Ciba Speciality Chemicals Water Treatments Limited v EKA Chemicals AB - [2005] APO 39

ABSTRACTS OF DECISIONS
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No. 774331 in the name of Ciba Specialty Chemicals Water Treatments Limited

Title: Manufacture of Paper and Paperboard

Action: Application by EKA Chemicals AB for an extension of time under Regulation 5.10(2) to serve evidence in support, and objection thereto by Ciba Specialty Chemicals Water Treatments Limited

Decision: Issued 21 September 2005.
Abstract

A serious opposition is foreshadowed, preparation and service of evidence in support has been progressed without undue delay and further time is needed to finalise evidence, the nature of which is of significance to determination of the opposition. Consequently, at this stage of the proceedings, the opponent’s and public’s interests in having the opposition proceed on its merits hold sway over the patent applicant’s and public’s interests in having the matter decided earlier.
The extension of time to 24 September 2005 for EKA Chemicals AB to serve evidence in support is allowed.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No. 774331 in the name of Ciba Specialty Chemicals Water Treatments Limited and an application under Regulation 5.10(2) for an extension of time to serve evidence in support of an opposition by EKA Chemicals AB.

BACKGROUND

Patent application 774331 in the name of Ciba Specialty Chemicals Water Treatments Limited (Ciba) was filed on 2 November 2000 and advertised accepted on 24 June 2004. A notice of opposition to the grant of the patent was filed by EKA Chemicals AB (EKA) on 24 September 2004. A statement of ground and particulars was served on 24 December 2004.
EKA applied for an extension of 3 months to 24 June 2005 in which to serve evidence in support which was granted without objection. Ciba has objected to the instant application to extend the time for service of evidence in support by 3 months to 24 September 2005.
The matter was heard in Canberra on 10 August 2005. Mr. Ben Fitzpatrick, patent attorney of Griffith Hack, Melbourne, represented EKA. Dr. Peter Stearne, patent attorney of Davies Collison Cave, Sydney, represented Ciba. Both parties appeared by telephone.
APPLICATION FOR EXTENSION OF TIME
4.   EKA’s first application for an extension of time under Regulation 5.10(2) to serve evidence in support of their opposition gave the circumstances and grounds as follows:

“Our Australian attorneys have identified and researched the subject matter of the opposed patent application and have contacted many experts in an attempt to find suitable experts to assist us with our opposition. Our Australian attorneys have now located two suitable expert witnesses to assist us in our opposition.

Copies of relevant documents were prepared and forwarded to our principal expert. This expert has taken some time to review these documents. This expert has also conducted his own search and has located two further documents that might be of relevance to our opposition.

Our Australian attorneys are presently in the process of determining the date of publication of the two further documents in order to determine whether they can be added to the Statement of Grounds and Particulars.

Our Australian attorneys are also reviewing the content of the prior art in further detail in preparation for a meeting with our principal expert. A meeting date has not yet been set due to prior engagements.

We intend to await completion of the preparation of a statutory declaration with the principal expert before we take steps to provide documents to the second expert. One reason for this is that the second expert is undergoing medical treatment.

Further time is required to complete these steps and to serve the evidence-in-support on the patent applicant.”
5.   EKA’s second and instant application for an extension of time gives the circumstances and grounds as follows:

“Our Australian attorneys have met with the principal expert on 12 April 2005 and are currently in the process of reviewing the issues relating to this opposition in preparation for the principal expert’s Statutory Declaration to be completed. Our Australian attorneys have spent many hours preparing a document to be used by the expert in the preparation of his Declaration. This should be finalised soon, and will be send (sic) to the expert thereafter.

One of our Australian attorneys, Janelle Borham, came to Stockholm to meet with our Patent Manager to discuss this opposition and other business issues on 20 May 2005. This has assisted in the provision of further instructions for progressing the preparation of our evidence.

We had intended to await completion of the preparation of the principal expert’s Statutory Declaration before we provided documents to the second expert who was undergoing medical treatment earlier this year. Unfortunately, the second principal expert has died recently. In the meeting of 20 May 2005, we instructed our Australian attorneys to locate a new expert. Further time is required to locate a suitable candidate.

Further time is required to complete these steps and to serve the evidence-in-support on the patent applicant.”
GROUNDS OF OPPOSITION
6.   EKA's grounds of opposition are that
·the invention is not novel
·the invention does not involve an inventive step
·the specification does not comply with s.40(2) and (3),
with particulars having been provided in respect of each ground of opposition, including reference to 11 patent documents and an item of marketing material.
RELEVANT LAW
7. The relevant provisions under the Patents Act 1990 for extending the time in which to serve evidence in support are subregulations 5.10(2) and 5.10(5) as follows:
(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) or subparagraph 5.8(1)(a)(i)):
(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.
(5)The Commissioner must not give a direction under subregulation (1) or grant an application under subregulation (2) or (4) unless the Commissioner:
(a) …
(b) …
(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 law relevant to the determination of the instant matter has been conveniently elaborated as follows:
“(a)The broad discretion afforded by Regulation 5.10 cannot be reduced to insistence on imperative compliance with particular requirements;
(b)The exercise of this discretionary power requires proper, genuine and realistic consideration of all the relevant aspects that pertain to the application;
(c)The provision of a satisfactory explanation of the delay is a relevant consideration, but is not mandatory;
(d)The public interest in determining a serious opposition on its merits is a relevant consideration and must be balanced with the requirement that matters before the patent office should be dealt with in an efficient, orderly manner and not be unduly prolonged; and
(e)The interests of the opponent, the applicant and any other parties are a relevant consideration.”
[Kaiser Aluminium & Chemical Corporation v The Reynolds Metal Co (1969) 120 CLR 136; Ferocem Pty Limited v. Commissioner of Patents (1994) 28 IPR 243; A Goninan and Co Ltd v Commissioner of Patents and Another (1997) 38 IPR 213; National Starch & Chemical Company v Commissioner of Patents [2001] FCA 33]
SUBMISSIONS
Both parties provided written submissions which I will refer to where appropriate in my decision.
DISCUSSION
From the grounds and particulars of the opposition and from the explanation of progress in preparing expert evidence in support provided in the first and instant applications for extensions of time, I consider that it is prima facie apparent that a serious opposition is foreshadowed. The circumstances presented by EKA in its application to justify the instant second application are consistent with the circumstances presented in its first application for extension of time and relate to preparation and service of expert evidence.
Ciba has, however, submitted
“… it is impossible to determine from the brief Statement of Grounds and Particulars whether a serious opposition is in train. Ciba submits it is not possible for the Commissioner to form a view as the nature of the evidence that EKA seeks to adduce, nor the significance of that evidence for the opposition proceedings (“A Goninan and Co Ltd v Commissioner of Patents and Another (1997) 38 IPR 213 at 222).”
I refer to the following comments by Sackville J. as being pertinent to Ciba’s submission:
“In order for the commissioner or his delegate to give proper, genuine and realistic consideration to the aspect of the public interest I have identified, it is necessary to consider the nature of the evidence the opponent seeks to adduce and the significance of that evidence for the opposition proceedings. I do not mean to suggest that the evidence has to be scrutinised in the same way as would occur at a hearing on the merits. But unless the delegate forms a view as to the issues addressed by the proposed evidence, and whether that evidence is likely to be important in the opposition proceedings, it is difficult to see how proper consideration can be given to the public interest in having such proceedings being determined on their merits.”
The presented circumstances of obtaining statutory declarations from expert witnesses are prima facie relevant to the grounds and particulars of the opposition. The disclosures of patent and other documents for the purposes of determining novelty under the Patents Act 1990 are as interpreted by the person skilled in the relevant art. Consequently, it is a necessary legislative consideration in s.59 opposition matters whether corroborated expert evidence is warranted and/or required to properly determine the claims of the opposed patent application and any anticipatory disclosures. [Ore Concentration Company (1905) Ltd v Sulphide Corporation Ltd (1914) 31 RPC 206; Bloch and Ilford Ltd’s Patent (1936) 53 RPC 92; The General Tire & Rubber Co v The Firestone Tyre and Rubber Company Limited & Others (1972) RPC 457; Populin v HB Nominees Pty Ltd (1982) 41 ALR 471] Similarly, for determination of inventive step under s.7 of the Patents Act 1990. Consequently, the nature of the evidence for which the extension of time is sought is inherently relevant to the determination of the opposition on its merits, at which determination the content of that evidence would be fully assessed to the extent appropriate.
Ciba has also made related submissions along the lines of
“There is no suggestion that any evidence by a secondary expert will have any important influence on this case.”
However, as explained above, I consider that EKA has clearly explained to the usual professional standard that the applications for extension of time are to allow preparation and service of material of prima facie fundamental relevance to determination of the opposition under the Patents Act 1990.
The circumstances presented by EKA in its instant application are consistent with EKA’s submissions at the Hearing. EKA’s submissions do not change or supplement the circumstances presented in its application; EKA’s submissions presenting
·detail of relevant dates and identities
·explanation of the specific relevance of expert evidence to determination of the instant opposition
·detail of the further actions required to finalise evidence in support
all of which act to corroborate the circumstances presented by EKA in its instant application.
The circumstances presented by EKA in its instant application relate to preparation of expert evidence in the form of statutory declarations. I refer to Re: Neville William Lyons (carrying on business as Mitty's Authorised Newsagency) v The Registrar of Trade Marks (1983) 78 FLR 217, where Beaumont J. said
" Further, I think that the delegate was entitled to have regard to the notorious fact that opposition proceedings usually involve the gathering of evidence from third parties and this usually takes considerable time."
While the matter before Beaumont J. was the delegate's decision in respect of an application for extension of time for the opponent to file evidence in support of their opposition to registration of a trade mark, the consideration before Beaumont J. is directly relevant to the instant consideration. Evidence, in the form of statutory declarations from appropriately skilled practitioners in the relevant industry(s), to establish the disclosure of an anticipatory document or the state of the common general knowledge, years prior at the priority date of the accepted patent claims, is also notorious for taking considerable time.
EKA’s first application explains the progress in identifying and obtaining the services of relevant experts, identifying and assessing the relevant art and preparing a statutory declaration by the principal expert, all of which seems to me to be due professional process.
EKA’s first application also explains that preparation of a statutory declaration by the second expert was not immediately initiated:
"We intend to await completion of the preparation of a statutory declaration with the principal expert before we take steps to provide the documents to the second expert. One reason for this is that the second expert is undergoing medical treatment."
In putting these circumstances forward in partial support of their first application for extension of time, EKA has judged that the balance of the law as described in paragraphs 7 and 8 above falls, on this point, on the side of the opponent’s and public’s interests in having the opposition proceed on its merits rather than on the side of the patent applicant’s and public’s interests in having the matter decided earlier. While I accept EKA’s submission that the ill health of the second expert is a relevant circumstance, I also accept Ciba’s submissions that the relative weight to be afforded to that particular circumstance is dependent on the nature of the expert’s evidence and its significance to the opposition. As explained in paragraphs 13 and 14 above, I consider the nature of the second expert’s evidence to be of fundamental significance to the opposition and consequently, in this regard, I consider that EKA exercised the expected standard of professional diligence.
However, there is an unfortunate related question that flows from the instant second application for extension of time. Should EKA have been more aware of the progressive state of health of the second expert so as to recognise that the second expert could no longer deliver the agreed services and that a new second expert would need to be identified? Such a question is an extremely complex one having considerations of personal and professional courtesies and, as explained in EKA’s application, its desire for the second expert to be commenting on all relevant material. I simply consider that the circumstances of the original second expert were tragically unfortunate for all. While, in hindsight, the situation may have been able to be managed in a more timely manner, I consider that EKA exercised the expected standard of professional diligence in progressing this aspect of their evidence in support.
EKA’s instant application also explains the progress in preparing the statutory declaration by the principal expert and to seek a replacement second expert. Again, this seems to me to be due professional process in the circumstances.
While it is well known that the gathering of evidence from third parties in patent opposition matters usually takes considerable time, EKA's instant application for an extension of time would extend the period for it to file evidence in support of its opposition from the initial 3 months provided in the legislation to 9 months in total. Such a delay is of serious concern, both to the patent applicant's interests and to the public interest of expeditious and efficient completion of matters before the Patent Office, and consequently obligates the continued attention of EKA in avoiding any unnecessary delays.
DECISION
In summary of my discussion above, I consider that a serious opposition is foreshadowed, preparation and service of evidence in support has been progressed without undue delay and further time is needed to finalise evidence, the nature of which is of significance to determination of the opposition. Consequently, at this stage of the proceedings, I consider that the opponent’s and public’s interests in having the opposition proceed on its merits hold sway over the patent applicant’s and public’s interests in having the matter decided earlier. Accordingly, I grant the opponent EKA Chemicals AB an extension of time to 24 September 2005 in which to file evidence in support.
Ciba has sought that strict limits be set to ensure timely completion of evidence in support. From my decision, I see no basis for such limits. Any further extension of time sought to serve evidence in support would be decided at the time having regard to all relevant circumstances then presented or determined.
COSTS
The normal practice is that costs should follow the event. In the present matter, I have decided that the extension of time was allowable in accordance with the determined law on the circumstances and considerations presented in, or known at the time of, the application for extension of time. Consequently, I award costs to EKA Chemicals AB.
Bill Major
Delegate of the Commissioner of Patents
Patent attorneys for the applicant: Davies Collison Cave, Sydney
Patent attorneys for the opponent: Griffith Hack, Melbourne