ABB Engineering Construction Pty Ltd v a. Goninan & Co Limited
[1998] APO 46
•21 August 1998
official notice
decision of a delegate of the COMMISSIONER OF PATENTs
Application : No. 657639 in the name of ABB ENGINEERING CONSTRUCTION PTY LTD.
Title: Cam mechanism for a system for discharge of bulk materials from vehicles.
Action: Requests by A GONINAN & CO LIMITED to amend the statement of grounds and particulars and to defer the opposition proceedings; and objection to the requests by ABB ENGINEERING CONSTRUCTION PTY LTD.
Decision: Issued .
Abstract:The material sought to be included by amendment of the statement of grounds and particulars arose incidentally to the preparation of the case. Furthermore there would not be any unreasonable protraction of the case nor any substantial change of case for the applicant to answer by allowing the amendment. The proposed amendment was also sought at the earliest reasonable opportunity.
In the light of the above findings the applicant would not be unduly prejudiced by the amendment.
The public would also not be unduly prejudiced by allowance of the amendment. On the contrary the public would be unduly prejudiced if the amendment were not allowed. The material sought to be included by the amendment appears to be highly relevant to the opposition.
The proposed amendment to the statement of grounds and particulars was allowed.
A party is entitled to have a matter heard as soon as the office can arrange it. The applicant would be clearly disadvantaged by deferment of the opposition proceedings. Additionally the Federal Court proceedings on a related patent are not sufficiently relevant to warrant deferment of the opposition. The opponent's request to defer was refused.
PATENTs act 1990
decision of a delegate of the COMMISSIONER of PATENTs
Re:Patent application no. 657639 by ABB ENGINEERING CONSTRUCTION PTY LTD, and opposition thereto by A GONINAN & CO LIMITED, and objections to amendment of the opponent’s statement of grounds and particulars and to deferment of the opposition proceedings.
background
ABB Engineering Construction Pty Ltd (“ABB”) filed patent application 657639 as application 47358/93 on 14th September 1993. The application is for a patent-of-addition based on patent 649883. The patent is the subject of infringement and revocation proceedings in the Federal Court.
Application 657639 was advertised accepted on 16th March 1995. A Goninan & Co Limited (“Goninan”) filed a notice of opposition on 16th June 1995 to the grant of a patent on the application. The company subsequently filed a statement of grounds and particulars on 15th September. Goninan completed the serving of evidence-in-support on 24th April 1996. ABB completed the serving of evidence-in-answer on 11th March 1998. On 20th March Goninan filed a request to amend the statement of grounds and particulars.
Under the grounds alleging lack of novelty and lack of inventive step the proposed amendment seeks to add particulars of non-patent literature. The particulars primarily refer to reports and drawings of rail unloading methods at Dalrymple Bay Coal Terminal in Queensland (“the Dalrymple Bay system”).
ABB objected to the proposed amendment of the statement of grounds and particulars on 3rd April.
On 19th June Goninan advised they also intended to request deferment of the present opposition proceedings until the outcome of the Federal Court proceedings relating to patent 649883 is known. ABB advised they would not consent to deferment and wished to be heard on this matter and the request to amend the statement of grounds and particulars.
Consequently a hearing was set which took place in Canberra on 29th June. Mr David Catterns, of counsel, and Mr Graham Halford, patent attorney of Halford & Co, represented ABB. Mr Philip Kerr and Mr Andrew Chernov, solicitors of Allen Allen & Hemsley, represented Goninan.
APPLICABLE LAW
Amendment of statement of grounds and particulars
Regulation 5.9 provides for amendment of a statement of grounds and particulars. The pertinent point is subregulation 5.9(2)(e). Under this regulation I cannot allow amendment of the statement if I reasonably believe a person would be unduly prejudiced by the amendment. At the hearing the parties primarily relied on the Diamond Scientific Company v CSL Limited decision ((1992) AIPC 90-927) and the University of Georgia Research Foundation Inc v Biochem Pharma Inc decision (40 IPR 412) to discuss whether the proposed amendment would cause undue prejudice.
The Diamond Scientific (supra) decision states that extra particulars that arise incidental to the preparation of the case which:
i. do not result in any protraction of the preparation of the case, and
ii. are included by way of amendment of the statement of grounds and
particulars at the earliest reasonable opportunity, and
iii. do not substantially change the case the applicant has to answer in the
opposition,
will not prima facie give rise to the applicant being unduly prejudiced by the relevant
amendment.
The more recent University of Georgia (supra) decision notes that regulation 5.9 is not a discretionary power. Consequently the amendment of a statement of grounds and particulars must be allowed unless a person would be unduly prejudiced by the amendment. In this light the University of Georgia (supra) decision further states the public interest cannot be taken into account when considering the request to amend unless the public would be unduly prejudiced by the amendment. This decision also suggests the onus of proof to show the existence of undue prejudice primarily resides with the party making the allegation. However the burden of proof may shift between the parties depending on the degree of prima facie undue prejudice established by the parties.
In applying the above decisions, I will consider whether:
the extra particulars in the present case arose incidentally to the preparation of the case;
the inclusion of the extra particulars would result in any protraction of the case;
Goninan sought the amendment at the earliest reasonable opportunity;
the inclusion of the extra particulars would substantially change the case ABB has to answer;
ABB would be unduly prejudiced by the amendment in the light of the above points; and
the public would be unduly prejudiced by the amendment.
Deferment of proceedings
Goninan requested deferment of proceedings under subregulation 22.23(2). This subregulation enables the commissioner of patents to adjourn a hearing from time to time or place to place. The subregulation has been applied where necessity has forced a postponement of a hearing. In the Yamazaki Mazak Corporation decision (24 IPR 321) a hearing was rescheduled to enable a party to properly prepare for the hearing. The present case is different. Instead of a request to adjourn or reschedule a hearing the present request is to defer the complete opposition proceedings until the outcome of Federal Court proceedings is known. Moreover the period of deferment is indefinite because of its dependency on the Federal Court proceedings. Consequently subregulation 22.23(2) is not appropriate in these circumstances.
The appropriate subregulation is 5.10(1) which enables the commissioner to give a direction, on the application of a party, in respect to opposition proceedings. Subregulation 5.10(5) provides conditions under which the commissioner must not give such a direction. The pertinent point in this case is that the commissioner must not give a direction unless reasonably satisfied that the direction is appropriate in all the circumstances.
For deferment of proceedings there is some guidance in respect to what constitutes appropriateness in all the circumstances. The FA Faulding & Company Ltd v Bristol-Myers Squibb Co decision (40 IPR 511) asserts the following principle. It is of primary importance that someone who brings a legitimate, genuinely arguable claim to the court is entitled to have that claim heard as soon as the court can arrange it, consistently with the demands of other litigants. The Yamazaki (supra) decision suggests I consider whether there is a clear disadvantage to one of the parties or the public interest in deferring proceedings. According to this decision I should act in a way that leads to minimal prejudice to the respective parties. The Ferocem Pty Ltd v High Tech Auto Tools Pty Ltd decision (29 IPR 144) suggests that where there is a pending court action of direct relevance to a matter before the commissioner, the commissioner prefers the court action to be concluded before determining the matter.
REQUEST TO AMEND THE STATEMENT OF GROUNDS AND PARTICULARS
Whether the extra particulars arose incidentally to the preparation of the case
Mr Kerr said Goninan first knew of the Dalrymple Bay system in February 1996. However he noted it was not until March 1998, after reviewing material concerning the system, that Goninan realised the system included a fail-safe device. In the present application this device allows track-side cams to be retracted so they do not contact the opening and closing levers on rail wagons when a predetermined force is applied to them. Goninan consequently contends the Dalrymple Bay system is relevant against the present application. Mr Kerr further submitted the review of the Dalrymple Bay material and the realisation of its significance means the extra particulars in respect to the system arose incidentally to the preparation of the case.
Mr Catterns cited a declaration by one of Goninan's declarants, a Mr John Jeffcoat. Mr Jeffcoat was a chief mechanical engineer with Queensland Rail between 1974 and 1986. Mr Catterns noted that Mr Jeffcoat says that an apparently similar bulk discharge system for sugar has been in use in Townsville since the early 1980s. Mr Catterns also said Goninan has delayed the filing of a request to amend by two years from the time, in 1996, they allegedly first became aware of the Dalrymple Bay system. Accordingly he submitted the extra particulars did not arise incidentally to the preparation of the case.
I am not persuaded by the latter argument. While Goninan may have known of bulk discharge systems at Dalrymple Bay or elsewhere for some time, this is insufficient to demonstrate Goninan undertook an active search for documentation about such systems.
I am prepared to accept the material in respect to the Dalrymple Bay system arose incidentally to the preparation of the case.
Whether there would be protraction of the case
Mr Kerr contended there would not be any protraction of the case. He noted that material relating to the Dalrymple Bay system has been filed in the Federal Court proceedings. Consequently Mr. Kerr suggested the attaining of evidence for both sides in respect to the system would not be onerous or lead to lengthy protraction of the case.
Mr Catterns contended there are bound to be delays whenever particulars are to be added. He noted that if the amendment is allowed, then Goninan would need further evidence in respect of the Dalrymple Bay system. Subsequently ABB would need time to serve evidence-in-response. Mr Catterns submitted that there would be significant protraction of the case.
Opposition proceedings on this case have been in progress since 1995. Since that time both parties have also received several extensions of time to serve evidence. If I allowed the proposed amendment, further time would be needed for both parties to serve evidence in respect to the Dalrymple Bay system. However, in view of the length of time of the opposition proceedings to date, a potential further delay of a few months to serve extra evidence is insignificant.
I conclude there would not be any unreasonable protraction of the case.
Whether the amendment was sought at the earliest reasonable opportunity
It is important to distinguish between knowledge of material and knowledge of the significance of material to a particular case. The Porter v Arbortech Investments Pty Ltd decision (31 IPR 169) supports this view. In that case the determination of whether there was undue delay in filing the request to amend was reckoned from the time of realising the significance of a document.
In the present case the issue to be determined is not when Goninan first knew of the Dalrymple Bay system but when Goninan first realised the significance of the system to the present application.
Mr Kerr said Goninan first knew of the system in February 1996. However it was only in March 1998 that Goninan realised the Dalrymple Bay system included the fail-safe device. Mr Kerr noted Goninan consequently sought amendment a few days later.
Mr Catterns suggested Goninan's realisation of the existence of the fail-safe device in the Dalrymple Bay system should not be a factor in determining whether Goninan sought amendment at the earliest reasonable opportunity. He said Goninan delayed the request to amend for two years and noted Goninan cite other items of prior art in their statement of grounds and particulars that do not include the fail-safe device. Mr Catterns consequently asserts Goninan did not amend at the earliest reasonable opportunity and that Goninan did not consider the fail-safe device an important feature in deciding which prior art was relevant to the opposition.
I am not persuaded by this argument. It is improper to consider the rationale behind Goninan selecting which prior art ought to be included in their statement of grounds and particulars. Generally in most instances different issues make the prior art significant for different reasons. This would make it difficult to determine the rationale for an opponent's selection of relevant prior art. For the purpose of deciding whether Goninan unduly delayed the filing of the request to amend I only need to consider whether Goninan acted diligently in requesting amendment once they realised the significance of the Dalrymple Bay system. I am prepared to accept Goninan realised the significance of the system only in March 1998.
Goninan sought to amend at the earliest reasonable opportunity.
Whether there is a substantial change of case for ABB to answer
Mr Kerr contended the extra particulars would not result in a substantial change of case for ABB. He noted the Dalrymple Bay system is in the same technical field as the other particulars in the original statement of grounds and particulars. Mr Kerr also suggested, in the light of the University of Georgia (supra) decision, the onus had accordingly shifted to ABB to show they would be unduly prejudiced.
Mr Catterns referred to the Diamond Scientific (supra) decision to submit that the proposed amendment results in a substantial change of case for ABB. He noted the Dalrymple Bay system adds the fail-safe device and that this device is missing from the other prior art cited by Goninan. Mr Catterns also mentioned that, consequently, Goninan have failed in their duty to set out every conceivable issue at the outset thereby depriving ABB from knowing the full case to be answered.
I have reviewed the available descriptions of the material cited in both versions of the statement of grounds and particulars to the extent necessary. I am satisfied all the material relates to mechanisms for discharging bulk materials from railway vehicles. Consequently all the material would require a similar response by ABB.
It may be argued that the case changes because the Dalrymple Bay system includes a fail-safe device. The particulars in the original statement allegedly do not include such a device. On the other hand the inclusion of the fail-safe device simply reflects the potentially higher degree of relevance of the extra particulars against the present application. I agree this would somewhat change the case for ABB to answer. However the potentially higher degree of relevance does not substantially change the case for ABB.
The complete material does not vary in disclosure sufficiently to cause a substantial change of case for ABB to answer.
The particulars of the original statement of grounds and particulars mention five items of patent literature. The extra particulars Goninan seek to include by the amended statement mention four items of non-patent literature. These items are primarily in respect to the Dalrymple Bay system. They include reports and drawings of the system. Consequently the items are related rather than being four separate particulars.
The Caterpillar Inc. v Kozo Miyake decision (unreported decision on application 651768, issued 14th December 1995) allowed one request to add an extra technical paper to the statement of grounds and particulars but refused a second request to add three others. There were six documents in the original statement of grounds and particulars. The hearing officer decided these latter additions over the six original documents would substantially change the case to be answered. The ARX Pty Ltd v Lockwood Australia Pty Ltd decision (33 IPR 308) allowed two requests to add a total of three extra documents.
In the light of these decisions the inclusion of the extra grouped particulars in respect to the Dalrymple Bay system, additional to the five original particulars, is not detrimental to ABB.
I am also not convinced there is any detriment to ABB merely because the extra particulars are non-patent literature.
There is no substantial change of case for ABB to answer.
Other factors for determining whether there is undue prejudice to ABB
Mr Kerr said ABB have known of the Dalrymple Bay system since October 1989. He noted that Goninan supplied material in respect to the system to ABB at that time. Accordingly Mr Kerr said Goninan was not taking ABB by surprise by requesting the present amendment. Mr Kerr thereby submitted ABB would not suffer undue prejudice as a result of this amendment.
I do not attach much weight to this argument. In earlier considering whether Goninan sought to amend at the earliest reasonable opportunity I placed emphasis on the timing of Goninan's realisation of the significance of the Dalrymple Bay system. I discounted Goninan's mere awareness of the system as a consideration.
I adopt a similar approach in respect to ABB's previous awareness of the same system. It would be onerous to expect ABB to pursue early detailed analysis of systems they are aware of on the chance such systems may ultimately be cited against ABB's patent applications. ABB ought to be able to treat statements of grounds and particulars at face value. Consequently it is proper that ABB concentrate the preparation of their defence of the opposition only on the material that Goninan has particularised.
The fact that ABB were previously aware of the Dalrymple Bay system is an insignificant consideration in this case.
Mr Kerr further noted that ABB have consented to the inclusion of the Dalrymple Bay system in the Federal Court proceedings. Consequently ABB have to address the Dalrymple Bay system in the Federal Court. Mr Kerr submitted ABB would correspondingly not suffer undue prejudice by the inclusion of the Dalrymple Bay system in the present opposition.
Mr Catterns responded that ABB's consent to the inclusion of the Dalrymple Bay system in the Federal Court proceedings is irrelevant to the present hearing. He contended such consent does not constitute any admission of lack of undue prejudice in the present opposition.
I accept Mr Catterns' statements that consent to include the Dalrymple Bay system in the Federal Court does not amount to admission that ABB would not be unduly prejudiced by a similar inclusion of the system in the present opposition. On the other hand I think it is significant that ABB need to deal with the system in the Federal Court.
The Federal Court and the present opposition may concern two different patent specifications over which the issues may not necessarily all be the same. Nonetheless I am satisfied there is sufficient overlap to enable ABB to duplicate much of their defence of the application. I support Mr Kerr's position that this point suggests ABB would not suffer unduly by the inclusion of the Dalrymple Bay system in the present opposition.
In the light of all the above findings and the Diamond Scientific (supra) decision there is no undue prejudice to ABB by allowance of the amendment.
Whether the public would be unduly prejudiced by the amendment
The University of Georgia (supra) decision states the public interest cannot be taken into account when considering a request to amend unless the public would be unduly prejudiced by the amendment.
Mr Kerr submitted the Dalrymple Bay system is a strong piece of prior art. He supported this statement by referring to the system's inclusion of the fail-safe device.
Mr Catterns acknowledged the existence of the fail-safe device. In earlier argument Mr Catterns further mentioned that none of the other prior art cited by Goninan included such a device.
On the basis of the above comments from both parties it appears the Dalrymple Bay system may be highly relevant in testing the validity of the present patent application. The material supplied by Goninan in this respect also suggests the Dalrymple Bay system may be highly relevant. In this light the public interest appears to be a relevant factor. However, according to the University of Georgia (supra) decision, I cannot take that factor into account unless the public would be unduly prejudiced by the amendment. I have insufficient material before me to show the public would suffer undue prejudice by allowance of the amendment.
In the present case I find a contrary position. In view of the highly relevant nature of the Dalrymple Bay system the just and correct determination of the opposition may be compromised if I did not allow the amendment. Consequently I should not reject that system from this opposition merely because the system was not mentioned in the original statement of grounds and particulars. The apparently high relevance of the Dalrymple Bay system means the public would suffer undue prejudice if I did not allow the amendment.
REQUEST FOR DEFERMENT OF PROCEEDINGS
Dealing with a legitimate, genuinely arguable claim
The principle mentioned earlier in the Faulding (supra) decision is equally applicable to Patent Office proceedings. A person who brings a legitimate, genuinely arguable claim to the Patent Office is entitled to have that claim heard as soon as the office can arrange it, consistently with the demands of other parties.
The reason for Goninan’s request for deferment of the present opposition proceedings is to await the outcome of infringement and revocation proceedings between ABB and Goninan in the Federal Court. The court’s proceedings are in respect to ABB’s above-mentioned patent 649883.
However reasons for deferment do not appear to be part of the considerations of the demands of other parties in the Faulding (supra) sense. Instead the Faulding (supra) case suggests considerations of the demands of other parties relate to ascertaining the availability of the relevant parties and witnesses to determine how soon the office can arrange for a claim to be heard.
On the other hand ABB are mounting a serious defence of their patent application. This suggests ABB have a legitimate, genuinely arguable claim before the Patent Office. Consequently, in the light of the Faulding (supra) decision, I should not defer the present opposition proceedings.
In any case I will also consider whether there is a clear disadvantage to one of the parties in deferring proceedings and whether the Federal Court proceedings are directly relevant.
Whether there is clear disadvantage to one of the parties
The Yamazaki (supra) decision suggests I consider whether there is a clear disadvantage to one of the parties in deferring proceedings. That decision further suggests I should act in a way that leads to minimal prejudice to the respective parties. The Faulding (supra) case is similarly concerned with considering the prejudice that would be suffered in a stay of proceedings.
Mr Kerr cited section 85 of the Patents Act to say that if the Federal Court revokes patent 649883 then application 657639 becomes an independent application. This means the publication of patent 649883 makes the patent citable against application 657639 for lack of inventive step. Accordingly Mr Kerr submitted if the request for deferment is not granted then Goninan would be deprived of a right to rely on patent 649883 to support their grounds of opposition.
Mr Catterns submitted that Mr Kerr’s argument is based on a number of assumptions. Firstly Goninan’s request assumes the Federal Court would revoke the parent patent. Mr Kerr further assumes the earlier publication of patent 649883 would consequently mean application 657639 necessarily lacks novelty and inventive step over patent 649883. Additionally Mr Kerr assumes there is evidence available to support these assertions. Mr Catterns suggested these assumptions are all speculative and should not be the basis for a decision to defer proceedings.
I appreciate the parties’ respective concerns. Goninan may be prejudiced if they are unable to rely on patent 649883 in the opposition. However Goninan could request to have patent 649883 included in the opposition irrespective of the outcome of the Federal Court proceedings. The allowability of such a request is not assured though until the request is filed and scrutinised. Nonetheless this is an available option for Goninan.
On the other hand ABB would suffer inordinate delay and commercial disadvantage if they had to await the outcome of the Federal Court proceedings on patent 649883. The delay and disadvantage would be particularly prejudicial to ABB if I deferred the proceedings on the basis of the assumptions outlined above by Mr Catterns. In this context the Faulding (supra) case suggests it would not be fair or feasible to defer proceedings on the assumption that a number of important imponderables fall in favour of the party requesting deferment. I adopt the same approach in the present case because it is equally possible the imponderables would not fall in Goninan's favour. For instance the Federal Court may uphold the validity of patent 649883.
ABB would be clearly disadvantaged if I deferred the present proceedings.
Whether the Federal Court action is directly relevant
Mr Kerr mentioned the Yamazaki (supra), Ferocem (supra), Gerber Scientific Products Inc v North Broken Hill Ltd (18 IPR 78) and Queensland Metal Frames Pty Ltd v Lakecroft ([1987] APOR 8) decisions. He noted these decisions all involved requests to defer office proceedings pending the outcome of court proceedings.
However the office proceedings were all heard despite the fact that court proceedings remained undecided. The commercial interests of the patentee and the public were held to prevail.
Mr Kerr distinguished the above decisions from the present case because they involved applications for extensions of terms of petty patents. He noted the present case is an opposition to an application for a patent, more specifically for a patent-of-addition.
However Mr Kerr referred me to the Ferocem (supra) decision to say a pending court action of direct relevance to an opposition matter is preferably concluded before the opposition matter is determined. He again mentioned that application 657639 would lack inventive step over patent 649883 if the Federal Court revokes patent 649883 and makes application 657639 an independent application. Mr Kerr submitted this makes the Federal Court action of direct relevance to the present opposition.
I am not entertained by the distinctions made by Mr Kerr between the petty patent decisions and the present case. A more important distinction is that, in the present case, the Federal Court and the commissioner are dealing with two different patent specifications. This has a paramount effect in respect to actions of direct relevance to an opposition.
The petty patent decisions all relate to court actions on petty patents with concurrent actions for extensions of terms of those petty patents being sought before the commissioner of patents. In the present case the opposition is in respect to an application for a patent-of-addition of the patent being considered in the Federal Court. Accordingly two different specifications are involved in the respective actions before the commissioner and the Federal Court. Consequently the Federal Court proceedings are not as directly relevant in the present case as in the above-mentioned petty patent cases.
There may be an argument that the Federal Court proceedings are directly relevant to the present opposition because of the closeness of the subject matter of patent 649883 with that of application 657639. Mr Kerr suggested a substantial amount of the evidence and the issues are equivalent for both specifications. The Dalrymple Bay system seems to be one example of evidence that is equally relevant against both specifications. There may be a further analogous argument that the Federal Court proceedings are directly relevant because the Dalrymple Bay system is included in those proceedings and because I have found a corresponding inclusion of that system in the present opposition would not cause undue prejudice.
Even though I have found there would be no undue prejudice by allowing amendment of the statement of grounds and particulars to include the Dalrymple Bay system in the present opposition, I think the Federal Court proceedings are not sufficiently relevant. The above arguments primarily relate to the equivalence of evidence of the alleged prior art for both cases. However it is common for equivalent prior art to be cited against different specifications. Such specifications often have little commonality. Consequently arguments of the equivalence of prior art are not directly relevant.
A more important consideration is a comparison of the two specifications, 649883 and 657639, themselves. While there is significant overlap in content, the two specifications necessarily also contain individually distinct subject matter. In particular, specification 657639 defines a combination that adds a fail-safe device allowing track-side cams to be retracted so they do not contact the opening and closing levers on rail wagons when a predetermined force is applied to them. Consequently the possible revocation of patent 649883 in the Federal Court does not necessarily mean the combination in application 657639 is invalid. It also does not follow that application 657639 would necessarily lack inventive step over patent 649883 if application 657639 becomes an independent application. This suggests the Federal Court proceedings would be inconclusive in respect to application 657639.
The Federal Court proceedings are not sufficiently relevant to warrant deferment of the present opposition proceedings.
CONCLUSION
Amendment of the statement of grounds and particulars
The material in respect to the proposed amendment arose incidentally to the preparation of the case. Furthermore there would not be any unreasonable protraction of the case nor any substantial change of case for ABB to answer by allowing the amendment. I am also satisfied Goninan sought to amend at the earliest reasonable opportunity.
Consequently, in following the principles of the Diamond Scientific (supra) decision, ABB would not suffer undue prejudice by allowance of the proposed amendment.
I am also satisfied the public would not suffer undue prejudice by allowance of the amendment. On the contrary the public would be unduly prejudiced if I did not allow the amendment.
I allow the proposed amendment to the statement of grounds and particulars.
Deferment of proceedings
ABB have a legitimate, genuinely arguable claim before the office. Consequently ABB are entitled to have the claim heard as soon as the office can arrange it. ABB would be clearly disadvantaged if I deferred the proceedings. Furthermore the Federal Court proceedings on patent 649883 are not sufficiently relevant to warrant deferment of the present proceedings.
I refuse Goninan's request to defer the proceedings.
Further evidence
Subregulation 5.10(4) provides for the serving of further evidence. This subregulation permits the serving of further evidence on the making of a party's application to serve such evidence and on such reasonable terms (if any) as the commissioner specifies.
At the hearing both parties consented to the serving of the relevant further evidence and evidence-in-response if I allowed the proposed amendment. Mr Kerr suggested one month would be sufficient time for Goninan. Mr Catterns asked for the normal three months for serving evidence once Goninan had served their evidence.
I allow Goninan one month from the date of this decision to make an application to serve further evidence, and to serve the appropriate evidence and pay the appropriate fee.
At the hearing I was not convinced of ABB's need for three months in which to serve evidence-in-response. The proposed amendment seeks to primarily include material relating to one system only, namely the Dalrymple Bay system.
Accordingly I allow ABB two months to serve evidence-in-response from the date Goninan serve their further evidence.
Extension of time to serve evidence-in-reply
On 11th June Goninan filed an application for an extension of time to serve evidence-in-reply to ABB's evidence-in-answer served on 11th March 1998. This extension would take the time to serve evidence-in-reply to 11th September 1998. At the hearing ABB consented to this extension. Accordingly I allow the extension for Goninan to serve evidence-in-reply to ABB's evidence-in-answer.
COSTS
Both parties initially submitted that costs should follow the event.
Mr Catterns made further submissions on costs. In respect to the amendment of the statement of grounds and particulars he noted Goninan filed declarations relating to the Dalrymple Bay system at a late stage of proceedings to support their case.
On the request to defer proceedings Mr Catterns said Goninan significantly delayed the making of this request. He noted the request could have been made when the Federal Court proceedings began in 1996.
On these points Mr Catterns submitted there should be no award of costs if ABB were not successful on these actions.
I am not persuaded by these arguments. A statement of grounds and particulars merely sets out the basis of the opposition case. There is no requirement to include, with such a statement, evidence or the documents pertaining to the particulars. Consequently any request to amend that statement is sufficient if it clearly sets out the new basis of the opposition case, subject of course to the criteria discussed above. I may have considered the above-mentioned declarations particularly in respect to my finding that the public would be unduly prejudiced if I did not allow the amendment. However my decision to allow the amendment has not turned on this issue.
In respect to the request to defer proceedings I am not aware of any basis in law for locking parties into timing constraints as to when requests for a change of procedure of this type may be made.
In the present circumstances I think costs should follow the event. Goninan have not been successful with their request to defer the present proceedings. ABB have not been successful in their objection to amendment of the statement of grounds and particulars.
Consequently each party should bear their own costs.
M.G. Kraefft
Delegate of the Commissioner of Patents
Attorneys for the applicant : Halford & Co, Sydney
Solicitors for the opponent : Allen Allen & Hemsley, Sydney
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