had been slow, with only partial evidence being served out of time. The delegate also highlighted Memcor's lack of diligence in securing and briefing an expert and the firm's internal issues with the absence of a principal attorney.

In balancing the interests of the parties and the public interest, the delegate concluded that while Memcor had not provided satisfactory reasons for the delay, an extension of time was appropriate. The opposition, though delayed, had relevance to the patent application, and it was in the public interest to allow Memcor to present its expert evidence. The delegate granted the requested extension of time until 20 July 2006 for Memcor to complete the service of evidence in support.

The final orders included granting the extension of time to Memcor and awarding costs against Memcor, recognizing that while Memcor was successful in obtaining the extension, Zenon had a valid case in challenging the appropriateness of the extension due to the inadequate reasons provided by Memcor.

Orders