19 November 2010

NZ Patent Office Rejects Applicant's Late-Filed Evidence

Foot Steps Orthotics Pty Limited v Foot Science International Limited [2010] NZIPOPAT 21 (22 October 2010)

Opposition proceedings – admissibility of late-filed evidence

In this New Zealand Patent Office decision, Assistant Commissioner A Hazelwood considered whether patent applicant Foot Steps Orthotics Pty Ltd ("Foot Steps") should be permitted to file additional evidence after the conclusion of the normal evidentiary stages of an opposition by Foot Science International Ltd ("Foot Science").

Foot Steps had submitted that the late evidence was necessary to address criticisms raised in Foot Science's final evidence in reply in relation to the experience and qualification of Foot Steps' expert witness, and that for this reason the evidence could not have been lodged earlier.

The NZ Patent Office had initially proposed to allow the evidence to be filed, with Foot Science then being provided with an opportunity to file its own further evidence in reply.  The decision states (at paragraph [01.15]) that the applicant then sought a hearing on the admissibility of the evidence, although it seems to us that this may be an error, it being more likely that the opponent would have objections to the late filing of evidence.

It is notable that both parties filed amended documentation (and presumably were also granted extensions of time) at various stages of the proceedings, such that the opposition had already been running for nearly four years, and a date for the substantive hearing had been set down as 23 June 2010.


The Assistant Commissioner referred to a number of earlier decisions relating to the admissibility of further evidence.  Ultimately he considered the factors set out in Synthon BV v Smithkline Beecham PLC [2006] NZIPOPAT 25 to provide the most appropriate basis for reaching a decision in this case.  These factors are:
  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 admission of the evidence cause unnecessary protraction of the opposition?
  5. Would admission of the evidence cause any injustice to the other party?
Having carefully considered the applicant's further evidence (an affidavit of a Mr Najjarine), the Assistant Commissioner's conclusions in relation to the above factors were (at [31]-[41]):
  1. That the contents of Mr Najjarine's evidence were irrelevant to deciding the opposition, merely repeated matters that were already in evidence, amounted to submissions or argument rather than evidence, and/or were directed to answering the "ultimate question" which is for the Commissioner, and not the expert witness, to decide.
  2. That the further evidence could have been obtained earlier in the proceedings, or (to the extent that it addressed criticisms of the applicant's earlier evidence) merely repeats the earlier evidence.
  3. There was no suggestion that the evidence was not credible.  The problem was lack of relevance.
  4. Admission of the evidence, which would result in the opponent having the opportunity to reply, would further delay a decision in an already protracted opposition.
  5. Preparation of further evidence in reply would put the opponent to additional effort and expense.  Further delay would also prolong the uncertainty facing the opponent regarding the validity of the claims, and the extent of any limitation on its freedom to operate within the New Zealand market.

Weighing up all of the factors, the Assistant Commissioner concluded that admission of the applicant's further evidence was not justified, and refused the request.  In summarising the evidence he stated (at [30]):

...it appears to me that the contents of Mr Najjarine’s affidavit repeat what has already been said in submissions so adds nothing new, or deals with matters not relevant to deciding the opposition, or makes submissions which can be made at the substantive hearing if they need to be made.


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