Reg. 5.23 - When evidence isn’t considered to be evidence, but is still considered as evidence
- Reg. 5.23 can be used to file evidence outside of the appropriate evidentiary period, even when a request for an extension of time is denied.
- In order for Reg. 5.23 to be enlivened, the onus is on a party seeking to rely on that provision to identify: why the evidence was not filed in a timely manner, what the evidence shows and why it is crucial for the Delegate's consideration, that the Delegate's consideration is in the public interest, and that the balance of convenience of the parties has been considered.
- Evidence is more likely to be considered under Reg. 5.23 if it is submitted by a patent applicant rather than an opponent, as the consequences are more severe for the patent applicant if the relevant evidence is not available for consideration in the opposition.
Reflex Instruments Asia Pacific Pty Ltd ('Reflex') commenced an opposition to oppose the certification of Australian innovation patent 2012101210 to Minnovare Limited ('Minnovare'). Reflex filed their evidence in support of the opposition on 29 March 2016 setting an evidentiary period expiring on 30 June 2016 for Minnovare to file their evidence in answer.
Minnovare missed the deadline to file their evidence in answer as a result of a docketing error, and so filed their evidence late with a request for an extension of time under the 'exceptional circumstances'1 provision. Minnovare stated that if the request for an extension of time was not granted, they would instead seek to introduce the evidence under Reg. 5.232.
The Delegate of the Commissioner denied the extension of time. Thus the hearing was held to determine whether the evidence could instead be introduced under Reg. 5.233.
Reg. 5.23 provides the Commissioner with the broad discretionary ability to consult a document, and rely on that document for the purpose of deciding an opposition. The relevant portion of Reg. 5.23 is reproduced below:
'(1) For the purposes of deciding an opposition, the Commissioner may consult a document that:
(a) is relevant to the opposition; and
(b) has not been filed under this Chapter; and
(c) is available at the Patent Office.'
The reference to 'this Chapter' above is a reference to Chapter 5 of the Patent Regulations which relates to patent oppositions. Thus Reg 5.23 cannot be used for evidence to introduce evidence which has been filed during the time constraints prescribed for submission of evidence in an opposition under Chapter 5.
Is evidence that is filed outside the evidentiary period considered evidence under Chapter 5 of the Regulations?
The Delegate determined that documents filed as evidence can only be considered evidence under Chapter 5 if it was filed during an appropriate evidentiary period.
A document filed outside of an evidentiary period is not considered to be filed under Chapter 5 and does not constitute evidence in support, answer, or reply. Therefore, the Commissioner is able to consider the introduction of evidence under Reg. 5.23.
Requirement to introduce documents under Reg. 5.23
The operation of Reg. 5.23 with respect to whether the Commissioner should rely upon a document that introduces new information has been considered previously in 'Merial':
…the new information needs to be significantly better than what is already in evidence. Where the new information is a new citation, it should be considered whether it is likely that the ground of lack of novelty or lack of inventive step in the light of the citation would be made out, and whether the ground would not otherwise have been made out4.
This test has been applied to both introduce further documents5 and evidence6 into oppositions, and reject the introduction of further documents7 and evidence8,9. In each case, Reg. 5.23 was invoked in relation to new information that was not directly part of the evidence in support, answer, or reply.
The Delegate noted that an assessment of whether to include this evidence under Reg. 5.23 using the approach outlined in Merial was not possible, as whether this evidence is likely, if not certain, to change the outcome of the opposition in a significant way is not one that can be readily answered without comparing the outcome of the opposition with and without that evidence. This is not practical, and as such there must be further considerations as to whether it is reasonable for the evidence to be taken into account where the value of that evidence cannot readily be determined.
The Delegate has stated that out of time evidence will not be considered as a routine matter. However, the consideration of evidence in the opposition - the value of which cannot readily be determined - is based on five considerations:
- The circumstances leading up to the evidence not being filed earlier;
- What does the evidence show;
- Is the information likely to be crucial to the Delegate’s decision;
- The public interest in having the information considered; and
- The balance of convenience of the parties if the information is considered10.
On the basis of these considerations, the Delegate allowed the introduction of evidence under Reg. 5.23 and therefore the evidence could be considered in the opposition.
The Delegate also commented that this approach is more favourable to the patent applicant than the opponent because any information not introduced by an opponent can be dealt with at the conclusion of an opposition with re-examination. In contrast, evidence submitted by the applicant which seeks to rebut evidence on file is more appropriately addressed during opposition.
1 Reflex Instruments Asia Pacific Pty Ltd v Minnovare Limited  APO 68 at .Ibid at .
2 Ibid at -.
3 Merial Limited v Bayer Intellectual Property GmbH  APO 16 at .
4 Fisher & Paykel Healthcare Ltd. v ResMed Ltd  APO 48 at .
5 Lazaros Minas v Brooklite Pty Ltd  APO 90 at -.
6 Fisher & Paykel Healthcare Ltd v ResMed Ltd  APO 48 at .
7 Innovia Security Pty Ltd v De La Rue International Limited  APO 42 at .
8 Apotex Pty Ltd v Warner Chilcott Company LLC  APO 29 at  – .
9 Reflex Instruments Asia Pacific Pty Ltd v Minnovare Limited  APO 8 at .
10 Ibid at .