03 February 2010

Delegate rules on the filing of further evidence in oppositions

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Commonwealth Scientific and Industrial Research Organisation and Novartis AG v Vistakon [2009] APO 24

This matter had to do with the serving of further evidence during opposition proceedings. 

The patent application relates to contact lenses and materials suitable for contact lenses. Vistakon opposed the grant of a patent on grounds that are not relevant for this discussion. When an application is opposed, the opponent must lodge evidence-in-support of the opposition. The applicant for the patent then has an opportunity to lodge evidence-in-answer to the evidence-in-support. The opponent can then lodge evidence-in-reply. The evidence lodged by the parties is considered during a hearing before a delegate of the Commissioner if the matter gets that far.

In this case, the applicants (CSIRO and Novartis) wanted to file further evidence based on their assertion that parts of Vistakon’s evidence-in-reply was not properly in reply. The applicants wanted to address Vistakon’s evidence-in-reply that the applicants’ declarants had insufficient experience and qualifications with respect to various technical aspects of the invention. Also, the applicants' declarants proposed to address new evidence or issues raised for the first time in Vistakon's evidence-in-reply. The applicants also wanted to file further evidence relating to what was known in Australia at the priority date of the application.

According to the regulations, the Commissioner may permit the serving of further evidence. The regulations provide a broad discretion that cannot be reduced to compliance with particular requirements.

The Delegate pointed out that public interest calls for a balance between the requirements that oppositions be dealt with expeditiously and economically, and that a serious opposition be dealt with on its merits. In this case the evidence-in-reply appeared to add a degree of discussion and analysis of measurement techniques that went beyond the applicants' evidence-in-answer and appeared to have significance in its own right. Consequently, the Delegate held that it would be in the public interest to allow the applicants the opportunity to serve the further evidence.

As far as the interests of the parties was concerned, the Delegate held that the evidence-in-reply appeared to be substantial in the degree of evidence covering material additional to the evidence-in-support. He accepted that the evidence-in-reply required a response by the applicants.

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