Asahi Kasei Kogyo Kabushiki Kaisha v W.R. Grace & Co.-Conn

[1995] APO 75

official notice

decision of a delegate of the commissioner of patents

Application        :    Nos. 624994 and 625497 in the name of ASAHI KASEI KOGYO KABUSHIKI KAISHA

Title:    A PHOTOSENSITIVE RESIN COMPOSITION FOR USE IN FORMING A RELIEF STRUCTURE and A PHOTOSENSITIVE RESIN COMPOSITION FOR PRODUCING A RELIEF PRINTING PLATE.

Action: Opposition under section 59 of the Patents Act 1952 by W.R. GRACE & CO.-CONN.; applications to serve further evidence under Regulation 5.10(4).

Decision:    Issued            .

Abstract:   

patents act 1990

decision of a delegate of the commissioner of patents

Re:Patent Application Nos. 624994 and 625497 by ASAHI KASEI KOGYO KABUSHIKI KAISHA and opposition thereto under Section 59 of the Patents Act 1952 by W.R. GRACE & CO.-CONN. and applications to serve further evidence under Regulation 5.10(4).

background

Patent application 62273/90 was lodged on 7 September 1990 by Asahi Kasei Kogyo Kabushiki Kaisha (Asahi).  The application claimed priority from JP application number 01-296113, which was filed on 16 November 1989.  Application number 62273/90 was advertised accepted on 25 June 1992 and assigned the number 624994.

A notice of opposition to the grant of a patent was lodged on 25 September 1992 by W.R. Grace & Co-Conn. (Grace).  A statement of grounds and particulars was served on 26 October 1992.  Amended statements of grounds and particulars were filed on 2 April 1993 and 21 April 1993 and were allowed on 5 May 1993 and 19 May 1993 respectively, without objection by Asahi.

The service of evidence in support was completed on 26 April 1993.  Service of evidence in answer was completed on 29 September 1993.  This evidence included reference to amended claims.

A request to amend the application was lodged on 29 November 1993.  Further amendments were filed on 30 December 1993, 1 February 1994 and 15 March 1994.  In anticipation of this request Grace, on 10 November 1993, requested directions regarding the time for serving evidence in reply.  On 25 January 1994 a direction under regulation 5.10(1) was made setting the time for serving evidence in reply as 3 months from the date on which the amendments proposed by the applicant were allowed, withdrawn or refused.

On 21 February 1994 and 14 July 1994 Grace requested that the statement of grounds and particulars be amended.  After an objection to the amendments by Asahi, the amendments were allowed on 13 December 1994.

The service of evidence in reply was completed on 31 January 1995.

Patent application 31679/89 was lodged on 23 March 1989 by Asahi.  The application claimed priority from JP application number 63-072926, which was filed on 26 March 1988.  Application number 31679/89 was advertised accepted on 16 July 1992 and assigned the number 625497.

A notice of opposition to the grant of the patent was lodged on 16 October 1992 by Grace.  A statement of grounds and particulars was served on 16 November 1992.  Amended statements of grounds and particulars were filed on 27 November 1992, 7 December 1992, 12 January 1992 and 12 May 1993 and were allowed on 22 December 1992, 3 March 1993, 3 March 1993 and 8 June 1993 respectively, without objection by Asahi.

The service of evidence in support was completed on 17 May 1993.  Service of evidence in answer was completed on 15 October 1993.  This evidence included reference to amended claims.

A request to amend the application was lodged on 14 December 1993.  Further amendments were filed on 11 March 1994.  In anticipation of this request Grace, on 10 November 1993, requested directions regarding the time for serving evidence in reply.  On 25 January 1994 a direction under regulation 5.10(1) was made setting the time for serving evidence in reply as 3 months from the date on which the amendments proposed by the applicant were allowed, withdrawn or refused.

On 14 July 1994 Grace requested that the statement of grounds and particulars be amended.  After an objection to the amendment by Asahi, the amendment were allowed on 3 January 1995.

The service of evidence in reply was completed on 23 January 1995.

On 27 July 1995 Asahi filed applications to lodge further evidence in opposition proceedings under regulation 5.10(4) on both application numbers 624994 and 625497.  Grace objected to both applications.

The matters were heard in Melbourne on 9 August 1995, with the objections to both applications being heard concurrently.  Asahi was represented by Mr Louis Gebhardt, patent attorney of Watermark, Melbourne.  Grace was represented by Mr Raymond Evans, patent attorney of Phillips Ormonde & Fitzpatrick, Melbourne.

FURTHER EVIDENCE

The nature of the further evidence to be lodged in respect of application number 624994 is as follows:

1. Statutory Declaration in the name of DAVID HENRY
   SOLOMON,
2. Declaration in the name of GENSHO TAKAHASHI.

The nature of the further evidence to be lodged in respect of application number 625497 is as follows:

1. Statutory Declaration in the name of DAVID HENRY
   SOLOMON,
2. Declaration in the name of MASAHIKO TAKAHASHI.

SUBMISSIONS

The submissions presented by both the Asahi and Grace will be discussed where appropriate in the decision.

DECISION

Incorrect Heading in Statutory Declaration

Before making a decision in respect of the applications to lodge further evidence it has to be noted that the statutory declaration accompanying the application to lodge further evidence in respect of application number 624994 is directed to the wrong application number in its heading.

At the hearing there was no objection by Grace to the application because of the wrong heading and it is clear from both the application and the grounds for making the application stated in the declaration that the declaration should be directed to application number 624994.

Therefore it is my decision to treat the declaration as not a true statutory declaration but a statement of intention directed to application number 624994 and not application number 625497.

Decision on Applications to Lodge Further Evidence

As both patent applications are related I will consider both requests for lodging further together.

In light of decisions such as Acushnet Company v Spalding Australia Pty Limited (1988) AIPC 90-467 and Canadian Industries Ltd v Australian Paper Manufacturers Ltd (1981) 50 AOJP 4565 there are a number of factors which have to be considered in determining an application to lodge further evidence.  In summary, Volume 3 of the Manual of Practice and Procedure (AIPO, 1993) expresses these factors in the following terms:

"i)  Is the evidence which it is proposed to serve, based on the nature thereof and information supplied in the request, relevant to the action - in the sense that it would contribute to a more correct, just, or expeditious result?

ii)  If the request to serve further evidence were to be allowed, would this cause unnecessary protraction of the opposition?

iii) Would there by (sic) any injustice done to the other party, if the request was to be allowed?

iv)  Has the party seeking to serve the further evidence been diligent in prosecuting the opposition action?"

I will consider each of the applications against each of these factors.

Firstly, I must consider if the evidence which is proposed to be served is relevant to the action.  The evidence has not been served as yet, but according to the declaration and statement filed with the applications it is in the process of being prepared.

The hearing officer in Simac SpA Macchine Alimentari v Semak Electrics Pty Ltd (1985) IPR 281 stated at 284 that:

"I am unable to express any view as to the credibility of the applicant's proposed evidence.  The evidence has not so far been formulated ... Having read Ms Moore's declaration ... I can see no justification for rejecting the application on the ground that the evidence, when formulated, will be neither credible nor believable."

From the declaration and statement by Mr Gebhardt accompanying both applications it is apparent that the further evidence is in response to new evidence included in the evidence in reply, specifically that mentioned at page 2a (w) of the amended Statement of Grounds and Particulars for application number 625497 and page 2 (d,l,k) of the amended Statement of Grounds and Particulars for application number 624994.

As the evidence stages have been completed for both substantive oppositions this is the only opportunity for Asahi to comment on the new evidence.  Also I agree with the hearing officer in Simac SpA Macchine Alimentari v Semak Electrics Pty Ltd (supra) that there is no justification for saying at this stage that the further evidence would not be relevant to the opposition.

Secondly, I must consider if the requests to serve further evidence were to be allowed, would there be an unnecessary protraction of the oppositions.  As stated previously the evidence has not yet been filed.  According to Mr Gebhardt the evidence is nearly ready to be lodged.

I am concerned that the applications to lodge further evidence were only filed 6 months after the date that the evidence in reply was completed and that the evidence is still yet to be filed.

I agree with Mr Evans' submission in respect of application number 625497 that:

"There is no indication in the application for further evidence of the progress which has been made in preparing the evidence and there is no indication of when the further evidence will be complete."

Therefore it is apparent that the allowance of the requests to serve further evidence will cause a protraction of the opposition.  Whether this protraction is unnecessary or not will depend on the contents of the evidence.  As the evidence has not been received I can make no decision as to whether there has been an unnecessary protraction of the oppositions by Asahi.

Thirdly, I must consider if there would be any injustice done to the other party, if the requests were to be allowed.

In the present case it is my opinion that there would be no injustice if the requests were allowed.  I agree with Mr Gebhardt's submission in respect of application number 625497 that any delay in the opposition proceedings disadvantages the applicant and not the opponent.  Also if the requests are granted Grace would have available to them the opportunity to reply to the further evidence.

Finally, I must consider if the party that is seeking to serve the further evidence has been diligent in prosecuting the opposition action.

For similar reasoning as given in the responding to the second factor above I do not believe that Asahi has been diligent in prosecuting the opposition actions.  The requests to serve further evidence were filed 6 months after the evidence in reply was completed and at this stage the declarations that constitute the evidence have not been lodged.

Therefore I agree with the submission of Mr Evans in respect of application number 625497 that Asahi has not been diligent in prosecuting the opposition action.

However, I must also consider the effect of refusing the requests for the lodging of further evidence.  It may force the unsuccessful party to the opposition to appeal to a court, where because the appealed action is de novo (Acushnet Company v Spalding Australia Proprietary Limited (No. 2) (1990) AIPC 90-720) the evidence, if admissible, would be allowed to be presented. Therefore it would be preferable if the further evidence was considered and the matter finally decided at the substantive opposition (Studio SrL v Buying Systems (Aust) Pty Ltd (1992) AIPC 90-858).

CONCLUSION

Having regard to the circumstances of the cases and the various factors mentioned above, I consider that the applications to lodge further evidence by Asahi be allowed.  In my opinion any protraction of the oppositions or lack of diligence by Asahi is outweighed by having the further evidence considered at the substantive opposition leading to a more correct and just determination.

As to whether the nature of the evidence is relevant to the action and whether there is any injustice to Grace, as the further evidence has yet to be lodged I consider that it would be appropriate to allow Grace 1 month from the date the further evidence is served on Grace to respond to the further evidence.

Accordingly I allow the regulation 5.10(4) requests on both application numbers 625497 and 624994.

COSTS

The power of the Commissioner to award costs is based on section 210 and regulation 22.8.  The power to award costs is discretionary, so I must take into account all relevant considerations (see American National Can Company v W R Grace & Co-Conn (1994) AIPC 91-063).

In this case there are several matters to be considered.  Although I have allowed the applications to lodge further evidence, it is my view that because of the delay in filing the applications Asahi has caused protraction of the opposition proceedings and has not been diligent in prosecuting the opposition action.  Also it is still unclear as to when the actual evidence will be lodged.

Because of these relevant considerations I award costs for this action against the applicant.

Mike Kendall
Delegate of the Commissioner of Patents

Patent attorneys for the applicant  :  Watermark Patent & Trademark Attorneys, Melbourne

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