Cryovac Inc v American National Can Company

[2000] APO 23

OFFICIAL NOTICE

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Application  :          No. 681116 in the name of Cryovac Inc

Title:          Heat-shrinkable films containing single site catalyzed copolymers

Action:          Opposition thereto by American National Can Company and an application under section 223 for an extension of time to file a convention application

Decision:          Issued            .

Abstract

Section 223 application refused.  The word "because" in section 223(2) necessitates a causal link between the relevant act and the error.  There may have been an error in either the inclusion of possibly confidential material in USSN 983017 or in the decision to withdraw an Australian application based on the possibility that there could be confidential material in USSN 983017.  However, the applicant has failed to establish that there was a causal link between these possible errors and the relevant act of filing of a convention application based on USSN 976122.

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Patent Application No. 681116 by Cryovac, Inc, Opposition thereto by American National Can Company and an application under section 223 for an extension of time to file a convention application.

BACKGROUND

Application 681116 was filed on 20 April 1994 by W.R Grace & Co.-Conn. (hereafter referred to as Grace) and then assigned to the current applicant, Cryovac Inc (hereafter referred to as Cryovac) in March 1999.  At examination, the date of filing was taken to be the priority date because no earlier priority document had been identified in the patent request form.  The application was advertised accepted on 21 August 1997 and on 21 November 1997, a notice of opposition was filed by American National Can Company (hereafter referred to as ANCC).  The statement of grounds and particulars was served on 23 February 1998 and evidence in support was completed on 10 December 1998.  From that evidence, it appears that the key document being relied on by the opponent in the substantive opposition is Australian Patent number 72118/94 (701139) which has a filing date after the current specification (22 June 1994) but which claims an earlier priority date of 24 June 1993 based on USSN application 82226.

On 10 June 1999, Cryovac proposed amendments under section 104 to the patent request form to claim an earlier priority date of 13 November 1992 by adding convention priority details based on an earlier US application (USSN 976122).  However, as the current application was filed more than 12 months after USSN 976122 [the period prescribed in regulation 8.5(2)], Cryovac also made an application under section 223 to apply for an extension of time of 6 months from 13 November 1993 to 20 April 1994 for the purposes of filing a convention application.

Some material in support of the section 223 application was provided on 22 and 24 December 1999.  However, from the circumstances described in this material, the delegate considered that there appeared prima facie to have been a deliberate decision by the applicant not to proceed with filing the convention application within the 12 month convention period and not an error or omission which prevented the applicant from filing as required by section 223.  The matter was therefore set directly for a hearing and the opponent, having an interest in the application, was invited to attend (under regulation 22.22).

Because the Commissioner was not prima facie satisfied that there was an error or omission as required by section 223, the section 223 application has not yet been advertised in the Official Journal as required by section 223(4).  An extension of time under section 223 cannot therefore be granted based on this hearing.  The sole purpose of this preliminary hearing is not to decide whether the application should be accepted [as this would pre-empt a potential opposition under section 223(6)] but rather simply to determine whether there is a prima facie case to proceed to advertisement for opposition.  If there is no case, then the application can be refused without the need to advertise under section 223(4).

The hearing was held on 25 February 2000 in Melbourne.  The applicant was represented by Andrew Dark and Michael Caine patent attorneys of Davies Collison & Cave, Melbourne and the opponent was represented by David Tadgell and Neil Ireland patent attorneys of Phillips Ormonde & Fitzpatrick, Melbourne.

THE LEGISLATION

The provisions of section 223 relevant to the present request are as follows:

"223. (1)     ...

(2)     Where, because of:

(a)an error or omission by the person concerned or by his or her agent or attorney; or

(b)     circumstances beyond the control of the person concerned;

a relevant act that is required to be done within a certain time is not, or cannot be, done within that time, the Commissioner may, on application made by the person concerned in accordance with the regulations, extend the time for doing the act.

(3)     The time allowed for doing a relevant act may be extended, whether before or after that time has expired.

(4)     Where an application is made for an extension of time for more than 3 months, the Commissioner must advertise the application in the Official Journal.

(5)     ...

(6)     A person may, as prescribed, oppose the granting of the application.

(7)     Where:

(a)     a patent application lapses, or a patent ceases, because of a failure to do one or more relevant acts within the time allowed; and

(b)     the time for doing that act or those acts is extended;

the application or patent must be treated as having been restored.

....  .”

EVIDENCE AND CIRCUMSTANCES SURROUNDING FAILURE TO FILE A CONVENTION APPLICATION

In support of their section 223 application, the applicant provided the following statutory declarations on 18 February 2000.  The declarations filed by John Wasatonic and Blaine Childress were slightly different to those forwarded by facsimile on 22 December 1999.  However, the applicant argued that the changes made to the declarations were made to clarify them and did not substantially affect their disclosures:

§  John J Wasatonic who is director of Patent Operations employed by Sealed Air Corporation (the parent company of Cryovac).  From September 1993 until 31 March 1998, he was employed by Grace as the Director of Patent Operations for the Cryovac business of Grace and had overall responsibility for the patent portfolio of the Cryovac business.

§  Blaine C Childress who is a research associate employed by Cryovac and a named inventor in respect of the invention

§  Robert B. Hurley Jr who began employment with Grace as a patent attorney in 7 December 1993.  When Grace divested the Cryovac business, Hurley continued employment as a patent attorney with Cryovac.

§  Leigh Gregory who is a US patent attorney, formerly employed by Grace and, at the relevant time, appeared to have been responsible for Grace's patent portfolio relating to its Cryovac business, including the preparation and prosecution of patent applications in the United States and corresponding foreign applications.

From these declarations, the following circumstances appear to have lead to the failure to file a convention application and to the current section 223 application:

23 March 1992:       Grace and the Dow Chemical Company (hereafter referred to as Dow) had entered into a confidentiality agreement (the 1992 agreement) relating to use of certain resins prepared using constrained geometry catalyst technology ("CGCT resins") supplied to Cryovac from Dow.  According to Grace, this agreement did not cover the resins of the patent applications.

13 November 1992:  Grace, through its Cryovac business, filed US patent application 967122.

30 November 1992:  Grace filed a second US application (USSN 983017) which was a continuation in part from USSN 976122 and was distinguished from the earlier application by the inclusion of additional examples 84-165.  These additional examples were based on a number of experimental CGCT resins supplied to Cryovac from Dow.

The inventors of USSN 983017 believed that certain public disclosures of CGCT resins prior to the filing of USSN 983017 released Cryovac from their obligations of confidentiality.

31 August 1993:       Grace received a verbal complaint from Mr Wayne White, senior patent attorney from Dow, asserting that the publication of the evaluation of the CGCT resin samples provided by Dow would be in breach of the 1992 agreement.  Dow thereafter further maintained that such publication would breach the agreement later made in 1993.

6 September 1993:    Grace filed an Australian patent application (46151/93) claiming priority from USSN 983017 and USSN 976122.

11 October 1993:     A second confidentiality agreement (the 1993 agreement) was made between Grace and Dow relating to CGCT resins disclosed in examples 84-165 of USSN 983017.  This superceded the earlier March agreement and was made retroactive to November 1992.

(no date mentioned)   After receipt of the Dow complaint, John Wasatonic investigated the circumstances surrounding the incorporation of the evaluation results into USSN 983017.  He averred that he began investigation in September 1993 but that his investigations were unavoidably delayed due to the fact that he had just assumed his position as director of patent operations at Grace.  He stated that he required time both to assume a wide variety of new responsibilities and to acquire some familiarity with Cryovac personnel, the CGCT resin technology, the 1992 and 1993 agreements and the US 983017 and US 967122 applications.  However, "some time prior to the end of 1993" as a result of his investigations, he concluded that Dow's allegations of a breach of agreement could not be dismissed as clearly without foundation.

March 1994From September 1993 to the end of March 1994, representatives of Grace and Dow had several discussions about the 1993 agreement and patent applications filed by Grace relating to the CGCT resins.  John Wasatonic stated that, at the time, Grace reasonably believed that the matter was capable of being resolved in a way that would permit AU 46151/93 to proceed without conflict and be validly prosecuted.  Because of that belief, Grace maintained AU 46151/93 as originally filed.

7 April 1994             The publication date of AU 46151/93 was approaching and the issue of confidentiality apparently remained unresolved.  To avoid any risk of breach of confidentiality, John Wasatonic instructed that Australian application 46151/93 be withdrawn prior to publication.  The application was subsequently withdrawn on 28 April 1994.

20 April 1994:          The current application (Australian application 681116) was filed based on the disclosure in USSN 976122.  More than 1 year had elapsed since the filing of USSN 976122 and the applicant was unaware of any provisions to extend this time under Australian Patent Law.  Therefore no convention priority was claimed from the US application.

4 June 1999:During discussions with Michael Angliss, a patent attorney for Davies Collison Cave, Blaine Childress became aware of remedial provisions in the Australian Patents Act [1990] which can be used to allow a late claim to priority where such a claim is lost or not made originally due to error.

10 June 1999:           The applicant files a section 223 application to extend the time from 30 November 1993 until 28 April 1994 to file a convention application based on USSN 976122.

DECISION

Section 223(2) provides that:

Where, because of:

(a)an error or omission by the person concerned or by his or her agent or attorney; or

(b)     circumstances beyond the control of the person concerned;

a relevant act that is required to be done within a certain time is not, or cannot be, done within that time, the Commissioner may, on application made by the person concerned in accordance with the regulations, extend the time for doing the act.

In the current case, the applicant argued that an error occurred in incorporating confidential material (experimental results from the CGCT resins) in US patent application USSN 983017.  This error was compounded in Australian application 46151/93 which claimed priority from both USSN 976122 and USSN 983017.  To maintain confidentiality of the examples in USSN 983017, Australian application 46151/93 had to be withdrawn prior to publication.  This led to the need to re-file the current application outside the time period specified in regulation 8.5(2) to claim convention priority from USSN 976122 alone.  The relevant act as referred to in section 223(2) is the filing of the convention application based on basic application USSN 976122.

The opponent argued that, from their declarations, both the inventors and the draftsman believed, at the time of filing USSN 983017, that the inclusion of the CGCT examples did not violate the confidentiality agreement.  According to the opponent, the applicant also did not provide any evidence to suggest that publication would have contravened the Dow/Grace confidentiality agreement.  In fact, each of the declarants were later of the view that publication probably did not breach the agreement.  The opponent argued that there was not an error involved but a clear decision to include references to the Dow examples in USSN 983017 and subsequently to maintain that disclosure in AU 46151/93.  According to the opponent, the decision to withdraw Australian application 46151/93 was a commercial decision rather than an error and had every appearance of having been made in order to maintain relationships with Dow.

I understand the opponent’s point that there may not have been an error in the inclusion of confidential material in USSN 983017.  In addition to the points they raised, I note that at the time of preparing USSN 983017 (13 November 1992), the confidentiality agreement in place was the original agreement of 23 March 1992 which apparently did not cover the resins of that patent application.  Further, in none of the declarations was there an admission that the material was confidential.  The closest concession was made by John Wasatonic who concluded that Dow's allegations of a breach of agreement “could not be dismissed as clearly without foundation”.  As a result, there is no clear evidence that confidential material was included in the patent specifications, simply that there was a difference in opinion between Grace and Dow about whether the material was covered by the confidentiality agreement.

However, as the applicant submitted, the words “error or omission” should be broadly interpreted.  In Kimberly-Clark v Commissioner of Patents 13 IPR 569, Jenkinson J concluded in relation to the same words in section 160 of the Patents Act 1952:

“It is in my opinion difficult to suppose that only the inadvertences and accidental steps, and not errors resulting from faulty reflection, of the former class of persons were intended by the draftsperson to be within section 160(1). Further the word “error” is not easily assigned a clear meaning restricted by reference to one or several particular categories of flawed mental function. The attempt is likely to lead to the drawing of fine and often unrealistic distinctions. And some errors of judgement by agents and attorneys may be as bizarre and as little to be anticipated as lapses of memory and accidental slips. Although the latter kinds of error may be those which the draftsman had principally in mind, I do not think that the phrase “error or omission” should be given the restricted meaning which the delegate assigned”

The applicant noted that the view of Jenkinson J in Kimberley-Clark was affirmed in Amrad Corporation Ltd v Genentech Inc (1994) 29 IPR 218 where the delegate concluded:

“It is clear from this passage that the concept of what constitutes an error under the provisions of s[]nbsp (sic); 160 of the 1952 Act should be interpreted broadly.  I see no reason why this broad interpretation should not similarly apply to the corresponding provisions of section 223 of the 1990 Act.”

Given the broad definition of an “error” in the cases outlined above, I accept that some error may have occurred in the circumstances of this case because either the CGCT examples were confidential and there was an error in their inclusion or there was an error in judgement by Grace in withdrawing Australian application 46151/93 based on the possibility that the examples were confidential.

The key question then is whether or not there is a “causal link” between either of these two possible errors and the fact that a convention application based on USSN 976122 was not filed within time as is required by the word "because" in section 223(2) - see Reilly v Commissioner of Patents (1996) AIPC ¶91-217 which concluded:

"The word "because" does not require explanation but I note it is given the meanings of "for the reason that" and "due to the fact that" in the Macquarie Dictionary.  It provides the causal link between the circumstances between the circumstances and the failure to pay the renewal fee".

The applicant argued that at all times they were entitled to file and prosecute a convention application in Australia claiming priority from USSN 976122.  Had the allegations of Dow and the eventual withdrawal of AU 46151/93 been foreseen at the time of drafting USSN 983017, Grace would not have included the data relating to the Dow CGCT resins in USSN 983017 or its Australian counterpart.  Rather, to avoid that error, that data would have been segregated from the data of USSN 976122 and two separate Australian applications filed.

The opponent argued that there were ongoing discussions between Grace and Dow between September 1993 and March 1994.  Grace could have filed a convention application up to 13 November 1993 and claimed convention priority only from USSN 976122 thereby excluding the examples to the Dow resins.  However, despite an early warning in August 1993 and serious discussions from September 1993, Grace chose not to take that alternative but rather to pursue AU 46151/93.  According to the opponent, Grace have failed to demonstrate a link between the error (preparing a combined specification with Dow examples) to the delay in filing a convention application as they were well aware of Dow's concerns well before the convention deadline.

I note that there are no statutory provisions in the Patents Act which preclude an applicant from including confidential material in a patent specification and any penalties for breaching a confidentiality agreement lie outside the realm of the Patents Act.  Therefore, simplistically, the fact that a priority document may or may not contain confidential material appears to have no bearing, and is therefore not causally linked, to whether a convention application can be filed within the convention period under the Patents Act.  In fact, in this case, despite concerns regarding confidentiality being raised, the applicant was able to file a convention application based on USSN 976122 in time.

In any case, even if the issues of confidentiality and the filing of a convention application were related under the Patents Act, I do not believe that either of the two possible errors by the applicant are causally linked to their failure to file a convention application.  If the error resided in the inclusion of confidential material in USSN 983017, then, as the opponent suggested, there was sufficient warning from Dow about their concerns.  Grace had time to file a second application based on USSN 976122 rather than to pursue AU 46151/93.  Their clear intention at the relevant time was to pursue AU 46151/93 rather than to file a separate application.  Their choice of action was a deliberate decision based on a considered assessment of the risks and consequences of that decision.  This decision broke any causal link between the error of including the CGCT examples in USSN 983017 and the relevant act of filing a separate convention application based on USSN 976122.

If there was an error of judgement by Grace to withdraw Australian application 46151/93 based on the possibility that the examples could be confidential, then this error occurred after the convention period had expired.  As noted in Re Application by Beckswift (1998) 39 IPR 666, the causative relationship of section 223 necessitates the error or omission occurring before the expiration of the time period to do the relevant act.

At the relevant time in the current case, the applicant had made a choice to file a convention application (Australian application 46151/93) based on USSN 976122 and USSN 983017.  They may have been realised, in hindsight, that they should have filed an Australian application based on only USSN 976122 because of the error in incorporating the CGCT examples in USSN 983017.  However, this realisation occurred after the period for filing a convention application had expired and did not cause the failure to file a convention application within the convention period.

CONCLUSION

While I accept that there may have been an error in either the inclusion of possibly confidential material in USSN 983017 or in the decision to withdraw an Australian application based on the possibility that there could be confidential material in USSN 983017, the applicant has failed to establish that there was a causal link between these possible errors and the relevant act of filing of a convention application based on USSN 976122.  Therefore, I find that there is no prima facie case to proceed to advertisement under section 223(4) and I refuse the section 223 application.

COSTS

Costs generally follow the event and I see no reason to depart from this in this case.  I award costs

against the applicant.

Karen Ayers
Delegate of the Commissioner of Patents

Patent attorneys for the applicant  :  Davies, Collison & Cave, Melbourne

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