Colgate-Pamolive Company v Cussons Pty Limited
[1991] APO 49
•1 November 1991
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re: Patent Application No. 600430 by COLGATE-PALMOLIVE COMPANY, opposition
thereto by CUSSONS PTY LIMITED and objection to a further request for
an extension of time to serve Evidence-in-Support.
Background.
Application No. 600430 was lodged on 7 May 1985 as a further application
based on application No. 542136 (82698/82), using the provisions of section 51 of the 1952 Patents Act. Application No. 542136 was itself a further application, being based on application No. 28632/77 which was filed on 8 September 1977.
Acceptance of application No. 600430 was advertised in the Official Journal on 16 August 1990 and Cussons Pty Limited lodged a notice of opposition on 16 November 1990.
Part of the opponent's Evidence-in-Support was lodged on 15 February 1991 and on the same day the opponent filed an application under Reg. 55 of the Patents Act 1952 for an extension of time of 6 months in which to serve additional Evidence-in-Support of the opposition. The applicant objected and the matter was set down for hearing. The matter was heard on 10 May 1991 and the extension of time to 16 August 1991 sought allowed.
On 9 May 1991 a further application was made by the opponent for an extension of time "of the required number of months or part of a month from 16 August 1991 to a date which is 3 months after the date on which the revocation action in respect of patent 542136 is finally decided; (this date being the date on which the patent is revoked in its entirety or in so far as it relates to a particular claim or claims, or the date on which amendments directed by the Court are incorporated in the specification or claims, or the date on which the patent or its claims are found to be valid, or the latest of these dates if more than one of these events occur)" within which to serve Evidence-in-Support. The applicant objected to this application for an extension and the opponent withdrew the application on 25 July 1991.
On 16 August 1991 a still further application was made by the opponent seeking a second extension of time for a period of 7 months to extend the time for filing Evidence-in-Support to 16 March 1992. The applicant objected to this further application and the matter was set down for hearing which was held on 9 October 1991.
Mr. Maurice C. Gonsalves, Solicitor, instructed by F.B.Rice & Co., assisted by Mr. Peter J. Marsh, Patent Attorney, of F.B.Rice & Co. represented the applicant (hereinafter referred to as Colgate) and
Dr. Peter J. Dunstan of Counsel, instructed by Arthur S. Cave & Co., assisted by Mr. Glen H. Gordon, Patent Attorney, of Arthur S. Cave & Co. represented the opponent (hereinafter referred to as Cussons).
Application.
The present application for extension of time gives the circumstances in which, and the grounds upon which, the application is made as follows:
" Preparation of Evidence-in-Support of the Opposition is proceeding. Partial Evidence-in-Support has previously been served on the applicant, but further time is required in order to prepare and serve additional evidence. The Opponent and the Applicant are presently engaged in litigation before the Federal Court (Proceedings No. G594 of 1989) in respect of Australian Patent 542136 (82698/82) which is the parent of present divisional application 600430, and which apparently has the same priority dates, the same inventors, and describes essentially the same invention as that described in application 600430. The infringement and revocation proceedings in respect of Patent 542136 (between the same parties as in the present Opposition proceedings) is currently being heard in the Federal Court. The hearing is presently adjourned and is provisionally fixed for resumption on 4 November 1991, to run for the rest of the year. As it is anticipated that the same Evidence used in connection with the Federal Court proceedings will be relevant and is likely to be of use for the preparation of Evidence-in-Support of our Opposition, additional time is required to prepare and serve this evidence, and any further evidence that may be required; the transcript of the hearing is to be reviewed and at least significant parts thereof are to be served as evidence; and since certain grounds, particularly S.59(d), S.59(f), S.59(i) of the Patents Act 1952 as well as the requirements of S.64 of the Patents Act 1990 depend on the validity and wording of the claims of 542136, and until the current revocation proceedings concerning this patent are dealt with, we are unable to determine whether the claims are valid, or whether the Court may direct amendments of the claims in 542136, or may disallow priority dates of the claims, for example, and we furthermore expect that evidence or testimony concerning these facts will be presented in the Court. Since the hearing is due to conclude at the end of 1991, a period until 3 months after this date is being requested, namely, until March 1992."
Submissions.
On receipt of advice that the opponent had made a further application for an extension of time of 7 months to run from 16 August 1991 within which to lodge Evidence-in-Support the applicant, through their Patent Attorneys, F.B. Rice & Co., filed on 27 August 1991 a written submission, the relevant paragraphs being as follows:
"On behalf of the applicant we object strenuously to the granting of this extension of time which, under the circumstances would have no justification. We are in fact instructed to point out that in the view of the applicant, the request is yet another ploy in the attempt of these wilful and deliberate infringers to toll the expiration of the applicant's patent the subject of litigation and that `justice delayed is justice denied'.
Enclosed herewith is a copy of our letter of 8 July 1991 setting out reasons for the applicant's objection to the granting of extension of time. All these are valid except for the fact that whereas the previous application sought an extension without limit of period, the present application sets a limit of seven months.
As is pointed out in that letter his Honour Sheppard J. set a date for filing by Cussons Pty. Limited of Affidavits in the litigation of 9 August 1991. To our knowledge some Affidavits have been lodged by Cussons and there has been ample time since the adjournment of the Hearing of the litigation in June to put together any material from a transcript of those proceedings considered relevant to the present Opposition".
F.B. Rice's letter of 8 July 1991 contained the following relevant paragraphs:
"Other grounds of objection relate to the fact that in the Federal Court of Australia in the course of proceedings No. NG594 of 1989 his Honour Sheppard J. on 5 June 1991 set a date for the filing by the respondent (Cussons Pty. Limited, the Opponent in the abovementioned matter) to file all further Affidavits in the following terms;
`I direct the respondent to file all further Affidavits on which it
proposes to rely on or before 9 August.'
In the present matter the Opponents have already been granted an extension of time to 16 August 1991 within which to lodge Evidence-in-Support of the Opposition and it is considered that a period of ten days between the filing of Affidavits in the Federal Court will provide ample time for the lodging of evidence in the present matter in the Patent Office and service on the Applicant.
As litigation in the Federal Court has been adjourned until 4 November 1991, it is clear that there will be no transcripts of the Hearing to be reviewed other than those that have already been available for some time.
In a decision of a Delegate of the Commissioner of Patents dated 5 June 1991, the acting Assistant Commissioner of Patents stated;
`It would be reasonable to expect the Opponent to review the evidence
used in the Federal Court Hearing in the context of the present
Opposition. I consider that a period of three months after filing
that evidence with the Federal Court is not an unreasonable period in
the present circumstances.'
We must, with great respect, query the logic in this.
Presumably, very careful thought will have been given in the preparation of Affidavits lodged in the Federal Court and it is difficult to see why three months should be required to review them. In the present case, such evidence the Opponents have lodged has been identical with Affidavits lodged in the Federal Court.
The Hearing Officer also stated;
`I am also of the view that the public interests in the present
Opposition is best served by permitting relevant evidence filed in
the Federal Court actually be filed in the present Opposition.'
As pointed out above, this can be accomplished within the period of time
already granted for lodging Evidence-in-Support."
At the hearing, the opening representations made on behalf of the opponent by Dr. Dunstan included the following main points:
. An extension is desirable because in May there was a hearing in the
Federal Court which concerned the parent patent of the present
divisional opposition case. The parent patent has the same
inventors and the same companies involved as the divisional.
. At the time of the May hearing the expectation was that it would
last around three weeks and would be completed in late May.
. The previous extension sought and granted extended to 16 August 1991
i.e. approximately three months after the expected end of the Federal
Court May hearing.
. The Federal Court hearing has been adjourned and is due to commence
again on 4 November. It is expected to run until the end of the
year.
. The reason for the delay is that Colgate has changed the emphasis
of its case in the Federal Court and this has required both parties
to seek much more evidence to answer the new case.
. The proceedings in the Federal Court are so relevant to this patent
application that it is in the public interest that an extension be
granted since it will help refine the opposition proceeding in this
matter. It is therefore appropriate that a further three months
extension be given from what is the expected end of the Federal Court
proceedings.
. All parties will gain from the detailed evidence which will come from
the Federal Court hearing and it will shorten the opposition
proceedings.
The opening representations put forward for the applicant by Mr. Gonsalves in reply included the following main points:
. Some of the representations put on behalf of Cussons by Dr. Dunstan
are not quite correct. In particular, the reason for delay and leave
being granted to Cussons to put on further evidence in their case on
revocation of the parent patent of this divisional was not as a
result of Colgate changing their case in proceedings but rather, it
appears, Cussons' perception that they had not put on sufficient
evidence to support their claim that the patent was invalid and this
is borne out by reference to the transcript of the proceedings.
. Cussons' counsel indicated in the proceedings that the reason to put
on further evidence was the need to put on further evidence of what
the Cusson's process was - the process of manufacturing their
product. In Colgate's view this issue is not at all relevant to the
opposition of the divisional application.
. The granting to Cussons of leave to put on further evidence was due
to Cussons representations at the hearing that they would require a
substantial amount of time to put on the further evidence and as a
result the hearing had to be adjourned to November to the detriment
of Colgate.
. Although Cussons were ordered to put on their evidence by 9 August
this evidence was served two weeks late, again causing further
delay. Colgate now have to lodge any evidence in reply by
November 4.
. Colgate see the present application for an extension of time as yet
another attempt at delaying their divisional patent application.
. Because Cussons have had a large team working working on the case for
quite some time they have had ample time to put on evidence in
respect of the opposition. All that has been put on so far has been
the Affidavits filed in the Federal Court.
. In Colgate's view the time has now passed to put on further evidence
and Colgate cannot see any justification for the requirement of
further time.
. The previous application of 9 May disclosed Cussons' `hidden agenda'
because that application was for a general extension of time until
the final conclusion of the Federal Court proceedings. Colgate are
of the view that Cussons want to delay the divisional application
pending the outcome of the Federal Court proceedings.
. Colgate's position is that it cannot be right that the present
divisional patent application has to be put on hold pending the
outcome of some other proceedings which could, judging by the way
those proceedings are being fought, be a long way off.
. The interests of the opponent, public and the applicant for the
patent, when balanced, comes out clearly in favour of the extension
not being granted.
. It is in the public interest for applications to proceed as they were
intended to proceed. The legislation prescribes three months for
lodging evidence in opposition and the onus is on the opponent to
make the case that further time is required. It is only in
exceptional circumstances can that requirement be justified.
. Given the fairly imminent expiry date Colgate would like to progress
the application as expeditiously as possible and it is in the
public interest for the application to proceed quickly so that the
public will know whether or not this patent is to proceed to grant.
. Colgate concedes that it is the public interest that invalid patents
not be granted and therefore relevant evidence should be before the
Patent Office but this evidence has already been lodged in the
Federal Court and can be lodged, as Cussons have indicated, in
support of their opposition.
. Further in the opposition proceedings Cussons have an opportunity
to file Evidence-in-Reply and therefore if any surprising new
evidence does emerge in the Federal Court trial, Cussons will
have the opportunity to file it in their Evidence-in-Reply. There is
then no reason to grant an extension at this time in the public
interest since additional relevant evidence will still be available
for the Patent Office to consider.
In reply to Mr. Gonsalves' representations Dr. Dunstan raised the
following points:
. With regard to the decision in the Federal Court any attempt to put a
timing on the completion of proceedings is purely speculative.
Cussons' main concern is the marshalling of evidence and the effort
involved. If an extension is not granted Cussons see themselves
having to duplicate work. It is in the public interest that people
contemplating opposing applications are not dissuaded from doing so
by being stuck with huge bills.
. The fact that all related patents are to expire in 1993 is irrelevant
in as much as Colgate decided on the timing of its divisional
application. Colgate could have put in the divisional application
much earlier.
. The relevant part of the transcript of the Federal Court hearing
shows that who is responsible for the extra evidence is Colgate
rather than Cussons because in the way that the case was later put.
[At this point an unmarked copy of the partial transcript was
offered in evidence. It was accepted on the basis that both
parties had previously made reference to it and quoted from it.]
. The reality is that there is now a lot more of outstanding material
and it is appropriate that this be taken into account. There are
still three to four weeks of the Federal Court hearing to go and
this has made people put their mind to elaborating on matters that
will be important in the opposition proceedings.
. It will assist Cussons and the public interest, as far as the
opposition is concerned, if Cussons could use the transcript of the
November Federal Court hearing since this will make the preparation
of Cussons' opposition far more efficient and meaningful because
among other things, it would save money and preparation time.
. Even if the extension is granted, the total extension is still only
out to eleven months which is not unusually long when compared with
many cases and other decisions of the Patent Office where extensions
have been granted for reasons of less import.
Mr. Gordon advised that Cussons are in the process of preparing some further Evidence-in-Support which is proposed to be filed within the next two weeks.
Mr. Gonsalves responded to Dr. Dunstan and Mr. Gordon by making the following points:
. Colgate cannot see how the transcript of the Federal Court November
hearing is relevant to the preparation of evidence since the
evidence, in the form of Affidavits, has already been lodged and the
Court has not granted leave to lodge any further evidence.
. It is wrong in principle to delay any patent application pending the
outcome of other sets of proceedings over which the Patent Office has
no control particularly when such proceedings could be protracted and
with no indication when they will be finalised.
. The further evidence referred to by Mr. Gordon was presumably as a
result of the Affidavits that have recently been filed and this
evidence can be lodged within the next two weeks.
. There has to be a stop some time to the filing of further evidence and
it is Colgate's submission that as far as this opposition is concerned
the time is now.
The major points of Dr. Dunstan's final response were:
. The transcript of the Federal Court proceedings would assist in that
it would include the expert witnesses' explanation of the documentary
evidence.
. Cussons will need time to review what will be massive evidence and
that is why an extension of seven months has been requested.
Decision.
In deciding whether to grant an extension I am required to take into account the law as established by previous decisions e.g.
Vangedal-Nielsen v. Commissioner of Patents and Gelphen Nominees (1980)
33 ALR 144,
Lyons v. Registrar of Trade Marks (1983) 1 IPR 416 and,
Nautical Services v. Hitech Distillation (1986) 7 IPR 567.
Basically, before allowing an extension the Commissioner:
(a) has to be satisfied that the party seeking the extension has made out
a proper case,
(b) has to be satisfied that there is a serious opposition in train and,
(c) must not only consider the private interests of applicants for patents
and opponents but also the public interest by making sure invalid
patents are not granted and that patent proceedings are not
unreasonably protracted.
Reviewing now the submissions and representations.
While I appreciate Colgate are anxious to have application No. 6000430 sealed as soon as possible because it will expire in 1993, at the same time as its grandparent, the fact that the expiry date is so imminent to the current proceedings is a function of the timing of the present divisional application relative to the date of its grandparent and is thus not a factor I should consider.
In their submissions both the opponent and the applicant have suggested that each other is responsible for the delay in the Federal Court. Just who is responsible is not relevant to the matters I have to consider. All I have to consider is that there has been a delay in filing Evidence-in-Support in this matter.
In his decision on the 10 May 1991 extension of time hearing the Acting Assistant Commissioner stated the applicant had conceded that the opponent was serious in its opposition. Nothing was raised during the course of the present hearing to cast doubt on this standpoint and, bearing in mind the proceedings to date, I am satisfied that there is a serious opposition in train.
I now turn my attention to the question of whether Cussons has made out a proper case for a further extension. Based on the evidence before the Hearing Officer in the May extension hearing the Officer decided that an extension was warranted. He came to this decision based on the following:
. The applicant has conceded that much of the material lodged before
the Federal Court is relevant to the present opposition.
. The opponent asserts that the evidence being prepared in connection
with the Court proceedings is anticipated to be relevant and is
likely to be used as further evidence in support of the opposition.
. Additional time is required to prepare and serve the evidence.
. The duration of the extension requested is due to the timing of the
Federal Court hearing.
Bearing in mind that the Federal Court case has been adjourned to November
are these factors still relevant? Mr. Gordon advised the present hearing that further Evidence-in-Support is in preparation and that it is proposed to file it within two weeks. Mr. Gonsalves submitted that he presumed this later evidence was as a result of the Affidavits recently filed in the Federal Court and if this was the case, he could see no reason why the filing of further evidence should not be completed within two weeks.
I conclude from these latest developments that Cussons are still actively
engaged in the preparation of Evidence-in-Support resulting from Affidavits as and when they are filed in the Federal Court and it therefore follows that the factors considered by the Hearing Officer in the May extension hearing are still relevant. Cussons have repeatedly said that they anticipate evidence that comes to light in the Federal Court proceedings to be of relevance in the preparation of further Evidence-in-Support, and, as they have now shown this to be the case, I have no reason to doubt that they are waiting to see the evidence
presented in the Federal Court in November and particularly, the chance to study the transcript, to aid them complete their Evidence-in-Support for their opposition case. I am therefore satisfied that Cussons have made out a proper case for a further extension due primarily to the delay in the Federal Court.
Mr. Gonsalves has submitted that there is no need for any extension since,
if any new evidence does come to light in the Federal Court, Cussons will have the opportunity to present additional evidence in their opposition Evidence-in-Reply. However, following the Earnest Scragg & Sons Limited's Application (1972) FSR 219 case, it is only open to an opponent
to present evidence that is strictly in reply at the Evidence-in-Reply stage. In the Scragg case Graham J. said:
"To my mind it is quite wrong in these cases that there should be any
sort of skirmishing in regard to evidence, and if an opponent has a
case he should straight away state what his case is and should put in
declartions dealing with any evidence which he thinks may be relevant
to that case. The applicant can then deal with the matter in the
normal way, and a lot of time is saved, and the Office can get on with
deciding the case. If the opponent does not do that and waits until he
sees what the applicant says, then obvious difficulties will result and
oppositions will inevitably be drawn out and never finished."
"So here, in my judgement, it should have been obvious to the opponents
from the start that if they were going to succeed .... they must in the
first instance put in the evidence which they are now seeking to put in
reply"
What Mr. Justice Graham is saying is that all the opponent's relevant
evidence must be put in at the Evidence-in-Support stage and therefore if I accede to Mr. Gonsalves submission on this point I may be depriving
Cussons the opportunity of presenting evidence resulting from the Federal Court case.
With regard to the public interest, unless all the relevant evidence is before the hearing, there is the possibility that an invalid patent will be granted. It is therefore in the public interest that an extension be granted to allow the consideration of all relevant evidence. As to the interests of the patent applicant, I do not forsee their interests being unduly affected by a further delay in these proceedings.
I next come to the question of how much extension of time is justified under the circumstances. The Federal Court case when resumed on
4 November is expected to last anything from three weeks to the end of the
year. Either way a voluminous amount of material will be generated and a considerable amount of time will be required to study the resulting transcript to determine which evidence is relevant to the current opposition. Once this evidence is determined, time will be required to complete any further Evidence-in-Support. Cussons have asked for an extension to 16 March 1992 i.e. around three months from the expected completion date of the Federal Court case. At this stage any estimate
of how long the work involved in studying the final transcript and completing any further Evidence-in-Support must be very difficult to determine but I am certainly in no position to say that Cussons are requesting an unreasonable extension. As a result I conclude that the opponent's request is justified.
In coming to this conclusion I have considered Colgate's apprehension as to the ramifications of either the Federal Court case hearing being further delayed or that case going to appeal. However, I am constrained to making a decision on the facts as they are rather than on what they might be and consequently it would not be proper for me to take this factor into account.
I therefore allow Cussons Pty Limited the extension of time sought and thus the time for service of its Evidence-in-Support is extended to
16 March 1992.
There is one final point I wish to make concerning this opposition and the
Evidence-in-Support stage. Whether or not the Federal Court hearing on the parent patent is completed by the end of 1991, Cussons by that time should have not only all the evidence filed in the Court before them but also all the Court transcripts to that date. his being the case, in the time period just extended I would anticipate Cussons to have adequate time
to assess, compile and serve any remaining Evidence-in-Support in this matter. Given the overall time available to them by this and the previous extension, Cussons should not expect any further extension of time and should proceed with all diligence and due effort to complete its evidence within the period allowed.
Costs
At the Hearing both parties made submissions regarding costs.
Dr. Dunstan submitted that Cussons should have costs if the extension is granted because there is no change from the previous situation and Colgate have chosen to fight the extension. Costs should follow the event.
Mr. Gonsalves submitted that if the extension is granted then, there should be no costs order since it is clearly reasonable for Colgate to oppose the extension under the circumstances, whatever the decision of the Office. If an extension is not granted then, Colgate would ask for the costs.
Having decided that the opponent's request for an extension of time is justified and, as the opponent set out in their request for an extension of time the reasons for the extension sought, I cannot see any good reason why the general rule that "costs follow the event" should be varied. I therefore award costs against the applicant, Colgate.
(MIKE SELLARS)
Delegate of the Commissioner of Patents
Patent attorneys for the applicant : F.B.Rice & Co., Sydney.
Patent attorneys for the opponent : Arthur S. Cave & Co., Sydney.
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