Cadbury Schweppes Pty Ltd v Wm. Wrigley Jr. Company - [2007] APO 8

ABSTRACTS OF DECISIONS
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No. 772873 in the name of Wm. Wrigley Jr. Company

Title: Comestible coating process using hydrogenated isomaltulose mixture

Action: Requests by Wm. Wrigley Jr. Company for an Official Direction under Regulation 5.10(1) and an Extension of Time under Regulation 5.10(2) to file Evidence-in-Answer and objections thereto by Cadbury Schweppes Pty Ltd

Decision: Issued 19 February 2007.
Abstract

The applicant requested (i) a 3 month extension of time to file Evidence in Answer and (ii) a direction from the Commissioner to defer the final date for filing of Evidence in Answer until determination of the acceptability of S 104 amendments filed with the request for extension of time.
The amendments filed are non-trivial in the sense set out in Stena Rederi Aktiebolag v Danyard A/S (1996) 34 IPR 111. However, the applicant has not been diligent in filing the amendments. Furthermore, the amendments do not change the evidence of the common general knowledge that the applicant indicated it would be filing. The common general knowledge remains the same irrespective of the form of the claims. There was no benefit to be gained by issuing a direction that delayed the filing of evidence until after the allowance or otherwise of the amendments.
The request for a direction was refused.
Nevertheless, the evidence on common general knowledge that the applicant intends to file is likely to be of use to the Commissioner in the substantive hearing. It should contribute to a more just and correct decision.
In view of the all the circumstances, and bearing in mind the decision in Race Lotto v AWA Limited [1998] APO 78, the extension to 28 February 2007 was granted to allow the applicant sufficient time to file relevant evidence in answer.
Costs awarded against Wrigley.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No. 772873 by Wm. Wrigley Jr. Company and Requests by Wm. Wrigley Jr. Company for an Official Direction under Regulation 5.10(1) and an Extension of Time under Regulation 5.10(2) to file Evidence-in-Answer and objections thereto by Cadbury Schweppes Pty Ltd

BACKGROUND

Patent application 772873 for an invention titled "Comestible coating process using hydrogenated isomaltulose mixture" was filed on 30 May 2000 in the name of Wm Wrigley Jr. Company (Wrigley). The application was advertised accepted on 13 May 2004. On 9 August 2004, Cadbury Schweppes Pty Ltd (Cadbury) filed a notice of opposition. A Statement of Grounds and Particulars followed on 9 November 2004 and evidence in support was completed on 30 August 2005. Wrigley requested, and was granted, three extensions up to 28 August 2006 to serve evidence in answer. Part evidence in answer in the form of two statutory declarations was served on 29 March 2006 and 28 April 2006 respectively.
On 28 August 2006, Wrigley requested its fourth extension of time to 28 November 2006, and Cadbury objected to this extension. A hearing was held and a decision issued on 13 October 2006 (Cadbury Schweppes Pty Ltd v Wm Wrigley Jr. Company [2006] APO 35) allowing the extension. That decision found that Wrigley had provided less than satisfactory explanations for the delay, but that previous delays were more likely to be caused by poor case management rather than a deliberate attempt to delay proceedings. The decision also stated that the balance of the parties’ interest and the public interest supported an extension. The decision also indicated that:
“this balance is likely to change if there are further delays in the preparation of evidence.”
Furthermore, the decision concluded with this warning:
I allow the requested extension of time until 28 November 2006 for the applicant to engage a suitable third expert and prepare a draft declaration within the extended period. The applicant is however on notice that the Commissioner is unlikely to be sympathetic to any further extensions of time unless they can establish that substantial progress has been made in the preparation of its evidence in answer from the third witness and that this evidence will address all of the substantive issues raised in the evidence in support.
On 28 November 2006 Wrigley filed a request to amend the specification under Section 104. This request was accompanied by another request for an official direction by the Commissioner under regulation 5.10(1) to extend the time limit for service of evidence-in-answer to one month after the final allowance or rejection of the voluntary amendment request (such directions having issued on other cases in the past).
On the same day Wrigley also filed a request for an extension of time under regulation 5.10(2) to 28 February 2007 to file evidence-in-answer. The explanation accompanying the request for extension was as follows:
The applicant has reviewed the Evidence-in-Support in view of comments from the experts used in relation to this opposition proceeding and has lodged a voluntary amendment to the specification. In particular, the applicant has substantially amended the claims in order to more clearly define the invention in view of the issues raised by the opponent in these opposition proceedings. The applicant also believes that the voluntary amendment addresses all the issues raised by the opponent in these opposition proceedings.
Further time is required for the Australian Patent Office to review and examine our voluntary amendment request in accordance with the Patents Act and Regulations and for the opponent to provide comments thereon.
Further time is also required for us to prepare and lodge our Evidence-in-Answer upon completion of the review and examination procedure by the Australian Patent Office and in the event that the opponent wishes to maintain their opposition to the application in view of the amendments to the specification.
On 4 December 2006, the Commissioner wrote to both parties indicating that, unless objected to, she intended to issue the direction as requested by Wrigley. On 8 December 2006 Cadbury wrote to the Commissioner objecting to the request for an official direction and the request for a further extension of time for reasons in the letter. Cadbury also requested that the Commissioner issue a notice to produce documents containing “comments from the experts used in relation to this opposition proceeding” and documents that established whether “substantial progress has been made in the preparation of … evidence”. On 19 December 2006 the Commissioner wrote to both parties indicating that the objections to the official direction and the extension of time would be heard together. The Commissioner also stated that she did not intend to issue the notice to produce documents as requested by Cadbury.
The request for an official direction and an extension of time to file evidence-in-answer and the objections thereto was heard in Canberra on 1 February 2007. Wrigley appeared by telephone and Cadbury appeared by videoconference. Cadbury was represented by Mr Edward Heerey of counsel instructed by Mr Jonathan Kelp, solicitor, and Mr Peter Selvay, patent attorney, of Mallesons Stephen Jaques. Wrigley was represented by Mr Andrew Lee and Dr John McCann, patent attorneys of Spruson and Ferguson.
RELEVANT LAW
This case relates to a Direction by the Commissioner to defer the final date for filing of Evidence-in-Answer under Regulation 5.10 (1) and to an associated extension of time to file Evidence-in-Answer under Regulation 5.10 (2). These regulations state:
(1)The Commissioner may, on his or her own motion or on the application of a party:
a.give a direction that is not inconsistent with the Act or these regulations for the conduct of proceedings to which this Chapter applies; or
b.determine that a period prescribed in this Chapter (except in regulation 5.3 or 5.3AA, paragraph 5.4 (a), subparagraph 5.8 (1) (a) (i) or regulation 5.9A) is to be extended by such further period as the Commissioner reasonably allows.
(2)The Commissioner may extend the time within which the party may take a step prescribed in this Chapter (not being a step that is taken under regulation 5.3 or 5.3AA, paragraph 5.4 (a), subparagraph 5.8 (1) (a) (i) or regulation 5.9A):
a.on the application of a party in the approved form; and
b.on such reasonable terms (if any) as the Commissioner specifies; and
c.after the party has served a copy of the application on the other party.
Both these powers are subject to the requirements of subregulation 5.10(5):
(5)The Commissioner must not give a direction under subregulation (1) or grant an application under subregulation (2) or (4) unless the Commissioner:

a.if he or she proposes to grant an application by a party is reasonably satisfied that the other party has been notified of the application; and

b.if he or she proposes to act on his or her own motion ensures that the parties are notified of the proposed action; and

c.in either case:
(i)gives the parties a reasonable opportunity to make representations concerning the application or proposed action; and
(ii)is reasonably satisfied that a direction, an extension of time or the serving of further evidence is appropriate in all the circumstances.
The operation of Regulation 5.10(5) has been considered in Ferocem Pty Ltd v Commissioner of Patents (1994) 28 IPR 243, A Goninan & Co Ltd v Commissioner of Patents (1997) 38 IPR 213 and in National Starch & Chemical Company v Commissioner of Patents [2001] FCA 33. These decisions make it clear that reg. 5.10 confers a broad discretion that cannot be reduced to imperative compliance with particular requirements. It requires proper, genuine and realistic consideration of all the relevant aspects that pertain to the application including both the private interests of the parties concerned and the public interest to determine if, in all the relevant circumstances, the granting of the application is appropriate.
In Stena Rederi Aktiebolag v Danyard A/S (1996) 34 IPR 111 the delegate found that an extension of time should only be granted if the amendments are non-trivial and stated that it was inappropriate for the applicant to be allowed to unnecessarily protract opposition proceedings by filing trivial amendments.
In Exxon Chemical Patents Inc v Lubrizol Corporation (1998) 41 IPR 126 the delegate did not issue a direction under regulation 5.10(1) despite the amendments being judged non-trivial due to what he considered to be an excessive delay in filing the request to amend. Also, as there was only one non-trivial amendment, the delegate expressed some doubt as to whether this would affect the evidence.
In Genetics Institute v Kirin Amgen Inc 44 IPR 257 the Federal Court noted that proceedings before the Commissioner should be conducted in an efficient and expeditious manner.
In University of Georgia Research Foundation Inc v BioChem Pharma [2001] FCA 688 Tamberlin J found it was preferable to stay the appeal pending the determination of amendments and that the patent applicant would be put to unnecessary time and expense in preparing what may well prove to be irrelevant evidence if they were required to file evidence in answer without being certain of the final form of the amendments.
In Affymax Technologies N.V. v Diversa Corporation [2001] APO 52, the delegate reviewed the above cases, and concluded that there were a number of factors to consider when determining whether an extension of time under regulation 5.10 is appropriate where there were pending amendments, viz:
(i)the nature of the amendments;
(ii)whether there were any undue delays in proposing (or processing) the amendments; and
(iii)the interests of the parties
In the light of the decisions in Ferocem (supra) and Goninan (supra), I also note that a relevant consideration is the public interest which includes considerations of the nature and significance of the Evidence to be served by the applicant as well as the expeditious disposal of proceedings before the Patent Office.
I will consider these points.
The Nature of the Amendments
The proposed amendments greatly change the order and content of the claims. Many of the claims that are proposed to be added do not appear in the accepted set of claims. While the marked-up copy of the new claim pages that accompanied the amendments is remarkably uninformative in indicating the nature and location of the proposed amendments, it is possible to deduce where the changes are made. In the independent claims, the changes appear to have been made as follows (underlining indicates an addition, strikethroughs indicate a deletion):
117. A method of coating comestibles comprising the steps of:
a)providing cores of comestible material to be coated;
b)applying a first coating syrup to the cores comprising a suspension of
i)an ~~aqueous~~ solution of hydrogenated isomaltulose that is enriched in containing an excess amount of ~~alpha-D-glucopyranosido-1,6-sorbitol (~~GPS) compared to ~~alpha-D-glucopyranosido-l ,1-mannitol (~~GPM), and
ii)a powder of hydrogenated isomaltulose that is not enriched in GPS compared to GPM ~~to the cores~~;
c) evaporating water from the applied first coating syrup; and
d)repeating steps b) and c) to build up a layer of a first coating on the cores of comestible material; and
e)applying a finishing coating syrup comprising hydrogenated isomaltulose that is enriched in GPS compared to GPM over the first coating; and
f)repeating step e) to build up a smooth finish layer.
131. A method of coating comestibles comprising the steps of:
a)providing cores of comestible material to be coated;
b)applying a ~~first~~ coating syrup to the cores;
c)applying a powder material comprising hydrogenated isomaltulose that is enriched in alpha-D-glucopyranosido-1,6-sorbitol (GPS) compared to alpha-D-glucopyranosido-1,1-mannitol (GPM) over the ~~first~~ coating syrup;
d)repeating steps b) and c) to build up a first layer of coating on said cores;
e)wherein the ~~first~~ coating syrup is a suspension made from:
i)a solution of hydrogenated isomaltulose that is enriched in containing an excess amount of alpha-D-glucopyranosido-1,6-sorbitol (GPS) compared to alpha-D-glucopyranosido- 1,l -mannitol (GPM) and
ii)a powder forming a solid suspension in the syrup, the powder comprising hydrogenated isomaltulose that is not enriched in GPS compared to GPM.
1944. A method of coating comestibles comprising the steps of:
a)providing cores of comestible material to be coated;
b)applying a first coating syrup to cover the cores, the syrup comprising between about 0.5wt% and about 10wt% of a binding agent and a suspension of
i)an aqueous solution of hydrogenated isomaltulose that has both GPS and GPM, with a ratio of GPS to GPM of between about 99:1 and about 60:40 and
ii)a powder of hydrogenated isomaltulose suspended in the solution, the powder having both GPS and GPM, with the amount of GPS not exceeding the amount of GPM;
c)applying a second powdered material over the first coating syrup, the second powdered material comprising hydrogenated isomaltulose that is enriched in containing an excess amount of GPS compared to GPM;
d)repeating steps b) and c) to build up a first layer of coating on the cores; and
e)applying the first coating syrup over the first layer of coating without applying the second powdered material between applications of coating syrup, and drying the coating syrup to form a second coating layer on the cores.
Wrigley in their written submissions provided a highlighted copy of the amendments made to the independent claims which indicated the major additions to the claims but not the minor changes. These matched the additions I have indicated above.
The parties disagreed as to whether the presently proposed amendment is trivial. Cadbury characterised the amendments as:
(a)addition of a step to apply a finishing coating
(b)providing further specificity regarding the composition of syrups, powders, and method steps
(c)addition of a large number of new dependent claims
Cadbury submitted that the amendments gave the “appearance of complexity” but did not address the key issues of novelty and inventive step. They maintained that their evidence in support was still relevant. Wrigley submitted that the amendments narrowed the scope of the claims and would resolve the opposition proceedings.
It would seem that the position taken by Cadbury is that, in their opinion, the amendments address none of the issues they raised and, therefore, they are of a trivial nature. I do not agree with that position.
It seems clear to me that the amendments result in a narrowing of the scope of accepted claims 1, 13 and 19. In the Stena Rederi decision (supra) and Exxon Chemical Patents Inc v Lubrizol Corporation, (supra), the delegates held that amendments that introduce even basic limitations into the main form of the claimed invention were non-trivial. This view was also supported by the decision of the delegate in ExxonMobile Chemical Patents Inc v The Associated Octel Company Limited [2002] APO 34.
In Solstice Neurosciences, Inc v Allegan, Inc [2006] APO 2 the delegate found that the amendments were trivial because they were in the nature of clarifying statements or there would be little, if any, difference between the claims. However, this is not the case here. While Cadbury believes that the amendments do not resolve the opposition, the changes to the independent claims at least involve the addition of new features, not just a mere rearrangement of existing features. The type of powder material in the methods used has been limited to a specific example, and additional steps have been added to other methods. I do not think that the person skilled in the art would have read the accepted claims as including the new features. Doing so would have involved an improper importation of a gloss from the description. I am willing to accept that the proposed amendment to the claims of the present application is also a non-trivial amendment in the Stena Rederi (supra) sense.
Whether There was any Undue Delay in Proposing (or Processing) the Amendments
The applicant has filed the amendments 15 months after the completion of the evidence in support. Since then the amendments have been considered by IP Australia and are awaiting comments, if any, by the opponent before being finalised. In Exxon Chemical Patents Inc v Lubrizol Corporation (supra) it was noted that “relevant considerations … are whether filing of the request to amend has been carried out expeditiously”.
Wrigley’s position on this point was that there had been no undue delay in proposing the amendments. Wrigley’s submissions on this point were that the major ground of opposition was obviousness and they wished to engage an independent expert resident in Australia to comment on the background of the invention and the common general knowledge. Wrigley submitted that the fact that Cadbury is a major confectionery player (including its subsidiaries such as Red Tulip) did lead to a delay in locating a suitable expert. Wrigley pointed to WMC Resources Limited v Minara Resources Limited [2007] APO 3 where the delegate of the Commissioner had granted an extension of time when the opponent had difficulty locating an expert. Furthermore, they pointed to the conduct of Cadbury as the opponent for other patent applications held by Wrigley. In particular they pointed to the opposition for Australian Patent Application 2002231274 where Cadbury has been granted six extensions of time and where an expert had only recently been retained.

I do not understand why these submissions support the position of no undue delay in proposing amendments. While it is true that an extension was granted in WMC Resources Limited v Minara Resources Limited (supra), this was in the circumstances where BHP Billiton, which wholly owned one of the parties to that opposition, so dominated the mining industry that no person in that industry would risk offending them by providing evidence against them. While they are a major player, I do not think Cadbury has the same domination in the confectionery industry. Furthermore, while the conduct of Cadbury in other oppositions may be a source of annoyance for Wrigley, I do not see how that impacts on this hearing.
In any event, as Cadbury pointed out, the argument about the difficulty in finding suitable experts was submitted in the last hearing between these parties ([2006] APO 35) and in his decision the delegate noted:
I accept that it can be difficult finding someone in a field where the opponent is a major commercial player in Australia, but the applicant should have been aware of this problem much earlier and taken steps to address this issue (British Telecommunications Public Limited Company v Telstra Corporation Limited [2000] APO 50).
Cadbury also questioned why Wrigley needed to find a new expert anyway since they already had used five experts in Federal Court proceedings dealing with the validity of a related patent owned by Wrigley (reported as Wm Wrigley Jr Co v Cadbury Schweppes Pty Ltd (2005) 66 IPR 298) and they would have been accessible to Wrigley. Wrigley pointed to Minnesota Mining & Manufacturing Company v Tyco Electronics Pty Ltd [2002] FCAFC 315 (hereafter 3M v Tyco) as supporting a position that using witnesses that were aware of previous proceedings would taint their evidence. Wrigley submitted that this necessitated finding new experts. I disagree.
It is true that in 3M v Tyco it was said (at [45]):
The manner in which the evidence of some of the experts in the present case was bought into existence suggests that relatively little weight should be given to certain of that evidence. For example, witnesses were provided with a copy of the Patent. They were either provided with a large number of other documents or found them in response to the task that was set them. That is hardly calculated to result in objective evidence as to what the hypothetical uninventive but skilled worker would have done. To give the Patent to a prospective witness is tantamount to leading the witness. Further, unless the other documents were part of the common general knowledge in Australia before the Priority Date, they are not relevant to any question of obviousness.
However, I do not think that these findings support the broad position that Wrigley believes it does. There is certainly something in this passage that suggests that an expert should not be given the patent before giving evidence on the question of obviousness of that patent. However, I can see nothing here that stipulates that an expert who has had prior involvement for a different patent of similar technology is tainted by that prior involvement. As it was noted in Australian Lock Company Pty Ltd v Lockwood Security Products Pty Ltd [2005] APO 12:
It could be said that an expert who either has an interest in the company involved in the opposition, gains a financial benefit beyond that which is normally paid to experts for their time in preparing their evidence, or whose personal circumstances are such as to create a bias against the other party may be of doubtful independence. However, simply saying that an expert has been used multiple times by a company in different oppositions does not impact on their independence. Searching for "new" experts every time an opposition is filed is not compulsory and leads to unnecessary delays.
I do not see why the amendments could not have been proposed earlier. The difficulty in locating an expert does not impact on Wrigley’s ability to propose amendments at any time during an opposition. Furthermore, I find it difficult to believe that Wrigley only became aware of the need to amend 15 months after all evidence in support was filed. In the explanation accompanying the request for an extension of time, Wrigley stated that:
the voluntary amendment addresses all the issues raised by the opponent in these opposition proceedings (my emphasis).
These issues were known 15 months ago. Why has it taken so long to address them? Wrigley’s submission that they filed the amendments to progress the opposition rings hollow given that they could have proposed these amendments at any time. If Wrigley truly wanted to progress the opposition, why did they wait until the Commissioner made her displeasure plain in the last decision? Even if it could be said that Wrigley needed experts before proposing amendments (and I do not see how this could be the case), as noted above, the applicant should have taken steps much earlier to address that issue.
In Solstice Neurosciences, Inc v Allegan, Inc (supra), the delegate found that there was no undue delay on the basis that a European decision brought down on 28 November 2005 lead to filing amendments with IP Australia on 8 December 2005–a delay of 12 days. While it is always difficult to draw the line between undue delay and due diligence, a delay of 15 months is excessive. In my opinion Wrigley has not been diligent in proposing the amendments.
The Nature and Significance of the Evidence to be Served/Expeditious Disposal
The public interest in determining a serious opposition on its merits is a relevant consideration. In order to consider this, it is necessary for the Commissioner to form a view as to the nature of the evidence that it is sought to adduce, and the significance of that evidence for the opposition proceedings [A Goninan & Co Ltd v Commissioner of Patent (supra)]. However, it is equally desirable for the public interest that, in the interests of cost, efficiency and the orderly prosecution of matters before the Patent Office, oppositions progress without delay.
Nature of Evidence
At the hearing I questioned Wrigley on their evidence. I pointed out that if, as Wrigley had asserted in their explanation, the amendments did address all the issues raised in the opposition, it was hard to see why any evidence in answer would be required. In light of the amendments, any evidence in answer would not be significant. Wrigley could merely point out in its submissions at the substantive hearing why the evidence in support did not invalidate the amended claims. No evidence was required to make those types of submissions.
Wrigley responded indicating at various times during the hearing that the evidence in answer still to be served would be:
(a)statements from the independent expert on the common general knowledge in the art.
(b)evidence from a person from Wrigley on the advantages that follow from the invention.
(c)expert evidence on the ground of novelty comparing the new claims (if allowed) and the citations of the evidence in support.
(d)an explanation of the new terms added to the claims.
Wrigley submitted that in light of that evidence on common general knowledge it would be very plain to see the significance of the amendments. Since the amendments had not been dealt with at that time, Wrigley said that they needed the amendments to have been allowed so that their expert would know the final form of the claims and be able to provide comments on the common general knowledge. Wrigley indicated that the evidence of common general knowledge would be focussed on the amended claims. Their submission was that if they were required to file this evidence before the allowance of the amended claims, they would have to provide two sets of evidence–one for the accepted claims and one for the amended claims. They submitted that this would put them to unnecessary expense and would mean the Commissioner would receive superfluous evidence. Furthermore Wrigley pointed out in their submissions that they would be denied natural justice if they are not allowed the opportunity to file evidence in answer.
I do not accept that expert evidence commenting on the novelty of the claims (see (b) above) is likely to be of any great help. Submissions pointing out the differences between the claims and the citations can be made at the substantive hearing. No expert is needed to highlight the differences. Furthermore, the need for statements from a person employed by Wrigley on the advantages that follow from the invention (see (c) above) also seem to be superfluous. I suggested to Wrigley at the hearing that such advantages would be found in the specification. I questioned the need to reiterate these advantages. Wrigley indicated that they thought it would be better to have confirmation of these advantages from an expert. I do not see how mere repetition would be of any great significance.
I accept that it is desirable to have evidence as to the common general knowledge from both parties to the opposition. I would include within evidence of common general knowledge any explanation of what the terms in the claims would mean to a person skilled in the art. Such evidence from both parties can help the Commissioner greatly in determining what is, and is not, common general knowledge. A submission often made at hearings is that an assertion of a feature being common general knowledge in the evidence of one party should be taken at face value if it has not been rebutted by the other party. In that light, it would be unfair if one party was prevented from providing this kind of evidence. I believe that the evidence of common general knowledge that Wrigley wishes to file is likely to be of some help in this opposition and should lead to a more correct and just decision.
Expeditious Disposal
Nevertheless, there is still the other leg of the public interest to consider. That is, oppositions should be dealt with expeditiously. I am unsure how the circumstance of proposing amendments still prevented Wrigley from filing evidence of the common general knowledge. It would seem to me that, whether the amendments were allowed or not, the common general knowledge is still the common general knowledge. It would remain the same even if the specification contained no claims.
Furthermore, while the inclusion of new terms into amended claims may require some explanation by an expert and, hence, require a delay until the amendments are allowed, this is not the case here. While the amendments proposed by Wrigley add terms and/or method steps into the independent claims those terms and steps are not “new”. They all appeared in the claims as accepted. The features of hydrogenated isomaltulose that is enriched in GPS compared to GPM and the step of applying a second (finishing) coating are found in the accepted claims.
In effect Wrigley is asking that they be permitted to wait until after the amendments are allowed to file evidence that could have been filed before the amendments were even proposed.
In addition, Wrigley’s submission that it needed the expert to know the final form of the claims before filing their evidence flies in the face of their previous submission that they did not want an expert who had had previous exposure to proceedings since that would taint the evidence. What they are suggesting now is exactly what they did not want before–an expert giving evidence having seen a copy of the specification.
The balance between these two competing conditions of the public interests is difficult to strike in this case. On the one hand is the usefulness of having evidence of common general knowledge from both sides of the opposition. On the other hand is Wrigley’s apparent lack of interest in filing evidence (as found in the last decision) and lack of diligence in proposing amendments. Choosing to interpret the clear warning in the last decision as somehow meaning “progressing the opposition”, Wrigley filed amendments that could have been filed well before now if they were, in fact, serious about progressing the opposition. They then justified not filing any evidence by indicating that the claims needed to be in a final form before that could occur, thereby contradicting their wish to have an untainted expert.
The Direction
I do not believe that the public interest supports issuing the direction sought by Wrigley. An overriding factor is whether issuing the direction would be useful. The Commissioner has granted similar directions in the past, but in those cases the final form of the claims had a definite impact on the evidence.
Much was made by Wrigley at the hearing that the Commissioner would have made the direction if Cadbury had not objected. However, directions are usually made in view of the nature of the amendments being proposed and the assumption that the evidence would change depending on the form of the claims.
In the present case the direction would grant Wrigley a non-opposable extension of time to file evidence which is not affected by the final form of the claims. As noted above the common general knowledge remains the same no matter what claims are in the specification. There seems to be no use in issuing a direction that will delay the filing of evidence which will be the same no matter what the form of the claims. Furthermore, if, as asserted by Wrigley, the significance of the amendments would be apparent once the evidence was filed, it seems to me to be more beneficial to have this significance made apparent sooner rather than later.
The Extension
However, turning to the evidence itself, I think that the public interest lies in granting Wrigley’s request for extending the time to 28 February 2007 to allow them to file their evidence in answer. As noted above, I believe that the provision of this evidence will lead to a more correct and just decision.
The Interests of the Parties
It is clearly in the interests of Cadbury to have the matter heard and a decision reached as soon as possible to provide more commercial certainty in the marketplace. Equally, it is clearly in Wrigley’s interest to gain as much time as possible to prepare a defence against the opposition. I recognise, however, that the Evidence-in-Answer was originally due to be completed on 30 November 2005 and Wrigley has already had four 3 month extensions of time and more than two months of the extension currently being considered. While, in my opinion, the amendments are not trivial the substantial delay in filing them suggests a lack of diligence on the part of Wrigley.
I note that the explanation requesting the extension of time indicated that more time was needed by Wrigley “to prepare and lodge [their] Evidence-in-Answer upon completion of the review and examination procedure by the Australian Patent Office”. I cannot see how that changes the balance. Wrigley would be well aware of the outcome–either the amendments are allowed or they are not. For either outcome the evidence would remain the same. Wrigley would not have to prepare evidence to meet both of these outcomes.
CONCLUSION
In the present case Wrigley has requested the issuing of a direction to “stop the clock” until such time as amendments are accepted and advertised and the grant of an extension of time until 28 February 2007.
The conduct of Wrigley suggests that they are not serious in obtaining a grant for their patent. Despite the warning given in the last decision, Wrigley has provided no evidence of substantial progress in the preparation of evidence. Furthermore, the delay in filing amendments is excessive.
Wrigley’s assertion that it requires more time to wait for the outcome of the Commissioner’s consideration of the amendments is not persuasive. Wrigley would be well aware that the amendments would either be allowed or not allowed, and, for this particular case, could easily have prepared for either eventuality.
The public interest does not support issuing the direction. Whether Wrigley waited for the outcome of the amendment process or not, this does not change the evidence that they said they are going to file. To issue the direction would not allow the opposition to be dealt with in an efficient, orderly manner and would unduly prolong the proceedings for no benefit.
Furthermore, as Wrigley has asserted that the significance of the amendments would be clear once the evidence in answer was filed, it would better to have this significance made apparent sooner rather than later.
I am mindful of Wrigley’s submissions at the hearing that not issuing the direction could turn the evidentiary stages into a “dog’s breakfast” if the amendments are opposed, etc. Wrigley’s submission was that, if the amendments were opposed, then by not granting the extension and “forcing” Wrigley to file evidence in answer, the outcome of the amendment opposition process may make that evidence useless. They would then be required to ask to file further evidence, with the concomitant risk that the Commissioner might not allow them to file further evidence. Wrigley submitted that it would be more straightforward if the direction was issued. However, I am also mindful of Cadbury’s submission that Wrigley’s concern is over things that have not happened as yet.
In any event, even if the amendments are opposed, as I have noted above, the common general knowledge will remain the same. The outcome of any amendment opposition process in this circumstance will never render this evidence useless.
Consequently, I will not issue the direction sought by Wrigley
However it is likely that the evidence that Wrigley is proposing to file will be of use to the Commissioner in the substantive hearing and will lead to a more correct and just decision. In my opinion the public interest supports granting an extension to file this evidence.
This is in spite of the explanation accompanying the request for an extension not explaining why evidence has been delayed. The explanation makes note of the filing of amendments (which I have found have not been filed in a timely manner), and waiting for the outcome of the amendment process before deciding on their evidence (which I have found would be the same no matter what the outcome is) but nothing about why the evidence has been delayed up to now. Furthermore, the reasons advanced at the hearing regarding the difficulty in locating experts were the same reasons that were submitted to, and rejected by, the delegate in the last decision.
I am also led by the decision of the Delegate of the Commissioner in Race Lotto v AWA Limited [1998] APO 78. In that decision an erroneous understanding was found to justify an extension, although further extensions of that basis could not be sought. I consider the present case to be a similar situation in that it appears Wrigley had an ill-founded belief that the final form of the claims had to be known before filing evidence on the common general knowledge.
Consequently, I grant Wrigley an extension up until 28 February 2007 to file evidence in answer.
I am aware that if Wrigley believes it is being shut out of the opposition by this decision there exists the possibility that they could file a substantially identical divisional application and withdraw the opposed application. However, I note that the material provided in support of the present opposition would be considered during the examination of any divisional application, and many of the issues under dispute could be resolved during the examination process, thereby alleviating the need for any further opposition. I also note that in such a situation the Commissioner may conclude that the applicant has "effectively surrendered" to the opponent, and this could be a consideration in the award of costs (Super Internet Site System Pty Ltd v Sensis Pty Ltd [2006] APO 27).
COSTS
Cadbury submitted that they should be awarded costs. Wrigley submitted that costs should be awarded to them, or, if costs would not be awarded to Wrigley, then no award of costs should be made.

Cadbury has been successful in its opposition to the direction. However, I have granted the extension of time requested by Wrigley. Nevertheless, this was based upon the public interest and in spite of Wrigley’s lack of diligence and its unsatisfactory explanation for the delay.
I note that this is the second time that Wrigley have been found to have been acting without due diligence in this opposition. Such behaviour is not to be encouraged.
I award costs against Wrigley.
GREG POWELL
Delegate of the Commissioner of Patents
19 February 2007
Patent attorneys for the applicant : Spruson & Ferguson, Sydney
Patent attorneys for the opponent : Mallesons Stephen Jaques, Melbourne