Allergan, Inc. v Alcon Laboratories (Australia) P/L
[1995] APO 6
•7 February 1995
official notice
decision of a delegate of the commissioner of patents
Application : No. 588049 in the name of ALLERGAN, INC.
Title: Method and Composition for the Simultaneous Cleaning and Disinfecting of Contact Lenses
Action: Objection to Application for Extension of Time to serve Evidence-in-Reply by ALCON LABORATORIES (AUSTRALIA) PTY. LTD.
Decision: Issued .
Abstract: Extension of time granted. Uncertainty of final form of opposed claims due to opposition to proposed amendments.
patents act 1990
decision of a delegate of the commissioner of patents
Re:Patent Application No. 588049 by by ALLERGAN, INC., Opposition thereto under Section 59 of the Patents Act 1952 by ALCON LABORATORIES (AUSTRALIA) PTY. LTD., and Objection to Extension of Time to serve Evidence-in-Reply.
background
Patent Application 588049 by Allergan, Inc. (Allergan) was lodged on 20 August 1986 for an invention relating to cleaning contact lenses. The application was advertised accepted on 7 September 1989. Notices of opposition were lodged by Pilkington Visioncare Inc and by Alcon Laboratories (Australia) Pty. Ltd (Alcon), but the opposition by Pilkington was subsequently withdrawn. This decision relates to the opposition by Alcon.
The serving of evidence-in-support was completed on 1 July 1991 following a number of extensions of time, two of which were opposed and were the subject of decisions of delegates of the Commissioner. The serving of evidence-in-answer was completed on 2 August 1993 after a number of extensions of time.
So far 4 applications for extensions of time to serve evidence-in-reply have been granted unopposed. After receipt of the second of these applications the attorney for Allergan advised, in a letter to the Commissioner dated 17 February 1994, that the applicant agreed to the second extension on the understanding that no further extensions were requested. On 28 October 1994 Alcon filed a further application for extension of time for 3 months from 2 November 1994 to 2 February 1995 within which to serve evidence-in-reply. On 16 November 1994 Allergan advised that it objected to the extension application and requested a hearing of the matter. To date no evidence-in-reply has been served.
I heard the matter in Canberra on 20 January 1995. At the hearing Allergan was represented by Dr Peter Stearne, patent attorney of Davies Collison Cave and Alcon was represented by Mr Michael Houlihan, patent attorney of Callinan Lawrie. Both attorneys appeared by telephone at the hearing.
During the course of the evidence stages of the substantive opposition Allergan filed some proposed amendments to their application under Section 104 of the Patents Act 1990. Acceptance of these amendments was advertised on 10 June 1993. On 10 September 1993 Alcon filed a Notice of Opposition to the request to amend. The evidence stages of this opposition were completed with the filing of the evidence-in-reply on 17 October 1994. This matter has not been set down for hearing to date.
application for extension
Each application for extension of time to serve evidence-in-reply has been based on the need for the opponent's expert witnesses to have the exact wording of the opposed claims determined. The applications have been couched in similar terms. The application under consideration states the circumstances in which and the grounds upon which it is made to be:
"The time allowed so far to serve the Evidence-in-Reply has proven insufficient for the following reasons.
The patent applicant's Section 104 request to amend the originally accepted and opposed specification is still under opposition. In fact, the evidence-in-reply has been filed and we are now awaiting the matter to come on for Hearing.
The further time is required to ensure that we are in a position to have the exact scope and wording of the modified opposed claims determined, before we can complete the evidence-in-reply of the substantive opposition. Even so the evidence-in-answer in the present opposition has been given some consideration by our experts, but until they also know the wording upon which the evidence-in-reply is to be based, they cannot finalise their opinions, nor can their evidence be put into required Statutory form.
It is in the public interest that the evidence of our experts in response to the evidence-in-answer be put before the Commissioner so that the Commissioner is in a position of having the fullest disclosure of facts and opinions when the opposition is finally decided.
The addition (sic) time is requested so that the above may be performed with due care and attention."
submissions
In its notification of objection to the extension application Allergan indicated that the basis for objection is:
The opposed claims are narrower and fall within the scope of the original claims. The evidence-in-answer in the substantive opposition is slanted towards the amended claims. The opponent is therefore already fully aware of the relevant issues in the opposition.
The opposition to the claims is a delaying tactic to draw out the whole opposition procedure.
The public interest is not served by undue elongation of opposition proceedings.
At the hearing Dr Stearne expanded on the above points and made the following further submissions:
The law applicable to this class of extensions is as set out in Vangedal-Nielsen v Smith and Gelphen Nominees (1980) 33 ALR 144 and in Lyons v Registrar of Trade Marks 1 IPR 416.
The opponent has not explained how the wording of the claims is highly pertinent to the nature of the preparation of the evidence-in-reply.
The opponent's interests will not be significantly affected if the extension is refused. Alcon have already filed voluminous evidence-in-support and they could apply to the Commissioner for special leave to adduce further evidence if necessary.
The reasoning cited by the hearing officer in Genetic Systems v Johnson & Johnson 27 IPR 277 in commenting on the public interest applies in this case.
Mr Houlihan made the following submissions on behalf of Alcon at the hearing:
Until the exact scope of the claims is determined the opponents are not in a position and should not be asked to serve evidence-in-reply. If the Section 104 request is refused the evidence-in-reply based on the amended claims could be useless. If the request is allowed there may not be a need for the substantive opposition.
It would be a denial of natural justice to require Alcon to serve evidence-in-reply before the amendments are finalised. The amendments could be withdrawn or other amendments proposed. Alcon should not be requested to prepare evidence on different cases for different scenarios.
Paragraph 9.3.3 of Volume 3 of the Manual of Practice and Procedure refers to a situation in which the Commissioner can issue a direction to defer service of evidence-in-reply pending allowance of amendments. While the issue of a direction is not possible under the 1952 Act, allowance of the extension in this case will have the same effect.
There has been no unreasonable delay on the part of Alcon. Delays have been caused by Allergan wanting to make amendments at this stage rather than waiting until the opposition has been determined to make amendments.
Alcon have satisfied all the parameters required for an extension of time as set out in Vangedal-Nielsen (supra).
decision
The law regarding this type of extension has been comprehensively reviewed by the Federal Court, and there are also a number of Office decisions dealing with such extensions.
The basic matters which the Commissioner must consider before allowing an extension involve:
(a)whether the applicant for the extension has justified the extension;
(b)whether there is a serious opposition in train;
(c)the private interests of the parties to the action; and
(d)the public interest.
Alcon bases its justification for the extension on the contention that its experts cannot finalise the evidence-in-reply until they know the exact scope and wording of the opposed claims. Allergan maintains that the evidence-in-reply must be limited to responding to the evidence-in-answer, which in turn is directed to the amended claims. While each attorney mentioned the requirement of Section 102 that the amended claims must fall within the scope of the claims before amendment, they strongly disagreed as to whether this requirement has been met.
At present the only lawfully allowed claims are those contained in the complete specification as filed. In my view the evidence-in-reply would have to be directed to these claims if it was served now. It seems to me that Alcon has had adequate time to prepare and serve this evidence. However I am sympathetic to Mr Houlihan's submission that this evidence may not properly address the amended claims or may even be unnecessary, depending on the outcome of the Section 104 opposition.
Mr Houlihan referred me to a number of decisions in which applications for extensions of time were considered while the opposed specifications were subject to proposed amendments. It is clear that when amendments are allowed during the course of opposition proceedings, such amendments can be considered during subsequent preparation of evidence. However where amendments have not been allowed, this can create some uncertainty, especially when the amendments are opposed.
It seems to me that in the present case there is some uncertainty as to the final form of the claims of the opposed specification. While I have not studied the evidence-in-answer in detail, it seems that at least some of that evidence goes to the proposed amended claims. Dr Stearne also indicated that the evidence-in-answer is "slanted towards the amended claims". I note that this situation is anticipated in the context of the 1990 Act in paragraph 9.3.3 of Volume 3 of the Manual of Practice and Procedure which Mr Houlihan drew to my attention. This paragraph indicates that the Commissioner may issue directions to defer the evidence-in-reply pending allowance of proposed amendments. While the Commissioner cannot issue such directions under the 1952 Act, it seems to me that the granting of an extension of time to serve the evidence may result in the same outcome. Therefore there seems to be some justification for the extension.
However before granting the extension I have to consider the matters listed under (b) to (d) above.
It is apparent to me, in view of the extensive evidence-in-support and evidence-in-answer filed in relation to the substantive opposition, and also in view of the evidence that has been served in relation to the opposition to the proposed amendments, that there is a serious opposition in train.
Concerning the interests of the parties, I have been given no indication that either party would be seriously disadvantaged by the grant of the extension. Allergan has chosen to seek to amend its application during the course of the opposition and therefore ran the risk that those amendments may delay the prosecution of the opposition. It is clearly in Alcon's interest to grant the extension since they have not finalised their evidence-in-reply as yet.
On the question of the public interest, I agree with Dr Stearne's submissions to the effect that the Commissioner has a duty to ensure that proceedings are finalised without undue delay. However I am also mindful of the need for a serious opposition to be dealt with on its merits rather than being shut out by a failure in procedure (see Kaiser Aluminum & Chemical Corporation v The Reynolds Metal Company (1969) 120 CLR 136). In view of the uncertainty as to the final form of the proposed claims, I do not consider that any extension granted will, in the short term, unduly protract the proceedings.
Having considered all the matters, I find that, on balance, an extension of time is justified to allow Alcon to serve their evidence-in-reply. However, since the extension sought is only until 2 February 1995, and the opposition concerning the proposed amendments has not been heard, although I note the applicant has now requested a hearing, it seems likely that Alcon will seek further extensions of time pending the determination of that opposition. In these circumstances I believe it would be generally appropriate to grant any such extensions until either the status of the amendments is determined or the process appears to be getting unduly protracted. In such a case it would be appropriate for the evidence stages to be finalised and the substantive opposition set down for hearing without further delay. In any event Alcon should not expect any applications for extension of time to serve evidence-in-reply to be favourably looked on once the final form of the opposed claims is known.
summary
I have found that the application for extension of time is justified. Consequently I grant the extension of time to 2 February 1995 within which to serve evidence-in-reply.
costs
Both parties submitted that they were entitled to costs. I have found that the application for extension of time is justified. Therefore I award any costs in favour of Alcon and against Allergan.
Janet Werner
Delegate of the Commissioner of Patents
Patent attorneys for the applicant : Davies Collison Cave, Sydney
Patent attorneys for the opponent : Callinan Lawrei, Melbourne
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