American Cyanamid Company v Nalco Chemical Company

[1992] APO 5

PATENTS ACT1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Patent Application No. 536264 by AMERICAN CYANAMID COMPANY, Opposition by NALCO CHEMICAL COMPANY and Objection to a Request for the Commissioner of Patents to Summon Witnesses

BACKGROUND

American Cyanamid Company lodged patent application 536264 on 18 February 1982 as a divisional application of patent application 73197/81. Acceptance of 536264 was advertised on 3 May 1984. On 1 August 1984, Nalco Chemical Company lodged notice of opposition to the grant of a patent on the application under section 59 of the Patents Act 1952. Lodgement of evidence by both parties was completed on 24 December 1990.

A hearing of the opposition was set down for 14-18 October 1991.

On 12 February 1991, the applicant lodged a request for the Commissioner to summon witnesses pursuant to section 14 of the Patents Act 1952. The request listed the names of several people who had provided statutory declarations as part of the opponent's evidence in support of the opposition.

After requesting and receiving reasons to justify the request from the applicant, a delegate of the Commissioner refused the request on the grounds that the reasons provided did not sufficiently establish the need to summon witnesses.

The hearing of the opposition has since been postponed to a date yet to be fixed.

On 18 October 1991, the applicant lodged a further request for the Commissioner to summon witnesses.  The applicant also lodged written submissions in support of the request.

On 8 November 1991, the opponent  objected to  the request being granted and provided written submissions in support of that objection.

Neither party wishes to be heard on this matter.

SUBMISSIONS

The applicant's written submissions provide arguments in rebuttal to the reason given by the delegate of the Commissioner for refusing the earlier request.  The delegate referred to paragraph 2.7.1 of the Patent Office Hearings Manual which states:

"...the Commissioner will not, either for his own purposes, or at the behest of another party, summons a witness unless there is very good purpose to be served, as the regulations specifically provide for evidence to be in documentary form. However, where there is evidentiary conflict on facts as distinct from opinions (e.g. in relation to subjective assessments of knowledge in a particular technology), the Commissioner may exercise his power under section 14 if it appears that the conflict could be resolved by taking oral evidence. In particular, this sort of situation can arise where obtaining has been alleged."

The delegate indicated that the applicant had not clearly established that summoning of witnesses would serve any specific purpose.

The applicant's submissions assert that, in the present case, analogous circumstances exist to those of obtaining referred to in the paragraph from the Hearings Manual quoted above. The applicant submits that the opponent relies on alleged prior publication and prior use in its opposition. However such prior disclosure or use took place in breach of confidence in circumstances specified in sub-section 158(1)(b) of the Patents Act 1952 according to the applicant. Thus any disclosure or use of the applicant's invention before the priority date of the claims took place in circumstances which do not invalidate these claims. The applicant wishes to test the evidence of the opponent's declarants in this respect.

The opponent's submissions raise a number of points.  I will summarise them as follows:

.There will be general inconvenience for the summoned witnesses and their employers.  It is also not in the public interest to have the opposition proceedings extended by a number of days.

.The regulations provide for evidence to be lodged in documentary form.  Only where there is a conflict of facts should the Commissioner consider summoning witnesses.  There is no conflict of facts in the present case.  The applicant is merely seeking to engage in discovery.

.The applicant seeks to rely on section 158 of the Patents Act 1952. To do so, the applicant makes entirely unsupported allegations that the subject of prior use was derived from the applicant "in breach of confidence". Reliance on section 158 and mere allegations as opposed to conflict of facts are not sufficient reasons for the Commissioner to summon witnesses. The opponent on the other hand is relying on documentary evidence to establish prior publication and prior use.

.Any oral evidence given without documentary support relating to events which occurred 10-12 years ago would be unreliable and of little probative value.

DECISION

Section 210 of the Patents Act 1990 states in part:

"The Commissioner may, for the purposes of this act:

(a) summon witnesses; and

(b) receive written or oral evidence on
     affirmation;

........................."

This is an authority which the Commissioner has had since the 1903 Patents Act.  It is a discretionary power which the Commissioner has rarely used.

However, as suggested in the Patents Office Hearings Manual the attitude of the Commissioner in relation to the summoning of witnesses would appear to be no different from that expressed by the UK Comptroller in Re Laguerre's Patent (1970 RPC 587). Graham J. quotes the Comptroller as saying:

"It seems to me that this is a case where one might well expect the patentee to try and break down the applicant's witnesses as to their recollection by cross-examination, if he doubted the accuracy of their recollection and thus to give me an opportunity of assessing their reliability....... The fact that it rarely happens is due rather to the failure of both parties to invoke such procedure than of any reluctance of the Comptroller-General to permit it.  I know of no case in which a proper request to cross-examine by a party has been refused."

The Patent Office Hearings Manual then suggests that "As far as Office practice is concerned, the emphasis must be on the word proper." The example given is where an allegation of obtaining exists.

It seems to me that the circumstances referred to in sub-section 158(1)(b) of the Patents Act 1952 or the equivalent sub-section 24(1)(b) in the Patents Act 1990 are analogous to those involved in an allegation of obtaining. In both situations, the question of unauthorised use of the subject matter of the invention is at issue.

I note that in Re Laguerre's Patent op. cit. one of the issues concerned the question of prior user.  Graham J. after quoting the Comptroller adds further explanation as follows: 

"He (the Comptroller) is saying that, if a strong prima facie case for prior user is made out and there is no cross-examination, the court is entitled to find that it is proved." (my underlining)

In reading this in conjunction with the Comptroller's comments, I believe that Graham J. is suggesting that summoning witnesses where prior user is at issue is entirely appropriate. Therefore the circumstances referred to in sub-section 158(1)(b) would seem to be even more appropriate to warrant the summoning of witnesses. I therefore agree with the applicant's submission that the issues of sub-section 158(1)(b) and obtaining can be considered to be analogous when determining whether or not the Commissioner should summon witnesses.

However even if obtaining or sub-section 158(1)(b) is at issue the Commissioner should not automatically summon witnesses on being so requested. The merit of such a request will depend on the particular circumstances of the case in question. I must now consider whether or not in the present circumstances a proper request has been made.

There is no clear indication in Re Laguerre's Patent op. cit. as to what constitutes a proper request.  The Patent Office Hearings Manual indicates that the Commissioner will not summon a witness unless there is a very good purpose to be served.  If there is evidentiary conflict on facts as opposed to opinions witnesses could be summoned if it appears that the conflict could be resolved by taking oral evidence.  In Kidax Ltd's Application (1959 RPC 167) Lord Evershed states at page 175:

"...the Registrar will normally deal with these matters on this paper evidence and that a party seeking to supplement such paper evidence - either by cross-examining a deponent or otherwise - has a substantial onus of proof to discharge. As a matter of administrative necessity, if for no other reason, it would no doubt be impossible for the Registrar to do other than deal with these cases as best he can, by and large, on this written material."

I note that this case deals with trade mark matters but the comments appear to be equally relevant to the present situation.  In this respect, I believe that this statement supports the second point of the opponent's submissions that I have referred to earlier.

It seems to me therefore that it is up to the person making the request to establish that there is a conflict on facts and that there is a reasonable likelihood that this conflict could be resolved by oral evidence.  In this respect I agree with the opponent's suggestion that there will be general inconvenience to the summoned witnesses, their employers, and the general public.  This inconvenience should be caused only if there is a reasonable likelihood of the conflict on facts being resolved by cross-examination.

In relation to the present request I do not believe that the applicant has discharged the onus of proof required to establish a case for the Commissioner to summon witnesses. The mere reference to sub-section 158(1)(b) and prior unauthorised disclosure does not in my opinion adequately establish any conflict on facts. Further the applicant provides no indication that oral evidence would help to resolve any conflict of facts if such a conflict was proven to exist. Thus I do not believe that the applicant has made out a proper request.

I believe that as a general rule it is up to the person making the request to indicate where in the evidence lodged in relation to the opposition there exists a conflict on facts.  The Commissioner should only consider those portions of the evidence so indicated in the request to establish if such a conflict exists when deciding whether or not to grant the request.  However in considering this request I have been mindful of the fact that the Commissioner has apparently not had to deal previously with such a request where the other party has objected to the summoning of witnesses.  Therefore I have taken the opportunity to consider the evidence lodged in relation to the opposition proceedings.  I do not wish to pre-empt any matters which should more suitably be dealt with in the main opposition hearing.  However in perusing the evidence I believe that it might be possible to make out a proper case for witnesses to be summoned. 

I have made the above reference to the evidence lodged in relation to the opposition because, even though I do not believe that the applicant has made out a proper request, I am mindful of the comments of Falconer J. in Norris's Patent (1988 RPC 159) where at page 171 he states:

"I desire to say at this stage that this is pre-eminently a case in which there should have been discovery and production of documents and cross-examination of the main declarants on each side.  On the written evidence, much of which is not in a satisfactory form, there is an acute conflict of testimony - when that became apparent, the patent agents acting on both sides should have requested cross-examination of the main declarants....."

I am not suggesting by this that the present evidence is not in a satisfactory form but that it might be possible to make out a proper case for witnesses to be summoned.

I also note the comments made in J Sainsbury Ltd's Application (1981 FSR 406) by Lawton LJ. when referring to the general practice of not applying for cross-examination before the superintending examiner:

"In my judgment if that be the practice it is one which is a bad practice because if there is good reason for wanting to cross-examine a deponent then the proper time to do so is before the superintending examiner and not on appeal to the Patents Court."

However having come to the conclusion that it might be possible to make out a proper case, I do not propose to grant the request even though it could be argued that such an action is warranted in the interest of  expediting matters.  The opponent has only been able to put forward submissions in relation to arguments supplied by the applicant in conjunction with the present request which I have decided has not been properly made.  A granting of the present request in order to expedite proceedings would deny the opponent a chance to be heard on what may or may not be a proper case.

I note in passing that the opponent's submissions lodged in relation to the objection to the present request being granted include the argument that any oral evidence relating to events which occurred 10-12 years ago would be unreliable and of little probative value.  However quite a number of assertions made by the opponent's declarants in their statutory declarations appear to rely on their recollection of the relevant facts at the time without the support of any documentary evidence.  Some of those declarations were made as late as 1990.  Therefore I do not believe that oral evidence provided a year or so later would be of any less value.

I also note that the opponent submits that if I grant the request for witnesses to be summoned I should advise those witnesses that they should be represented by Counsel.  While I have not granted the request, I do not believe that if I had it is my duty to advise witnesses in this way.  Such advice seems to be more the responsibility of the opponent's attorneys rather than the responsibility of the Commissioner.

The opponent also suggests that if I grant the request to summon witnesses I should seek an undertaking from the applicant that the applicant's witnesses would also be made available for cross‑examination.  While I have not granted this request, it seems to me that if the applicant was successful in having witnesses summoned then the opponent is quite entitled to lodge a request to have the applicant's declarants summoned whether or not the applicant makes such an undertaking.

CONCLUSION

I refuse to grant the applicant's request for the Commissioner to summon witnesses.  However I believe that it might be possible to make out a proper request.  Considering the fact that the opposition proceedings have been continuing for some considerable time, I do not wish to protract such proceedings more than is necessary.  Therefore I will allow the applicant one month from the date of this decision to lodge a new request.  If the applicant does not lodge a request within this time, I will fix a time and place for the hearing of the opposition.

R. Hallett
Delegate of the Commissioner of Patents

Patent attorneys for the applicant : Spruson & Ferguson, Sydney
Patent attorneys for the opponent  : Shelston Waters, Sydney