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7.5.3.1 Further Evidence

Date Published

Note: The information in this part only applies to oppositions commenced before 15 April 2013.

Where an opposition commenced before 15 April 2013, and evidence is required under reg 5.10(4) to be served on a a party on or after 15 April 2013, the evidence must be filed with the Commissioner, and the Commissioner will give a copy of the evidence to the other party.

Note: Further evidence is not available for oppositions commenced after 15 April 2013.  See 7.5.3 Evidence Filed Out of Time under the heading “Oppositions commenced on or after 15 April 2013"

 

Filing further evidence

For oppositions commenced before 15 April 2013, a party may request leave to file further evidence under the provisions of reg 5.10(4) as in force immediately before 15 April 2013.

Reg 5.10(4) as in force immediately before 15 April 2013 provides:

(4) The Commissioner may:

(a) on the application of a party; and

(b) on such reasonable terms (if any) as the Commissioner specifies;

permit the party to serve[*] further evidence on the other party.

Reg 5.10(5) as in force immediately before 15 April 2013 imposes further requirements:

(5) The Commissioner must not ... grant an application under subregulation ... (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

(c) …

(i) gives the parties a reasonable opportunity to make representations concerning the application or proposed action; and

(ii) is reasonably satisfied that ... the serving[*] of further evidence is appropriate in all the circumstances.

 

* Pursuant to the transitional reg 23.36(4) the requirement in reg 5.10 for evidence to be served, is taken to be a requirement to file the evidence.

 

Further evidence cannot be used a substitute for evidence in a proceedings

If a party has not filed evidence in the opposition proceedings, there is no basis for them to file “further” evidence.  In order to be granted a request to file further evidence, a party must at least have already filed some evidence within the evidentiary period set by the regulations.

 

 

The request for further evidence

A request to file further evidence can be made at any time before, during or after the substantive hearing, providing the substantive action has not been concluded.  

There is no “approved form” for requesting further evidence.  However, unless a request is made orally at a hearing, it must be made in writing.  As the request constitutes the basis for the exercise of the discretionary power under reg 5.10(4) as in force immediately before 15 April 2013, it must provide sufficient justification for the exercise of that power (irrespective of whether or not the request includes the evidence sought to be filed).

 

 

Procedure when a written request under regulation 5.10(4) is filed

When an application is made to file further evidence under reg 5.10(4) as in force immediately before 15 April 2013:

  • the opposition officer will send a copy of the request to the other party, and:
  • will offer terms for allowing the request, including a period of time after the request is granted (usually one month) to file evidence in response; and  
  • will invite the other party to make representations (including in respect of the terms) and to indicate whether they wish to be heard in the matter.  The invitation will normally allow 21 days for a response.
  • the opposition officer will likewise advise the requester, by:
  • offering terms for allowing the request, to the effect that the other party will have a period of time after the request is granted to file evidence in response; and
  • inviting them to make representations (including in respect of the terms) and to indicate whether they wish to be heard in the matter.  The invitation will normally allow 21 days for a response.

Where the other party has no objection to the request, the parties are in agreement with the terms, and the Commissioner has no objection to the request, the request will be granted and the parties notified accordingly.

If the only area of disagreement between the parties is with the terms to be imposed, the Commissioner will make reasonable efforts to settle the terms between the parties.

Where the other party objects to the request for further evidence, or there is an unresolved dispute regarding the reasonable terms, the Commissioner will set the matter for hearing.

 

 

Criteria for granting a request to file further evidence

Before granting a request to file further evidence, the Commissioner must be reasonably satisfied that the filing of further evidence is appropriate in all the circumstances.

The following decisions provide guidance for the exercise of the discretion.  

  • Ferocem Pty Ltd v Commissioner of Patents [1994] FCA 981 (Burchett J);
  • A Goninan & Co Ltd v Commissioner of Patents [1997] FCA 424; 38 IPR 213 (Sackville J); and
  • National Starch & Chemical Co v Commissioner of Patents [2001] FCA 33; 50 IPR 398 (Goldberg J).  

The general principles that flow from these decisions are that:

  • 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 [1994] FCA 981 at [11]; Goninan [1997] FCA 424; IPR at 220)
  • Explanation of delay: The reasons why the evidence was not filed earlier are a relevant consideration, but a satisfactory explanation is not a mandatory requirement (Ferocem [1994] FCA 981 at [10]).
  • The public interest: The public interest in determining a serious opposition on its merits is a relevant consideration (Goninan [1997] FCA 424; IPR at 222).

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 [1997] FCA 424; IPR at 225-6).  The significance of the evidence is assessed having regard to any relevant material available, not just the evidence itself (National Starch [2001] FCA 33 at [33]).  The public interest is not protected merely because some evidence has already been filed (Goninan [1997] FCA 424; IPR at 225).

  • The interests of the parties: The interests of the party seeking the exercise of discretion are a relevant consideration (Ferocem [1994] FCA 981 at [11]).  It is also 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 Patent Office (Ferocem [1994] FCA 981 at [11]; Goninan [1997] FCA 424; IPR at 222).

The criteria to be considered arise from the need to balance a serious opposition being determined on its merits and determining an opposition as expeditiously as possible.

In Transgene SA v Virax Holdings Ltd [2002] APO 14, the delegate considered that the relevance of evidence was a key factor that Sackville J in Goninan considered relevant in deciding whether evidence should be allowed:

“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.”

However, as Sackville J went on to explain in Goninan [1997] FCA 424, this does not mean that the evidence has to be scrutinised in the same way as would occur at a hearing on the merits.  Rather, it is necessary to form a prima facie view of whether that evidence is likely to be important in the opposition proceedings given the nature of the issues addressed by the proposed evidence.  That is, based on its nature and the information supplied in the request, is the evidence sought to be filed relevant to the action - in the sense that it would contribute to a more correct, just, or expeditious result?

A number of Patent Office decisions have previously adopted certain "criteria" in determining whether the filing of further evidence is appropriate in all the circumstances, as set out for example in Sandoz Ltd v Fujisawa Pharmaceutical Co. Ltd [1993] APO 53 and Imperial Chemical Industries PLC v Mitsubishi Gas Chemical Co [1994] APO 26.  However, the reasoning in Goninin suggests that the requirements outlined in Sandoz and ICI are not prescriptive.  Instead, the questions asked in those cases are only a guide to help identify the relevant aspects of a case so that “proper, genuine and realistic consideration” can be given to them as required by Goninan.

As noted above, reg 5.10, as in force immediately before 15 April 2013, confers a broad discretion which cannot be reduced to imperative compliance with particular requirements.

 

 

Relevance of the statement of grounds and particulars

The statement of grounds and particulars sets out the basis of the opposition.  There is therefore no basis for allowing an opponent to file further evidence which is not relevant to particularised matter in the absence of a corresponding amendment to the statement of grounds and particulars.

Thus if an opponent discovers a new citation late in the proceedings, to have that citation considered in the inter partes opposition they will need to amend the statement of grounds and particulars and apply to file further evidence.

The statement of grounds and particulars is not per se a restriction on the applicant, as it is not a document of their creation.  However, it is inappropriate for an applicant to file evidence which is not relevant to the opposition being mounted by the opponent.  Thus, where an applicant seeks to file further evidence, the question to be asked is whether the further evidence is relevant to rebutting the opposition. (See Sue & Anor v Carpenter [1990] APO 29).

 

 

Reasonable terms

If the Commissioner permits a party to file further evidence, he or she may impose reasonable terms.

For reasons of natural justice the other party will usually be entitled to an opportunity to file responding evidence.  Therefore, although each application will be dealt with on its merits, reasonable terms are likely to be imposed on most (if not all) requests to allow the other party to file evidence responding to the further evidence.  

 

 

The time to file responding evidence, including extensions of time

A request to file further evidence is usually granted with reasonable terms allowing the other party a period of time to file evidence in response.  The Commissioner would generally expect that the responding party would meet this deadline; however, the responding party can seek an extension under reg 5.10(2) as in force immediately before 15 April 2013 if this is not the case.  In these circumstances, the Commissioner would expect detailed reasons explaining what progress had been made in the preparation of the further evidence and why the deadline could not be met.

Any request for an extension of time to file evidence responding to further evidence should be made under reg 5.10(2) as in force immediately before 15 April 2013.  The request should be in the approved form (available on the IP Australia website) and be accompanied by the appropriate fee (Schedule 7, item 218 as in force before 15 April 2013).  The request will be processed in accordance with reg 5.10(5) as in force immediately before 15 April 2013.

 

 

Requests to file further evidence made at a hearing

It is the Commissioner's expectation that any request for further evidence be filed as soon as possible rather than at the hearing. However, on occasion, applications for further evidence arise at the substantive hearing. In this situation, the criteria for granting the request are the same as if the request is made outside of the hearing.

Where possible, the hearing officer will decide whether or not to grant leave at the hearing itself. Detailed reasons for the decision to allow or refuse the further evidence need not be given at the hearing, but will be provided in the written decision. If, in the course of writing the decision, the hearing officer concludes that the further evidence was not actually relevant, this does not affect their decision to allow the evidence in the first place, because allowance was based on the prima facie relevance of the evidence.

Where a request for further evidence is made at the hearing, the hearing officer may need to adjourn the hearing for a short time to consider the further evidence and decide whether it is appropriate to grant leave to file it. Alternatively, if the hearing officer cannot decide whether the further evidence is relevant until the "full picture" of the opposition is apparent, the decision on whether to grant leave for the further evidence can be reserved and made after the hearing. Note that the other party has the right to a reasonable opportunity to make representations concerning the application. In most cases it would be expected that this could be done at the main hearing. However, in some cases it may be appropriate to allow the other party the opportunity after the hearing to make submissions on the admissibility of the material sought to be adduced as evidence, or to file responding evidence.

Regardless of the outcome of the application for further evidence, as much as possible of the main action should be heard. This is to prevent the need to reconvene the hearing at a later date. Irrespective of whether a decision to grant leave is made at the hearing or reserved, the party seeking leave to file further evidence should make submissions on the evidence at the hearing. The hearing officer can then ask the other party to provide submissions on the further evidence. This may be so even where the decision is reserved, in case leave is granted.

If possible, the other party's response should occur at the hearing. However, it may not be possible for the other party to respond to further evidence until after the hearing. In such cases the time period the hearing officer allows the other party to respond will be dependent on the circumstances. Normally one month from the date of the hearing is appropriate where the evidence is substantial.

In rare cases, the further evidence may be so crucial to the issues that leave to file it must be granted, but, because of the nature of the further evidence, the hearing has to be abandoned and reconvened at a later date when all evidence is finalised.  In such an event, the hearing officer may consider whether a variation in the award of costs is appropriate so that, depending on the circumstances, one or the other of the parties pay the actual costs thrown away by the first hearing being abandoned. (See also 7.9.2 Scale of Costs, Variation of the Scale, and 7.9.5 Exemplary Situations in Awarding Costs, particularly the under the subheading Costs in Respect of Further Evidence)

Amended Reasons

Amended Reason Date Amended
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