COFLEXIP v Stolt Comex Seaway A/S
[1996] APO 38
•15 August 1996
official notice
decision of a delegate of the commissioner of patents
Application : No. 654276 in the name of COFLEXIP
Title: Device and Process for Unrolling Flexible Tubular Conduits Essentially Vertically
Action: Opposition by STOLT COMEX SEAWAY A/S, and an objection to a request to amend the Statement of Grounds and Particulars of Opposition under Regulation 5.9
Decision: Issued .
Abstract: Request to amend refused. Issue of undue prejudice considered. Extra particulars arose incidental to the preparation of the case. Amendment would lead to unnecessary protraction of the case.
patents act 1990
decision of a delegate of the commissioner of patents
Re:Patent Application No. 654276 by COFLEXIP, Opposition by STOLT COMEX SEAWAY A/S, and a request to amend the Statement of Grounds and Particulars of Opposition under Regulation 5.9 and Objection thereto.
background
Patent application No. 654276 was advertised accepted on 3 November 1994. STOLT COMEX SEAWAY A/S filed a notice of opposition on 30 January 1995 and a statement of grounds and particulars was served on 1 May 1995.
Evidence-in-support was completed on 20 October 1995 and Evidence-in-answer on 29 March 1996. Evidence-in-reply was filed on 2 July 1996
On 26 April 1996 the opponent filed a request to amend the statement of grounds and particulars under the provisions of regulation 5.9(1). On 14 May 1996 the applicant objected to the allowance of the request to amend the statement of grounds and particulars.
The matter was heard in Canberra on 20 June 1996. Mr. Leon Allen, patent attorney, of Davies Collison Cave, Canberra represented the applicant. The opponent represented by Collison & Co., Adelaide was not present at the hearing but made written submissions before the hearing.
THE AMENDMENT
The amendment results in the inclusion of two US Patent documents in the particulars under ground 1 and consequential amendments to the particulars relating to ground 4 of the statement of grounds and particulars. Copies of the two U.S. patents are included with the amended statement of grounds and particulars but no application has been made for special leave to adduce further evidence. Ground 2 includes in its particulars “the documents referred to in the particulars of grounds 1 and 3...”. Ground 3 includes in its particulars “Any one of the prior publications identified in the particulars of ground 1...”. The opponent gives the following reasons for the amendment:
“The existence of the documents was drawn to the attention of the opponent in the office action in re-examination which issued on the corresponding US patent. The office action in re-examination was mailed from the US Patent and Trademark Office on the 27th February 1996. A copy of the office action and the US Patents was supplied to us on the 2nd April 1996 and following an exchange of correspondence with the Norwegian associates acting on behalf of the opponent, we received instructions to file an amendment to the Statement of Grounds and Particulars on the 23rd April 1996.”
The amendment that the opponent seeks to insert under ground 1 is as follows:
11. US 3389563. This document discloses the laying out of a pipeline by means of linear winch (cylinder 34, pistons 35 and 39). A second or auxiliary winch 20 is used for lowering the pipeline through the open linear winch. The auxiliary winch includes at least one moveable elongated traction element. The linear winch also constitutes the last guiding means for the pipeline before the pipeline enters the water.
12. US 4196334. This documents discloses a means for laying out a pipeline comprising linear winches as well as an auxiliary winch (317). It is clearly stated in the specification at column 3 line 38 to 40 that the auxiliary winch 317 may be used for “picking up the back pipeline”.
As noted above these documents are also included in particulars relating to grounds 2 to 4 of the statement of grounds and particulars.
SUBMISSIONS
The opponent’s submissions, in point form, are as follows:
the new particulars relate to the inclusion of a document (sic, clearly the intention is to refer to two documents, as evidenced from the amended statement of grounds and particulars) raised by the United States Patents and Trade Marks Office of the re-examination of the corresponding United States case
the applicant has already been presented with a case to answer in respect of novelty and obviousness of the invention, and the inclusion of the further document will not change the case the applicant has to answer and on this point at least there can be no suggestion that the amendment would be potentially prejudicial to the applicant
if the amendment is detrimental, the circumstances surrounding the amendment do not cause the degree of detriment or disadvantage to be unwarranted, excessive, improper, inappropriate or unjustified
as the applicant was made aware of the newly cited United States Patent through the United States re-examination procedure, they undoubtedly had an opportunity to view this document before the Australian attorneys of the opponent and thus there is no reason for supposing that the applicant will be unduly prejudiced by the relevant amendments
there can be no suggestion that a relevant prior art document, no matter when brought to the applicants attention, could cause an unwarranted or excessive degree of disadvantage to the applicant
any further evidence relating to the United States Patent now sought to be included in the particulars would relate to a consideration and comparison of the disclosure contained in the document with the claimed invention; as no new material facts or assertions of the facts would be introduced there will be no undue protraction of the case
the extra particulars relate only to one (sic, actually two) United States Patent, and will not result in any protraction of the preparation of the case
the amendment of the Statement of Grounds and Particulars was made at the earliest reasonable opportunity, once the opponent and their Australian attorneys had had a chance to examine the document and consider its relevance to the opposition
the extent of the amendment sought is, considering the information already provided in the Statement of Grounds and Particulars, relatively minor
the Commissioner is required to amend the particulars (under regulation 5.9(2)) unless he/she believes that a person will be unduly prejudiced by the amendment
The applicant made submissions which I have summarised as follows:
the opponent’s covering letter requesting amendment (under regulation 5.9(1))of the statement of grounds and particulars refers to two new particulars; hence they are not amending but adding two new particulars
it is inappropriate for the evidence to form part of the amendment of the statement of grounds and particulars (the opponent had enclosed copies of the documents constituting the new particulars with the letter requesting amendment)
the opponent asserts that the existence of the documents was drawn to their attention in the office action in re-examination which issued on the corresponding U.S. Patent; but no evidence or proof (for example a statutory declaration) of this has been provided
the opponent does not say if they were previously aware of these documents or how they arose in the re-examination process, that is; were they filed by the party seeking re-examination or were they detected by the U.S. Office in the course of re-examination
the applicant should have been notified of these documents by the opponent as soon as they became aware of them, particularly as the report from the U.S. Office was mailed on 27 February 1996
the applicant had completed service of the evidence-in-answer on 29 March 1996 and if the new documents had been brought to their attention earlier on, they could have made submissions on the two documents
the opposition is in its final stages with evidence-in-reply due to be filed by the opponent on 16 July 1996
the applicant was unaware prior to the amendment of the documents sought to be incorporated by the amendment
the amendment is not one which would be clearly determinative of the opposition as it has not been particularised as such
the particulars merely refer to some features of the disclosures in the document but do not suggest that they are clearly determinative of the opposition
the amendment was requested after the service of evidence-in-support but no request has been made to serve further evidence in respect of the new particulars
the case law we have cited clearly indicates that addition of new particulars is prejudicial to the applicant, but the issue is whether it is unduly prejudicial
we say the prejudice is undue for the following reasons:
1. the proposed amendment by way of additional particulars clearly changes the case to be answered
2. potential protraction of the case as a result of the proposed amendment
3. the stage of proceedings at which the opponent has filed the proposed amendments precludes the applicant from answering the fresh evidence in the normal course
4. the relevancy of the new material can only be determined by a very careful analysis of a person skilled in the art
5. the real prejudice to the applicant is that it has to not only consider these new documents, then have its experts consider them but, more importantly, then look at what the opponent makes of them and what the opponent’s experts make of them. All this calls for extra time and effort.
Costs should follow the event and should be awarded to the applicant
The applicant and opponent referred to the Patent Office’s decision in Diamond Scientific Company v CSL Limited (1992) AIPC 90-927 as providing guidance in this matter. Also Stevelift Pty Ltd v Formark Pty Ltd 29 IPR 154, Sumitomo Electric Industries Ltd v BICC Plc and Another 31 IPR 549, Porter v Arbortech Investments Pty Ltd 31 IPR 169, Royal Postgraduate Medical School v Immunex Corporation 33 IPR 662 and Sumitomo v Pacific Dunlop 33 IPR 322 were referred to in support of the applicants submissions, while ARX Pty Ltd v Lockwood Australia Pty Ltd 33 IPR 308 and Abundant Lawn Grass Industries Pty Ltd v Crancove Pty Ltd (1993) AIPC 90-973 were distinguished.
DECISION
The Law relating to the allowability of amendments to Statements of Grounds and Particulars of Opposition is covered in regs 5.9(1) and 5.9(2) of the Patents Regulations 1991. The relevant portions of reg. 5.9 read as follows:
5.9(1) The commissioner, on the written request of an opponent, and subject to such terms as the Commissioner may specify:
....
(c) must amend particulars relating to a ground referred to in subregulation 5.4(1).(2) The Commissioner must not allow an amendment requested under subregulation (1), if:
....
(e) he or she reasonably believes that a person will be unduly prejudiced by the amendment.
In Diamond Scientific Company v CSL Limited (supra), guidelines are provided that assist in determining if undue prejudice would occur. In particular:
1. An amendment of particulars will unduly prejudice a person if:
i the amendment is detrimental or disadvantageous to the person, and
ii the circumstances surrounding the amendment cause the degree of that detriment or disadvantage to be unwarranted, excessive, improper, inappropriate or unjustified.
2. Where an opponent actively pursues further particulars in the opposition after having filed its statement, the applicant will be unduly prejudiced by any resultant change to the case it has to answer if the statement is amended.
3. Extra particulars arising incidental to the preparation of an opponent’s case which:
i do not result in any protraction of the preparation of the case, and
ii are included by way of amendment of the statement of grounds and particulars at the earliest reasonable opportunity, and
iii do not substantially change the case the applicant has to answer in the opposition,
will not prima facie give rise to the applicant being unduly prejudiced by the relevant amendments.
See e.g. Abundant Lawn Grass Industries Pty Ltd v Crancove Pty Ltd, supra
4. The delegate also stated that where:
i the applicant objects to the amendment, and
ii the amendment of the statement can reasonably be said to prejudice the applicant (such as by the addition of extra particulars), and
iii the circumstances are such that there is a reasonable inference that the prejudice is undue-such as by the time at which the amendment is sought, or the nature or the extent of the amendment sought,
there is a reasonable basis for the Commissioner to prima facie conclude that the applicant will be unduly prejudiced by the amendment. In this event, for the Commissioner to allow the amendment, the opponent has the onus of demonstrating that its activities have not been such as to have unduly prejudiced the applicant.
5. Further the delegate also indicated that any amendment that changes the case the applicant has to answer is potentially prejudicial to the applicant. For example an amendment to replace a particularised document with an equivalent document may involve a change of the case to be answered.
Other factors of likely relevance to determining whether undue prejudice would occur; that have arisen from decisions of the Patent Office; are
How far has the opposition progressed towards its finality?
Was the applicant previously aware of the issues sought to be incorporated by the amendment?
Does the amendment have the effect of reintroducing a ground of opposition that has previously been dismissed?
Is the amendment one which would clearly be determinative of the opposition? (See Porter v Arbortech Investments Pty Ltd, supra)
For amendments requested after the service of evidence in support, has a corresponding request to serve further evidence been made in respect of any new particulars? (See Sumitomo Electric Industries Ltd v BICC Plc and Another (1993) AIPC 90-988, and Biosys v Ecogen Australia Ltd (1993) AIPC 91-001)
In its proposed amendment the opponent is proposing to introduce two U.S. documents in the particulars under the grounds of prior publication (ground 1) and otherwise not novel (ground 4). As a result of the wording of particulars under grounds 2 and 3 these documents are also included under grounds 2 (manner of manufacture) and 3 (obviousness/lack of inventive step). This would seem to change or at least add to the case the applicant has to answer and is therefore potentially prejudicial to the applicant. In order to determine if the applicant has been unduly prejudiced by this action I need to find out if these documents arose incidental to the preparation of the opponents case.
The opponent became aware of these documents as a result of a re-examination action of the corresponding United States case. Thus the opponent did not actively seek further particulars, and I conclude that these particulars arose incidental to the preparation of the opponents case. I shall now determine if these extra particulars satisfy the three criteria (3 i to iii, above) as per the Diamond Scientific Case, supra
I believe that the addition of extra particulars at this stage of the case would lead to a protraction in the preparation of the case. The applicant has not been given any opportunity at this stage to make submissions on the documents in question and as the evidence in answer stage has been completed, even that opportunity to consider the fresh documents has been denied to the applicant. If the amendment is allowed the applicant is entitled to either ignore the amendments or apply for special leave to file submissions, which leave is not an automatic entitlement. I disagree with the opponent’s submissions that the inclusion of a further document will not change the case that the applicant has to answer or that as no new material facts or assertions of the facts would be introduced there will be no undue protraction of the case. I agree with the applicant that each document will require careful consideration both by the applicant as well as its experts to determine the relevance of the documents to the grounds of opposition. Further I also agree that the applicant will need to view the submissions of the opponent and its experts on the documents in question to prepare an answer to those submissions. As the evidence in answer stage has been completed, clearly, the preparation of the applicant’s case would be protracted.
The opponent does not make clear when they received the re-examination report from the U.S. Patent Office. They have not made clear when the re-examination action was initiated and by whom. Further they do not state when they became aware of the two U.S. patent documents, i.e. prior to or after the re-examination action. The re-examination report was mailed from the U.S. Office on 27 February 1996 (to whom is not stated). A copy of this document and the two U.S. patents were received by the opponent’s Australian attorneys on 2 April 1996 (the sender is not mentioned) and instructions to file an amendment to the statement of grounds and particulars was received on 23 April 1996. Based on the evidence at hand I cannot come to a firm conclusion as to whether the amendments were filed at the earliest reasonable opportunity or not.
I believe that the amendments will substantially change the case that the applicant has to answer in the opposition. The applicant has completed its evidence in answer and has had no opportunity to respond to the new documents. The opponent claims that the applicant is already aware of these documents (through the U.S. re-exam process) and as the applicant has already been presented with a case to answer in respect of novelty and obviousness of the invention, the inclusion of two further documents will not change the case the applicant has to answer. I believe the applicant has to answer the case filed in Australia. The applicant may be aware of several documents that may be relevant to its patent application, but, the case it has to answer is based on the documents raised in the statement of grounds and particulars (and any amendments thereto) filed by the opponent. The new documents even if highly relevant under U.S. law need to be considered under Australian law by relevant persons skilled in the art possessing common general knowledge in the field in Australia. The applicant has not had an opportunity to do this, and any extra material which has to be considered after completion of evidence in answer is bound to change or add to the case to be answered by the applicant.
I believe therefore that at least two out of three criteria referred to in Diamond Scientific v CSL, supra, have not been satisfied. Thus the possibility of undue prejudice arising from the filing of extra particulars cannot be ruled out.
I shall now determine if the amendment satisfies the three criteria (4 i to iii, above) which the delegate in Diamond Scientific v CSL, supra, said would provide a reasonable basis for the Commissioner to prima facie conclude that the applicant will be unduly prejudiced by the amendment.
The applicant has objected to the amendment. Further as the amendment has added extra particulars it can be said to prejudice the applicant. I now have to determine if the circumstances are such that there is a reasonable inference that the prejudice is undue. The request to amend was filed after the applicant had completed its evidence in answer. The evidence in reply stage was completed on 2 July 1996. Thus the applicant would be deprived of an opportunity to reply to the documents included by way of the amendment. The delegate in Stevelift Pty Ltd v Formark Pty Ltd, supra, stated “It would be a denial of natural justice if I took account of any submissions the opponent made in relation to this additional document at the substantive opposition hearing without giving the applicant sufficient time to prepare a case in rebuttal of this argument.”
Further, the documents would require consideration by the applicant and its experts to determine their relevance to the grounds of opposition. The applicant stated that they would also need to consider the opponent’s submission regarding the documents and these submissions are unavailable to them at present. If the amendment is allowed the applicant is entitled to either ignore the amendments or apply for special leave to file submissions, which leave is not an automatic entitlement. This would clearly lead to a protraction of the preparation of the case particularly as the evidence in reply stage has been completed.
Thus there is a reasonable basis for the Commissioner to prima facie conclude that the applicant will be unduly prejudiced by the amendment. In this event, for the Commissioner to allow the amendment, the opponent has the onus of demonstrating that its activities have not been such as to have unduly prejudiced the applicant. I consider that the opponent has not discharged the onus placed on it in this case.
I shall now consider other factors of likely relevance (that have arisen from decisions of the Patent Office) to determining whether undue prejudice would occur.
Regarding the progress of the opposition, I had discussed this issue earlier under criterion i of item 4 of the Diamond Scientific guidelines, supra. I had concluded that as the applicant would need time to prepare submissions in reply to the opponent’s new material, this would clearly lead to protraction of the preparation of the case; particularly as the evidence in reply stage has been completed.
The opponent submitted that the applicant was aware of the documents sought to be incorporated in the particulars via the re-examination process of the corresponding patent in the U.S. Patent Office. I have discussed this issue earlier under criterion iii of item 3 of the Diamond Scientific guidelines, supra. I had stated that the applicant may be aware of several relevant documents but the case it has to answer is based on the statement of grounds and particulars (including any amendments thereto) filed by the opponent in Australia.
The amendment does not re-introduce a ground of opposition that was previously dismissed.
The amendment introduces two new documents under the grounds of prior publication and lack of novelty. The relevant parts of the amended statement identify the documents and refer to certain features disclosed by each document. There is no suggestion in the amended statement that these documents are clearly determinative of the opposition (for example, an indication that all the essential features of the invention are disclosed in either one of the documents) and neither have they been particularised as such. The opponent has not made any submissions to that effect in its written submissions at the hearing or in its covering letter requesting amendment.
The amendments were requested (in respect of new particulars) after service of the evidence in support and evidence in answer. The opponent has not filed a corresponding request to serve further evidence in respect of the new particulars. As I have noted previously (see the discussion with regard to criterion i of item 3 of the Diamond Scientific guidelines, supra.) this clearly disadvantages the applicant and clearly leads to a protraction of preparation of the applicant’s case. Thus granting the opponent’s request to amend would cause excessive detriment to the applicant.
I have considered the various criteria which indicate excessive detriment. I do not find any circumstances/factors which outweigh the finding of excessive detriment to the applicant resulting from the amendment of the statement of grounds and particulars at this stage of the opposition.
I conclude that the applicant would be unduly prejudiced if the amendment were allowed. I therefore refuse to allow the amendment.
COSTS
The opponent did not make any submission with regard to costs. The applicant submitted that costs should follow the event and be awarded in its favour. I have found against the opponent in this matter, therefore I award costs against the opponent STOLT COMEX SEAWAY A/S.
Jacob P. Elijah
Delegate of the Commissioner of Patents
Patent attorneys for the applicant : Davies Collison Cave, Melbourne
Patent attorneys for the opponent : Collison & Co., Adelaide
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