Arx Pty Limited v Lockwood Australia Pty Ltd

[1995] APO 62

official notice

decision of a delegate of the commissioner of patents

Application        :    No. 652160 in the name of ARX PTY LIMITED

Title:    A Lock Body Barrel Assembly and Key Therefore

Action:    Opposition under section 59 (Patents Act 1990) by LOCKWOOD AUSTRALIA PTY LTD. Requests to amend statement of grounds and particulars (regulation 5.9(1)) and for directions (regulation 5.10(1)).

Decision:    Issued            .

Abstract:    Amendment to statement not unduly prejudicial and allowed. Directions sought not appropriate, or not justified by the facts, and refused, excepting time for evidence-in-answer.

pattents act 1990

decision of a delegate of the commissioner of patents

Re:Patent Application No. 652160 by ARX PTY LIMITED and opposition thereto by LOCKWOOD AUSTRALIA PTY LTD. Requests to amend the statement of grounds and particulars and for directions.

background

Patent application 652160 was filed under the provisions of the PCT on 21 May 1990, by ARX PTY LIMITED (the applicant), and advertised accepted on 18 August 1994.

The invention is a lock mechanism (claims 1-11 and 14), and a key for use in the lock (claims 12-13 and 15).

On 18 November 1994 a notice of opposition was filed by LOCKWOOD AUSTRALIA PTY LTD (the opponent), followed on 17 February 1995 by a statement of grounds and particulars (the statement).

On 10 March 1995 the applicant filed a request for a direction under regulation 5.10 that the opponent provide further and better particulars; the opponent was invited to comment and did so on 10 April 1995.  The parties were advised on 8 May 1995 that the Commissioner did not consider that such a direction was appropriate in the circumstances of the case, and offered the opportunity to be heard.  This was not taken up.

On 17 May 1995 the opponent filed a request for an extension of time of one month in which to serve evidence-in-support; this extension was subsequently allowed without objection, and the evidence was served on 18 May 1995.  At this time the opponent stated that service of the evidence-in-support was complete.

At the same time the opponent also filed a request to amend the statement, to which the applicant took objection on 6 June 1995, followed by another submission by the opponent on 13 June 1995, which was not formally put as a second request to amend the statement until 21 July 1995.  This submission was accompanied by an item of what was referred to as "further evidence".  The applicant objected to both the request to amend and to the inclusion of the further evidence.

The applicant also filed another request for directions under regulation 5.10, to which the opponent responded on 5 July 1995.

A hearing was set down for 1 September 1995, with Ms Kerry Moore Chrysilou, patent attorney of Chrysilou Moore Martin, appearing for the applicant, and Mr Terrence Collins, patent attorney of Philips Ormonde & Fitzpatrick, appearing for the opponent.
The issues to be decided

The casefile suggests a rather confusing number of issues for decision.  However at the hearing the following was agreed:

(i) that the item of "further evidence", ie US patent 1589256, which was served during the extension of time allowed for evidence-in-support, though not the reason for requesting that extension, could be considered as part of the evidence-in-support, so long as the statement could be amended accordingly; and

(ii) that the time allowed for serving the evidence-in-answer would commence from the date of the decision regarding the requests to amend the statement.

It was agreed that the issues which had to be decided could be reduced to:

(i) each of the regulation 5.9 requests to amend the statement; and

(ii) the second of the regulation 5.10 requests for directions.

First amended statement

The amendment requested takes the following form, with the changes emphasised.

"Grounds

1. The invention as claimed in any claim of patent application 652160 (the application) is not a patentable invention because it is not novel when compared with the prior art base as it existed before the priority date of that claim (Sub-paragraph 18(1)(b)(i), Patents Act 1990).

2. The invention as claimed in any claim of the application is not a patentable invention because it does not involve an inventive step when compared with the prior art base as it existed before the priority date of that claim (Sub-paragraph 18(1)(b)(ii), Patents Act 1990).
.......
Particulars

Ground 1
1.1 ...
1.2 The invention as claimed in any one of claims 1 to 11 and 14 of the application are not novel having regard to the disclosure contained in any one of the following:
(a) ...
.......
(i) ...

(j) The specification of AU-A-77173/81 (WARTSILA)

(k) The specification of BE 859334 (WARTSILA)
.......

Ground 2
2.1 ...
2.2 The invention as claimed in claim 1 of the application is obvious and does not involve an inventive step because:

2.2.1 Lock barrel assemblies operable by a key and adapted to be received within a hollow lock body and having the following constructional characteristics were part of the common general knowledge in Australia before the relevant priority date:

(a) a hollow base having a longitudinal axis,

(b) at least one disk rotatably supported in the               base and extending generally normal to the axis,

(c) the or each disk having an aperture for passage of 

a key,

(d) key engaging means adjacent the aperture and             adapted to engage the key so that the key is capable of  locating the or each disk at a predetermined position about the longitudinal axis without rotation of the key, and

(e) at least one locking bar operatively associated with the disk or disks and adapted to move radially relative to the longitudinal axis from an outer position to an inner position only after the or each disk is located in its respective predetermined position by the key.

2.2.2 Lock barrel assemblies as described in sub-paragraph 2.2.1, but in which some turning movement of the key is necessary to place the disks in their respective predetermined positions, were part of the common general knowledge in Australia before the relevant priority date.

2.2.3 (previously 2.2.2)

2.2.4 (previously 2.2.3)"

It can be seen then that the amendment would result in the addition of two patent specifications to the particulars of ground 1 (novelty), and the addition of a particular relating to common general knowledge to ground 2 (inventive step).

The second amended statement

As amended by the second request, the statement includes the first amendment, and would read as above, except for the following emphasised additions to the particulars.

"Particulars

Ground 1
1.1...
1.2...
(a)...
......
(k)...

(l) The specification of US 1589256 (SPRUTH)

1.3...

1.4 The invention as claimed in any one of claims 12, 13 and 15 of the application is not novel having regard to the disclosure contained in any one of the following:
(a)...
......
(l)...

(m) The specification of US 1589256 (SPRUTH)

The effect of the second amendment would be to add to the statement as first amended another particular, in the form of a patent specification, to ground 1 for all claims.

The directions request

There are two parts to the request.  One is directed toward the evidence-in-support, and consists of items A to N, being mainly requests to exclude all or part of some of the exhibits accompanying the declaration by the opponent's principal declarant from consideration at the substantive opposition.

Request A is concerned with the provision of a properly verified translation of an exhibit, and request N concerns the time for serving evidence-in-answer, which has now been agreed.

The second part goes to the original statement of grounds and particulars, and requests that particular 2.2.1 (state of common general knowledge) be excluded, and that particular 1.2 (novelty) be further particularised in relation to specific claims and specific documents.

SUBMISSIONS

The hearing was preceded by the filing of a large number of declarations, submissions, and other correspondence, some of which (confidentially agreements, directorships, the parties' negotiations) do not seem very relevant, and I will not go into them.  Further written submissions were also made after the hearing.

In the following I attempt to summarise the main arguments of each party.  I was referred to a number of decided cases, including the following:

* Diamond Scientific Company v CSL Ltd (1992) AIPC 90-927

* Abundant Lawn Grass Industries v Crangrove (1993) AIPC 90-973

* F Hoffman-LaRoche AG v Bresatec Ltd (1994, unreported)

* Karl-Heinz Stasch v Dynamic Plastics Ltd (1994, unreported)

* Mobay Corp v Dow Chemical Co 24 IPR 379

* Sumitomo Electric Industries v BICC Plc (1993) AIPC 90-988

* Biosys v Ecogen Aust Ltd (1993) AIPC 91-001

* E I Dupont de Nemours v DowElanco (1994) AIPC 910-067

* Boots Co v Hamilton (1992, unreported)

* Asahi Kasei Kabushiki v W R Grace & Co (1994, unreported)

* Ball Corp v American National Can (1995, unreported)

* Commonwealth of Australia v Australian Sonar Systems (1993, unreported)

* Kent-Moore Corp v Environmental Products Amalgamated Ltd 25 IPR 154

* ICI v Irenco Inc 26 IPR 154

These decisions are all those of a delegate of the Commissioner of Patents.

Mr Collins for the opponent made the following main points in respect of the first request to amend.

* The AU 77173/81 specification was found by the opponent's declarant Mr Esser in circumstances which were unrelated and incidental to the preparation of the opponent's case.  In general it was submitted that "incidental" to the case simply means that further material was not being actively sought, and it includes material discovered accidentally.  However, if a chain of causation is needed, as put by the applicant, then the facts demonstrate that also.

* The request to amend was made at the earliest possible opportunity following discovery, namely about two days later, largely because what Mr Esser initially sighted was only an abstract.

* There should be no protraction in the preparation of the case, as the applicant can consider AU 77173/81 along with the other items of prior art particulars, in preparing its evidence-in-answer.

* While there is a change in the details of the case the applicant has to answer, there is no substantial change in its nature.  The invention is a relatively simple mechanical device and the disclosure of AU 77173/81 is in the same general field.  While there may be some prejudice, it is not undue.

* It was always Mr Esser's intention, as he declares, to list BE 859334 as a particular relating to the lock claims 1 to 11 and 14, as well as to the key claims 12-13 and 15.  That this was not done in the original statement was an error.

* Regarding the change to the common general knowledge particular, this is consequential to an initial error in Mr Esser's understanding of the meaning of the particular as originally drafted.  Again, the amendment is requested before preparation of the evidence-in-answer needs to commence.

* There is a general public interest which suggests that relevant material should be admitted for proper consideration on its merits, and not be excluded for a technical reason.

Mr Collins made the following points in regard to the second request to amend.

* US 1589256 was found by Mr Collins, as he declares, while complying with a request from Mr Esser for information on a matter unrelated to these opposition proceedings.  A similarity was noticed between the drawings of a key in this specification, a key in an original particular, and the applicant's key.

* This occurred on 9 June 1995, and the applicant was advised on 13 June 1995, however a formal request to amend was not made until 21 July 1995.  This is explained, Mr Collins says, by some uncertainty as to whether the requested extension of time for serving evidence-in-support would be allowed, and whether the evidence could be treated as evidence-in-support, or on application, further evidence.

Ms Moore Chrysilou for the applicant made the following submissions.

* The parties had been in negotiations over the invention for several years, and the opponent had already had plenty of time in which to find the prior art.

* Under the 1990 Act the applicant is entitled to know the whole case it has to answer at the time of serving the statement, not after service of the evidence-in-support.

* Decided cases show that where an applicant objects to a request to amend a statement, then there is a prima facie case of prejudice which is undue, and the onus is on the opponent to show the contrary.

* The opponent is Lockwood Australia Pty Ltd, not Mr Esser, who is a senior employee of the company.  In law, the knowledge of a company is the knowledge of its officers, not a single one of them.  The evidence does not show that there was no company knowledge of the extra particulars.  Reference was made to Brambles Holdings v Carey (1976) ACLR 176.

* The declarations show that the discovery of AU 77173/81 and US 1589256 was accidental or fortuitous, not incidental as required by decided cases.  This necessarily involves, it was said, a chain of causation.

* Mr Esser's declaration referring to the inclusion of BE 859334 as a particular against the lock claims does not clearly identify the amendment actually sought.  There is insufficient evidence of error or omission to enliven the power to amend or to exercise that power.

* A similar submission was made regarding his declaration and the amendment sought, relating to common general knowledge.

* There is no evidence of when the alleged errors were first noted, consequently the question of whether there was unreasonable delay is open.

* The evidence does not show that the alleged errors were an incidental discovery.

* There was an unreasonable delay between noticing US 1589256 and the formal request to amend the statement.

* Also, US 1589256 was found in a file which had been in the possession of the opponent's agent for several years.  Therefore this was in the knowledge of the opponent, and there was an unreasonable delay.

* Contrary to the opponent's submissions, the applicant would be unduly prejudiced by the added particulars, and by the expansion of an existing particular to the lock claims.

* An examination of the claims and the disclosures of any of the disputed specifications, and the alleged common general knowledge, shows that there are substantial differences.  Consequently there is no public interest issue in allowing the amendments.

Regarding the request for directions, Ms Moore Chrysilou made the following submissions.

* There was authority for the Commissioner to direct that further and better particulars be provided, notwithstanding that the evidence-in-support has been completed.

* I was referred to paragraph 9.3.5 of the Manual of Practice and Procedure, Volume 3, regarding the application of regulation 5.10 to the conduct of opposition proceedings.  It was submitted that this supports the making of directions of the kind now sought, ie the status of some items of evidence is not clear.

* Explanations were given supporting each one of the requests for direction, item by item.  In most cases the requests are to exclude, in whole or in part, exhibits accompanying the evidence-in-support, from consideration at the substantive opposition, or to limit the purpose for which they may be used.  The reasons are that they are not given in the statement or are not properly translated and verified (regulation 22.15).

* One request was to remove a particular relating to common general knowledge (2.2.1), for the reason that the person skilled in the art is not identified.

* Another request was for further and better particulars for particular 1.2, in relation to identifying the relevance of particular documents to specific claims.

In rebuttal Mr Collins made the following submissions.

* Part of the request for directions goes to the admissibility of evidence, and it is not appropriate in proceedings of the present
kind to determine the nature of the case that the opponent may argue.  That is for the substantive opposition proceedings. 
Also, so far as the foreign language specifications are concerned, the opponent is entitled to rely on at least those parts which can be understood, namely the drawings.

* Another part of the request in effect goes to part dismissal of the opposition, and it is inappropriate to try to use regulation 5.10 to give effect to what is provided by regulation 5.5, with that regulation's strict time limit.

* In a third aspect the request is for further and better particulars.  Part of the request repeats an earlier request which has been previously refused, and part raises a new issue, which could and should have been raised earlier.

* Cases show that the applicant must be expected to make a reasonable effort to understand the case being put, and as the requests show, this has not been done.

After the hearing written submissions were made by both parties on the question of what is "known" by a company.

DECISION

Amendment of the statement

The relevant parts of the applicable regulation read as follows:

"5.9(1) The Commissioner, on the written request of an opponent and subject to such terms as the Commissioner may specify:

(a) If the Commissioner reasonably believes that an amendment of a statement referred to in subregulation 5.4(1) ("filing of a statement") corrects an error or omission by the opponent or by his or her agent - may amend the grounds of opposition set out in the statement; or
......
(c) must amend particulars relating to a ground referred to in subregulation 5.4(1).

(2) The Commissioner must not allow an amendment requested under subregulation (1), if:
......
(e) he or she reasonably believes that a person will be unduly prejudiced by the amendment."

The relevant part of regulation 5.4(1) reads as follows:

"5.4(1) An opponent must:

(a) within 3 months of filing the notice of opposition serve on the applicant a copy of a statement that sets out:

(i) the grounds of opposition; and

(ii) the particulars relating to each ground;"

As previously stated the amendments requested involve the following:

(i) addition of brand new particulars AU 77173/81 and US 1589256 to ground 1 against the lock claims;

(ii) addition of BE 859334 similarly, having been previously particularised against the key claims only;

(iii) addition of US 1589256 to ground 1 against the key claims;

(iv) a change to what is stated to be the common general knowledge.

It seems to me therefore that the amendments all go to the particulars, there being no amendments to the grounds.  This being the case, amendment under regulation 5.9(1)(a), ie amendment of grounds because of error or omission, does not appear to be available.  Consequently arguments that some amendments can be allowed under this regulation fail, though of course they can be considered under regulation 5.9(1)(c) together with 5.9(2)(e).

That is, I must allow the amendments to the particulars unless I  reasonably believe that a person, which of course includes the applicant, will be unduly prejudiced by the amendment.

In the case of Diamond Scientific Co v CSL Ltd (supra) the Commissioner's delegate there decided that amendment of particulars would unduly prejudice a person if:

(i) the amendment is disadvantageous to the person; and

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

The delegate also held that extra particulars that arise incidental to the preparation of the case will not prima facie give rise to the applicant being unduly prejudiced if the amendments:

(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.

These are the tests which I will apply to the circumstances of the present case.

The applicant placed considerable reliance on the fact that in Diamond Scientific, Abundant Lawn Grass v Crangrove (supra), and Commonwealth of Australia v Australian Sonar Systems (supra), the extra particulars were discovered during activities which were incidental to the preparation of the opponent's case, in the sense that it was the preparation of the case that led to the discovery.  The applicant argues that it is only particulars found in this way that could be further considered.

In the present case, of the extra particulars, I think the evidence shows that only the extension of BE 859334 to the key claims, and the change to the stated common general knowledge, could have been found "incidental to the preparation of the case".

The declarations of Mr Esser and Mr Collins show that new particulars AU 77173/81 and US 1589256 were found while dealing with matters quite unrelated to this opposition, ie accidentally, and therefore, argues the applicant, they are excluded from further consideration.

However I do not think that it could be the intention of the legislation to have that effect, and nor do I think that these cases are authorities for such a conclusion.  Regulation 5.9 plainly contemplates amendment to the particulars, subject only to there being no undue prejudice as a result.  Diamond Scientific sets out some tests for undue prejudice, which in that case were applied to particulars which were found incidental to the preparation of the case, because that is in fact how the particulars were discovered in that case.

I do not think that Diamond Scientific can be an authority for the applicant's proposition, as it says nothing at all about particulars discovered accidentally and separately from the preparation of the opponent's case.  The contrast made by the delegate in that case was between matters found incidental, as was the fact, and matters found by actively looking for more evidence.

At page 699 the delegate says:

"Amendments to particulars may properly arise incidental to the preparation of the case - as distinct from efforts of the opponent to find a 'better' basis for its opposition".

I consider that the tests for prima facie undue prejudice set out in Diamond Scientific are equally appropriate for particulars found accidentally, and in the following I do apply them.

Is there any protraction of the preparation of the case?

I am not sure what "case" the delegate was referring to here.  It is of course clear that the opposition proceedings as a whole will be protracted by the applicant's objection to the request to amend; I will take it to mean the preparation of the opponent's case in support of the opposition or the applicant's case in answer.  Also, I am not sure in what sense the delegate was using the word "protraction", which according to The Shorter Oxford English Dictionary, can mean simply any delay or time extension, or more critically, a delay which is excessive.  I think the latter must have been the case, as clearly proceedings of this kind must cause some delay somewhere.

In the present case the extra particulars were served on the applicant within the (extended) time allowed for serving evidence-in-support, and thus there is no protraction at all in the preparation of the opponent's case.

The applicant can then consider the extra particulars, together with the original particulars, in preparing its case in answer.  Of course, the need to respond to extra particulars could lead to some delay in the preparation of this case.  However this is largely speculative.  Also, I do not think that any delay which follows from the applicant's need to respond to extra particulars, which particulars are otherwise allowable, would be excessive in this context.

I conclude that there is no protraction in the preparation of the case.

Were the amendments requested at the earliest reasonable opportunity?

It appears from the declarations and correspondence on file that the first request to amend the statement was made within about two days of the discovery of AU 77173/81, and of the errors in the original statement.  I do not think that there is unreasonable delay here, and I do not understand the applicant to be arguing otherwise.

Applicant's principal argument is that, as Mr Esser states he found AU 77173/81 while reviewing a project file which was the property of the opponent, which file contained an abstract of AU 77173/81 from about 1982, then the existence of this document was in the in the knowledge of the opponent, who is Lockwood Australia Pty Ltd, not Mr Esser, and consequently there has been unreasonable delay.  Reference was made to Brambles Ltd V Carey (supra), and in this Bray CJ at 181 says:

"...if mental states like knowledge or belief are to be attributed to a notional and metaphysical entity like a corporation, this can only be done by attributing to it the knowledge or belief actually possessed by one or more of its officers...(but)...it is a fallacy to say that any state of mind to be attributed to a corporation must always be the state of mind of one particular officer alone and that the corporation can never know or believe more than one man knows or believes."

On the other hand, in Re Chisum Services Pty Ltd and the Companies Act 1961 (1982) 7 ACLR 641, Wooten J says to the effect that, in an appropriate case it would be possible to combine individual pieces of knowledge known to different members of different branches of a company to create a composite piece of information known to the company, provided the officers had the duty and the opportunity to communicate the various pieces of information to a central figure (Corporation Law, Tomasic et al, Butterworths 1990, page 163, emphasis added).

In the present case there is no evidence as to anyone's knowledge of AU 77173/81, except from Mr Esser, who states he had no recollection of it before finding it on 15 May 1995, two days before requesting amendment.  There is no evidence that he or any other natural person knew of it at the date of filing the statement, or on any other date, except as above.

While obviously someone knew of the document at a much earlier date, there is no evidence of who that person is, or that there was the duty and opportunity to convey that knowledge to a central figure.  Therefore it seems to me that the only knowledge I can attribute to the opponent company is that of Mr Esser.

These cases relate to the liability of companies and company officers for liability in torts and crimes.  Submissions were made by the parties after the hearing regarding the "actual" compared with the "constructive" knowledge of companies, which are notions devised by the courts for dealing with these issues.  But these are not the issues here, and I am not at all sure that the cases are applicable.  For instance, it appears implicit in the applicant's argument that a company can know or remember something, long after the natural person who actually knew it has forgotten, or lost any contact with the company.  This does not seem reasonable or realistic.

It would also render the opposition process practically unworkable; an opponent company would need to search all of its files and question all of its officers and employees before the opposition could be detailed, and that cannot be correct.

I conclude that there was no unreasonable delay in requesting the first amendment.

As regards the second amendment, Mr Collins declares that he accidentally discovered US 1589256 on 9 June 1995, and it was served two working days later, on 13 June.

A similar argument to that above was also put here, as the document was found by Mr Collins while acting for the opponent, in a file which was maintained on the opponent's instructions, or at least on the opponent's behalf.  I reject it for the same reasons.

It appears from the correspondence dated 6 July 1995 that Mr Collins believed that a second request to amend was also filed on 13 June, but this was not so.  A formal request to amend was not made until 21 July 1995, after a reminder from the Patent Office dated 17 July.  The applicant submits that this was an unreasonable delay.

Mr Collins explains that part of the problem was that US 1589256 was discovered and served during the one month extension requested for completion of the evidence-in-support.  This request was dated 17 May 1995, but was not allowed until 28 June, apparently having been overlooked in the Patent Office  meanwhile.  Consequently, he says, he was unsure of the status of this document.  At the same time there was also some doubt as to whether the earlier statement that service of the evidence-in-support was complete closed the door on the balance of the extended time.

I can understand that there was some uncertainty here, but I am not sure that it has any bearing on the failure to request an amendment.  For a new document to be addressed at the substantive opposition it has to be admitted as evidence and a corresponding request to amend the particulars must be allowed.

I am inclined to think it is most likely that for whatever reason the actual filing of the formal request to amend was overlooked.  The delay was about 5-6 weeks, during which time the applicant was in possession of the new document.  This is not a case where service of the evidence and the amendment request were both delayed after discovery of the new evidence.

It is true of course that it is only after the amendment is requested that the applicant knows how the new evidence is to be pursued.  In this case the amendment sought is limited to the inclusion of the new document.  In other decisions delays of several weeks have been permitted.  In Hoffman v Bresatec a delay of more than four months was allowed, though offset against costs.

In my opinion the opponent here has been quite diligent in prosecuting its case, and I consider the detriment to the applicant caused by this delay to be very small.  In all the circumstances I do not consider there has been any unreasonable delay in requesting the second amendment.

Is there a substantial change in the case to be answered?

The invention described and claimed is a key-operated lock barrel assembly, which includes one or more discs which are caused to rotate around the axis of the assembly by insertion of the key.  A key for use with the lock is also described and claimed.  It is a relatively simple mechanical device which, in my opinion, is easily understood, even by a person without any particular expertise in the lock industry.

I have considered the new particulars to the degree necessary to gauge their relevance, and I am satisfied that they are all at least of some relevance.

(i) BE 859334 (exhibit TJC-1 in the evidence-in-support) was originally particularised only against the key claims; the amendment adds it to the lock claims.  As Fig 1 of this document shows a lock assembly similar to that shown in the drawings of the present application, this should not have surprised the applicant.

(ii) New particulars AU 77173/81 (TJC-30) and US 1589256 (TJC-6) relate to locks in which discs or tumblers  are rotated about the lock axis by the insertion, or the insertion and rotation, of a key.

(iii) In the lock of the present invention the discs are rotated by insertion of the key, without rotation of the key.  In the statement as filed locks with this feature (among others) were said to be common general knowledge; the amendment will add to this that locks in which "some turning movement of the key" is necessary were also common general knowledge.

The applicant argues that any change of particulars is a substantial change in the case, and if the applicant objects, then the change is prima facie unduly prejudicial, the onus is on the opponent to rebut this assumption, and cites Diamond Scientific in support.  I think that I must consider all relevant factors in forming my opinion.

Relevant factors will include the nature of the invention, the nature and magnitude of the amendment sought, the nature and extent of the original particulars, and the stage at which amendment is requested.

The amendment would add three new particulars to the original nine against the lock claims, and one new particular to the original twelve against the key claims.  All new particulars, like the original particulars, are patent specifications, and all disclose locks and/or keys which can be easily seen to be in the same general class as the lock and key of this application.

The amendment would also make what would appear to be a relatively small change as to what is common general knowledge.  It may be that this is raising new common general knowledge rather than adding extra information about the common general knowledge.  It is not entirely clear to me how significant this change is, but it would seem to be of only a minor detriment to the applicant, and it is clear and unambiguous what case has to be answered - Hoffman LaRoche v Bresatec (supra) and Sumitomo Electric v BICC (supra).

The amendments have been requested at an early stage in the opposition process.  While the applicant submits that it would be unduly prejudiced by the amendments, it also says that the new particulars are not especially relevant to the invention.  If the latter is correct then responding to the amendments should perhaps not place any great burden on the applicant.

However, where the amendments result in the addition of several new particulars of some substance, as is the case here, then I think I should decide that there is a substantial change in the case to be answered.  Diamond Scientific says that where there is no substantial change then there is prima facie no undue prejudice.  Presumably the inference to be drawn is that where there is a substantial change, then there is prima facie undue prejudice.

Nevertheless it is open to me to decide, taking into consideration all the relevant circumstances of the case, that the applicant is in fact not unduly prejudiced.  By reason of the fact situations given above, I consider that to be the correct decision here, and I will allow the amendments.

Request for Directions

The relevant part of the regulation reads as follows:

"5.10(1) The Commissioner may, on his or her own motion or on the application of a party:

(a) give a direction that is not inconsistent with the Act or these Regulations for the conduct of proceedings to which this chapter applies;..."

The directions sought can be categorised as follows:

(i) directions to exclude from consideration at the substantive hearing various statements and exhibits in the evidence-in-support, or to restrict the grounds on which they can be addressed.  Mainly, the reason given is that they do not appear in the statement, as in the following example:

"F. In clauses 7.16 to 7.20, and in Exhibits HE 12, HE 13 and HE 14, the Opponent introduces the MEDECO and NORMAN locks.  These were not referred to in the Statement of Grounds and Particulars. We ask for a direction that the Opponent cannot rely on the evidence relating to the NORMAN and MEDECO locks and on that basis the Applicant will not address this evidence in the evidence in answer."

(ii) direction that the particular relating to common general knowledge be excluded as the person skilled in the art is not identified;

(iii) direction to provide further and better particulars in respect of the documents cited against the novelty of the lock claims;

(iv) direction regarding time for serving evidence-in-answer.

It was decided in Mobay Corp v Dow Chemical Co (supra) that the Commissioner had no power to direct the opponent to amend its particulars in a specified way, as to do so "would place the Commissioner in the position of not just regulating the progress of the opposition, but of determining the case that the opponent will argue".  Although the applicant here is not seeking directions to amend particulars (in the first category), the effect is the same.  That is, the directions will govern what case the opponent can argue at the substantive opposition.

I think this case is different from the circumstances in E I Dupont v DowElanco (supra).  In that case the delegate dismissed a ground which he found to be completely unparticularised, and excluded other matters from consideration at the substantive opposition.  The basis for this was that they were so inadequately particularised, that if appropriately amended, the applicant would be unduly prejudiced, that is the amendments would not be allowable.

In another case (CSIRO v CemCorp 29 IPR 72) the delegate decided that she had no power to strike out an inadequate particular, refused to direct further and better particulars on the basis that the amendments would not be allowable, and directed that the particular not be available to argue at the opposition proper. See also Viskase Corp v WR Grace & Co (1995, unreported).

It would appear then that the Commissioner may dismiss a ground if wholly unparticularised, direct further and better particulars where the amendment would be allowable, and may not strike out a particular which is seriously defective, where amendments would not be allowable, but may direct that it be excluded from the substantive opposition.

None of which is the case here.  This case does not involve vague or speculative grounds or particulars, but the exclusion or restriction of specific items of evidence, and I do not think that it is appropriate or available for the Commissioner to make such directions under this regulation, for the reasons given in Mobay, at least without the agreement of the parties.  At one stage in the hearing it appeared that there was near agreement that the material complained of could only be relied on to establish common general knowledge, but it is not my understanding that such agreement was actually reached.

It may be correct, as the applicant says, that various matters included in the evidence-in-support have not been particularised, but I think that is something for the delegate to consider at the opposition proper.  Of course this does place the applicant at something of a disadvantage, as it will not know the final standing of this material until after the preparation of its evidence-in-answer, but I think that is what the legislation provides.  In a case such as this it would seem prudent to respond to all matters.

The direction in the second category relates to the exclusion from further consideration a particular relating to common general knowledge, which is defective in that the person skilled the art is not identified.  However, in contrast to the situation in Dupont v DowElanco, to which I was referred, this is a relatively simple invention in a well-defined art and there is a clear statement of the alleged common general knowledge in that art.  I do not think it would be too difficult to form an accurate opinion as to who the person skilled in the art would be.

As was stated in Borden Inc v Elkem A/S 24 IPR 146, it would be unrealistic and unreasonable to expect more than rudimentary details of the common general knowledge in a statement of grounds and particulars.

In the third category the direction would be to provide further and better particulars in regard to the items concerning the novelty of the lock claims, in the original statement.  This repeats a request made 10 March 1995, and which the Commissioner then refused.  I do not think that it would be appropriate for me to decide differently now, without new and good reason.  The applicant argues that there are twelve claims and nine citations, with no indication of which citation, and which part of the citation, relates to which claim.  I was referred to ICI v Irenco (supra) and Trenton Pty Ltd v Cotterill (1994) AIPC 91-055, in which numbers were considered in reaching a decision. I do not think it is possible to generalise about numbers, separate from the circumstances of a particular case. In this case there is only one independent claim, the dependent claims are short and add fairly minor features, the nine citations are all patent specifications of obvious relevance, and as I have said before, the invention is not complex.

It is expected of the applicant that it make a reasonable attempt to understand the case made by the opponent (ICI v Irenco), and I am not satisfied it has done so here.  I consider that the Commissioner's original decision should stand.

The direction in the fourth category relates to the time for evidence-in-answer; the parties have agreed on this and I will so direct.

Conclusion

I have concluded that the amendments requested to be made to the statement are not unduly prejudicial, and I allow them.

I direct that the time for serving evidence-in-answer should commence on the date of this decision, and I refuse all of the other directions requests.

Costs

As the objections to each of the requests to amend have been unsuccessful, and all but one of the requests for directions refused, I award costs against the applicant.

RG Tolhurst
Delegate of the Commissioner of Patents

Patent attorneys for the applicant  :  Chrysilou Moore Martin, Sydney

Patent attorneys for the opponent   :  Phillips Ormonde & Fitzpatrick, Melbourne