Bac Tech (Australia) Pty Ltd v Technological Resources Pty Ltd

[1996] APO 35

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 sulphides using thermostable bacteria.

Action:          Opposition thereto by TECHNOLOGICAL RESOURCES PTY LTD, and a request to amend the statement of grounds and particulars and an objection thereto.

Decision:          Issued            .

Abstract:          Request to amend refused.  Particulars to be included not properly evidence in chief.  Amendment to statement of grounds and particulars would also lead to unnecessary protraction of the case.

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 TECHNOLOGICAL RESOURCES PTY LTD, and a request to amend the statement of grounds and particulars and an objection thereto.

background

Patent application no. 652231 was filed by Bac Tech (Australia) Pty Ltd (‘Bac Tech’) on 20 March 1992 and was advertised accepted on 18 August 1994.  Technological Resources Pty Ltd (‘Technological Resources’) 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 patent application has also been filed by Gencor South Africa Limited.

Technological Resources completed service of evidence in support on 16 June 1995.  Service of the evidence in answer was completed by Bac Tech on 7 December 1995.  Technological Resources filed a request to amend the statement of grounds and particulars on 29 March 1996.  Bac Tech objected to the amendment to the statement of grounds and particulars.   The matter was heard in Canberra on 28 May 1996.  Mr Bill Bennett, of Pizzey & Co, appeared on behalf of Lord and Company for Bac Tech and Ms Julie Wilke, of Griffith Hack & Co, Melbourne, appeared for Technological Resources.

AMENDMENT TO STATEMENT of grounds and particulars

The letter accompanying the new statement of grounds and particulars gives the following reasons for the request:

“The amendment seeks to introduce new documents.  This has been made necessary by the tack taken by the applicant in its Evidence-in-Answer.  Specifically, the applicant contends in its evidence that the level of sodium chloride is an important and inventive feature of the invention.  The evidence asserts that this feature was not disclosed in the prior art.

As the feature in question is defined in claim 9, the opponent had no way of predicting at the outset of the proceedings that this issue would be central to the applicant’s defence of this application.  Thus the four new documents referred to in the amended Statements (sic) of Grounds and Particulars concern salt tolerance.”

The proposed amendment seeks to insert the following references into the particulars:

1. Huber & Stern (1989) Thiobacillus prosperus sp. nov., represents a new group of halotolerant metal-mobilising bacteria isolated from a marine geothermal field.  Arch. Microbiol. 151: 479-485.

1. Budden & Spencer abstract of an oral presentation of a paper entitled “Tolerance to temperature and water quality for bacterial oxidation : the benefits of Bac Tech’s moderately thermophilic culture”, given at the 75th Event of the European Federation of Biotechnology being the international symposium on Biohydrometallurgy 1991 which was held between 9-13 September 1991 in Troia, Portugal.

1. Budden & Spencer (1993) Tolerance to temperature and water quality for bacteria oxidation : the benefits of Bac Tech’s moderately thermophilic culture, FEMS Microbiology Reviews 11 (1993) 191-196.  This is the published version of the oral presentation mentioned in item 6 above.

1. Excerpt from a report on notes taken at the presentation given by Budden & Spencer referred to in item 6 above.  The Report was written by Warwick Hoffmann who attended the presentation.

SUBMISSIONS

Ms Wilke’s submissions for the opponent are summarised as follows:

• there has been a change in case to answer brought on by the applicant’s own actions through a change in the emphasis, when in the evidence in answer the applicant placed principle emphasis on the fact that the process of the invention can be carried out under saline conditions (a feature of claim 9);

• it is the delay in actually informing the applicant of any new particulars which is relevant rather than the actual time at which the amendment is requested;

• the timing of the amendment will not result in undue prejudice to the applicant by way of future delay in the proceedings; and

• as the documents all relate to one confined area, relate to the invention, are brief and the applicant has had time to study them, there can be no undue prejudice on the question of the nature and extent of the amendment.

Mr Bennett’s submissions for the applicant are summarised as follows:

• there was a delay of 13 months between the filing of the statement of grounds and particulars and the proposed amendment;

• the amendment seeks to include further references which are said to be relevant to one of the dependent claims present in the patent application as accepted;

• there is no explanation for the delay, thus it is not clear whether the opponent actively pursued further particulars or whether the additional references arose incidental to the preparation of the case;

• the additional references have already been included in the evidence in reply and thus will be considered in a bar to sealing action;

• allowance of the amendment would give the applicant no right of evidence in rebuttal;

• allowance of the amendment would result in a protraction of proceedings;

• allowance of the amendment would substantially change the case to be answered;

In response to two further declarations served by the opponent just before the hearing Mr Bennett also submitted that they

“establish that all of the additional references were found subsequent to the service of evidence in support.  In our submission they cannot possibly be considered incidental to the preparation of the case as preparation of the case is finalised upon service of evidence in support.”

Both parties referred me to the relevant legal precedent in this case, which mostly consists of recent decisions of the Commissioner.

DECISION

According to the relevant parts of the Patent Regulations 1991 in force under the Patents Act 1990, amendment of the statement of grounds and particulars is only allowable if I reasonably believe that it would not unduly prejudice a person. The relevant portions of regulation 5.9 reads as follows:

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

Although, whether an amendment will unduly prejudice a person will depend upon the facts of each case, guidance can be gained from a number of decisions of the Commissioner including Diamond Scientific Company v CSL Limited (1992) AIPC 90-927, Sumitomo Electric Industries, Ltd v BICC Plc & Anor (1993) AIPC 90-988, and Stevelift Pty Ltd v Formark Pty Ltd 29 IPR 154.

I will refer to these and other relevant decisions as appropriate.

In the present case, it is unclear whether the new particulars to be introduced by the amendment to the statement of the grounds and particulars are in fact particulars of the substantive opposition.  In requesting the amendment to the statement the opponent asserted that the new particulars were introduced to counter the applicant’s evidence in answer.  Specifically, the opponent asserted that because in the evidence in answer the applicant contended that a feature defined in a latter claim (claim 9) was an important and inventive feature of the invention, the opponent had no way of predicting at the outset of the proceedings that this issue would be central to the applicant’s defence of the application.  This is suggestive that the evidence in the new particulars is in fact evidence in reply.

That the new particulars are in fact evidence in reply seems to be confirmed by their serving as part of the evidence in reply in the substantive opposition.

In Sumitomo Electric Industries Ltd v BICC Plc & Anor (unreported decision on patent application no. 617173, dated 10 April 1995) the delegate of the Commissioner in a similar matter stated that

“If the matter relates to evidence in reply, the evidence is admissible for the purpose of rebutting the applicant’s case.  However, if particulars of the matter are inserted into the statement, it will become part of the case in chief.  If the matter is not part of the case in chief in the present case, the amendment would serve no purpose and would cause the particulars to become misleading and distract from the real case to be answered.”

In the present matter I agree with the delegate in Sumitomo Electric Industries Ltd v BICC Plc & Anor (supra) that if I allow the amendment to the statement of grounds and particulars, because the opponent has previously asserted that the particulars are in reply to the applicant’s evidence in answer, the amendment would serve no purpose and be misleading to the process of the substantive opposition.  Because of the distraction there would be excessive detriment to the applicant.

Also applicable in the present case is the lateness of the amendment to the statement of grounds and particulars.  The amendment had been requested during the evidence in reply stage of the substantive opposition, approximately 13 months after the serving of the statement.

In recent decisions of the Commissioner it has been made clear that amendment of the statement of grounds and particulars is not justified when the opposition has proceeded to near completion.  For example in Stevelift Pty Ltd v Formark Pty Ltd (supra) the delegate of the Commissioner considered that the over-riding factor in that matter was the extreme lateness of the request to amend (after all the evidentiary stages had been completed), and in Porter v Arbotech Investments Pty Ltd (unreported decision on patent application no. 633978, dated 20 September 1994) where it was decided that

(i)   after the applicant has served its evidence in answer, it has answered the opponent’s case, therefore any extra material which has to be considered thereafter is bound to change its case, and

(ii) the case would be protracted because the applicant would want to file further evidence.

As the evidence in answer stage, in the present matter, has been completed the applicant has no means to challenge the new particulars, except by requesting permission for the service of further evidence.  However, as this is not an automatic right, the opponent could have part of its case that has not been rebutted by the applicant.  This would be detrimental to the applicant.

If a request for the serving of further evidence were to be allowed so as to enable the applicant to rebut the new evidence then protraction of the case would occur.  This could then delay the hearing of the substantive opposition by some time.  To me, this again indicates excessive detriment.

I consider that it has been established that because of the above factors there would be undue prejudice to the applicant if I allowed the amendment.

Therefore, I refuse to allow the request to amend the statement of grounds and particulars.

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).

I have found that the applicant succeeds in its objection to the request to amend the statement of grounds and particulars.  In these circumstances I award costs against the opponent, Technological Resources.

Mark Ross
Delegate of the Commissioner of Patents

Patent attorneys for the applicant   :  Lord and Company, Perth.

Patent attorneys for the opponent  :  Griffith Hack & Co, Melbourne.