Colgate-palmolive Company v Westone Products Limited
[1997] APO 21
•23 May 1997
official notice
decision of a delegate of the commissioner of patents
Application : No. 664182 in the name of Colgate-Palmolive Company
Title: Dental Floss
Action: Opposition to the grant of a patent by Westone Products Limited, a request to amend the statement of grounds and particulars and objection by the patent applicant to the granting of such a request.
Decision: Issued .
Abstract
Location of 6 patent specifications and 14 non-patent documents by the opponent’s expert witnesses considered to be incidental to the preparation of the opponent’s case. An expert witness who is also a patentee in a particular technology could be expected to be familiar with patent literature without needing to actively seek those documents. The proposed amendment was found to be unduly prejudicial to the applicant because the 20 documents changed the case to be answered and the opponent had not sought to involve expert witnesses until three months after the statement of grounds and particulars was served. Request to amend refused.
patents act 1990
decision of a delegate of the commissioner of patents
Re:Patent Application No. 664182 by Colgate-Palmolive Company, opposition to the granting of a patent by Westone Products Limited, a request to amend the statement of grounds and particulars and an objection by the patent applicant to the granting of such a request.
background
Colgate-Palmolive Company filed patent application 664182 on 23 June 1992 as an application for a standard patent. As a result of the examination process, the applicant changed the application to an application for a standard patent of addition to the applicant’s granted standard patent 611544.
Application 664182 was advertised as accepted on 9 November 1995. On 9 February 1996, Westone Products Limited filed a notice of opposition to the granting of a patent on the application. A statement of grounds and particulars was served on the applicant on 9 May 1996. After two unopposed extensions of time to serve evidence in support, the opponent completed the serving of its evidence in support on 31 December 1996.
During this period a number of requests to amend the statement of grounds and particulars were filed. A first request to amend the statement of grounds and particulars was filed on 22 July 1996. This request was allowed by a delegate on 5 September 1996 after the applicant made no objection to the request. On 27 August 1996, the opponent filed a second request to amend the statement of grounds and particulars. Again the applicant did not object and a delegate of the Commissioner allowed this second request on 15 November 1996. The opponent filed a third request to amend the statement of grounds and particulars on 18 October 1996. The applicant objected to this amendment being allowed.
In a letter dated 28 November 1996, Westone requested the Commissioner to issue a direction under regulation 5.10(1) as follows:
“Documents which support and/or substantiate allegations contained in the Statement of Grounds and Particulars in relation to (i) matters of common general knowledge or (ii) known properties of individual components of the alleged invention, do not need to be included in the Statement of Grounds and Particulars. In particular it is not necessary to seek to amend the Statement of Grounds and Particulars to include references to documents referred to in Evidence-in-Support which merely support and/or substantiate allegations contained in the Statement of Grounds and Particulars in relation to (i) matters of common general knowledge or (ii) known properties of individual components of the alleged invention.”
Westone indicated in its letter that it would withdraw its request of 18 October 1996 to amend the statement of grounds and particulars if the Commissioner gave such a direction.
In a further letter dated 2 December 1996, Westone indicated that, as a result of a response from the applicant on the proposed direction, it wished to change the proposed direction to:
“Documents which support and/or substantiate expert evidence to be provided in respect of the following allegations contained in the Statement of Grounds and Particulars dated 26 August 1996 do not need to be included in the Statement of Grounds and Particulars:
(i) the coating of dental floss with waxes other than microcrystalline waxes was common general knowledge in Australia prior to the priority date (see page 5, lines 7 to 10);
(ii)the dental floss covered by the claims possess no more than the aggregate of the
known properties of the individual components (see page 4, limes 1 to 4); and
(iii) the integers claimed in the subsidiary claims were known to the art prior to the priority date (see page 5, lines 12 to 14).
In particular it is not necessary to seek to amend the Statement of Grounds and Particulars to include references to such documents.”
Again, Westone indicated that it would withdraw its request of 18 October 1996 to amend the statement of grounds and particulars if the Commissioner gave such a direction.
The applicant did not object to such a direction being issued.
In a letter dated 3 March 1997, both parties were informed that the delegate of the Commissioner refused to issue such a direction. Along with the reasons for this refusal, the letter stated: “If the opponent asks for a hearing the Delegate considers the proposed direction should be considered at the hearing about the proposed amendment of the statement.” As it turned out, the opponent indicated at the hearing that it did not wish to be further heard on this matter as the whole point of seeking such a direction was to avoid the necessity of having a hearing.
The matter was initially to be heard in Canberra on 11 April 1997 with both parties to appear via telephone. Due to technical difficulties, the hearing was postponed to 14 April 1997 when Colgate-Palmolive was represented by Dr W Pickering, patent attorney of F B Rice & Co, Sydney, and Westone was represented by Mr Michael Caine, patent attorney of Davies Collison Cave, Melbourne, via telephone.
REQUEST TO AMEND THE STATEMENT OF GROUNDS AND PARTICULARS
In a letter dated 18 October 1996, Westone provided the following reasons for the need to amend the statement of grounds and particulars:
“We submit that the new particulars have arisen incidental to the preparation of the case and will not unduly prejudice the applicant. In this regard new documents (n) to (s) are further examples of US Patents disclosing wax coated dental flosses and documents (ii) sic to (xiv) are documents describing the known properties of expanded PTFE.”
The main changes proposed to the statement of grounds and particulars, as already amended by the amendments of 27 August 1996, are as follows:
In relation to the ground of lack of manner of manufacture, reference to one patent specification is deleted, 6 new references to patent specifications are included, reference is made to the known properties of expanded PTFE and 14 non-patent documents are referred to in support of this.
In respect of the ground of lack of novelty, the reference to patent literature is expanded to included the new references to patent documents.
With respect to the ground of lack of inventive step, the reference to patent literature is expanded to included the new references to patent documents and a further particular in relation to the newly introduced 14 non patent documents is included referring to the known properties of PTFE.
SUBMISSIONS
Mr Caine provided me before the hearing with a statutory declaration made by him.
The main points raised by Mr Caine in this declaration and at the hearing are as follows:
There is no change in the case that the applicant has to answer as the new references are in the same art as the previously particularised references. There may be a change the specific facts but there is no substantial change in the case to be answered by the applicant. The amendment merely clarifies the particulars already present. (Sumitomo Electric Industries v BICC Plc & Anor AIPC 90-988, Abundant Lawn Grass Industries v Crancrove (1993) AIPC 90-973)
The collection of the further evidence was incidental to the preparation of the case in that the further documents were located by the expert declarants in the course of the preparation of their statutory declarations. There was no fishing expedition undertaken to locate further particulars.
On learning of these further documents, there had been no undue delay in requesting amendment to the statement of grounds and particulars. The delay was only just over two weeks from Mr Caine’s learning of the existence of these further documents to the filing of a request to amend the statement of grounds and particulars to include these documents.
The 6 patent specifications do not provide any further avenues for attack over and above those documents already referred to in the particulars. They merely support the contention already made in the particulars that dental floss coated in non-microcrystalline wax was well known prior to the present priority date. Indeed the disclosures provided by these documents can be readily found in Colgate’s own US patent 2772205.
The 14 journal articles except for document (x) relate to the known properties of expanded PTFE. Document (x) provides assistance in the understanding of contact angles. As such these documents support the allegation that the opposed claims relate to a mere collocation of known ingredients.
No new issues have been raised and as the new particularised references have been identified before the completion of the evidence in support and included in the evidence in support the applicant will not be disadvantaged in any way. There will be no protraction of the case. (Abundant Lawn Grass Industries v Crancrove (supra))
The proposed amendment is really only providing further and better particulars to allow the applicant to more easily understand the case it has to answer.
While it was clearly apparent from the above submissions that the further documents individually only disclosed particular integers of the claims and not all the integers of the claims and therefore could not be used as an attack on the novelty of the claims, the opponent was prepared to delete the inclusion of these documents in the particulars relating to the ground of lack of novelty.
While the Sumitomo v BICC decision (supra) does refer to the delay between filing the statement of grounds and particulars and the requesting of an amendment to that statement as being a factor in considering whether the applicant will be unduly prejudiced by the amendment, in the present case, the delay has not been excessive. The request was filed before the completion of the evidence in support. Therefore the applicant has not been disadvantaged.
I have summarised the main points made by Dr Pickering as follows:
In Kent-Moore Corp v Environmental Products Amalgamated Pty Ltd 25 IPR 233, the purpose of the statement of grounds and particulars is set out. It alerts the applicant to the case it has to answer. The subsequent evidence served in support is circumscribed by the particulars identified in the statement. The environment in which the opposition is to be argued is set by the statement. There should be no expectation that further particulars will need to be included in the statement. The applicant will otherwise be uncertain as to the case it has to answer.
In Sumitomo v BICC (supra), a further delay was considered not just the delay from the location of the further particulars to the filing of the request to amend the statement of grounds and particulars. This further delay is the delay between the filing of the statement of grounds and particulars and the requesting of an amendment to the statement. In the present case this is over 5 months. The opponent has not adequately explained this delay.
The location of these documents could not be incidental to the preparation of the case because it is extremely unlikely that either expert witness would have references to 6 or 14 documents in their mind. They would have needed to actively locate them. Asking other people to search for further particulars rather than doing it oneself does not overcome an argument that further particulars are being actively sought.
In Lesaffre et Cie v Burns Philp Research and Development Pty Ltd, an unreported Patent Office decision, dated 27 February 1997, on patent application 666302, the delegate stated:
“In the normal course of events one could reasonably imagine that once a notice of opposition is filed the opponent should planning (sic) for the preparation of evidence for the opposition. Firstly, this allows the opponent to be in an informed position when foreshadowing its case in the statement of grounds and particulars and secondly it allows them to be ready to serve the evidence at a later date.”
In the present case there is no suggestion that the opponent’s experts were engaged at an early stage to allow the statement of grounds and particulars to be accurately made out.
In Lubrizol v Exxon Chemical, an unreported Patent Office decision, dated 18 November 1996, on patent application 661038, the delegate discussed the significance of the number of new references that might be inserted into the particulars via amendment as follows:
“My view is that applicants should be able to treat statements of grounds and particulars at face value. Applicants would be expected to prepare their main responses only to those documents that are particularised in their own right. I also accept that if a significant number of the examples in particular (i), or elsewhere, had now become particulars in their own right, then I would find a substantial change of case. There is much case law to support the refusal of amendments where significant numbers of extra particulars are added over the original number. See for example The Boots Company PLC v Hamilton Laboratories Pty Ltd (on application 614998, issued 21st December 1992), Caterpillar (supra) and Imperial Chemical Industries PLC v E I Du Pont De Nemours and Company (on application 654176, issued 9th January 1996). From these cases the important consideration is the number of extra particulars, for any ground of opposition, compared with the original number.”
Where there are significant numbers of extra particulars to be included, this will change the case the applicant has to answer. In ICI v E I Du Pont de Nemours, an unreported Patent Office decision, dated 9 January 1996, on patent application 654176, the delegate found that the addition of 9 new documents would result in a change to the case that the applicant had to answer. In the present case there are 20 new documents.
DECISION
The allowability of the present request to amend the statement of grounds and particulars is determined by regulation 5.9 of the Patent Regulations 1991. The relevant portions of regulation 5.9 read as follows:
"5.9 (1) Subject to subregulation (2). the Commissioner, on the written request of an opponent and subject to such terms as the Commissioner may specify:
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(c)must amend particulars relating to a ground set out in a statement that is served
and filed under subregulation 5.4(1).
(2)The Commissioner must not allow an amendment requested under subregulation (1), if:
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(e)he or she reasonably believes that a person will be unduly prejudiced by the
amendment."
From this, I find that I must amend the statement of grounds and particulars if I reasonably believe that no-one will be unduly prejudiced. In providing me with assistance on interpreting the meaning of “unduly prejudiced”, both parties referred me to Diamond Scientific Company v CSL Limited (1992) AIPC 90-927. In this decision, the delegate distinguished between the inclusion of extra particulars which had been actively sought by the opponent and particulars which arose incidental to the preparation of the case in deciding on the degree of prejudice that might be experienced by the applicant. If (i) the new particulars have been actively sought by the opponent and (ii) the case the applicant has to answer is changed then the applicant will have been unduly prejudiced and I must not allow the amendment.
With respect to the degree to which the opponent is required to establish that there has been no undue prejudice experienced by the applicant, the delegate in Diamond Scientific v CSL (supra), discussed the matter as follows:
“However, where:
-the applicant objects to an amendment, and
- the amendment of the statement can reasonably be said to prejudice the applicant (such as by the addition of extra particulars), and
- 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 extent of the amendment sought;
there is in my view 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 I consider the opponent has an onus of demonstrating that its activities have not been such as to have unduly prejudiced the applicant.”
In the present case, the addition of 20 new documents seems to me, on the face of it, to not only prejudice the applicant but also to provide me with a reasonable inference that the prejudice is undue. Therefore the opponent has the onus of establishing that there has been no undue prejudice.
Have the new particulars been actively sought?
Has the location of these 20 new documents arisen incidental to the preparation of the opponent’s case? In Sumitomo v BICC (supra), the delegate provided an explanation of when particulars might arise incidental to the preparation of the case as follows:
“A convenient description of particulars that arise incidentally is given in the Abundant Lawn decision, supra at page 6: "The opponent's pursuit of this chain of events would have been a normal and expected part of the preparation of the evidence in support of the opposition". I am satisfied that the documents in dispute came to notice as a normal part of the finalisation of Dr Clark's declaration, and were not the result of actively seeking further particulars. It appears that these particulars will not result in the protraction of the case as evidence in support was completed within the time allowed by the delegate. It is clear that the new particulars were inserted promptly once they were brought to notice by Dr Clark. While these particulars change the specific facts of the case, I do not think they substantially change the case to be answered.”
In the present case, it is true that the documents were located in the preparation of the opponent’s evidence in support. However, Mr Caine’s declaration indicates that the documents came to light as a result of a questionnaire he sent to the opponent’s expert witnesses. There is no indication in Mr Caine’s declaration of what questions were asked in this questionnaire. One could conclude that the questionnaire could have included a question asking the expert witness whether or not he had conducted a search of the relevant literature to locate related art. In this respect, Dr Pickering made the point at the hearing that it is still actively seeking further particulars whether or not you do a search yourself or ask someone else to do such a search. Dr Pickering also suggested that it is highly unlikely that the two declarants would have such a vast number of document references in their memory. In this respect, I note that, in Sumitomo v BICC (supra), the documents to be included were much fewer in number - of the order of 2 or 3 documents. It is much more probable that the expert would have had immediate knowledge of 2 or 3 documents than of a list of 20, say.
It is understandable that opponents, in preparing their case, might stumble across documents that were not initially particularised. This is entirely possible when expert witnesses are engaged to provide statutory declarations as part of the evidence. Although, arguably, as the applicant has suggested, these experts should have been consulted at the stage when the statement of grounds and particulars was prepared, I can appreciate that the experts may be aware of documents that support their points in their statutory declarations which are prepared subsequently. In the present case , there are two different sets of documents. Mr Caine has identified them as the Gillings documents which are the 6 new patent documents and the Milthorpe documents which are the 14 new non-patent documents. It is convenient for me to consider them in this fashion.
On the face of it, I would doubt that an expert such as a university professor would have a detailed and immediate knowledge of 6 patent specifications for example unless that person has actively sought those documents. However, I note Mr Caine’s statutory declaration where he submits that the patent documents were previously known to Professor Gillings. Mr Caine indicates that Professor Gillings is the inventor of two of these documents. Therefore, I am more inclined to believe that, as a patentee in this art, Professor Gillings would have a reasonable knowledge of such patent documents. On balance, I find that these patent documents have been located incidental to the preparation of the case in that the opponent has sought to gather evidence as opposed to extra particulars from an expert witness who would have been familiar with the relevant documents and who would not have had to actively seek them.
In the normal course of events, I suspect that it is more likely that a university professor would have knowledge of relevant journal articles than patent documents. It is not improbable that Professor Milthorpe would have an immediate knowledge that would extend to 14 such journal articles in a field in which he particularly specialised.
Consequently, although the opponent has not provided me with any information on the nature of the questionnaire, nevertheless the opponent has persuaded me to reach the conclusion that the documents were located incidentally to the preparation of the case.
The Diamond Scientific case indicates that extra particulars which are established incidental to the preparation of an opponent's case will not prima facie give rise to the applicant being unduly prejudiced by the amendment if they:
do not result in any protraction of the preparation of the case; and
are included by way of amendment of the statement of grounds and particulars at the earliest reasonable opportunity; and
do not substantially change the case the applicant has to answer in the opposition.
Will the preparation of the case be protracted?
The opponent has pointed out that the new particulars are supported by the evidence in support which has been completed. Consequently, the opponent argues that the applicant will be able to deal with all the evidence at once and there will be no protraction of the case. I note that the time for serving evidence in answer by the applicant has been stopped as a result of a direction I issued on 16 April 1997 after the hearing was conducted. The period for serving evidence in answer will not commence until the date of issue of this decision. A result of this is that the applicant has an extended period of time to consider those particulars which were originally particularised as well as the normal period of time for serving evidence in answer for considering the new particulars if they are allowed. I do not think that the preparation of the case will be protracted any further if I allow the amendment.
Have the particulars been included at the earliest reasonable opportunity?
In relation to the question of undue delay, I am satisfied that, once Mr Caine became aware of the further documents, he acted promptly to file a request to amend the statement of grounds and particulars. I do not find that there has been any delay in this respect.
However, Dr Pickering drew my attention to the Sumitomo v BICC (supra) case in which the delegate indicated that the delay between the original filing of the statement of grounds and particulars and the filing of the request to amend should also be taken into account. In this respect, I note that Mr Caine did not send the relevant questionnaire to his expert witnesses until 27 August 1996 some three months after the filing of the statement of grounds and particulars. I have nothing before me to explain this delay. I can surmise that the opponent chose not to start collecting evidence until after the two previous requests to amend the statement were finalised. However that does not assist the opponent. In taking up Dr Pickering’s invitation for me to consider Sumitomo v BICC (supra), I note the delegate’s comments as follows:
“I must weigh the total delay of seven months against the incidental nature of the new particulars. The reasons for the seven month delay are critical in deciding whether incidental particulars can be included.
As I have discussed above, there is a period of five and a half months before Dr Clark was given a draft of his declaration. I have no information on which to base a decision as to whether this delay was reasonable. The opponents have not explained why there was a period of five and a half months before Dr Clark was given a draft of his declaration. Given that the onus is upon the opponents, the failure to explain this delay is fatal to their case. I am not satisfied that the amendment would not unduly prejudice the patent applicant. I will not allow the amendment.”
It seems to me that the facts of the present case are similar. This suggests to me that the applicant will be unduly prejudiced if the amendment is allowed.
Has the case that the applicant has to answer has changed?
I agree with Mr Caine that the applicant is already aware that the opponent asserts that the various components of the claimed invention were well known. The present amendment does not change this basic assertion.
Also, at least with respect to the state of common general knowledge in relation to the ground of lack of inventive step, the documents support the existing particular identifying various facets of common general knowledge. As such there may be little need to particularise them (Borden Inc. v Elkem A/S (1992) AIPC 90-893). In particularising them, the opponent is making the case that the applicant has to answer more readily understandable.
Both sides dealt with the question of the number of new documents sought to be introduced. Mr Caine made the point that the new documents do not change the case the applicant has to answer although they may change the material facts of the case. He also suggested that the disclosures of these documents merely reinforced the disclosures provided in one of the applicant’s own earlier patent specifications. Dr Pickering drew my attention to ICI v Du Pont (supra) where the number of new documents (9) sought to be introduced had an influence on the delegate’s decision to refuse to allow amendment to the statement of grounds and particulars.
I do not think that it is possible to specify a numerical limit on the number of documents that might be unduly prejudicial to the applicant. This will depend on the facts of each case, including the nature of the documents and the nature of the technology that they disclose. In the present case, the documents have not been further particularised in that there are no specific references to relevant page and line numbers. While in certain circumstances such references may not be necessary, in the present case, the lack of such references to specific passages in the 20 documents doesn’t help the opponent’s case. While Mr Caine has provided a table of relevant disclosures of the various patent documents in his statutory declaration in support of this request to amend, the proposed amended particulars do not have such a summary. More importantly, the proposed amended particulars do not provide any clear indication of the relevant subject matter of the 14 new non-patent documents except that they describe known properties of expanded PTFE. For example, Mr Caine, in his statutory declaration, indicates that document (x) deals with the concept of contact angles. This is certainly not apparent from the proposed amended statement.
In ICI v Du Pont (supra), the delegate, in considering 9 extra documents which included references to specific passages, stated:
“On the whole however, the extra particulars are rather voluminous. While the statement of grounds and particulars identifies relevant passages for all the documents it is a little difficult to determine the exact relevance of the documents to the present invention. Accordingly I think there would be a need to resort to other passages as well. Consequently I find that changes to the original statement of the scale envisaged here, together with the volume of extra documentation to be considered, must involve a substantial change in the case for the applicant to answer.”
I think this applies to the present circumstances at least in relation to the ground of lack of manner of manufacture. Therefore I believe that the introduction of these new documents would change the case the applicant has to answer.
Therefore, I believe that the opponent has not discharged its onus to establish that the case the applicant has to answer has not changed.
Other issues
However, there is another factor I think is appropriate to consider in relation to undue prejudice viz would the proposed new particulars be clearly determinative of the opposition? (Porter v Arbortech Investments 31 IPR 169) This takes into account the prejudice to public interest if particulars which clearly rendered the claimed invention invalid were shut out. In the present case, I am satisfied that, while the new documents may possibly establish the state of the common general knowledge, they, of themselves, would not be clearly determinative of the opposition. Indeed, Mr Caine indicated at the hearing that these documents do not individually anticipate the claimed invention. Mr Caine also indicated that the 6 patent specifications merely disclose matter which is disclosed in US patent 2772205 which is already in the particulars. I do not think that the nature of the new particulars will cause undue prejudice to the public interest sufficient to outweigh the undue prejudice to the applicant if the amendment is allowed.
On the balance, I find that the change in the case that the applicant has to answer and the unexplained delay in seeking advice from expert witnesses mean that the applicant will be unduly prejudiced by the amendment and I refuse to amend to the statement of grounds and particulars.
CONCLUSION
I refuse to allow the request of 18 October 1996 to amend to the statement of grounds and particulars. The period for serving evidence in answer will commence from the date of this decision.
COSTS
The opponent has been unsuccessful in this action. Normally, in such a situation, I would award costs against Westone Products Limited in relation to the preparation of the applicant’s case in relation to the present matter and costs associated with the attendance at the hearing by the applicant’s patent attorney. However I am mindful that the original hearing was set to be heard via telephone. Therefore I think it is fair to award costs against Westone in relation to the preparation of the applicant’s case in this matter and the costs associated with the attendance at the hearing by the patent attorney except the costs of airfares and accommodation.
R Hallett
Delegate of the Commissioner of Patents
Patent attorneys for the applicant : F B Rice & Co, Sydney
Patent attorneys for the opponent : Davies Collison Cave, Melbourne
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