Baroid Drilling Fluids Inc v Fina Research SOCIETE Anonyme

[1994] APO 73

official notice

decision of a delegate of the commissioner of patents

Application        :    No. 634207 in the name of BAROID DRILLING FLUIDS INC.

Title:    The use of selected ester oils in drilling fluids, particularly for the off-shore development of oil and gas sources (II).

Action:    An application by BAROID DRILLING FLUIDS INC for an extension of time of 3 months to serve evidence in answer, and an objection thereto by FINA RESEARCH SOCIETE ANONYME.

Decision:    Issued            .

Abstract:    The extension of time sought for serving evidence in answer found to be not justified by explanations of the reasons for the delay in serving the evidence relating to : (i) Absences by persons responsible for preparation of the evidence; (ii) Extensions of time having been allowed for serving the evidence in support; (iii) Expediency in dealing with evidence concurrently with a related opposition; and (iv) A considerable number of lengthy documents having been cited in the statement of grounds and particulars with no indications as to their relevance.

However, following the judgement in Ferocem Pty Ltd v Commissioner of Patents, (1994) AIPC 91-057, a limited extension of time granted to validate the service of evidence already served and to conclude the evidence in answer stage.

patents act 1990

decision of a delegate of the commissioner of patents

Re:Patent Application No. 634207 by BAROID DRILLING FLUIDS INC, opposition thereto by FINA RESEARCH SOCIETE ANONYME, an application under regulation 5.10(2) of The Patents Act 1990 for an extension of time to serve evidence in answer, and an objection thereto.

BACKGROUND

Application No. 634207 was filed on 11 December 1989 under the provisions of the Patent Cooperation Treaty as PCT/EP89/01513. That application was published under the PCT as WO 90/06981, and in Australia was allocated the application number of 49549/90. The application entered the national phase of processing on 18 June 1991. Following modified examination, the application was advertised accepted on 18 February 1993.

Notice of opposition was filed on 18 May 1993 by Fina Research SA ("Fina"). The statement of grounds and particulars was served on 17 June 1993.

Extensions of time of 3 months and then 2 months were allowed for serving evidence in support. Advice from the attorneys for the opponent that the evidence in support had been completed was received by the attorneys for the applicant on 26 April 1994.

On 26 July 1994, Baroid Drilling Fluids Inc ("Baroid") applied under the provisions of regulation 5.10(2) for an extension of time of 3 months from 26 July 1994 to 26 October 1994 to serve evidence in answer. By letter dated 15 August 1994, Fina objected to the granting of the application for an extension of time until 26 October 1994.

The applicant served its complete evidence in answer on 21 October 1994.

The matter was set down for hearing in Canberra on 24 October 1994. Each party made written submissions to the Commissioner having indicated that they would not be appearing at the hearing.

THE REQUEST

The reasons given in the request for an extension of time are as follows:

"The present opposition is copending with an opposition
to Australian Patent Serial No. 639219. The evidence in support for the latter opposition was completed on 25 July 1994. The art cited in each of these oppositions is identical. It would therefore be expedient to deal with each of these oppositions concurrently. Thus further time is necessary to enable us to prepare the evidence in answer to the present opposition.

Further time is also requested because the applicant is located in the United States of America, and the applicant's attorneys are based in Germany. The Northern Hemisphere summer holidays are at this time and therefore there have been absences by the responsible people at the applicant and at the Offices of the applicant's attorneys. Further time is therefore required to finalise the evidence as it is essential that each of the above parties have adequate time to review and comment upon the evidence prepared to date and for further amendments to be made and approved."

SUBMISSIONS

By letter dated 21 October 1994, patent attorney John O'Connor of Spruson & Ferguson, Sydney advised that Baroid's completed evidence in answer consisted of a declaration by Dr Sheikh S Rahman (dated 20 October 1994) which today would be filed at the Sydney sub-office and served at the opponent's address for service. In his letter Mr O'Connor then made further submissions in support of the application for extension of time, the gist of which were:

-  Extensions of time had been allowed for Fina to file their evidence in support and it would then be unfair if Baroid's present application for extension of time were not to be granted.

-  The statement of grounds and particulars cited 28 documents (originally 38) and because these had been inadequately particularised, Baroid had to spent considerable time ascertaining what case they had to answer in relation to novelty and obviousness.

By letter dated 24 October 1994, patent attorney Paul Whenman of F B Rice & Co, Sydney made submissions in support of its objection to the extension of time requested by Baroid. The gist of Mr Whenman's submissions were:

-  The Patents Act 1990 and Regulations set down time requirements for the filing of evidence in an opposition and there is no facility to change these requirements so that it would be expedient for one party to deal with more than one opposition concurrently.

-  The foreseeable absence of an attorney due to holidays should not, at least of itself, be regarded as a valid reason for delay necessitating an extension of time. Attention drawn to the decision of the delegate of the Commissioner of Patents in Austoft Industries Limited v Cameco Industries Inc, issued 12 May 1994 (unreported decision on Patent Application No. 635438).

DECISION

Regulation 5.10(2) enables the Commissioner to grant an extension of time in opposition proceedings. From regulation 5.10(5) I note that I must be reasonably satisfied that the extension of time is appropriate in all the circumstances.

The factors to be considered in relation to a request for an extension of time have been set out in numerous instances elsewhere. Recent examples relevant to a request of the present type are Ferocem Pty Ltd v Commissioner of Patents, (1994) AIPC 91-057, and Austoft v Cameco (supra). Stated generally, the factors to be considered are as follows:

a)   The Commissioner, before allowing an extension, must be satisfied that the person seeking the extension has made out a proper case justifying the extension;  and 

b)   The Commissioner must consider not only the private interests of applicants for patents and opponents, but also the public interests that whilst the outcome of proceedings should be correct and just, the proceedings should not be unduly protracted. 

I now consider the grounds upon which the request for extension of time has been made:

(1) On behalf of Baroid it was submitted that "... there have been absences by the responsible people at the applicant and at the Offices of the applicant's attorneys". No information has been provided as to who the so-called responsible people were, what was their role in the preparation of the evidence in answer, or for what periods and on what dates their absences were. There is no indication that the absences were unforeseen or that the work could not have been progressed by other persons during those absences. I conclude that insufficient material has been provided to enable me to be satisfied that these absences constituted extenuating circumstances such as might provide a basis to justify an extension of time.

(2)  On behalf of Baroid it was submitted that because extensions of time were allowed for serving the evidence in support it would be inequitable for a request for an extension of time to serve evidence in answer to be denied. I cannot accept this line of reasoning because as far as I am aware there is no basis for me to consider the present request other than on its own merits.

(3) On behalf of Baroid it was submitted that the art cited in the present opposition is identical with that in the copending opposition to Patent No. 639219, and that "it would be expedient to deal with each of these oppositions concurrently."

If I understand the submissions on this point correctly, Baroid is saying that rather than attempting to diligently prepare and serve their evidence on the present opposition within the period allowed for doing so, it was more convenient for them to defer (at least partially) the preparation of their evidence in answer until the evidence in support on the copending "related" opposition was served.

Particularly as there is always the possibility that the other opposition may be withdrawn at any time, such a course of action has the potential to needlessly delay the proceedings in the present opposition. If a party chooses to assess what is expedient in the course of opposition proceedings in such a way as to be amenable to its own interests but potentially detrimental to the interests of the other party and the public, then it seems to me to be unreasonable that it should expect the adoption of such a course to be accepted as justification for an extension of time.

(4) On behalf of Baroid, the point was made that the statement of grounds and particulars included a list of 38 (mostly patent) documents with no particulars being provided to demonstrate in what way these documents affected the novelty of the invention as claimed or rendered it obvious, and that consequently it was a time consuming task to determine what was the substance of the opponent's case. In the evidence in support 28 of these documents were exhibited together with publication details but again no indication was provided as to their significance.

From the decision of the delegate of the Commissioner in Imperial Chemical Industries Inc. PLC v Irenco Inc. & Ors 26 IPR 154, I note the statement at page 164 that "the listing under a particular ground of opposition of any more than 7 to 10 documents by number only would place an unreasonable burden on the applicant in determining the case against it and further particulars should be provided in relation to each document listed".

I note, however, that in the course of the present action the applicant did not file a request under the provisions of regulation 5.10(1) for directions to be issued that further and better particulars be provided, as happened in ICI v Irenco (supra). I note that no explanation has been provided as to the reason why no such request for directions was made. On the face of it, the applicant chose not to avail itself of the appropriate remedy; I therefore find no justification for the extension of time on the ground that the cited documents were inadequately particularised.

Overall, I consider that the explanations provided of the reasons for the delay in filing the evidence in answer are not sufficient to justify allowance of the extension of time sought.

However, in a situation where the Commissioner considered that a request for an extension of time had
 not been justified, Burchett J. observed in Ferocem (supra) that:

"...even where an application for a particular period ... is regarded as unjustified, it seems to me a decision maker, having a discretion of the kind conferred by Regulation 5.10 should always consider whether some short period ought to be allowed, so that an applicant who may have assumed that some extension would be granted will not be shut out entirely from presenting evidence that may be immediately available."

Bearing this in mind, I consider that to conclude the evidence in answer stage a limited extension of time, solely for the purpose of validating the service of the evidence which was available and served on 21 October 1994, is appropriate in all the circumstances.

I therefore grant an extension of time until 21 October 1994.

The period within which the opponent may initiate actions under the Regulations in relation to the service of evidence in reply commences from the date of this decision.

COSTS

Although I have allowed a limited extension of time, I have found that a proper case to justify the extension sought has not been made out in terms of providing a satisfactory explanation for the delay in serving the evidence. I award costs (if any) against Baroid Drilling Fluids, Inc.

Alan Moore
Delegate of the Commissioner of Patents

Patent attorneys for the applicant  :  Spruson & Ferguson, Sydney

Patent attorneys for the opponent   :  F B Rice & Co, Sydney