Bac Tech (Australia) Pty Ltd v Gencor South Africa Ltd
[1995] APO 54
•6 September 1995
official notice
decision of a delegate of the commissioner of patents
Application : No. 652231 in the name of BAC TECH (AUSTRALIA) PTY LTD
Title: Oxidation of Metal Sulfides Using Thermotolerant Bacteria
Action: Opposition to the grant of a patent by GENCOR SOUTH AFRICA LTD; request to amend the statement of grounds and particulars
Decision: Issued .
Abstract: Amendment allowed. Time for serving evidence in answer to run from the date of this decision.
patents act 1990
decision of a delegate of the commissioner of patents
Re:Patent Application No. 652231 by Bac Tech (Australia) Pty Ltd and an opposition thereto by Gencor South Africa Ltd, and a request to amend the statement of grounds and particulars.
background
Patent Application 652231 was filed by Bac Tech (Australia) Pty Ltd on 20 March 1992. It was advertised accepted on 18 August 1994. Gencor South Africa Limited filed a notice of opposition on 18 November 1994 and served a statement of grounds and particulars on 20 February 1995. A separate opposition to the application has also been filed by Technological Resources Pty Ltd.
Gencor filed a request to amend the statement of grounds and particulars on 22 May 1995. Gencor served its evidence in support on 22 May 1995 and 25 May 1995. Bac Tech objected to the amendment to the statement of grounds and particulars. The matter was heard in Canberra on 25 July 1995. Mr David Rainey appeared on behalf of Kelvin Lord and Company for Bac Tech. Dr John F McCann of Spruson & Ferguson represented Gencor.
Amendment to statement
The proposed amendment to the statement of grounds and particulars seeks to insert the following reference into the particulars:
1a. "The Isolation and Characterization of a Moderately Thermophilic Mixed Culture of Autotrophic Bacteria: Application to the Oxidation of Refractory Gold Concentrates" by J. Barrett, M. N. Hughes, A. M. Nobar, D. J. O'Reardon, D. K. Ewart and R. K. Poole, Randol Conference, Randol Gold 88, 148-150. The whole of document 1a is relevant."
The amendment proposes to add this reference to a list of 11 other references which particularise the grounds available under section 59(b). The opponent gave the following explanation at the time of filing the amendment:
"The proposed amendment to the Statement of Grounds and Particulars is to insert a further reference into the particulars under ground 2 of the opposition. The reference proposed to be added is one which is cross-referenced in Reference 1 identified in the Statement of Grounds and Particulars as lodged.
Before completing the Statement of Grounds and Particulars, we requested our librarian to obtain copies of certain references, including the reference identified as "Barrett 1988b" in the above mentioned Reference 1. A list of publications is included on page 57 of Reference 1, including two publications by Barrett et al which are listed one above the other. Both of these publications have the same co-authors. One is identified as "Barrett 1988a" and the other as "Barrett 1988b". We provided our librarian a copy of page 57 of Reference 1, and asked him to obtain a copy of the references identified on that page, including the references identified as "Barrett 1988a" and "Barrett 1988b". However, by mistake our librarian did not obtain a copy of the reference identified as "Barrett 1988b". Because both publications relate to the bio-oxidation of gold bearing ores and, as cited in reference 1, have the same list of co-authors, the error by our librarian only became apparent to us very recently in the course of preparation of evidence-in-support of this opposition."
decision
According to the relevant portions of regulation 5.9 of the patent regulations 1991, I must allow the amendment to the particulars unless I reasonably believe that a person will be unduly prejudiced by the amendment.
In Diamond Scientific Company v CSL Limited (1992) AIPC 90-927, a delegate of the Commissioner held that "undue prejudice" would occur if:
i. the amendment is detrimental or disadvantageous to the person; and
ii. the circumstances surrounding the amendment cause the degree of that detriment or disadvantage 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.
In the present case, the document sought to be added to the particulars (referred to as "Reference 1a" during the hearing) was cross-referenced in another document cited in the particulars ("Reference 3"). At the hearing Dr McCann reiterated the reasons previously given for filing the amendment. According to Dr McCann, it was discovered on 10 or 11 May 1995, on reviewing the cross-references of the references already cited, that a copy of Reference 1a had not been obtained by the librarian and it had not been included in the Statement of Grounds and Particulars. An order was placed immediately with Rapid Services, UNSW Libraries and a copy received by Spruson & Ferguson on 15 May 1995. The reference was evaluated and included in the evidence in support served on the applicant's attorneys on 22 May 1995. The amendment to the Particulars was filed on the same day.
At the hearing Mr Rainey suggested the above facts should have been set out in a statutory declaration. He referred me to Stevelift Pty Ltd v Formark Pty Ltd 29 IPR 154, where the hearing officer considered a situation where there was no evidence regarding an error or omission in filing an amendment to the Statement of Grounds and Particulars, and only "very brief" arguments from the opponent on the matter. However in the present case I believe that the applicant was given adequate notice of the circumstances involving the amendment, albeit not in the preferred form of a statutory declaration. I accept Dr McCann's chronology of events as set out in the letter of 22 May 1995 accompanying the amendments and in his written submissions filed at the hearing. Dr McCann said that he could support what was in his written submissions with a statutory declaration if I so required. However I considered that at that stage it would only serve to draw out proceedings.
I am satisfied that the new reference arose "incidental" to the preparation of the opposition, and not as the result of the opponent actively pursuing further particulars.
Having found that the extra particulars arose incidental to the preparation of the case, I need to consider if the amendment results in any protraction of the preparation of the case. The amendment was filed on 22 May 1995, on the same day the evidence in support was served. This was the final day of the three month period allowed for filing evidence in support after the Statement of Grounds and Particulars had been served. While the opponents were given an extension of three days to complete filing evidence in support, this was a result of a page missing from the evidence served on the applicant, rather than as any consequence of the new particulars. As the amendment sought was within the initial three month period allowed for filing evidence in support, without any extensions, and before the period for filing evidence in answer had commenced, there has been no protraction of the preparation of the case as a result of the amendment.
Mr Rainey said that there would be some protraction as the applicant was seeking a direction that the time for filing evidence in answer run from the time of this decision. But in the present case, any protraction for this reason would seem to be more a result of the applicant objecting to the amendment than as a result of the amendment itself.
The next point I need to consider is whether or not the amendments were included at the earliest reasonable opportunity. Mr Rainey acknowledged that there had been no delay between the opponent's attorney getting a copy of the reference and getting it in. But, he suggested, the undue delay is the period between when the error occurred and when the amendment was filed. However in Abundant Lawn Grass Industries Pty Limited v Crancove Pty Ltd, (1993) AIPC 90-973, the hearing officer made the following comment:
"I have assumed that the time for judging "reasonableness" started to run from the time when the opponent became aware of the Mitchell patent. I believe that this is the correct assumption to make. The assistant commissioner, when he stated this test of reasonableness, did so in the context that the extra particulars had come to light incidental to the preparation of the case. It would not make sense to judge the "reasonableness" of the timing of the amendment from some point prior to the extra particulars coming to the attention of the opponent."
I agree with this reasoning. As the opponent filed the amendment within less two weeks of becoming aware of the error and within a week of obtaining a copy of the citation, this aspect of the timeliness of the amendment has been met.
Mr Rainey also argued that while it was superficially attractive to think that the opposition had not progressed far, the opposition in fact included four stages after the notice of opposition had been filed. Two of these, the time for filing the statement of grounds and particulars and the evidence in support stage, were already complete. But I think it is inappropriate in the present circumstances to include the period allowed for filing the statement when determining how far the opposition has progressed towards finality. The statement cannot be amended until after it has been filed, and regulation 5.9 clearly allows for the amendment of the particulars. In light of all the factors present, I find that the extra particulars were included at the earliest reasonable opportunity.
The third sub-test from Diamond Scientific Company v CSL Limited is whether the amendment would substantially change the case the applicant has to answer in the opposition. Dr McCann submitted that as Reference 3 cross-references Reference 1a when it refers to the culture that was used, Reference 3 has to be read in conjunction with Reference 1a anyway, so inherently Reference 1a is already included as a part of the case to be answered. I do not agree with this line of reasoning. It is the responsibility of the opponent to explicitly identify the documents it is to rely on. The applicant should not have the burden of deciding which of the cross-references which may be "inherently" included will ultimately form part of the case.
A further point raised by Dr McCann was that three of the five inventors are co-authors of Reference 1a. He submitted that the inclusion of only one extra document would not require any prolonged professional or technical assessment by the applicant because the applicant can readily call on the inventors who are authors of the article for assistance. I note from the notice of entitlement that Bac Tech is the assignee of the inventors in respect of the invention. I have no other information before me about the relationship between the applicant and the inventors, or whether or not the applicant can readily call on the inventors.
Dr McCann also submitted that Reference 1a discloses similar if not in some instances identical material to three other references already cited that is directly relevant to the claims. He argued that Reference 1a formed part of a group of references which had a commonality of disclosure and therefore did not change the case the applicant had to answer. Dr McCann said that the new document was being added for completeness, because it was a relevant reference, because it was part of the group of references, and because it was in the public interest to have all relevant material considered in the opposition. Dr McCann also gave some details on features which he said were common to the group of references and to the claims. The four references appear to be directed to similar subject matter and most of the co-authors are in common. I do not think it is either necessary or appropriate for me to go into any more detailed analysis of the documents at this time. Even if the case to be answered has changed, which would prejudice the applicant, it has not changed to the extent where the change of case by itself would unduly prejudice the applicant.
A further point I have considered is the fact that the new document has been cited under the grounds of novelty and inventive step and filed as evidence in a co-pending opposition against patent application 652231. At the hearing I asked Mr Rainey about the relevance of this fact to the current matter. He responded that the other opposition was a separate issue altogether, and referred me to a similar circumstance in Stevelift Pty Ltd v Formark Pty Ltd where the amendment was not allowed. But in Stevelift Pty Ltd v Formark Pty Ltd 29 IPR 154 at 160, the delegate of the Commissioner said:
"I believe that I should take all matters into consideration when deciding whether or not the applicant would be unduly prejudiced including the fact that the applicant may be dealing with this document in a separate opposition. It seems to me that if the applicant has already considered this document and provided evidence in rebuttal in relation to the ground of lack of novelty in the other opposition then an argument could be made out that, in the normal course of events, the applicant would not be unduly prejudiced in the present case".
In the Stevelift case, the request to amend the particulars was filed after all normal evidentiary stages had been completed. The delegate found that the extreme lateness of the request to amend outweighed the fact that the applicant may have dealt with the document in a separate opposition. In the present case I have found that there was no undue delay in filing the amendment. The fact that the applicant is aware of the document through a co-pending opposition, and will presumably file evidence regarding that document, is a relevant consideration.
Taking all the relevant factors into account, I have found that the applicant will not be unduly prejudiced. I will allow the amendment.
costs
Both of the parties agreed that costs should follow the event. I see no reason from departing from this. I have found in favour of the opponent, Gencor South Africa Limited. I therefore award costs against the applicant, Bac Tech (Australia) Pty Ltd.
directions
The applicant have asked for a direction that it will be allowed a period of three months from the date of the decision for service of evidence in answer. At the hearing the point arose that the applicant would already be preparing evidence regarding the new citation in another opposition. However the way in which the evidence is presented is likely to be different in each case. I will give the direction that the applicant seeks.
conclusion
I have found that the applicant will not be unduly prejudiced by the amendment to the statement of grounds and particulars. I therefore allow the amendment.
I direct under regulation 5.10(1) that the time for serving evidence in answer will run from the date of this decision.
I award costs against the applicant.
Brendan Bourke
Delegate of the Commissioner of Patents
Patent attorneys for the applicant : Kelvin Lord & Co, West Perth
Patent attorneys for the opponent : Spruson & Ferguson, Sydney
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