Albright & Wilson Limited v Colgate Palmolive Company
[1987] APO 25
•6 October 1987
In the Matter of the Patents Act 1952
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In the Matter of Patent Application Nos. 561108 and 561055 in the Name of ALBRIGHT & WILSON LIMITED
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In the Matter of an Application by COLGATE‑PALMOLIVE COMPANY for an Extension of Time under Section 59 to Lodge Notice of Opposition.
DECISION OF A SUPERVISING EXAMINER OF PATENTS:
Background
Applications No. 11206/83 and No. 48271/85 were lodged on 7 February, 1983 and 3 October, 1985 by ALBRIGHT & WILSON LIMITED, the latter application being a divisional of the former. The inventions relate to liquid detergent compositions. The applications were advertised as accepted on 30 April, 1987 and were given the serial numbers 561108 and 561055 respectively. The three‑month period allowed by ss.59(1) for lodging notice of opposition expired on 30 July, 1987; on 24 July, 1987 applications were lodged by COLGATE‑PALMOLIVE COMPANY for extensions of time of three months to 30 October, 1987 in which to lodge notices of opposition, and on 27 July, 1987 notices of opposition were lodged by UNILEVER PLC. On 14 August, 1987 notices were received from Edwd. Waters & Sons representing ALBRIGHT & WILSON LIMITED opposing the applications for extension of time and the matter came to a hearing in Canberra on 15 September, 1987. Mr. D. Mischlewski, patent attorney with Edwd.
Waters & Sons appeared for ALBRIGHT & WILSON LIMITED and Mr. P. Marsh, patent attorney with F.B. Rice & Co., appeared for COLGATE‑PALMOLIVE COMPANY.
Evidence
A statutory declaration by Murray M. Grill, associate patent counsel of Colgate‑Palmolive in the USA, was presented at the hearing by Mr. Marsh; copies had previously been served on Albright & Wilson and received via facsimile at the Patent Office on 10 September, 1987. The pertinent points made in the declaration are as follows:
Colgate‑Palmolive were not notified by F.B. Rice of the acceptance of the Albright & Wilson applications until 2 July, 1987, copies of the specifications as accepted were enclosed with that notification.
The prospective opponent has a serious interest in the patent applications since it had been alerted by Albright & Wilson to potential infringement by one of Colgate‑Palmolive's products.
The complexity of the patent applications requires that further time is necessary to make an assessment "as to whether opposition is warranted". Some factors to be considered are the "crowded nature" of the prior art, the time required to obtain copies of documents representing the prior art, the scope of the 139 claims in the applications, 25 of which are independent, and special tests which are required to determine the "alleged novelty ... of the subject matter". Details of some of these tests are given in the declaration.
Mr. Mischlewski presented at the hearing a copy of a letter from Albright & Wilson dated 6 December, 1985 drawing the attention of Colgate‑Palmolive et al. to the above said patent applications and stating that they were "willing to discuss the grant of a manufacturing licence under any patent granted on the application(s)".
Extension of Time
Criteria to be considered regarding extension of time under ss.59(1) have developed from the decision of the Federal Court in Vangedal‑Nielsen v. Commissioner of Patents and Gelphen Nominees (1981) 33 ALR 144. Therein the court had regard to the respective interests of the patent applicant, the prospective opponent and the public, and stated that the prospective opponent "carries the burden of establishing an appropriate case to justify that allowance". There should be no "unreasonable delays", a "good reason" why the opposition has not been mounted within the initial period of three months and some indication that a "serious opposition is foreshadowed".
Mr. Marsh submitted that these criteria were satisfied by the M. Grill declaration. The complexity of the specifications and the difficulty in sorting out the relationship between the inventions and the prior art meant that more time was required to properly establish opposition. Also he suggested that a serious opposition was foreshadowed because of an indication in the M. Grill declaration that some analysis has already been made of the Albright & Wilson applications by the prospective opponent, and because of the matter of possible infringement.
In answer, Mr. Mischlewski stated that the patent applicants were aware of the "possibility" of opposition by Colgate‑
Palmolive since their correspondence in 1985 and that there was no dispute on this point, but that what the patent applicants were really objecting to was "the fact that they haven't opposed". He submitted that the prospective opponents had been aware of the patent applications for 18 months but the notice of opposition still had not been lodged, that the prospective opponent had "commercial reasons" only for wanting to oppose, that there was no clear commitment to want to invalidate the applications, and that the M. Grill declaration shows that Colgate‑Palmolive have not been able to find any information relevant to opposition. He drew parallels with the circumstances in the Vangedal‑Nielsen case.
Also Mr. Mischlewski pointed out that we may be "aided by the yardstick of Unilever", who were able to lodge notice of opposition within the three‑month period, that Colgate‑Palmolive and Unilever have "equal resources and equal competence", that the public interest is already satisfied by Unilever's opposition, and that it would be inconvenient for the patent applicant to deal with two oppositions "out of synchronization".
In the matter of whether there has been any unreasonable delay I take account of the fact that the prospective opponents have been aware of the existence of the patent applications for some 21 months, however they have only recently obtained copies of the accepted form of the applicatons, the claims of which are crucial in determining possible infringement; and in the light of the complexity of the two applications and the large number of claims involved, I do not think it is unreasonable for the prospective opponents to apply for an extension under these circumstances.
In the matter of whether a serious opposition is foreshadowed I am guided by the circumstances in Poltrock v. Ennor (1987) AIPC 90‑361 37,276, in which it was decided that a serious opposition was intended even though there was no proof of a substantial opposition; the opponent was merely in the process of ascertaining whether there was any publication or prior use. The extension of time was granted in this case. In the Vangedal‑Nielsen case it was decided that there was no evidence at all to suggest a serious opposition was foreshadowed, in fact the evidence suggested "that there was not". The circumstances in this case are closer to those in Poltrock v. Ennor . It is not relevant whether the prospective opponents have found any "relevant information" as suggested by Mr. Mischlewski; M. Grill's declaration shows that Colgate‑Palmolive have been interested in opposing the patent applications.
Because Unilever have lodged their notice of opposition the patent applicant is already facing the prospect of opposition proceedings delaying the sealing of their applications, so the granting of an extension of time to allow Colgate‑Palmolive to also oppose is not likely to significantly further delay the sealing. It is more likely that the oppositions would be "concurrent" rather than "out of synchronization" as suggested by Mr. Mischlewski. Thus I do not consider that the interests of the patent applicant would be significantly affected by allowing time for a second notice of opposition to be lodged.
The public interest in this matter, which essentially is that no invalid patents are granted, is taken account of by Unilever's opposition, but could also be further served if Colgate‑
Palmolive produced relevant evidence not adduced by Unilever. Also it is in Colgate‑Palmolive's interest to pursue the opposition in the event that Unilever may withdraw theirs.
Decision
I am of the opinion that Colgate‑Palolive have established a case to justify the allowance of the extension of time : a serious opposition is foreshadowed, there has been no unreasonable delays, and the allowance will not cause any unreasonable delays. Accordingly, I allow the extension of time to 30 October, 1987 in which to lodge notice of opposition.
Both Mr. Marsh and Mr. Mischlewski made submissions on costs. In this case I have based my decision mainly on the prospective opponent's circumstances as indicated in the M. Grill declaration which had been served on the patent applicant several days before the hearing, i.e. adequate time in which to fully construe the contents thereof. I thus award costs against Albright & Wilson.
(J.I. WELSH)
Patent attorneys for the patent applicant: Edwd. Waters & Sons
Patent attorneys for the applicant for the extension of time:
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