Sourcing Expert Witnesses Promptly and Diligently

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Case Study: Commonwealth Scientific and Industrial Research Organisation v Agriculture Victoria Services Pty Ltd [2014] APO 80 

Background

This case considered a patent application contest between Agriculture Victoria Services Pty Limited (Agriculture Victoria) and the Commonwealth Scientific and Research Organisation (CSIRO). The CSIRO requested a three-month extension to file evidence in support. Such evidence was in relation to a notice of opposition concerning a patent application filed by Agriculture Victoria.

The reason behind their application for an extension was the difficulty they faced in locating impartial expert witnesses who possessed the necessary qualifications to give an opinion on the dispute. When previously questioned as to why their search for expert witnesses had not begun earlier, the CSIRO noted that due to the complex nature of the matter, the attorneys working on the case required significant time to acquaint themselves with the principles underpinning the claimed subject matter and until such principles were settled they could not begin the process of identifying appropriate expert witnesses. Other issues which slowed down the process of obtaining expert witnesses were conflict of interest issues and experts being unavailable to assist.

Agriculture Victoria subsequently formally objected to the extension and requested to be formally heard on the matter.

The Relevant Law

The extension of time request was governed by regulation 5.9 of the Patents Regulations (the Regulations) as in force on 15 April 2013. Sub regulation 5.9(2) stated:

“The Commissioner may extend the period only if the Commissioner is satisfied that:

(a)  the party who intended to file evidence in the period:

    • (i)  has made all reasonable efforts to comply with all relevant filing requirements under this Chapter; and
    • (ii)  despite acting promptly and diligently at all times to ensure the appropriate evidence is filed within the period, is unable to do so, or

(b)  there are exceptional circumstances that warrant the extension.”

Exceptional circumstances were defined in sub regulation (5):

“In this regulation:

exceptional circumstances includes the following:

(a)  a circumstance beyond the control of a party that prevents the party from complying with a filing requirement under this Chapter;

(b)  an error or omission by the Commissioner that prevents a party from complying with a filing requirement under this Chapter;

(c)  an order of a court, or a direction by the Commissioner, that the opposition be stayed pending the completion of a related proceeding or action under the Act.”

Based on prior authority which had considered these provisions[1], the Commissioner of Patents held that he was required to consider the following questions:

“1.  Has the party (and their attorney or agent) made all reasonable efforts to comply with all relevant filing requirements?

  1. Was the failure to file the evidence in time despite the party (and their attorney or agent) acting promptly and diligently at all times to ensure the evidence is filed in time?
  2. Were there exceptional circumstances that warrant the extension?”

The Commissioner noted that an extension of time could only be granted if the answer to both questions 1 and 2 is ‘yes’ or if the answer to question 3 is ‘yes’. Once the responses to these questions were determined, it was also necessary to consider whether there were any discretionary reasons why the extension should not be granted.

Reasoning

The Commissioner first considered whether the CSIRO had made all reasonable efforts to comply with all the relevant filing requirements. In Merial Limited v Novartis AG[2]  it was held that these requirements were “intended to import a consideration of the reasonableness of the relevant party’s conduct over the totality of the opposition proceedings rather than its compliance with the particular evidentiary period in question”. In this instance, the Commissioner held that a consideration of whether the CSIRO’s actions concerning the time taken to engage expert witnesses was reasonable is best determined by considering whether their actions were prompt and diligent.

On this issue of promptness and diligence, the Commissioner noted that:

  • The complexity of the subject matter was a factor that supported the CSIRO’s approach in sourcing expert witnesses and assisted in explaining the time it took to source expert witnesses;
  • It was reasonable in this case to identify various aspects of the case before attempting to source expert witnesses; and
  • A period of 18 days between first discussion of potential Australian expert witnesses and initial email correspondence with such experts was not outside the range of prompt and diligent.

The Commissioner noted that the standard of “prompt and diligently” is “not setting a standard of perfection[3] and that it is “assessed in the context of the personal circumstances of the party[4]. As such, comparisons to dealings that Agriculture Victoria had had with other parties were not relevant. The Commissioner found that the CSIRO consistently acted to engage witnesses since commencing initial correspondence with expert witnesses and that a period of 3 weeks to consider the suitability of expert witnesses did not sit outside the range of promptness and diligence. The Commissioner was thus satisfied that the CSIRO acted promptly and diligently in sourcing expert witnesses and that the extension of time requested by the CSIRO was suitable.

Conclusion              

While this case considers the specific requirements of attorneys under patent legislation, it serves as a timely reminder that legal counsel should ensure that they remain diligent when sourcing expert witnesses. Experts can have a profound impact on the outcome of a trial and it is ideal to commence searching for the most qualified expert as early as possible. At ExpertsDirect, we aim to simplify and streamline this process by pinpointing the exact type of witness best suited for your case, providing a shortlist of qualified expert witnesses, and providing succinct expert witness profiles to assist in making the decision. To find an expert witness or for more information, please contact us on 1300 847 855 or experts@expertsdirect.com.au.

[1] Being TRED Design Pty Ltd v Julie-Anne McCarthy and Bradley McCarthy [2013] APO 57 and Merial Limited v Novartis AG [2013] APO 65.

[2] [2013] APO 65

[3] Osmose New Zealand v Zelam Limited [2014] APO 49 at [22]

[4] Mineral Technologies Pty Ltd v Orekinetics Investments Pty Ltd [2014] APO 63

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