Abundant Lawn Grass Industries Pty Limited v Crancove Pty Ltd

[1993] APO 16

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Patent Application Number 619419 in the Name of ABUNDANT LAWN GRASS INDUSTRIES PTY LIMITED, Opposition Thereto by CRANCOVE PTY LTD, and a Request to Amend the Statement of Grounds and Particulars

BACKGROUND

This decision is about an amendment which would add a reference to one 'prior art document' in the particulars of opposition.

Abundant Lawn Grass filed application 64,608/90 on 12 October 1992.  It was associated with provisional application PJ 6859, filed on 13 October 1989.  The application was advertised accepted on 23 January 1992, under acceptance number 619,419.  Crancove Pty Ltd filed a Notice of Opposition on 23 April 1992, and a Statement of Grounds and Particulars of Opposition on 25 May 1992.  (This statement was filed within the one month allowed by regulation 5.4.  23 May 1992 was a Saturday.)

The opponent was granted extensions of time (totalling three months) to complete its evidence-in-support of the opposition.  The opponent filed declarations by Robert John Greasley and John Edward Powell on 26 October 1992.  It completed its evidence by filing and serving a declaration by Steven John Waterford on 25 November 1992.  The opponent filed a request to amend the Statement of Grounds and Particulars at the same time as it filed the statutory declaration which completed the evidence-in-support.  The material parts of the covering letter from the opponent's patent attorney read as follows:

'In connection with the above matter I enclose the remainder of the Evidence-in-Support ...

I additionally enclose a copy of a Request to Amend the Statement of Grounds of Opposition by the inclusion of Clause 1(c) in the Statement of Particulars together with a substitute Statement.  I also enclose a copy of US Patent No 3,232,255 to which the amended statement of Particulars relates ...

A copy of the above evidence together with copies of the amended Statement and US patent No. 3,232,255 were forwarded to the attorneys for the applicants ... for service on 25 November 1992.'

I heard the request to amend by way of a telephone hearing on 4 February 1993.  Mr Graham Halford of Halford & Co, patent attorneys, represented the applicant.  Mr John Gardner, patent attorney, represented the opponent.

The parties have agreed to a direction which I should give about time for filing evidence in answer if I allow this amendment.

STATEMENT OF GROUNDS AND PARTICULARS

So far as is material to the present matter, the Statement of Grounds and Particulars of Opposition recites the ground of opposition that

'The invention as claimed in claims 1 to 14 is not a patentable invention because it does not comply with paragraph 18(1)(b) of the Patents Act 1990'.

[Paragraph 18(1)(b) of the Patents Act in effect requires an invention to be 'novel' and to 'involve an inventive step' in order to be patentable.]

The Statement of Grounds and Particulars, as filed, included two particulars in support of this ground of opposition.  The effect of the amendment would be to introduce a third particular.  In the following passage from the proposed new statement, the new particular is in italics.

'1.(a)    The invention as claimed in claims 1 to 14 of the application is not a patentable invention in so far that mobile grass planting machinery in accordance with the aforesaid claims was published prior to the priority date of the claims of the application including by public and commercial use at the Royal Pines Resort, Ross Street, Ashmore, Queensland.

(b)       The invention as claimed in claims 1 to 14 of the application is not a patentable invention in view of the existence and use of a stolonising machine at the Rochedale Turf farm, 186 Ford Road, Burbank Queensland prior to the priority date of the claims.

1(c)     The invention as claimed in claims 1 to 14 of the application is not a patentable invention in view of the disclosures in US Patent NO 3,232,255, a copy of which is annexed hereto.'

SUBMISSIONS FOR THE OPPONENT

At the hearing, Mr Gardner said that knowledge of the existence of US patent document 3,232,255

' ... came about through discussions with witnesses who were providing evidence of possible prior use.  Consequent upon those discussions it became evident that machines of the type that were the subject of the patent application were known in the United States.  At the time the opponents were given the name of the US company that manufactured similar types of machinery and we corresponded by facsimile with that company on 23 November, obtaining certain information on 23 November - advice that they happened to have some search records - and we obtained those search records on 24 November.  Also at that time  another cross check of some international database records threw up another document which was not published at the time of our earlier searches.  That document listed as related art the document that we sought to introduce by way of the amendment.  That document was obtained on 24 November and the proposed amended statement was served on the applicant on 25 November.'

When I asked Mr Gardner for clarification of what he had said, he agreed that the opponent became aware of US patent 3,232,255 (MITCHELL) through two sources almost simultaneously.  That is, from a US manufacturer, and through a database search.

A summary of Mr Gardner's submissions is as follows.

1.        The commissioner is required to amend particulars (under regulation 5.9(2) unless he believes that a person will be unduly prejudiced by the amendment.

2.        This is not a case where there is an application for dismissal or determination.

3.        In Diamond Scientific Company v CSL Limited, the assistant commissioner held that 'undue prejudice' would occur if:

i.the amendment is detrimental or disadvantageous to the person, and

ii.the circumstances surrounding the amendment cause the degree of that detriment or disadvantage to be unwarranted, excessive, improper, inappropriate, or unjustified.

The assistant commissioner also said that 'any amendment that changes the case the applicant has to answer is potentially prejudicial to the applicant.'

4.        This prejudice must be balanced against the right of the public not to have an invalid patent granted.  Making the applicant aware of prior art, while possibly being prejudicial to the applicant's case, may well benefit the applicant in the long run, in that a court may well have to take it into account in considering the validity of his patent.

5.        In the present case the applicant would not be unduly prejudiced as the extra particulars introduced in the amended statement were raised incidental or consequential on preparation of the evidence in support, and no undue delay has occurred in advising the applicant of the extra particulars.

6.        Even if it is considered that the extra particulars were not raised incidental or consequential on the preparation of the evidence, the applicant would not be unduly prejudiced.

7.        The assistant commissioner in Diamond Scientific v CSL noted that undue prejudice would not prima facie arise if the extra particulars established incidental to the preparation of the case satisfied three criteria, that is they:

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.

8.        The allowance of the amendment would not result in the protraction of the case.  All that would be introduced is a reference to a single US patent document.

9.        The extra particulars have been added at the earliest possible opportunity - within a couple of days of the opponent becoming aware of this prior art.

10.      There has been no unnecessary delay in seeking the amendment.

11.      The opponent was not actively seeking further particulars or trying to find any further basis for the opposition.

12.      The applicant will not be prejudiced in the preparation of evidence in answer as it had been advised of the evidence at the same time that the evidence in support was served.

13.      The assistant commissioner in Kent-Moore v Environmental Products stated that the statement of grounds and particulars sets out the grounds of the opposition.  He reiterated in Diamond Scientific, that the applicant has the right to know at the time when the statement is filed, the case it has to answer.  However, the existence of regulation 5.9(1) allows for a situation in which the applicant may not be aware of the complete basis of the opposition when the statement of grounds and particulars is filed.

14.      Additionally, the applicant cannot know the complete case at the stage where the statement of ground and particulars is filed.  The complete case is not crystalised until the evidence in support is served.  In many situations the opponent will not know of the case until it has that evidence.  In the present case, the applicant has been given the same time to consider the documents filed with the proposed amended statement as it has had to consider the remainder of the evidence.  Only a single document has been introduced, a document which is not of particularly different technology.  No undue prejudice of the applicant will occur.

15.      The actions of the opponents have not been such as will unduly prejudice the applicant.  There has not been any 'fishing expedition' to find relevant material.  There has only been a specific awareness of a situation incidental to the preparation of the other evidence.

SUBMISSIONS FOR THE APPLICANT

The following is a summary of Mr Halford's submissions.

1.        The opponent has not established that the location of the US patent specification was in fact consequential to the investigations that were being carried out in relation to prior use.  The opponent has an onus on it to satisfy the hearing officer that the circumstances surrounding the amendment are such as to avoid the conclusion of undue prejudice.  The circumstances surrounding the discovery of this US patent specification should have been made the subject of evidence for the purpose of this hearing because the applicant has been prejudiced by not being able to address me fully on this issue.  The applicant had no notice of what the circumstances were said to be.

2.        Mr Gardner has said that he had correspondence with people in the united states.  The result of that led to 'certain information' coming back.  As a result of that he had a further database search conducted.  That database search threw up a document that had not been published at the time of his first 1991 search, and that the Mitchell specification which is at issue here was related art to that patent.

3.        It does not follow from this that the location of the Mitchell specification was consequential to the inquiries which were carried out.  The specification was located as a result of a fresh search of the US Patent Office records.  It obviously should have been located by the search which was carried out in 1991.  The Mitchell patent was published in 1966.  It seems that, rather than being a consequential discovery, the Mitchell patent was discovered by a lucky accident.  It could not be said to be consequential.

4.        It is clear that the applicant is prejudiced by the proposed amendment to the statement of particulars.  The statement of particulars as filed relates only to issues of prior use and section 40.  The effect of the amendment is to dramatically change the basis of opposition from one based solely on allegations of prior use of the applicant's machine to the addition of a completely new ground of prior publication through the Mitchell specification.

5.        There is no reason why the opponent should have taken so long to find this US patent specification.  It was published in 1966.  The opponent has only located it at a late stage through a lucky accident.  The Diamond Scientific and Kent-Moore decisions establish that the applicant has the right to know the case it has to answer at the time of filing of the particulars.  It is not open to the opponent now to come in with completely new material and put it in the case.  For those reasons, the proper finding would be one of 'undue prejudice.'

6.        In referring to the three criteria which the hearing officer in Diamond Scientific set out, Mr Gardner referred to the second of those criteria as the inclusion of the new particulars at the earliest possible opportunity.  The words of the hearing officer in that case were the earliest reasonable opportunity, not the earliest possible opportunity.  In either case, the amendment was not sought at the earliest reasonable or possible opportunity.  The only reason that this document was not in the case earlier was that the opponents had not had the good fortune to find it.

7.        This amendment would dramatically change the basis of the opposition.  The location of the new material was not in fact consequential on the ordinary steps which you would expect to be taken in the preparation of the evidence as to prior use.  Thus the finding should be that the amendment should not be allowed because the applicant would be unduly prejudiced.

8.        If the amendment of the statement of particulars is allowed, then the time for service of evidence-in-answer should be three months from the date of the decision.  If the amendment is refused, then the time for service of evidence-in-answer should be one month from the date of the decision.

DECISION

Relevant law

The allowability of the present request to amend the Statement of Grounds and Particulars of Opposition is determined by sub-regulations 5.9(1) and (2) of the Patents Regulations 1991.  The Patent Office decision in Diamond Scientific Company v CSL Limited (issued 29 September 1992) explains the requirements as follows.

1.        It is the responsibility of the opponent to explicitly specify in the Statement of Grounds and Particulars those documents on which it relies in the opposition.

2.        Any amendment that changes the case the applicant has to answer is potentially prejudicial to the applicant.

3.        An amendment of particulars will unduly prejudice a person if:

i.the amendment is detrimental or disadvantageous to the person; and

ii.the circumstances surrounding the amendment cause the degree of that detriment or disadvantage to be unwarranted, excessive, improper, inappropriate, or unjustified.

4.        Where an opponent actively pursues further particulars in the opposition after having filed its statement, the applicant will be unduly prejudiced by any resultant change to the case it has to answer if the statement is amended.

5.        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 amendments.

6.        Where:

_the applicant objects to an amendment; and

_the amendment of the statement can reasonably be said to prejudice the applicant (such as by the addition of extra particulars); and

_the circumstances are such that there is a reasonable inference that the prejudice is undue - such as by the time at which the amendment is sought, or the nature or extent of the amendment sought;

there is a reasonable basis for the commissioner to prima facie conclude that the applicant will be unduly prejudiced by the amendment.  In this event, for the commissioner to allow the amendment the opponent has an onus of demonstration that its activities have not been such as to have unduly prejudiced the applicant.

Findings of fact

I accept that the opponent's location of US patent 3,232,255 (MITCHELL) was 'incidental to the preparation of the case' in the sense meant by the assistant commissioner in Diamond Scientific v CSL.  At the hearing, Mr Gardner said that the opponent became aware of the Mitchell patent through two sources almost simultaneously.

The first of these sources came about through a chain of causation from witnesses who were providing evidence of possible prior use, to a manufacturer who was manufacturing possible prior art machines in the US, to the records of that manufacturer.  The opponent's pursuit of this chain of events would have been a normal and expected part of the preparation of the evidence in support of the opposition.  As Mr Gardner submitted, 'there has not been any fishing expedition'.

The opponent also became aware of the Mitchell patent through a second source.  As Mr Gardner said at the hearing:

' ... another cross check of some international database records threw up another document which was not published at the time of our earlier searches.  That document listed as related art the document that we sought to introduce by way of the amendment. ...'

Mr Gardner did not offer any explanation as to why the opponent decided to repeat an earlier search.  The state of the evidence is such that I cannot decide whether or not this second 'discovery' of the Mitchell patent was 'incidental to the preparation of the case'.  I cannot decide whether or not the opponent was actively pursuing further particulars in the opposition.

However, whether or not the applicant was actively pursuing further particulars, there was at least one chain of causation whereby the opponent became aware of the Mitchell patent 'incidental to the preparation of the case'.  I must accordingly consider whether the amendment to include the Mitchell patent is within the three sub-headings of the test stated by the assistant commissioner in Diamond Scientific v CSL.

The first sub-test which I have to address is:

would the inclusion of the Mitchell patent in the particulars result in any protraction of the preparation of the case?

I agree with Mr Gardner that the inclusion of the Mitchell patent will not result in any protraction of the preparation of the case.  The Mitchell patent was served on the applicant at the same time as the declaration by Mr Waterford (the last declaration of the evidence-in-support).  Mr Waterford's declaration alleges prior use of machinery which is in the same general field of art as the Mitchell patent.  I am of the opinion that the details of the Mitchell patent could be considered by the applicant at the same time as the details of Mr Waterford's declaration.  Thus the inclusion of the Mitchell patent in the particulars and in the evidence should not, of itself, result in any protraction of the preparation of either the applicant's or the opponent's case.

The second sub-test which I have to address is:

was the amendment proposing the inclusion of the Mitchell patent in the particulars proposed at the earliest reasonable opportunity?

At the hearing, Mr Halford submitted that there was a difference between the 'earliest reasonable opportunity' and the 'earliest possible opportunity'.  This was in response to Mr Gardner's submission that the amendment was proposed at the earliest possible opportunity.

On the facts of the present case, I do not believe that I have to exhaustively explore the differences in meaning between the expressions 'earliest reasonable opportunity' and 'earliest possible opportunity'.  I am satisfied that the amendment was proposed on the earliest possible opportunity after the opponent became aware of the Mitchell patent.  In the circumstances of the present case, this is a more stringent test than 'the earliest reasonable opportunity after the opponent became aware of the Mitchell patent'.

I have assumed that the time for judging 'reasonableness' started to run from the time when the opponent became aware of the Mitchell patent.  I believe that this is the correct assumption to make.  The assistant commissioner, when he stated this test of reasonableness, did so in the context that the extra particulars had come to light incidental to the preparation of the case.  It would not make sense to judge the 'reasonableness' of the timing of the amendment from some point prior to the extra particulars coming to the attention of the opponent.

The third sub-test which I have to address is:

would the amendment including the Mitchell patent substantially change the case the applicant has to answer in the opposition?

I am of the opinion that the inclusion of the Mitchell patent will not substantially change the case which the applicant will have to answer in the opposition.  The Mitchell patent is in the same general field of art as the other material which is already particularised.  Although the particularisation of the Mitchell patent may result in a change in the specific facts which the applicant has to answer, it does not appear to me that there would be any substantial change in the case.

Accordingly, I will allow the amendment.

Costs

The opponent has succeeded in getting the amendment on facts which it first brought to the attention of the applicant at the hearing.  Those facts had not been put into evidence in the form of declarations at the time when the opponent requested the amendment.  In these circumstances, it was quite reasonable for the applicant to object to the request for amendment.  Accordingly, I will award costs against the opponent.

DIRECTIONS

1. I allow the amendment of the statement of particulars which the opponent requested on 25 November 1992.

1. I direct that the time for serving the evidence in answer be three months from the date of this decision.

1. I award costs against the opponent.

ALLEN EVANS
Delegate of the Commissioner of Patents

Patent attorneys for the applicant:                 Halford & Co, Sydney

Patent attorneys for the opponent:                 John Gardner, Mudgeeraba