Concorde Trading Pty Ltd v Croner Trading Pty Ltd

[1994] APO 31

official notice

decision of a delegate of the commissioner of patents

Application        :    No. 571375 in the name of CONCORDE TRADING PTY LTD

Title:    Jumpball

Action:    Request by CONCORDE TRADING PTY LTD to dismiss opposition under subsection 104(4) by CRONER TRADING PTY LTD

Decision:    Issued            .  There are no grounds for dismissal although some particulars are deficient.  Direction made that these particulars not be relied upon in the opposition.  The particulars in question are extensive and relate to matters outside the scope of the amendment made by the applicant and prima facie provide no material facts pertaining to the opposition.  To direct the opponent to provide further and better particulars in these circumstances would be prejudicial to the applicant.

patents act 1990

decision of a delegate of the commissioner of patents

Re:Patent Application No. 571375 by CONCORDE TRADING PTY LTD, amendments filed pursuant to decision in S.59 opposition by CRONER TRADING PTY LTD, opposition thereto by CRONER TRADING PTY LTD and request for dismissal under Reg. 5.5(1) by CONCORDE TRADING PTY LTD.

background

Patent Application No. 571375 was advertised as accepted on 14 April 1988. On 13 July 1988 Croner Trading Pty Ltd (CRONER) filed a notice of opposition under subsection 59(1) of the Patents Act 1952 to the grant of a patent in respect of the application .

A hearing of the substantive opposition and other special leave applications was held in Canberra on 17 June 1992 and the written decision issued 25 September 1992.  The opposition succeeded on the ground of non-compliance with SECTION 40 and want of novelty, but, the hearing officer concluded that there was patentable subject matter disclosed in the specification and gave Concorde Trading Pty Ltd (CONCORDE) 60 days to propose amendments.

CONCORDE  filed a request for leave to amend on 18 November 1992.  CRONER subsequently filed comments in relation to the proposed amendments on 25 January 1993.  The request for leave to amend was considered by an examiner, in light of the opponent's comments, and leave was granted and advertised on 11 March 1993.

CRONER filed a notice of opposition to the allowance of the amendments under subsection 104(4) of the Patents Act 1990 on 11 June 1993 and a statement of grounds and particulars on 13 September 1993.

CONCORDE filed a request for dismissal of the opposition on 13 October 1993 which was set down for hearing on 15 December 1993.

CRONER served evidence in support of the opposition on 13 December 1993.

Both parties appeared at the hearing.  The applicant was represented by Mr John Walsh, Patent Attorney of Davies Collison Cave, Sydney.  The opponent was represented by Mr Paul Kildea, Patent Attorney of P.F. Kildea acting on behalf of Phillips Ormonde & Fitzpatrick.

PRELIMINARY SUBMISSIONS

Mr Walsh for the applicant made the following preliminary submissions, in summary:

This is a unique case. Most if not all dismissal cases to date under the Patents Act 1990 have dealt with opponents who have not already had access to a tribunal in respect of the issues relevant to the opposition. The opponent has been heard in the Section 59 opposition on which a written decision issued. The applicant was given the opportunity to amend the specification and requested leave to amend. The opponent was given the opportunity to comment and did so. The proposed amendment was examined and leave to amend was granted and advertised. The same opponent filed notice of opposition to the amendment, followed by a statement of grounds and particulars. The applicant requested dismissal and two days before the dismissal hearing the opponent filed evidence in support.

The new Act aims to have matters dealt with expeditiously instead of dragging on as they did in the past.  The present case is an example of the very sort which the new Act is intended to prevent occurring.

The applicant appreciates that the power to dismiss an opposition is not one to be exercised lightly but the present context is that of a party which has already "had their day in court".  As the Regulations clearly state that the Commissioner may dismiss an opposition without any representation from the applicant, there is no need to have a hearing on this matter. It can simply be dismissed under Regulation 5.5(3).

The applicant requests you to invoke your discretionary powers under Regulation 5.5(3) and dismiss this opposition without hearing any further submissions.

Mr Kildea for the opponent made the following preliminary submissions in response:

This is a first not a second opposition in respect to the amendments which have been filed.  The time taken for the Section 59 opposition has not been excessive.  Even though the application was made in 1986, some seven years ago, the events have followed the normal procedures available under the Patents Act.

As both parties are present to be heard on the matter of dismissal it is probably not possible to dismiss the opposition without first hearing them.

PRELIMINARY DECISION

I indicated that I was not willing to dismiss the opposition at this early stage and would prefer to have full submissions from both parties on the matter before invoking any discretionary powers.  I now find that while it is possible for the Commissioner to dismiss an opposition without representation from the applicant, the requirements of natural justice dictate that the opponent should be given an opportunity to be heard on the matter.  In the present circumstances, therefore, and making no assumptions about the likely outcome of this action, I refuse the applicant's request for this opposition to be dismissed forthwith.

MAIN SUBMISSIONS

Mr Walsh for the applicant continued his submissions as follows, in summary:

The applicant's case is that there are special facts which distinguish it from the mainstream of cases decided so far and that dismissal would not in this case deny the opponent  access to the tribunal in respect of the matters raised in the statement of grounds and particulars as these have already been raised in the opposition to grant of a patent on this application.  The commissioner should dismiss this opposition without need for representations from the applicant even though the circumstances differ from those previously approved.

There are a number of patents cases that have dealt with dismissal:  L'Air Liquide, Societe v The Commonwealth Industrial Gases Ltd (1992) AIPC 90-872;  Borden Inc v Elkem A/S (1992) AIPC 90-893; Mobay Corporation v Dow Chemical Company (1992) AIPC 90-895;  Norwood Industries Pty Ltd V Macbird Floraprint Pty Ltd (1992) AIPC 90-912; Diamond Scientific Co v CSL Ltd (1992) AIPC 90-927 and Genentech Inc et al v Celtrix Pharmaceuticals Inc (1993) 26 IPR 629. It is important to bear in mind that these were all first instance oppositions in which the opponent had had no previous access to the tribunal. The facts are very different from the present case. As a general principle the plaintiff or opponent should not be denied access to the appointed tribunal but in the present case the opponent has already had that access.

Regulation 5.5(1)(a) links the provision for an applicant to request dismissal with the service of the statement of grounds and particulars.  Up till now dismissal under regulation 5.5(3) has been limited to cases where there have been deficiencies in the grounds and particulars.  The description of this as "perceived policy" in the L'Air Liquide decision (supra) tells us that this is not the full scope of application of regulation 5.5(3).

The introduction of dismissal is meant to promote the expeditious processing of an opposition.  Other circumstances could give rise to dismissal.  An example was given in General Steel Industries Inc v Commissioner for Railways (NSW) and others 1964 112 CLR 125, when the possibility of vexatious proceedings was recognised. As the relevance of the General Steel decision (supra) has already been recognised in this context, it should not be quoted selectively but the full scope it envisages for grounds for dismissal should be recognised, and applied in the present case.

Because dismissal is a new action in the context of patents, the common law aspects of dismissal have been set down as guidelines in the Patent Office Manual of Practice and Procedure, Volume 3, Oppositions, Courts, Extensions and Disputes (the "Hearings Manual").  Referring to the General Steel decision (supra) the manual states that "an opposition will be dismissed only if the Commissioner is satisfied that the opposition cannot possibly succeed."  It is worth bearing in mind that the High Court in that case exercised their power to dismiss under the rules of court and that the facts of that case were very different from the present case.  To quote from that case:

"..in my opinion great care must be exercised to ensure that under the guise of achieving expeditious finality a plaintiff is not improperly deprived of his opportunity for the trial of his case by the appointed tribunal.  On the other hand, I do not think that the exercise of the jurisdiction should be reserved for those cases where argument is unnecessary to evoke the futility of the plaintiff's claim.  Argument, perhaps even of an extensive kind, may be necessary to demonstrate that the case of the plaintiff is so clearly untenable that it cannot possibly succeed".

On the one hand the rights of the plaintiff in that case, or the opponent in this case, to have access to the tribunal is being weighed.  On the other, the possibility of there being a need for argument before the case for dismissal becomes apparent is considered.

We are here to ask that in the unique circumstances of the present case, a precedent be set which goes beyond the policy implemented in the L'Air Liquide decision (supra).  Regulation 5.5(1) and (3) should be given an interpretation that is consistent with the facts in this case, which is outside the mainstream of cases, and not bound by "perceived policy" considerations.  The principle that prior actions should not be taken into account in determining a new action must have some limit, and that limit has been reached in this case. Dismissal would not in this case deny the opponent access to the tribunal in respect of the matters raised in the statement of grounds and particulars as these have already been raised in the opposition to grant of a patent on this application.

While we recognise that this is not a forum for the substantive opposition, it is clear from the mainstream of patent cases that argument can be admitted and can be taken from the whole of the surrounding circumstances:  L'Air Liquide (supra).  Also the observation in this that the Hearings Practice Notes set out the "perceived policy" lends support to our case that there exists doubt as to the full range of applications for dismissal under Regulations 5.5(1) and 5.5(3).  The position stated is policy and merely "perceived policy" at that, determined by the Patent Office in consultation with the attorney profession.

The opponent has been to the tribunal and had their hearing.  At that hearing the opponent made extensive submissions on section 40 issues which have been raised again in the present opposition.  The hearing officer found that the opposition succeeded on this ground.  The applicant was given the opportunity to propose amendments, which were filed on 17 November 1992.  The opponent was given the opportunity to comment and objected to the amendment on the ground that it contravened section 40(3).  After considering these comments the examiner found the amendment allowable and leave to amend was granted and advertised.  The opponent then filed notice of opposition to the amendment followed by a statement of grounds and particulars, citing both sections 40(2) and 40(3).

The opponent is attempting to have heard yet again their submissions on the section 40 issues, purportedly now going to the amendments.  They have already had their objections to these considered by an examiner and rejected and are now trying to have another go.

Although the L'Air Liquide decision (supra) makes it clear that the fact that an examiner has previously considered a document is not in itself a reason for dismissal, the circumstances of the present case are very different.  There have been already examination, opposition and consideration of amendments taking into account the opponent's objections.  This is a distinguishing feature of this case over the mainstream cases.

Comparing the notice of opposition of 13 July 1988, the notice of objection of 25 January 1993, the notice of opposition of 11 June 1993 and the statement of grounds and particulars of 13 September 1993, the opponent's particulars, while essentially repeating the earlier particulars and comments, are greatly expanded both beyond the scope of the objections originally filed and beyond the scope of the amendments themselves.  Although the amendments proposed are not particularly extensive, the particulars are greatly expanded and to such an extent that it is difficult to understand what is the opponent's actual cause of action.

In this case, there were amendments proposed to specific claims but the particulars of the opposition are not limited to those claims.  The particulars have been so covetously drawn that they apply to all the claims.  For example, particular 22 refers to claims 1 to 16 and particulars 4, 8-13, 20-22 do not relate at all to the specific amendments proposed. These particulars should not be taken into account.

The present proceedings fall into the category described by Bowen, J. in Noel v Roberts 1888 38 Chancery Division 263 at 270 to 271:

" That it seems to me that the rule of the court is not to dictate to parties how they should frame their case is one that is always to be preserved sacred.  But that rule is of course subject to this modification and limitation and parties must not offend against the rules of pleading which have been laid down by the law and if the party introduces a pleading which is unnecessary and intends to prejudice, embarrass and delay the trial of an action then it becomes a pleading which is beyond his right."

As the particulars go beyond the scope of the amendments, they do not show a good cause of action.  If the opposition is to proceed and if this is the appropriate tribunal to make a ruling on the point, the Commissioner should make a direction as to the scope of the particulars, either now or during hearing of the opposition.  The decided cases show that if the statement of particulars is deficient in regard to a particular ground, the opponent has no basis to oppose on that ground.  The decision in Mobay Corp (supra) established that the particulars must only state the material facts.  In the present case anything that goes beyond the amendments is not material.  However in the  Norwood Industries decision (supra) it was held that if there are any particulars which support the opposition, the case should not be dismissed.

Specifically, particulars 4,8,9, 10, 11, 12, 13, 20, 21, 22 should be given no weight as they do not relate to the specific amendments proposed to be made to the claims.

The opposition is vexatious and an abuse of process.  The present opposition cannot possibly succeed as the only section 40 defects found to exist by the hearing officer in the Section 59 opposition were addressed in the amendments filed on 17 November 1992.  These were considered post hearing, and leave to amend granted and advertised, giving rise to the present opposition and dismissal action.  To continue to hear the opposition would be a useless waste of administrative time and expense as the action is most unlikely to succeed.  It is not in the public interest to allow the opposition process to function in this manner.

Referring again to the sequence of events, the opposition has been heard.   We accept that there may have been very good reasons why considerable time needed to be taken to prepare evidence in support.  Even if we only look at the most recent actions, the opponent has at all stages taken the maximum time to file the various documents.  They waited until just two days before this dismissal hearing to file evidence in support of the opposition.  It is their right to use these times but their actions, establishing a pattern of filing on the very last day, can hardly be called expeditious.  In our view, there is a suggestion of abuse of process or vexatious opposition, with the purpose of extending it indefinitely.

In theory, the applicant now that the evidence in support has been served could have brought on the full opposition hearing.  However the evidence was served by facsimile only late on 13 December 1993 and there would have been another delay before that could have been heard, and the applicant would have had to give up their chance to have the matter dealt with by dismissal.  In the circumstances to expect this would have been very unreasonable.

To summarise why we contend that this opposition is vexatious and an abuse of process:

.the opponent at every stage has used the maximum time periods available.

.the opponent has simply repeated the grounds submitted in the original hearing in relation to section 40.

.it is not in the public interest for an opposition to run nearly half the available life of a patent.

.the operation of the system has commercial implications for both parties.

Finally we ask the Commissioner to recognise the possibility that a set of particulars which satisfies the guidelines set down under regulation 5.4 may nevertheless give rise to the possibility of an abuse of process.

Mr Paul Kildea, for the opponent, made the following submissions, in summary:

This not a unique case.  There has been an application to amend and the sole question is whether those amendments are allowable.

In their request for dismissal, the applicant stated:

"The opponent has already had two opportunities to be heard oppose/reject and have the substantive matters pertaining to the specification and claims heard - once by the hearing officer thence by a senior examiner post hearing."

The present action is opposition to amendments.  What has gone before is not relevant.  In the L'Air Liquide decision (supra) it was quite clear that previous opinions from the Patent Office had no bearing on the matter in hand.

Whether the statement of grounds and particulars for this opposition is the same, different or larger than that filed with the original opposition is irrelevant.  The arguments relevant to section 40 of the Act in the previous opposition have no bearing on the specification as proposed to be amended.  In regard to the amended specification the opponent has had no access to the processes available in the Act.

I do not want to get into questions going to the allowability of the amendments except for the specific issue raised by Mr Walsh as to whether claims 2 to 5 have or have not been amended.  Claim 1 was amended and claims 2 to 5 are appended to claim 1.  As a result of this the meaning of claims 2 to 5 may also have been changed.

In the present case, the only way it could be said that the "opposition is so obviously untenable that it could not possibly succeed": Borden v Elkem (supra), would be to make a thorough examination of the amendments, the statement of grounds and particulars and the evidence filed by the opponent.  But "dismissal proceedings are not a forum to argue the substantive issues of an opposition": Borden v Elkem (supra).  Clearly the present case is not a proper case for dismissal.

Many of the submissions that have been made for the applicant go close to the actual dispute which will be the subject of the opposition to the amendments. In the L'Air Liquide  decision (supra):

"An action for dismissal is not intended to be a defacto hearing of the substantive opposition.   Rather, it is intended to provide a mechanism to dispose, at an early stage of the proceedings those oppositions that are "obviously" or "manifestly" " groundless" or "untenable".  It may be appropriate to dismiss an opposition if one could readily conclude from the technical divergence of the citation and the opposed specification that an opposition could not possibly succeed...........In my view, an argument for summary dismissal that relies on  interpretational analysis of the claims pointing out this or that feature is not present in the citation, is an argument which preempts the substantive opposition."

The present circumstances fall clearly within that and there is no case for dismissal of the opposition to the amendments.

Further in the L'Air Liquide decision (supra):

"If the opponent's case is so manifestly bad as the applicant has suggested, the applicant will only need to wait until the evidence in support has been served before bringing on the substantive hearing.  That is there will be no need for evidence in answer or evidence in reply."

In the present case the applicant is saying that the case is absolutely worthless but that to judge this it is necessary to go to the documents.  On present practice that is clearly excluded but the applicant could bring on the substantive hearing.

As to whether these are vexatious proceedings the circumstances are that one party believes there is infringement and the other does not. Thus it is very important to know what the claims mean.

The only support for the suggestion that these are vexatious proceedings and an abuse of power is that the opponent has taken the full time allowed under the regulations in which to file.  This cannot seriously be considered to be either vexatious or an abuse of process.

DECISION

Dismissal

The applicant has argued on various grounds that the opponent is having a second or third go at the issues in this case and that the opposition is therefore vexatious and an abuse of process. The Patents Act 1990 however makes specific provision for the sequence of actions which has been invoked.

The sequence is that after a patent application is accepted the grant of a patent may be opposed under Section 59.  After hearing of this opposition the applicant may be given an opportunity to propose amendment under Section 104(1) with the purpose of overcoming any deficiencies found by the hearing officer, prior to the final decision on whether to grant or refuse the application.

When the applicant asks for leave to amend, the opponent by means of Regulation 10.2(6) is given an opportunity to comment. The amendment together with any comments is then considered by an examiner to determine whether it is allowable under Section 102. If the examiner finds the amendment allowable leave to amend is granted and advertised under Regulation 10.5. This opens the way for any person, including the previous opponent, to oppose, under Section 104(4) and Regulation 10.5(3), allowance of the amendment.

The opponent in the present case has taken up this opportunity to oppose allowance of the amendment. As the Patents Act 1990 specifically provides for this sequence of actions there is no case for dismissal of the opposition to allowance of the amendment based simply on the opponent having already taken part in the earlier, related actions.

The question remains of whether the opposition case is such that the lack of a cause of action can be clearly demonstrated and the opposition case found to be vexatious or an abuse of process.  In General Steel v Commissioner for Railways (NSW) (supra) Barwick C.J. quoted Dixon J. in Dey v Victorian Railways Commissioners (1949) 78 CLR at p 91:

"A case must be very clear indeed to justify the summary intervention of the court to prevent a plaintiff submitting his case for determination in the appointed manner by the court with or without jury.  The fact that a transaction is intricate may not disentitle the court to examine a cause of action alleged to grow out of it for the purpose of seeing whether the proceeding amounts to an abuse of process or is vexatious.  But once it appears that there is a real question to be determined whether of fact or law and that the rights of the parties depend upon it, then it is not competent for the court to dismiss the action as frivolous and vexatious and an abuse of process."

and stated later:

"I do not think that the exercise of the jurisdiction should be reserved for those cases where argument is unnecessary to evoke the futility of the plaintiff's claim."

Consequently I must determine on the facts and taking account of the arguments presented whether the case is "so obviously untenable that it cannot possibly succeed" or whether there is a "real question...to be determined".  I am conscious that it is not appropriate in a dismissal action to consider the substance of the matters raised.  This must be left for determination in the substantive opposition.  However any matters which clearly are incapable of providing a cause of action may be determined.

The ground for the present opposition action and the only ground available under the Patents Act 1990 [Regulation 5.3(4)] is that "the amendment is not allowable under Section 102 of the Patents Act 1990." The relevant parts of Section 102, subsections (1) and (2) state:

"(1) An amendment of a complete specification is not allowable if, as a result of the amendment, the specification would claim matter not in substance disclosed in the specification as filed.

(2) An amendment of a complete specification is not allowable after the specification has been accepted if, as a result of the amendment:

(a)  a claim of the specification would not in substance fall within the scope of the claims of the specification before amendment; or

(b)  the specification would not comply with subsection 40 (2) or (3)."

and Regulation 5.3(4) states:

"A person must not oppose the allowance of a proposed amendment of a complete specification, except on the grounds that the amendment is not allowable under section 102 of the Act."

This limits opposition to amendment to matters arising as a result of the amendment.  The existence of pre-existing deficiencies whether or not identified in the earlier decision is irrelevant to this opposition action.

In addition, the decision in Ex parte Mole Engineering Pty Ltd (1981) 35 ALR 119 made it clear that any matters the subject of prior decision by this tribunal cannot be reconsidered before this tribunal. The hearing officer's decision in the opposition to grant of this application has already dealt with the issue of non-compliance of the accepted specification with section 40 of the Patents Act 1952 which despite minor differences in wording has the same meaning, in the present context, as section 40 of the Patents Act 1990. Any section 40 deficiencies remaining and unaffected by the amendment cannot be considered in the opposition to the amendment.

Mr Walsh for the applicant argued that the statement provided by the opponent in opposition to the amendment went well beyond matters arising as a result of the amendment and that it overlapped with as well as being an expansion of both the statement provided in opposition to grant and the comments on the amendment made after the first hearing.  Mr Kildea for the opponent argued that the first statement was made in relation to the unamended specification whereas the later statements related to the amended specification and were thus different.  In broad terms Mr Kildea's argument is correct.  However, the possibility exists and has been argued that the opponent has included in their particulars matters which have not arisen as a result of the amendment and which are consequently incapable of providing a real cause of action; or which have already been the subject of the earlier decision in the opposition to grant.

In the present particulars it is clear that some are clearly directed to matters arising as a result of the amendment and prima facie capable of giving rise to a valid cause of action.  Others are so drafted that they appear to be directed to aspects of the specification unaffected by the amendment and are thus prima facie incapable of giving rise to a valid cause of action in the present case.

Specifically, I find particulars 1 to 6, and 14 are in the main directed to aspects of the claims which are prima facie the subject of amendment.  Particular 4, although directed to claims which are not the subject of specific amendment, relates to matters which by means of appendancy to an amended claim are clearly affected by the amendment.  These matters are thus prima facie capable of giving rise to a valid cause of action.

On consideration of their content, I find that the remaining particulars 7 to 13, and 16 to 22 relate to aspects of claims 6 and 9 to 16 which prima facie were not affected by amendment and which are thus incapable of giving rise to a valid cause of action.  It is not possible, at least not without undertaking both a detailed analysis of these particulars and the amended specification and some speculation as to the intentions of the opponent, to link these particulars with the ground of opposition.  I find neither course of action appropriate to be undertaken in determining an action for dismissal.

The specific issue, raised by the opponent in particulars 18 and 19, of whether or not the amendment proposed overcomes deficiencies found by the hearing officer in the previous opposition to grant is clearly irrelevant to the present action.  A like reference in particular 2 is linked to the amendment and may be found relevant.

The question now is what course of action is open to deal with this situation in which the particulars are deficient because they include matters which go beyond the material facts necessary to establish the bounds of the opponent's case.

The decision in  L'Air Liquide(supra) has made it clear that an opposition can be dismissed in part, that a ground of opposition which is unsupported by any particulars can be dismissed.  However in the Norwood Industries v Macbird Floraprint Pty Ltd (1992) AIPC 90-912, the delegate of the Commissioner at page 38,602 held that:

".... despite the presence of a number of ineffective particulars, dismissal of an opposition with respect to a particularised ground can only occur where none of the particulars support that ground.  Furthermore, the Commissioner may not dismiss a ground of opposition only in relation to certain inadequate particulars."

Following this decision, I find that, as some of the particulars provided are capable of providing support to the ground of opposition that the amendment is not allowable under Section 102 of the Patents Act 1990, this opposition cannot be dismissed on this basis.

The applicant argued another possibility, that the issues raised in the opponent's post-hearing comments on the amendments could be said to have been already dealt with finally by the examiner's consideration of them at that stage.  The decision in L'Air Liquide (supra) rejected entirely the proposition that an examiner's previous consideration of a matter would justify dismissal. The reason for rejecting this proposition was that it ignored several significant differences between examination and the opposition process. The differences are the lack of access to expert witnesses during examination, the different onus of proof considerations and the possibilty of examiner error. In my view, these reasons apply in the present case even though the examiner was provided with comments from the opponent. The proposition that matters already considered by an examiner can in any sense be considered to have been finally dealt with is also in direct contradiction to the specific provision in the Patents Act 1990 of mechanisms such as opposition which are, at least in part, a means of reviewing decisions previously made by an examiner.

The applicant has further argued that the expansion of the statement of grounds and particulars for this opposition, over and above the comments made on the amendment after hearing of the opposition to grant, indicates that on the earlier occasion the opponent withheld objections and was thus not acting in good faith.  A superficial comparison of the earlier comments and the statement of grounds and particulars confirms this expansion. 

However, this on its own does not support the allegation of lack of good faith.  It is at least equally likely that it was only after the examiner did not accord their earlier comments the weight which the opponent thought they merited that the opponent realised there might be a need to provide more detail, which they have now done in the context of the opposition action.  I make no inference at this point as to the relevance or otherwise of any expanded particulars.  That is a separate issue which I have already dealt with.

The applicant has also argued that I should go beyond the consideration of whether the grounds are supported by the particulars and that I consider more broadly whether the opposition is vexatious and an abuse of process.  They have raised the issues of the extent of the delays involved in both this case and possible similar situations and the effect these have on both the public interest and the commercial interests of an applicant, in particular that they have been prevented from taking action for infringement against certain parties.  The opponent referred to the possibility of their facing an infringement action which made it important to know what the claims mean.

I have considered the applicant's arguments but as I have already stated the Patents Act 1990 makes specific provision for the sequence of events followed here. The other issues which the applicant has raised are not, in my view, sufficient to justify a finding that this action is vexatious and an abuse of process to an extent sufficient to justify dismissal. There is no evidence that the opponent's "dominant purpose" was an "ulterior or collateral" one contrary to the purpose for which these proceedings are intended, such as found in Parker & Meagher (1984) 3 NSWLR 486 at 500. Finally, whether or not the opponent's comments had been comprehensive on the ground of the allowability of the amendment this opponent would still have been entitled to oppose its allowance.

Directions

The applicant has requested that if I find, as I have, that the opposition should be allowed to proceed because the ground of opposition is supported by some of the particulars, I should make a direction that certain particulars should not be taken into account in the opposition on the basis that they do not pertain to the specific amendments proposed.

The decisions in Peptide Technology v Pitman-Moore Pty Ltd (1991) AIPC 91-010 and CSIRO v CEM Corporation, re Application No. 635903, a decision of the Commissioner issued on 29 March 1994 and as yet unpublished, both found that it was appropriate, in the course of an action for dismissal, to give directions relating to particulars.

In the Peptide decision, the opponent was directed to file further and better particulars on the basis that although a material fact had been pleaded, a specific relevant aspect of that fact had been omitted but could be provided by the opponent filing further and better particulars.

In the CSIRO v CEM Corp decision, the hearing officer discussed in some detail the extent of the powers of the Commissioner in these circumstances and concluded that it is not within the powers of the Commissioner to strike out a particular.  On the specific facts of the case the hearing officer also found that one particular was so deficient that it "should clearly never form the ground" of opposition and that it would not be appropriate either to direct that further and better particulars be provided or simply to let the matter stand.  The decision followed that in Diamond Scientific (supra).  The latter considered the question of the allowability of amendment of particulars to identify specific documents from a collection of previously only vaguely or indirectly identified documents and found that such an amendment would be prejudicial to the applicant.

In the present action, although the facts are different, I have come to a similar conclusion.  The facts, as I find them, are that certain of the particulars do not provide the applicant with facts material to the ground of opposition.  All that these particulars do is confuse the case to be answered by the applicant.  Prima facie they provide no case and it would be prejudicial to the applicant to direct that further and better particulars be provided in this situation.

However, this confusion is undesirable.  If merely a minor part of the particulars filed by the opponent was deficient, and the extent of confusion was limited, the best and most expeditious course of action would be to let the matter stand.  As was stated in CSIRO v CEM Corp (supra), referring to cases in which a single particular was deficient:

"I do not believe that such minute regulation of the statement of grounds and particulars is necessary or desirable.  One intention behind the introduction of the statement was to expedite the determination of oppositions. (Kent-Moore v Environmental Products Amalgamated Pty Ltd (1992) AIPC 90-915). Applications for directions that a single particular may not be argued would have the effect of delaying rather than expediting proceedings."

In the present case, however, the deficient particulars are extensive.  The applicant would be unfairly burdened if they had to deal with the confusion arising from their presence and the uncertainty of whether or not they should seek to provide a defence against matters which have no chance of success.

Although I found above that there was no basis on which to decide that the opposition as a whole was vexatious and an abuse of process, the opponent has chosen to provide a large number of clearly irrelevant particulars.  This does create some doubt as to their good faith in prosecuting this action.  At the very least they appear to be trying to raise in this, a clearly inappropriate forum, issues already, as discussed above, the subject of final decision by this tribunal.  This has certainly created unnecessary difficulties for the applicant.

In CSIRO V CEM Corp (supra), the hearing officer discussed the precedents for directing that a particular, which could not be struck out, might nevertheless be made not available for the opponent to argue at opposition.  She concluded that there was support for such a direction in certain limited circumstances, and bearing in mind the discretionary nature of the power and the requirement of regulation 5.10(5)(c) that the Commissioner be reasonably satisfied that a direction was appropriate in all the circumstances.

Having considered all the circumstances in the present case, I find that it is appropriate that I direct that the particulars I have found to be deficient may not be relied upon in the opposition.  These are particulars 7 to 13 and 16 to 22.

CONCLUSION

I have found that the Patents Act 1990 makes specific provision for the course of action followed by the opponent in this case. Even though some of the opponent's particulars are prima facie incapable of supporting their cause of action, there are no grounds for dismissing the opposition. 

However, although the Commissioner's discretion does not extend to striking out deficient particulars, I have found in response to the applicant's request for directions that I should direct that particulars 7 to 13 and 16 to 22 are not to be relied upon in the opposition, and I so direct.

The opponent's evidence in support has already been filed.  The time for the applicant to serve evidence in answer is 3 months from the date of this decision.

COSTS

Mr Walsh for the applicant submitted that in the event that the application for dismissal is not successful, in view of the justification for the applicant bringing this dismissal action, both in the public interest and in the applicant's own interest,  no award of costs should be made.  Mr Kildea argued that the dismissal action was taken in the full knowledge of the previous decisions concerning dismissal and asked that the award of costs be made in favour of the opponent.

Although I have not dismissed this matter I have found that a significant proportion of the opponent's particulars are prima facie incapable of providing support to the ground of opposition and should not be relied upon in the opposition.  Taking all the circumstances into account I award costs in favour of the applicant.

W. GUNAWARDANA
Delegate of the Commissioner of Patents

Patent attorneys for the applicant  :  Davies Collison Cave, Sydney

Patent attorneys for the opponent   :  Phillips Ormonde & Fitzpatrick, Melbourne