New Zealand Patent Oppositions – Can I File Late Evidence?

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I continue my series of articles on the topic of New Zealand Patent Oppositions. My earlier article NZ Patent Oppositions - What are the steps? describes the process for both the opponent and the applicant to submit their evidence before the matter is set down for a hearing.

It is not uncommon however, for one of the parties to decide that they wish to lodge more evidence late in the proceedings. New prior art or facts may have come to light or the party may simply wish to bolster their case. Further evidence is currently governed by regulation 52 of the Patents Act 1953 which sets out: 

No further evidence shall be filed by either party except by leave or direction of the Commissioner.

Criteria Applied

Since the Synthon1 decision in 2004, decisions on further evidence from the New Zealand Patent Office have followed a set of criteria developed and set out in that decision. These criteria are as follows:

  1. Would the evidence if given be likely to have an important influence on the result of the case?
  2. Could the evidence have been obtained with reasonable diligence at an earlier stage?
  3. Does the evidence appear to be credible?
  4. Would the admission of the evidence cause unnecessary protraction of the opposition?
  5. Would admission of the evidence cause any injustice to the other party?

These criteria were in part developed to follow the contemporaneous Australian decisions on further evidence but the criteria are no longer applied in a hard and fast manner by the Australian Patent Office2.

To succeed with further evidence in New Zealand, it is apparent that not all of the criteria need be satisfied. Rather, from my reading of the cases, the more recent decisions appear to be based on all the circumstances of the individual case, with the criteria being used as guidelines as a means of identifying relevant factors to consider. 

Public interest issues

In any decision, the public interest issues need to be taken into account. There is public interest in ensuring that all of the relevant information is available to the person making the decision. On the other hand, there is public interest in maintaining the integrity of the evidentiary process and the Patent Office system. Over time, the pendulum seems to swing back and forth between these two competing interests as is demonstrated by several court decisions.

In the Amadeus3 decision in respect of extensions of time for filing evidence, Justice Young of the High Court of New Zealand stressed the importance of public interest issues which are best served by the Commissioner having all the facts so that the real merits of the application may be heard. See also Assa Abloy4 allowing further evidence on appeal. Public interest considerations have also been at the core of two appeal decisions in New Zealand courts which allowed further evidence in trade mark cases5,6.

On the other hand, in the Timtech7 decision, an appeal from a Patent Office decision to the High Court, the importance of following due process before the New Zealand Patent Office seems to be at the heart of the decision.

General comments about allowability

Evidence which has already been covered by other evidence and doesn’t advance the case will probably be denied admittance. Evidence in the nature of submissions which could be made at the hearing will also be refused8.

Long delays can also count against further evidence being admitted9. However, in the Synthon decision (supra)1, further evidence was permitted even after the hearing because that evidence (experiments which had been prepared for another proceeding) had only just become available.

Evidence which clears up ambiguities in already filed evidence should be allowable5.

Where new prior art has come to light late in the proceedings, the opponent will generally be given an opportunity to amend the Statement of Case to include the new prior art together with an opportunity to lodge further evidence concerning the new prior art10.

When would objection be raised?

The decision whether or not to allow further evidence is usually handled as an interim decision before the substantive hearing on the merits of the case. However, it is not uncommon for the issue to be canvassed as a preliminary matter at the substantive hearing. The party objecting to the further evidence can usually influence when their objection is heard. If objection is raised at the substantive hearing, the Commissioner, having already read the evidence may be more prepared to admit it. An interim hearing brings about additional costs and may further delay the grant of the patent.

About the author

Tracey Hendy is an Australian and New Zealand patent attorney and an opposition specialist for both New Zealand and Australia. Tracey has a substantial opposition practice in both New Zealand and Australia in the mechanical engineering field. During the course of Tracey’s two-decade career, Tracey spent 6 years in a premier New Zealand patent attorney firm.

Further articles in this series

This is the seventh instalment in my multi-part series on New Zealand patent oppositions. Other articles include:

NZ Patent Oppositions – When can I file?

NZ Patent Oppositions - Why oppose?

NZ Patent Oppositions - What are the steps?

NZ Patent Oppositions - Can I use a foreign expert?

NZ Patent Oppositions – Why do I need expert evidence?

1  Synthon BV Smithkline Beecham PLC NZIPOPAT (P23/2004)

2  Transgene SA v Virax Holdings Limited APO 14 [2002]

3  Amadeus Global Travel Distribution SA v Sabre Inc 26 TCL 16/6; [2003] BCL 438

4  Assa Abloy New Zealand Limited v Aluminium Systems NZ Limited HC WN CIV-2010-485-2

5  Pioneer Hi-Bred Corn Company v Hy-Line Chicks Pty Ltd [1978] 2 NZLR 50

6  Betterware International Limited v The Commissioner of Trade Marks [2003] NZLJ 436

7  Timtech Chemicals Limited v Osmose New Zealand Limited HC WN CIV-2010-485-2487

8  Foot Steps Orthotics Pty Limited v Foot Science International Limited NZIPO (P21/2010)

9  Machinery Developments Limited v Sealed Air (New Zealand) Limited NZIPO (P1/2003)

10  Astra Aktiebolag v Novartis AG NZIPO (P4/2001)

Topics:  Patent Litigation, Patents

Published In: Civil Procedure Updates, Intellectual Property Updates

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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