British American Tobacco (Investments) Limited v Philip Morris Limited

[1998] APO 73

OFFICIAL NOTICE

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Application  :          No. 670732 in the name of British American Tobacco (Investments) Limited

Title:          Improvements Relating to Smoking Articles

Action:          Request to amend the Statement of Grounds and Particulars (r.5.9) by Philip Morris Limited

Decision:          Issued            .

Abstract

In seeking to have confidential documents not published by the Commissioner parties to opposition proceedings can either:

·     use the provisions of section 210(c) of the Act to request the Commissioner to make the material not open to public inspection; or

·     seek Court orders prohibiting publication.

After the Federal Court made a confidentiality order in relation to “discovery document 1.0005.0175”, the patent applicant withdrew an objection to the amendment of the Statement of Grounds and Particulars and the requests were allowed.

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Patent Application No. 670732 by British American Tobacco (Investments) Limited and an opposition under section 59 by Philip Morris Limited and a request to amend the Statement of Grounds and Particulars.

background

Patent Application 670732 was filed under the number 16323/95 on 6 April 1995 as a divisional application of application 57651/86 on 6 April 1995 by British American Tobacco (Investments) Limited (BAT).

The application was advertised accepted on 25 July 1996 and Philip Morris Limited (PML) filed a Notice of Opposition on 25 October 1996.

PML filed a request to amend the Statement of Grounds and Particulars on 14 May 1998.  BAT objected to the request.  A further request to amend the statement was filed on 6 July 1998 prior to the hearing in Canberra on 7 July 1998.

The proposed amendments to the statement add particulars of prior publication and use of one additional prior art cigarette – the ‘petite’ size Sunripe cigarette – under grounds of novelty and inventive step.

BAT was represented by Mr Philip Kerr (Allen Allen & Hemsley), and Mr Peter Heathcote and Mr Phillip Pluck of Baldwin Shelston Waters (Sydney).  PM was represented by Mr Tim Hancock of Counsel and Mr Robert Kelson and Mr Steven Wulff of Callinan Lawrie.

Statutory Declaration by Philip John Kerr and Scott Andrew Lane a solicitor of Allen Allen and Hemsley, was given to me at the hearing.  Mr Lane’s Declaration has an attached copy of page 7 of The Australian Tobacco Journal of July 16, 1906 describing “Sunripe” cigarettes.

Mr Lane stated “To the best of my knowledge, the document marked ‘A’ has not been discovered by BAT in the Federal Court Proceedings.”

I advised the parties that once a document is handed to me it becomes part of the evidence and is open to public inspection. 

In an outline of submissions presented at the hearing PML submitted that

“The extra particulars were found on 27 April 1998 occasional on, but separate from, the review of discovery documents produced by BAT in Federal Court proceeding (No. NG 822 of 1994) concerning co-pending application 573088 by BAT: Wulff declaration dated 7 July 1998, paragraph 7.”

PML requested that proposed evidence, identified as document 1.0005.0175 (the confidential document) in the Federal Court proceedings be made not open to public inspection under the provisions of Patent Regulation 4.3(2), which appears to be a different document to the one attached to Mr lane’s declaration.  PML also asked about the procedures associated with this regulation as the regulation was new.  This document is proposed to be added to the Statement of Grounds and Particulars (new paragraph XX on page 11 and others).

I advised that the matter could be pursued by either:

• using the provisions of section 210(c) of the Act to request the Commissioner to make the material not open to public inspection; or

• to seek Court orders prohibiting publication.

In Emory University v the Commissioner of Patents & Anor [1997] 1465 FCA (19 December 1997), where the applicant to the Court wished the Deputy Commissioner of Patents to consider, on a confidential basis, in opposition proceedings under s.59 of the Patents Act, seventeen documents discovered in proceedings in a United States District Court which are subject to a confidentiality order made in that proceeding, Mr Justice Lingren said

“Subsection 19 (1) of the Federal Court of Australia Act 1976(Cth) provides that this Court has such original jurisdiction "as is vested in it by laws made by the Parliament." Subsection 154 (1) of the Act provides:
"The Federal Court has jurisdiction with respect to matters arising under this Act."
Subsection 39B (1A) of the Judiciary Act 1903(Cth), which was introduced into that Act by the Law and Justice Legislation Amendment Act 1997(Cth) with effect on and from 17 April 1997, provides:
"(1A) The original jurisdiction of the Federal Court of Australia ... includes jurisdiction in any matter:
(a) ... ; or
(b) ... ; or
(c) arising under any laws made by the Parliament."

In substance, and in the present context, these provisions invest the Court with jurisdiction with respect to matters arising under the Act.

I have reached the conclusion that there is no justiciable matter arising under the Act in the present case because the Court is not given power by or under the Act to make a confidentiality order for the purpose of s 55 (2) and reg 4.3 (2).”

In the present case, it is my view that, unlike Emory (supra) there is “justiciable” matter arising under the Act to due the review of discovery documents produced by BAT in Federal Court proceeding (No. NG 822 of 1994) concerning co-pending application 573088.

The parties sought to adjourn the hearing to seek the confidentiality order.

I directed that:

• the matter of the confidentiality of the documents be resolved within 21 days of the hearing (7 July 1998) and that the matter be resumed as soon as possible after the Commissioner is notified of the resolution of the confidentiality matter; and

• the two requests to amend the Statement of Grounds and Particulars be heard at the same time.

Orders were sought from the Federal Court and BAT asked the Commissioner whether he wished to be a party to the proceedings.  The Commissioner advised that he did “not wish to be a party to any application for a confidentiality order but would like to be given an opportunity to comment on the form of any order sought”.  Such orders are a matter between the parties.  The Commissioner’s only interest is to ensure the efficient administration of opposition proceedings.

The Notice of Motion to the Court was as follows:

“THE COURT ORDERS THAT:

1. The document produced on discovery by the applicant in its verified list of documents dated 17 November 1997 and designated as document 1.0005.0175 (the confidential document) and the information contained in the confidential document be prohibited from disclosure other than in accordance with order 2: provided that the Commissioner of Patents, the Deputy Commissioner of Patents or any delegate appointed by the Commissioner or Deputy Commissioner shall be entitled to use the confidential document and the information contained in it for the purpose of determining the opposition by the respondent to the grant of a patent pursuant to Patent Application 670732 in the name of the applicant but otherwise not make the confidential document open to public inspection under s 55 of the Patents Act 1990 .
2. The respondent be entitled to use the confidential document and the information contained in the confidential document in accordance with the Inter Parties Solicitors Undertaking which is Annexure "A" to the Affidavit of Scott Andrew Lane.

On 21 October 1998 the Commissioner was advised that Mr Justice Lehane had made the following order.

“Accordingly the court orders:

1.   That the document produced on discovery by the applicant in its verified list of documents dated 17 November 1997 and designated as document 1.0005.0175 (the confidential document) and the information contained in the confidential document be prohibited from disclosure other than in accordance with order 2: provided that the Commissioner of Patents, the Deputy Commissioner of Patents or any delegate appointed by the Commissioner or Deputy Commissioner shall be entitled to use the confidential document and the information contained in it for the purpose of determining the opposition by the respondent to the grant of a patent pursuant to Patent Application 670732 in the name of the applicant but otherwise not make the confidential document open to public inspection under s 55 of the Patents Act.

I shall then make order 2 in the applicant's notice of motion but substituting "confidential document" for "confidential documents".”

British American British Tobacco (Investments) Ltd v Phillip Morris Ltd [1998] 1288 FCA (8 October 1998)

In a letter dated 15 December 1998 BAT consented to the request for amendment of the Statement of Grounds and Particulars made on 6 July by PML.

Conclusion

Consequently, a further hearing was not held and I allow the requests to amend the Statement of Grounds and Particulars dated 14 May 1998 and 6 July 1998.

Costs

Under the circumstances surrounding these proceedings, I make no award of costs.

Bob Sawyer
Delegate of the Commissioner of Patents

Patent attorneys for the applicant  :  Baldwin Shelston Waters

Patent attorneys for the opponent   :  Callinan Lawrie