DSM Nutritional Products AG v Pronova BioPharma Norge as - [2014] APO 71

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
DSM Nutritional Products AG v Pronova BioPharma Norge AS [2014] APO 71
Patent Application: 2003242925

Title:A process for decreasing environmental pollutants in an oil or a fat, a volatile environmental pollutants decreasing working fluid, a health supplement, and an animal feed product

Patent Applicant:  Pronova BioPharma Norge AS
Opponent:  DSM Nutritional Products AG
Delegate:  Greg Powell
Decision Date:  24 October 2014
Hearing Date:  Written Submissions, completed on 3 October 2014
Catchwords:  PATENTS – extension of time to file evidence in response to further evidence – Patent Regulation 5.10 as in force before 15 April 2013 – satisfactory explanation of delay – evidence important to considerations in the opposition – more just opposition outcome outweighs delay – all evidence complete prior to hearing – extension of time allowed.

Representation: Patent applicant: Ashurst Australia, Sydney.
Opponent:Davies Collison Cave, Melbourne.

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2003242925

Title:A process for decreasing environmental pollutants in an oil or a fat, a volatile environmental pollutants decreasing working fluid, a health supplement, and an animal feed product

Patent Applicant: Pronova BioPharma Norge AS
Date of Decision: 24 October 2014
DECISION
DSM Nutritional Products AG has provided a satisfactory explanation for the delay in filing evidence in response to further evidence. The public interest favours allowing the requested extension of time. The interests of the parties are largely offset. On balance it is appropriate to extend the time.
Extension of time allowed until 1 October 2014 to file evidence in response to further evidence.
REASONS FOR DECISION
Background

Following the filing of further evidence by the applicant, Pronova BioPharma Norge AS (Pronova), on 1 July 2014, the opponent, DSM Nutritional Products AG (DSM), had until 1 September 2014 to file evidence in response to the further evidence. On 1 September, DSM filed part of their evidence in response and a request for an extension of one month to file the balance. Pronova opposed this extension of time. DSM filed the balance of their responding evidence on 29 September 2014.
The hearing was conducted by means of written submissions. Both parties filed written submissions.
Application for Extension of Time
DSM’s application for the extension of time mentions a number of reasons to justify the extension.
DSM stated that a significant period of time was required to review the further evidence. Although the further evidence consisted of one declaration (being the fifth declaration by Andrew Sinclair in this opposition – fifth Sinclair declaration), DSM stated that this declaration was the lengthiest Sinclair declaration and a large part of the declaration effectively constituted new evidence-in-answer. DSM stated that a significant period of time was required to consider this declaration in light of previously filed evidence and further time was needed to “complete all actions arising from the review.”
DSM also indicated that they attempted to contact John Templeman, an expert who had previously provided evidence in this opposition. DSM discovered that Mr Templeman had relocated and his circumstances had changed such that he had ceased doing consultancy work and had effectively retired. As a consequence DSM stated that it had become necessary “to consider alternative strategies for responding to the Fifth Sinclair Declaration.”
DSM also indicated that the fifth Sinclair declaration focussed on the type of search he would conduct, as opposed to the search he would not conduct covered in his previous evidence. DSM stated that, as a result of the fifth Sinclair declaration, they conducted searches using Sinclair’s methodology and identified a number of references which appeared highly relevant. DSM indicated that more time was needed to properly assess these references.
DSM also stated that they had had contact with another expert, Aleisha McLachlan, and had considered experimental data she had prepared and which lead to the filing of two declarations on 1 September 2014.
Applicable law
On 15 April 2013, the Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (No.1) commenced (the RTB Regulation). This regulation significantly amended the Patent Regulations 1991 as they apply to patent oppositions. The ability to file further evidence is not available for oppositions commenced on or after 15 April 2013. For oppositions commenced before 15 April 2013, the provisions of the previous regulation 5.10 of the Patent Regulations allowed the filing of further evidence. The present opposition is in the latter category.
The law governing extensions of time to file evidence in a patent opposition has also changed under the RTB Regulation. New regulation 5.9 covers extensions of time which is generally stricter than the previous regulation 5.10 for extensions of time. The appropriate provision for an extension of time to file evidence depends on the date on which the relevant evidentiary period commenced. This follows from sub-regulation 23.36(2), item 2, of the RTB Regulation. In this way, an application for an extension of time may be subject to the new regulation even if the opposition commenced before 15 April 2013.
New sub-regulation 5.9(1) allows the extension of an evidentiary period mentioned in new regulation 5.8. On the other hand, regulation 5.8 describes evidentiary periods only in respect to evidence in support, evidence in answer and evidence in reply. Regulation 5.8 does not define an evidentiary period in respect to further evidence. This means regulation 5.9 does not apply to extending time to file further evidence. Regulation 5.10 of the Patent Regulations as in force before 15 April 2013 is consequently untouched by the RTB Regulation in respect to extensions of time to file further evidence.
Sub-regulation 5.10(2), as in force before 15 April 2013, enabled extensions of time for filing evidence. The Commissioner must not grant an extension unless satisfied that the parties have been notified of the application for extension (reg. 5.10(5) (b)), has given the parties a reasonable opportunity to be heard (reg. 5.10(5)(c)(i)), and is reasonably satisfied the extension is appropriate (reg. 5.10(5)(c)(ii)). In the present case the parties have been notified and have had an opportunity to be heard. The only remaining question is whether it is appropriate to extend the time.
This question has been considered several times by the Federal Court (Ferocem Pty Ltd v Commissioner of Patents [1994] FCA 981; 28 IPR 243, A Goninan & Co Ltd v Commissioner of Patents [1997] FCA 424; 38 IPR 213 and National Starch & Chemical Co v Commissioner of Patents [2001] FCA 33; 50 IPR 398). In summary, the power to extend time is discretionary, so it is necessary to give genuine and proper consideration to all relevant considerations. (Ferocem at 247-8, Goninan at 220). Relevant considerations include:
While I recognise that these considerations are to be contemplated as a totality when deciding whether or not to grant an extension of time, for convenience I will divide my decision along these three lines.
Consideration
Explanation
Pronova, as far as I can ascertain, have provided no submissions explicitly directed to addressing why the explanation provided by DSM did not justify an extension of time. The closest Pronova appears to come in their submissions is where they say:
“Any evidence that relates to the introduction of new prior art documents should be rejected and any extension of time based on the desire to consider and review new prior art should be rejected. The Opponent has had over 7 years to identify the prior art it wishes to rely upon. In that time it has amended its statement of grounds and particulars five times adding 34 new prior art documents. If the Opponent was permitted to rely upon new prior art, this would result in several rounds of further evidence. The Opponent's conduct has already resulted in considerable delay.”
To my mind, the explanation provided by DSM provides reasons as to why the evidence was not filed earlier. While extending time on the basis of having to review one declaration may be debateable, the necessity of:
(i)dealing with an expert who was no longer available;
(ii)the apparent change in focus of Mr Sinclair in providing his opinion on where he would, as opposed to would not, search; and
(iii)having to review further recently discovered references which arose as a result of following Mr Sinclair’s searching methodology,
all seem to explain why the remaining evidence was going to be late. Pronova’s comment given above does not negate this.
Public Interest
The public interest requires a balance between determining a serious opposition on its merits (Goninan at 222) and the efficient and orderly administration of the Patent Office (Ferocem at 247, Goninan at 222). As part of this, consideration of the nature and significance of the evidence is required.
Pronova submitted that, of the evidence supplied by DSM when it requested an extension of time, the declarations by Ramino Charles Perez and Richard Aarnoudse address the general question of what could be found in 2014 when a search is conducted using the key words referred to by Professor Sinclair. Pronova submitted that the fifth Sinclair declaration only addressed the question of whether specific prior art documents relied upon by the Opponent would have been found in a search as at 2002.
DSM responded by stating that, notwithstanding Pronova’s comment that DSM has had 7 years to search the prior art for documents to rely upon, the search conducted by Aarnoudse is based upon the evidence in the fifth Sinclair declaration and could not have been done earlier.
Pronova submitted that DSM should not be allowed to rely upon the declarations by Aleisha McLachlan, containing results of experiments. They submitted that:
(i)some of the experiments are based upon examples in US 3082228, which is not commented on in the fifth Sinclair declaration;
(ii)other experiments are based upon a new document which is not in DSM’s Statement of Grounds and Particulars, with no explanation of how it was found or how it will be relied upon;
(iii)Ms McLachlan’s declarations introduce a further two new documents with no explanation of how they were found or how they will be relied upon.
Pronova contend that this new material is not in response to the fifth Sinclair declaration and ought not to be allowed.
DSM submitted that the work by Ms McLachlan had been done as part of preparing evidence on European oppositions that are related to the present proceedings. DSM submitted that, after reviewing the fifth Sinclair declaration, it was clear that some of Ms McLachlan’s work rebutted aspects of the fifth Sinclair declaration. They also noted that, this situation having become apparent, they clearly acted without delay.
In my opinion, the evidence sought to be filed by DSM is relevant to the opposition. While only a prima facie opinion, the evidence filed seems to be directed to rebutting at least some of the assertions in the fifth Sinclair declaration which have not been made before. To my mind, this evidence would appear to be important to the considerations of this opposition. Its inclusion would lead to a better and/or more just opposition outcome. It would allow a serious opposition to be treated on its merits. Proper determination of the opposition on its merits in this case outweighs the need for expeditious disposal of the opposition at this time. In any event, I note that DSM completed filing of all their responding evidence before all submissions for this hearing were received. As such, any concerns of further delay following this decision are moot.
Interests of the Parties
As is normal in such matters, the interests of the parties seem to be opposed. However, it is not apparent to me that the difference in interests is any greater than is normal in the context of a patent opposition.
CONCLUSION
I have found that DSM has provided a satisfactory explanation for the delay in filing the remainder of their further evidence. I have also found that proper determination of the opposition on its merits in this case outweighs the need for expeditious disposal of the opposition at this time. This favours allowing the requested extension of time. I also conclude the interests of the parties are largely offset. On balance I conclude it is appropriate to extend the time.
I allow an extension of time until 1 October 2014 for DSM to file evidence in response to Pronova’s further evidence.
In its submission for this hearing Pronova stated that, if I was minded to allow the filing of DSM’s evidence (which I am), it would require an opportunity to consider it and address it. Pronova indicated that they wished to make submissions as to the time it would take them to respond to DSM’s evidence. I note that DSM completed filing its evidence in response on 29 September 2014. There are no further opportunities within this process for Pronova to file evidence which responds to DSM’s evidence. The process relating to this round of further evidence has concluded. That is not to say that Pronova cannot make any further submissions they want or that more requests for further evidence are prohibited. Other requests for further evidence (if any) will be dealt with on their merits.
COSTS
It is the usual practice that costs follow the event. Pronova has been unsuccessful in its objection to the extension of time. I award costs in accordance with Schedule 8 against Pronova.
Greg Powell
Delegate of the Commissioner of Patents