02 September 2010

Google Fails to Unmask Anonymous Opponent

Google Inc. v David Brian Webber [2010] APO 17 (30 August 2010)

Opposition – request by opponent for extension of time to serve Statement of Grounds and Particulars – request by applicant for production of documents relevant to opponent's intention to serve Statement – identity of "opponent" and of opponent's "agent or attorney"

ANONYMOUS OPPOSITION

According to Section 59 of the Patents Act 1990, any person may oppose the grant of a standard patent.  There is no requirement that an opponent be an interested party, or be aggrieved by the prospective grant of a patent.

It therefore sometimes happens that an interested party who wishes to remain anonymous will oppose by proxy through an agent, most commonly a patent attorney.  Naturally, in such circumstances the patent applicant would prefer to know the identity of their "true" adversary.  In some cases, the applicant may find itself in settlement negotiations with a party whose nature and commercial interests are completely unknown.

There are therefore clear potential benefits in being an anonymous opponent, particularly in keeping the applicant guessing and on the back foot.  And while the case discussed here turned out well for the unknown party, it does suggest some possible risks associated with anonymous opposition.

BACKGROUND

This matter was decided on the basis of written submissions, by the Commissioner's Delegate Xavier Gisz.

David Webber, a patent attorney and Partner at the firm of Davies Collison Cave ("DCC"), opposed the grant of a patent to Google on application no. 2006208079, which was advertised as accepted on 26 November 2009. It is almost certain that Mr Webber is not the real party in interest in this case, but rather is acting on instructions from an unnamed client.

The Notice of Opposition was filed on 26 February 2010, and a Statement of Grounds and Particulars (SGP) of opposition was due to be served on the applicant by a deadline of 26 May 2010. The SGP was duly prepared and forwarded on the final day, but unfortunately to the wrong address.

By the time the error came to the attention of DCC, and they were able to serve the SGP at the correct address (that of Google's Australian patent attorneys, Pizzeys) it was two days late. An extension of time to effect service was therefore requested. Grant of the extension was opposed by Google.

Our interest in this case does not lie in the grant of the requested extension of time. It is plainly apparent from the circumstances described in the decision that a genuine error occurred – perhaps a slightly embarrassing one, admittedly, but nonetheless one that almost any attorney could have made. Appropriate action was taken as soon as the error was discovered. There cannot have been any doubt at any stage that the extension would be granted.

Why then, you might ask, did Google bother to oppose, when it might rightly be thought that opposition was futile? Well, we think it was because they (or rather their Australian attorneys at Pizzeys) saw a possible opportunity to unmask the anonymous opponent!

NOTICES TO PRODUCE

Subsection 210(c) of the Patents Act 1990 confers upon the Commissioner of Patents a power to "require the production of articles of documents".  This power is most commonly exercised upon the request of a party to proceedings before the Office, such as a patent opposition, generally where the other party is in possession of materials that may be pertinent to a decision in the proceedings.

While the power to require production of documents is in nature similar to a subpoena issued by a court for a witness to appear and produce a specified document or thing, it is not equivalent to the power of a court to order discovery, and is an administrative, rather than judicial, power.

Nonetheless, the provision has real teeth, because under Section 181 the failure by a party issued with a Notice to Produce to do so without "lawful excuse" carries a potential penalty of $3000.00, and is a matter that will be referred by the Commissioner to the Director of Public Prosecutions.

GOOGLE'S REQUEST FOR PRODUCTION OF DOCUMENTS

The Delegate's decision explains (at [10]) that Google initially requested that the Commissioner issue to DCC a Notice for production of documents relating to patent application no. 2006208079.  Presumably this meant all documents on DCC's opposition file, and the putative relevance of these documents appears to have been the insight that they may have provided into the opponent's intentions regarding service of the SGP.  The Commissioner refused this broad request, but informed Google that a request for a Notice for production of documents limited to communication between the opponent and his attorney might be allowable.

Now, the opponent is Mr Webber, and his attorney is DCC, and more particularly patent attorney Nik Ramchand, who appears to have been handling the matter on a day-to-day basis.  Google duly requested a Notice for production of all communications between DCC and the opponent regarding instructions to serve the SGP.

Mr Ramchand's response was that "[m]any of the communications with the opponent in relation to this matter are oral, and are not documented. In particular, documents answering the description of the documents requested in the Notice are not in existence on our files."  The Commissioner considered this to be a sufficient and satisfactory response to the Notice (at [14]).

ANONYMITY PRESERVED – BUT AT WHAT COST?

DCC's client remains unknown, primarily because they are not actually a party to the opposition. The extension provisions of Section 223 direct attention to actions of "the person concerned" (in this case, the opponent Mr Webber) and "his or her agent or attorney" (DCC).  Actions, instructions, errors or omissions by the opponent's client in these circumstances are not directly relevant.

On the positive side, this prevented communications with DCC's client from being the subject of a Notice to Produce.  On the other hand, in other circumstances this may mean that errors or omissions on the part of the client could not support an application for an extension of time.

It is not uncommon for extensions to be requested due to failures of communication or misunderstandings either within a client organisation, or between the client and their attorney.  When the client is a party to the proceedings, ie a "person concerned", this is not fatal to the prospects of an extension request being granted.  However, when the client is not a party to the proceedings, as in this case, it is not apparent that a failure to instruct the opponent of record (ie the opposing attorney) is a relevant error or omission that would enliven the provisions of Section 223.

It is, perhaps, only a matter of time before an "opposition by proxy" goes horribly wrong!

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