Zenon Environmental Inc v Memcor Australia Ltd - [2006] APO 31

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 13 September 2006 .
Abstract

The opponent’s reliance on settlement discussions between the parties in US proceedings as a reason for the delay in serving evidence in support in the Australian proceedings was accepted.
The balancing of the parties’ interests, and the public interest also supported the allowance of an extension of time.
The requested extension of time to 20 October 2006 was granted.
Both parties have not been as forthcoming or accommodating as they could easily have been in progressing this opposition or in reducing the complexities in this case. Consequently there was no award of costs.
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 objected to this extension. In a decision dated 30 June 2006, [2006] APO 24 (“the previous decision”), that extension was allowed.
On 19 July 2006, Memcor filed a third application for an extension of time to 20 October 2006. Zenon again objected.
The objection to the extension of time to 20 October 2006 to serve evidence in support was set for a hearing. The hearing was held in Canberra on 5 September 2006. Mr Barry Hess of counsel, instructed by Mr John McCormack, patent attorney of Griffith Hack, represented Zenon. Mr Peter Heathcote, patent attorney 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;…

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 31
Decision Date: 13 September 2006

CaseChat Overview and Summary

In the case of Zenon Environmental Inc v Memcor Australia Ltd, Memcor Australia applied for an extension of time to serve evidence in support of their opposition to Zenon Environmental's patent application. Zenon opposed the extension, leading to a hearing before a Delegate of the Commissioner of Patents. The central issue was whether Memcor's reasons for the delay in serving evidence justified the extension of time and whether the balance of interests of the parties and the public interest supported the granting of the extension. The Delegate accepted Memcor's explanation that the delay was due to ongoing settlement discussions in related US proceedings, finding it reasonable for Memcor to believe these discussions would affect the Australian case. The Delegate also considered the interests of both parties, noting that Memcor would be significantly disadvantaged without expert evidence, and the public interest in ensuring the opposition is dealt with on its merits. Given these factors, the Delegate granted Memcor an extension of time until 20 October 2006 to serve evidence in support, but made no award of costs due to the lack of flexibility shown by both parties in negotiating the extension.

The Delegate found that Memcor's reasons for the delay were reasonable, as they were based on ongoing settlement discussions in the US that Memcor believed would impact the Australian proceedings. The Delegate acknowledged that while Memcor could have communicated more proactively with Zenon, their belief in the relevance of the US discussions justified the delay. The interests of the parties were balanced, with Memcor's need for expert evidence to support their opposition outweighing Zenon's interest in a timely resolution. The public interest in efficiently and economically handling oppositions while ensuring they are dealt with on their merits supported the granting of the extension. Consequently, the Delegate granted Memcor the requested extension until 20 October 2006 to serve evidence in support, but refrained from awarding costs due to the lack of accommodation shown by both parties during the negotiations.

Orders