Biosys v Ecogen Australia Pty Ltd

[1993] APO 42

official notice

decision of a delegate of the commissioner of patents

Application        :    No. 620833 in the name of BIOSYS

Title:    Mass production in liquid culture of insect-killing nematodes

Action:    Request to amend a statement of grounds and particulars filed in respect of an opposition to the grant of a patent by ECOGEN AUSTRALIA PTY LTD

Decision:    Issued            .  Request refused.

patents act 1990

decision of a delegate of the commissioner of patents

Re:Patent Application No. 620833 by BIOSYS, and a request to amend a statement of grounds and particulars filed in respect of an opposition to the grant of a patent by ECOGEN AUSTRALIA PTY LTD

background

Patent application number 620833 in the name of Biosys was advertised accepted on 27 February 1992.  A notice of opposition to the grant of a patent was filed by Ecogen Australia Pty Ltd on 27 May 1992.  A statement of grounds and particulars was filed on 29 June 1992 (the 27th being a Saturday).  A request to amend the statement of grounds and particulars was filed on 3 November 1992, and the patent applicant indicated that it opposed the request.

Both parties filed written submissions.

the amendment

The amendment seeks to insert an extra ground of opposition, namely:

"The invention, so far as claimed in each of claims 1, 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 15 and 16 was not a new manner of manufacture within the meaning of section 6 of the Statute if Monopolies in Australia on or before the priority date of those claims."

Particulars of the ground are also included.

submissions

A letter dated 16 November 1992 from the patent attorneys for the opponent states in part:

"It had always been our intention to include this ground in the Statement of Grounds pertaining to the above identified opposition, but the fact that the ground had been omitted from the statement of grounds lodged on 29 June 1992 only came to our attention when the opponent's evidence in support was nearing completion.

When the Statement of Grounds and Particulars was being drafted, close to the deadline for serving the Statement of Grounds, we discovered that certain of the citations pertaining to references mentioned in the Statement of Grounds were incomplete, or details of the references which had been provided to us were in error.  This discovery necessitated some hurried investigations by ourselves and our client in order to obtain correct and complete citations for each of the references which it was desired to include in the Statement of Grounds and Particulars.  It appears that, in our hurry to correct the particulars pertaining to ground 3, we overlooked that ground 5, which we intended to include in the Statement, had been omitted."

The patent attorney for the patent applicant filed submissions in a letter dated 8 January 1993.  This letter states in part:

"We have considered the letter from the attorney for the Opponent dated 16 November 1992 and it appears that the amendment is proposed to correct an error or omission, however, there is no evidence to show that an error or omission actually occurred.

If an error or omission occurred, then we believe that declaratory evidence setting out in detail the circumstances surrounding the error or omission is required.

It is submitted that until it has been shown that an error and/or an omission occurred, the Application to Amend the Statement of Grounds and Particulars should not be allowed."

The opposition clerk wrote to the opponent on 27 January 1993.  This letter states in part:

"the matter of whether or not there has been an error or omission should be assessed by having regard to the actions and intentions of the opponent on or before the date of filing the Statement of Grounds and Particulars.

As a result, the delegate requests the opponent to provide further material, preferably in the form of a declaration, which demonstrates that at or before the statement was filed it was the opponent's intention to include the ground of manner of manufacture in that statement."

The patent attorney for the opponent replied in a letter dated 16 February 1993 in the following terms:

"In our submission, our application dated 3 November 1992 to amend the Statement of Grounds and Particulars dated 29 June 1992 should be allowed since the effect of the proposed amendment is to make explicit what was merely implicit in the Statement as lodged. As noted in our letter of 16 November 1992, it had always been our intention to include an explicit mention in the Statement of the Ground provided under section 59(1)(f) of the Patents Act 1952 but by an oversight we omitted to do so.

The Statement of Grounds and Particulars as lodged states at page 11, lines 4 to 6 that "The subject matter of the claims of the opposed specification is closely related to processes and products in which we have a proprietorial interest". The Statement of Grounds and Particulars as lodged further states in Ground 1, at page 1, that "the invention so far as claimed in any claim was published in Australia before the priority date of that claim", in Ground 2, at page 1, that "the invention, so far as claimed in any claim, was, before the priority date of that claim, otherwise not novel in Australia", and in Ground 3, at page 3, that "the invention, so far as claimed in any claim, was obvious and did not involve an inventive step, having regard to what was known or used in Australia on or before the priority date of that claim". Clearly, therefore, it is implicit in the Statement of Grounds and Particulars as lodged that the invention so far as claimed in any claim of the opposed application was not a new manner of manufacture within the meaning of the relevant subsections of section 59(1) of the Patents Act 1952. Since grounds 1 to 3 of the Statement of Grounds and Particulars as lodged imply ground 5 of the Statement as proposed to be amended, it is improper to disallow the proposed amendment, which merely makes explicit what is already implicit, since to do so would be tantamount to a denial of the validity of grounds 1 to 3 without any consideration of the Opponent's evidence-in-support of the Opposition."

No declaration was provided.

decision

The amendment sought by the opponent has two effects:

(i)to add the new ground of manner of manufacture to the grounds of opposition; and

(ii) to provide particulars of that ground.

The two matters are governed by different provisions of the Patents Regulations.  Amendments to the grounds of opposition are governed by regulation 5.9(1)(a) and (b).  Regulation 5.9(1) states:

"Amendment of statement

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 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

(b)if the Commissioner reasonably believes that an amendment of the grounds set out in a statement referred to in subregulation 5.4 (1) results from an amendment of a patent request or complete specification‑must amend those grounds; or

(c)must amend particulars relating to a ground referred to in subregulation 5.4 (1)."

It is clear that an amendment to the grounds of opposition can be allowed if it corrects an error or omission, or results from an amendment to the patent request or complete specification.  It is worth noting that the power to amend is discretionary, so the opponent must demonstrate both facts that enliven the power to amend, as well as circumstances that justify the exercise of that power.  In the present case there has not been an amendment of the patent request or complete specification, so I am only concerned with the situation in regulation 5.9(1)(a): an error or omission.

The term "error or omission" has been considered many times in decisions concerning section 223 (and its equivalent, section 160 of the Patents Act 1952). I consider that it would be inappropriate to give a different meaning to the term "error or omission" when used in regulation 5.9(1)(a) (see D.C.Pearce and R.S.Geddes "Statutory Interpretation in Australia" 3rd edition, pages 65 to 67). Thus, it is apt to apply the following formulation: "an error or omission has been considered to have occurred where there has been a breakdown in procedure in effecting a party's intention" (Stork Pompen v Weir Pumps 11 IPR 542 at 546; this point was not overturned in the decision of the AAT reported at 13 IPR 163). As a consequence, the intention of the party with respect to doing some act is an essential preliminary to the demonstration of an error or omission. I think that the letter from the opposition clerk expressed the situation accurately when it said "the matter of whether or not there has been an error or omission should be assessed by having regard to the actions and intentions of the opponent on or before the date of filing the Statement of Grounds and Particulars".

The evidence of an intention to include the ground of manner of manufacture is less than conclusive.  I note the following points:

.the letter of 16 November 1992 asserts an intention to include the ground of manner of manufacture;

.a declaration relating to the intention was not provided; and

.there is an assertion that the ground of manner of manufacture was implicit in the statement of grounds and particulars as originally filed.

I do not believe that the statement in the letter of 16 November 1992 is, on its own, sufficient evidence of intention.  In the absence of a declaration by a person having first hand knowledge of the facts, I will examine the argument that the ground was implicit to see if it supports the intention.

The argument appears to be that the presence of the grounds of opposition of prior publication, novelty and obviousness make it implicit that the opponent would also argue that "the opposed application was not a new manner of manufacture". Presumably this is because a reasonable opponent would also oppose on the basis of new manner of manufacture when raising issues of newness. The fatal flaw in this argument is that the relevant ground of opposition refers to "manner of manufacture" (section 59(1)(f) of the Patents Act 1952), without any reference to "new". It is not possible to impute to the opponent any intention to raise the ground of manner of manufacture on the basis of this argument.

Since the intention of the opponent to include the ground of manner of manufacture at or before the time of filing the statement of grounds and particulars has not been established, I cannot agree that there has been an error or omission.  As a consequence, I do not have to decide whether an appropriate case for the exercise of my discretion has been made out.

Particulars of the ground of manner of manufacture cannot be inserted as it would be unduly prejudicial for the statement of grounds and particulars to include particulars irrelevant to the grounds of opposition (regulation 5.9(2)(e)).

conclusion

The request to amend the statement of grounds and particulars is refused.  The time for serving evidence in answer shall run from the date of this decision.

S.D.BARKER
Delegate of the Commissioner of Patents

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

Patent attorneys for the opponent   :  Spruson & Ferguson, Sydney