I continue my series of articles on the topic of New Zealand Patent Oppositions. This article discusses the limited scope of evidence in reply and the pitfalls of exceeding that scope.
What is evidence in reply?
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.
Evidence in reply is generally the last step before the hearing. It means that the opponent has the last word before the case proceeds to a hearing. It is currently governed by regulation 51 of the Patents Act 1953 which includes the following words:
…within 2 months from the receipt of the copy of the applicant's evidence the opponent may file evidence confined to matters strictly in reply…
Evidence in reply is therefore confined to responding to what the applicant said in its evidence. It is expected that the new Patents Act 2013 will have a similar limitation, although at the time of writing, the implementing regulations have not yet been released.
In a real world case
It is not uncommon however, for the opponent 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 opponent may simply wish to bolster their case. If the opponent is at the stage of preparing their evidence in reply (generally the last stage before the hearing), the opponent may consider including this additional evidence as part of their evidence in reply. As recent decisions have shown, that may be a poor strategy.
How strict is ‘strictly in reply’?
The answer is strict.
Two recent decisions in the High Court of New Zealand 1,2, on the interpretation of a similarly worded regulation of the Trade Marks Act have reaffirmed the test for the allowability of evidence in reply. The question is whether:
the reply evidence could have been filed as evidence in chief in support of the opposition; and
the dominant purpose is to support the original notice of opposition, as opposed to responding directly to something said in evidence from the applicant.
The rationale against permitting the opponent to have a new and substantive ‘last word’ is that it ‘creates the opportunity for opponents to “game” the system, by keeping their forensic powder dry until after an applicant has fired its best (and only) evidentiary shot’.3
These decisions have little or no regard to considerations of the public interest in ensuring that the Commissioner has all the facts so that the real merits of the application may be heard.
The New Zealand Patent Office has already indicated its willingness to follow the High Court decisions. In Johnson v Emerson Electric4, the evidence in reply was refused as not being strictly in reply. What was particularly damning for the opponent was that the instructions given to the declarant were similar to those given to another declarant at the time of preparing the opponent’s evidence in chief. Also, there was no suggestion in the evidence in reply that the declarant was even shown the applicant’s evidence or provided with a copy of it.
Attempting to flout the strict provisions of evidence in reply also exposes the opponent to the risk that the substantive hearing on the merits of the case may become a preliminary decision on the allowability of the evidence, with the substantive hearing postponed to another date. In the Johnson decision, the opponent seems to have been ambushed at the hearing by the applicant’s objection to the evidence.
Are there other avenues?
Opponents need to bear in mind that their best case should be put forward at the earliest possible stage. However, where new evidence arises there may be other avenues for bringing the new evidence before the New Zealand Patent Office. Depending upon the nature of the new evidence, it may be prudent to divide the new evidence from evidence strictly in reply and seek permission to file the new evidence.
Please refer to my earlier article:
NZ Patent Oppositions – Can I file further evidence?
The allowability of further evidence is judged under different criteria and possibly less strictly, taking into account public interest considerations and the importance of the evidence.
Other possible avenues might include starting afresh with a post-grant revocation action or re-examination of the patent after grant. (Both avenues are subject to various restrictions and would need to be carefully weighed against other avenues.)
My earlier articles discuss new options for opponents when the new New Zealand Patents Act 2013 comes into effect in September 2013:
NZ Patent Oppositions – New and Improved (New Act Cases)
NZ Patent Oppositions – New and Improved (Old Act Cases)
1 The Scotch Whisky Association v The Mill Liquor Save Limited  NZHC 3205 (30 November 2012)
2 Merial v Virbac SA  NZHC 3392 (13 December 2012)
3 Merial v Virbac SA  NZHC 3392 (13 December 2012)
4 Johnson Electric S.A. v Emerson Electric Co  NZIPOPAT 23 (17 September 2013)