Allergan Pharmaceuticals Inc. v. Alcon Laboratories (Australia) Pty Ltd

[1991] APO 12

PATENTS ACT 1952

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Application No. 588049 by ALLERGAN PHARMACEUTICALS INC., opposition by ALCON LABORATORIES (Australia) Pty Ltd and objection to extension of time under R.55 to lodge evidence-in-support.

Background         
          Application No. 61664/86 was lodged on 20 August 1986 by Allergan Pharmaceuticals Inc for an invention relating to cleaning contact lenses.  The application was advertized as accepted on 7 September 1989 and given the serial number 588049.  Notices of opposition were lodged by Pilkington Visioncare Inc and by Alcon Laboratories (Australia) Pty Ltd.  This decision relates to the latter opposition.
          The initial date for serving evidence-in-support of the opposition, pursuant to Regulation 55, was 6 March 1990, but the opponent was allowed three extensions of time to 6 December 1990, each extension being for three months.  In that period, three lots of evidence were served on the patent applicant by the opponent.  The opponent then lodged on 6 December 1990 an application for extension of time to 6 February 1991, and served a fourth lot of evidence on 10 December 1990.
          The patent applicant objected to this extension and the matter was heard in Canberra on 29 January 1991; Allergan was represented by Dr Peter Stearne, patent attorney with Davies & Collison, Melbourne and Alcon was represented by Mr Michael Houlihan, patent attorney with Callinan Lawrie, Melbourne.  On 6 February 1991 the opponent lodged another application for extension of time, to 6 May 1991; this was accompanied by copies of a fifth lot of evidence.

Application for Extension
          The grounds upon which the opponent made its application for the fourth extension of time are set out in some detail in its application lodged on 6 December 1990 and are summarized as follows;

.During the opponent's investigations of the prior art, it became aware of US application 352861, the disclosure therein being relevant to the opposition.  US 352861 is one of the basic applicatons of Allergan's patent No. 483265 (dated 16 April 1974 but subsequently revoked on 24 June 1986).

.The opponent's attorneys enquired from the Patent Office as to the date when US 352861 was open to public inspection.  The initial enquiry was on 14 August 1990 but the information was allegedly not supplied until 10 October 1990.

.This delay has consequently delayed the preparation of evidence.  Paragraph 3 of the statementof grounds reads as follows:

"It had not been anticipated that such a simple and routine request for this type of information could take such a long time in being answered.  Until it could be determined that USSN 352861 had been placed open for public inspection in Australia before the priority date of Application No. 588049, its consideration by our Australian experts and its place in relation to the other prior art previously brought to the attention of the Patent Office could not be carried out.  Clearly two full months were lost to us, due to circumstances beyond our control and in spite of substantial efforts to obtain the requested information.  As the witnesses being University lecturers having pressing duties during the months of October and November in relation to student examinations, they have been unable to concentrate their efforts to complete their reviews and comments on the prior art."

Submissions

Mr Houlihan made the following points for the opponent:

.US application 352861 describes some matter which is not in AU 483265; this is why the Australian patent is not identified in the evidence as a relevant citation.  Also, the US application was abandoned and therefore did not mature into a US patent; this is why it was important to establish particulars of the US application per se.  It was important to establish whether and when the US application was published before it was given to the witnesses for comment.

.The opponent served nine declarations prior to the hearing.  This indicates that Reg. 55 has been complied with and that there is a serious opposition.

.The extension applied for is only two months.  The patent applicant has not indicated that it would be adversely affected by such a delay; there is no infringement action pending for example.  The applicant's late response to the examiner's first report indicates that there is no real sense of urgency on the applicant's part to get the application sealed.  In previous decisions of the Commissioner, extensions have been allowed where in one case five previous extensions had been allowed and in another case eighteen months of previous extensions had been allowed..  Taking all these matters into account, the two month extension should not be considered as unreasonable delay.  Also, the applicant had withdrawn an objection to an application for extension of time by the second opponent to serve its evidence-in-support; this indicates some "inconsistency in the applicant's attitude" to the oppositions.

Mr Stearne made the following points for the applicant;

.AU 483265 was advertized accepted on 26 May 1977 in the Official Journal, therefore the basic US application would have been open to public inspection sometime before that date, i.e. approximately ten years before the priority date of the present application .  Thus the opponent's argument, that the alleged delay in the Patent Office slowed the preparation of evidence, is a "weak excuse".  Also, proper planning should have allowed for the witnesses being busy at university examination time.

.The invention relates to cleaning contact lenses which is relatively simple technology and therefore twelve months from lodgement of the notice of opposition is an adequate amount of time to prepare evidence in support.  Any extension beyond twelve months is "simply too long".  Also, the opponent was aware of a dispute between the parties in the US which began in June 1988.

.The evidence served to the date of the hearing was only cursory evidence; comprising merely of lists of specifications (and information relating to publication).  There was no substantial evidence relating to the contents of any of the specifications.

.The other opponent, Pilkington Visioncare, has "given undertakings that evidence will be served within an agreed timetable" and dealings between that party and the applicant have no relevance to the present opposition.  Similarly, the time of response to the examiner's report also has no relevance to the opposition proceedings.

Mr Houlihan's response to Dr Stearne's submissions included comments on the technology of the invention.  He suggested that the technology may be generally simple but the differences between Allergan's specification and the prior art involved a synergistic effect and therefore complicated chemistry.  Thus, qualified experts were needed to ascertain the state of the art in Australia.  Dr Stearne's response included a comment that to save time the experts could have initially been shown AU 483265 and later shown US 352861, if, as it seems, there was some concern that the US application may not have been published.
          At the hearing Mr Houlihan indicated that the opponent intended to serve on the applicant four declarations from overseas sources as well as declarations from its Australian experts.  He showed me copies of some draft declarations.

Decision
          With regard to the opponent's reason for the delay related to delays in receiving information from the Patent Office, I have referred to the case file of patent No. 483265 and noted as follows:

.On 18 May 1990 Callinan Lawrie requested details of the OPI date of application 483265.  This was followed by another similar request dated 30 May 1990.

.Two copies of certificates relating to the publication date of AU 483265 are on file.  They are dated 29 May 1990 and 7 June 1990.  Ostensibly, a duplicate of the earlier one of these documents was sent to Callinan Lawrie.

.On 14 September 1990 a facsimile letter was sent to the Office by Callinan Lawrie.  This letter indicated that the attorneys had received the certification of the date of publication of the AU application.  The facsimile letter "confirms [the attorney's] letter of 14 August 1990", but I note there is no such earlier letter on file.  The facsimile letter also requests a certification of the date of publication of the basic application US 352861. Another copy of this facsimile letter was sent to the Office on 4 October 1990.

.A copy of a certificate, dated 5 October 1990, relating to the date of publication of US 352861 is on file.  Ostensibly, a duplicate was sent to Callinan Lawrie on about that date.

It is not clear whether the attorney's letter of 14 August 1990 was received by the Office, assuming that it was sent, since there is no evidence of it on the file of patent No. 483265.  Thus, there is some doubt as to whether the two month delay referred to in the application for extension of time can be attributed to Patent Office staff.
          It is also not clear to me why Callinan Lawrie felt the need to have a certificate specifically relating to the US basic application when they already knew that patent No. 483265 was published about ten years before the priority date of the application being opposed.  It is clear from Sections 54B(1)(g) and 143(3) that basic documents become open to public inspection at the same time as their relevant Australian Convention application;  Callinan Lawrie were aware of these facts, as is evident from their letter of 14 September 1990.  I cannot determine any good reason why the US application could not have been given to the opponent's experts months before the certificate was received from the Office.  I conclude that the circumstances described do not constitute a good reason for the extension of time.  See Vangedal-Nielsen v Commissioner of Patents and Anor. 33 ALR 144. In this light, the delay in opposition proceedings over recent months can be seen as being unreasonable delay.
          I will now consider whether there is a serious opposition.  I am somewhat sympathetic to Dr Stearne's suggestion that the evidence lodged prior to the hearing was "cursory evidence".  After about twelve months, evidence which comprises a mere list of related art may be seen as not being sufficient to prove serious opposition.   On the other hand though, I am guided by precedent which determines that an opponent should generally not be required to have served substantial evidence in order to be allowed an extension of time to serve evidence.  See for example Roussel-Uclaf v Shell and Ciba-Geigy 9 IPR 475. I would be in some doubt as to the seriousness of the opposition if I only considered the evidence lodged prior to the hearing. However, since the hearing, more evidence has been lodged, this being of some substance, and I now think that there is a serious opposition on the part of Alcon Laboratories.
          Allergan has not presented any evidence as to how the delay in opposition proceedings has affected its interests, and, taking account of the seriousness of the opposition, I think it is in the public interest to allow the opposition to proceed despite the lack of a good reason for the opponent's delay.  Thus I allowed the extension of time to 6 February 1991 to serve evidence-in-support.  Both parties were informed of my decision on 11 February 1991.
          The opponent's most recent application for an extension of time, to 6 May 1991, lodged on 6 February 1991, has not been objected to by the patent applicant (but it warns that "any extensions of time filed beyond 6 May 1991, will be vigorously contested on the basis that more than sufficient time would have been allowed for preparation and service of evidence").  I think the grounds set out in this application are satisfactory, and this extra period should enable the opponent to complete its evidence-in-support, thus I allow this extension of time to 6 May 1991.

Mr Houlihan submitted at the hearing that the opponent was entitled to costs because the circumstances of the application for the extension of time were fully explained in the application and thus available to the patent applicant before the hearing.  Dr Stearne submitted that the patent applicant was entitled to costs because there was no evidence of a serious opposition prior to the hearing.  The circumstances were explained in some detail om tje a[[;ocatopm, but since I have decided that these circumstances do not show that there was a good reason for the delay in the proceedings at the end of 1990, I think the patent applicant had a good reason for its objection to the extension.  Also, I think it is relevant that I decided that there was a serious opposition only after the fifth batch of evidence was lodged, after the hearing.  Thus I award costs against the opponent, Alcon Laboratories.

(J.I. WELSH)
  Delegate of the Commissioner of Patents