DuPont v DowElanco
[1994] APO 27
•5 April 1994
Official notice
decision of a delegate of the commissioner of patents
Application : No. 626551 in the name of E.I. DUPONT DE NEMOURS AND COMPANY
Title: Tablet Formulations of Pesticides
Action: A request by E.I. DUPONT DE NEMOURS AND COMPANY under regulation 5.10(1) for further and better particulars and a request to amend the Statement of Grounds and Particulars under regulation 5.9 by DOWELANCO.
Decision: Issued . Request to amend the Statement of Grounds and Particulars not allowed. Directions for further and better particulars, after evidence-in-support has been completed, given in relation to certain particulars. Opposition dismissed in part. Directions that certain particulars are not to be available to the opponent to argue at the substantive opposition hearing. The time for serving evidence-in-answer to commence when the Statement of Grounds and Particulars has been finalised.
It may be reasonable to infer that in providing a huge number of references by document number or a non-patent literature reference only as particulars for a ground of opposition - for example, a list of more than about 70 to 100 (although with large or complex documents the number may be less), nothing has been 'particularised' as the applicant will have no idea whatsoever of the case they have to defend; that the opponent has served speculative particulars and is not undertaking a serious opposition; and that ground of opposition would be open for dismissal.
patents act 1990
decision of a delegate of the commissioner of patents
Re:Patent Application No. 626551 by E.I DUPONT DE NEMOURS AND COMPANY, opposition thereto by DOWELANCO, and requests under regulation 5.9(1) to amend a statement of grounds and particulars and 5.10(1) for a direction to amend the statement of grounds and particulars.
BACKGROUND
Application 626551 was filed on 17 May 1989 under the provisions of the Patent Cooperation Treaty as PCT/US89/02072. That application was published under the PCT as WO 90/00007, and in Australia was allocated the application number of 36911/89. The application entered the national phase of processing on 28 December 1990, having undergone Preliminary Examination under the PCT. The application was advertised accepted on 6 August 1992, and on 6 November 1992 the opponent (DOWELANCO) filed a notice of opposition.
On 7 December 1992 the opponent applied for an extension of time of one month (from 6 December 1992 to 6 January 1993) to serve the statement of grounds and particulars.(The statement was served on 5 January 1993). DowElanco objected on 18 January 1993 and the matter was heard in Melbourne on 18 March 1993. By written decision dated 19 April 1993 the delegate of the Commissioner allowed the extension of time and directed that the 3 months period for serving evidence in support was to commence at the date of that decision.
By letter dated 17 June 1993, DuPont requested the opponent to provide further and better particulars and advised that they would object to any application for extension of time beyond 19 July 1993 to serve evidence in support. On 14 July 1993, DowElanco filed a request to amend the Statement of Grounds and Particulars and this was followed by the filing on 19 August 1993 of a request to file a further amended Statement of Grounds and Particulars.
On 20 July 1993 the opponent filed an application for extension of time of 3 months from 19 July 1993 to 19 October 1993 within which to serve evidence in support. DuPont objected and the matter was heard in Canberra on 18 October 1993. The request by DuPont for further and better particulars was deferred until after the request for an extension of time was decided.
By written decision dated 19 November 1993 the delegate of the Commissioner allowed an extension of time up to 15 September 1993, to allow the service of evidence in support given to the applicant and the Patent Office prior to the hearing, and directed that the 3 months period for serving evidence in answer was to commence at the date of that decision. The parties were also asked in writing whether they wished to proceed to have objections to the requests under regulation 5.10(1) and 5.9 heard. On 8 December 1993 the applicant advised in writing that it wished to proceed with a hearing in respect to these matters and on 10 January 1994 requested that the period for serving evidence in answer be extended until after the Statement of Grounds and Particulars has been finally resolved.
The matter was heard in Canberra on 22 February 1994. At the hearing DuPont were represented by Mr M. Houlihan, patent attorney of Callinan Lawrie, Kew; DowElanco, was represented with written submissions by Mr K Leslie, patent attorney, assisted by Ms D Beadle, both of Davies Collison Cave, Melbourne.
STATEMENT OF GROUNDS AND PARTICULARS
The Original Statement of Grounds and Particulars can be summarised as follows:
"The grounds of opposition upon which the Opponent relies are:
(i)that the invention, so far as claimed in any claim, is the subject of a claim of earlier priority date contained in the complete specification of a patent.
PARTICULARS
The invention as claimed in any claim is prior claimed having regard to the following documents:
Australian Patent Specification No. 25886/88 (625412).
(ii)that the invention, so far as claimed in any claim, was published in Australia before the priority date of that claim.
PARTICULARS
The invention as claimed in any claim is prior published having regard to the following documents:
Document 1 as set out above in the Particulars to ground (i)."
Particulars 2 to 107 are a mixture of references to patent documents, eg French Patent Specification No. 2628734 (some include reference to English language equivalents as well) and non-patent literature references, eg Nakagami, Hiroaki, Pharm Tech Japan. 1992, Volume 8, No. 7, pp 787-95.
Common general knowledge in Australia relating to a variety of non-patent literature references, eg Kirk Othmer, "Encyclopedia of Chemical Technology", Third Edition, 1983, Vol 17 pp 277-281, Vol 21 pp 82-103 and Vol 23 pp 975-976.
109.The knowledge, use and sale before the priority date of effervescent tablet formulations containing plant growth regulants including gibberellic acid and napthylacetic acid.
that the invention, so far as claimed in any claim, is not a manner of manufacture within the meaning of Section 6 of the Statute of Monopolies.
PARTICULARS
The invention at least insofar as it involves a composition is not a manner of manufacture as it simply comprises a mere mixture of known ingredients.
(iv)that the invention so far as claimed in any claim was obvious and did not involve an inventive step having regard to what was known or used in Australian on or before the priority date of that claim.
PARTICULARS
The invention as claimed in any claim is obvious and does not involve an inventive step having regard to the following:
Document 1 as set out above in the Particulars to Ground (i).
Documents 2 to 107 as set out in the Particulars to Ground (ii).
Common general knowledge in Australia relating to:
(a)Document 1 as set out above in the particulars to ground (i).
(b)Documents 2 to 107 as set out in the particulars to ground (ii).
(c)Documents 108 (a) to (j) as set out in the particulars to ground (ii).
(d) Prior knowledge, use and sale of effervescent tablets formulations containing growth regulants including gibberellic acid and napthylacetic acid as set out in the particulars to ground (ii).
(e) Prior knowledge, use and sale of Polyplasdone (Registered Trade Mark) X L 10 as a disintegrant in tableting processes in Australia before the priority date.
(f) The use of Polyplasdone (Registered Trade Mark) X L 10 as a disintegrant in tableting processes in Australia before the priority date.
(v)that the invention, so far as claimed in any claim, was before the priority date of the claim, otherwise not novel in Australia.
PARTICULARS
The invention as claimed in any claim is not novel having regard to the following:
Document 1 as set out above in the Particulars to Ground (i).
Documents 2 to 107 as set out in the Particulars to Ground (ii).
Common general knowledge in Australia relating to
(a) Documents 108 (a) to (j) as set out in the particulars to ground (ii).
(b) Prior knowledge, use and sale of effervescent tablets formulations containing growth regulants including gibberellic acid and napthylacetic acid as set out in the particulars to ground (ii).
(c) Prior knowledge, use and sale of Polyplasdone (Registered Trade mark) X L 10 as a disintegrant in tableting processes as set out in the particulars to ground (iv).
(vi)that the complete specification does not comply with the requirements of Section 40 of the Act.
PARTICULARS
(a) The specification does not fully describe the invention having regard to the following:
1. The specification including the claims is wholly silent as to the significance of the melting point of the pesticide or growth regulant being "at least about 100°C".
2. The specification including the claims uses the term "dispersants" which is unclear in meaning. This term is introduced at page 2, lines 31 to page 3, line 9 and further explained at page 19, lines 9 to 12 of the specification. The manner in which the term "dispersants" is explained in the specification tends to disguise the fact that these dispersants are in fact anionic surfactants and nonionic surfactants.
3. The phrase "physical integrity" as used in the specification at page 18, lines 17 to 23 is unclear. Although there is an outline of the reasons for requiring physical integrity, there is no disclosure in the specification as to how this requirement is achieved.
4. The specification acknowledges the rapid break-up and dispersion of tablets as being a requirement achieved by the invention. However, the reason for the repeated reference to the dispersion being achieved in very cold hard water is unclear in view of the fact that disintegration of tablets, whether effervescent or not, should not be critically dependent on temperature, nor on the hardness of the water. Furthermore, no comparative data or standard tests for disintegration such as those which appear in the United States and British Pharmacopoeias are provided in the specification to substantiate this advantage.
5. The specification states at page 19, lines 3 to 8 that "it is substantially impossible to obtain rapid break-up of a tablet of substantially water-insoluble active ingredient in aqueous media without the use of effervescence". This statement is neither qualified or substantiated in the specification. The scope of the term "rapid" is also unclear.
6. The specification states at page 20, lines 5 to 8 that "dispersion times for active ingredients formulated as described herein are much more rapid than in formulations that produce tablets designed for flotation". This statement is neither qualified or substantiated. The scope of the term "rapid" is also unclear.
7. There is no reference in the specification to the large scale manufacture of the tablet formulations. It is important to perform large scale manufacture with appropriate stability studies, particularly with effervescent tablets.
(b)The claims do not clearly define the invention and are not fairly based, having regard to the following:
1. The claims are not fairly based in that the description at page 1, lines 21 to 31 states that "This invention concerns ... complementary to the pesticide of (i)" which is inconsistent with the claims.
2. The claims are speculative and not fairly based due to the use of the term "complementary'. This term is unclear and there is no indication in the specification which components of the tablet formulation are complementary with which pesticides or growth regulants and under which circumstances the non-active components may be uncomplimentary with some pesticides or growth regulants.
3.The claims are unclear due to the use of the word "glogging".
The reasons for making the request to amend the Statement of Grounds and Particulars were given on 18 February 1994 as:
"We wish to amend the Statement of grounds and Particulars dated 19 August 1993 so as to correct clerical errors and remove particulars no longer intended to be relied on."
Further Requests to amend the Statement of Grounds and particulars were previously made on 14 July 1993 and 19 August 1993.
The Statement of Grounds and Particulars as proposed to be amended by the 18 February 1994 Request is as follows:
"The grounds of opposition upon which the Opponent relies are:
(i) that the invention, so far as claimed in any claim, is the subject of a claim of earlier priority date contained in the complete specification of a patent.
PARTICULARS
The invention as claimed in any claim is prior claimed having regard to the following document:
1. Australian Patent Specification No. 25886/88 (625412) which discloses herbicidal tablets comprising 5-75% herbicidal sulphonyl urea, and 5-25% water soluble acid and alkali metal carbonate.
(ii) that the invention, so far as claimed in any claim, was published in Australia before the priority date of that claim.
PARTICULARS
The invention as claimed in any claim is prior published having regard to the following documents:
1. Document 1 as set out above in the Particulars to ground (i)."
Particulars 2 to 12, 14, 15 are a variety of patent references, eg. French Patent Specification No. 2628734 which discloses fertilizers, insecticides, and fungicides in effervescent tablet form, with citric acid and potassium carbonate as the acid and base source.
"13. South African Patent Specification No. 88/5890 which discloses effervescent pesticidal formulations. Several pesticides disclosed at pages 2 and 3 are pesticides having a high melting point and low solubility for example, carbaryl (m.p. 142 °C, sol. 40 ppm), cyromazine (m.p. 220°C, sol. 11 g/l), and diflubenzuron (m.p. 230°C, sol. 0.14 mg/l). The formulation may contain up to 80% of a solid pesticide (page 3). Disintegration is by effervescence (page 3) and the formulation may be in tablet or granular form (page 3). More particularly, the composition comprises a mixture of an acid and base (page 3) such as citric acid and sodium bicarbonate (page 4). A suitable dispersing agent is polyvinylpyrrolidone (page 4). The composition comprises 1-20% of a dispersing agent (page 4), and 1-15% of a surfactant (page 5).
16. British Patent Specification No. 2139893 and its equivalent Australian Patent Specification No. 27142/84 which disclose effervescing insecticidal compositions in tablet form. The insecticide must have low water solubility (page 2, lines 10-12 and page 3, lines 12-13). Deltamethrin is included as an example of an insecticide (page 2, lines 19-21) and up to 20% of the insecticide is disclosed (page 3, lines 16-17). An emulsifier or dispersing agent in the range of 010-5% is also disclosed (page 4, lines 13-14), together with the use of polyvinylpyrrolidone (page 4, lines 20-21), and the use of acid and a base (page 4, lines 21-24) in the percentages disclosed in the DuPont patent specification (page 5, lines 2-5).
17. European Patent Specification No. 228164 and its equivalent Australian Patent Specification No. 65091/86 (594265).
18, 19 and 21 to 41 are a variety of patent and non-patent references of the type given in the original Statement of grounds and Particulars.
20. United States Patent Specification No. 3667929 which discloses effervescent agricultural chemical compositions. Actives having a low solubility in water are disclosed (col. 1, lines 36-40). The effervescent mixture can consist of acid and carbonate (col. 2, lines 3-17). The compositions prepared are granules or powder (col. 2, lines 18-23). The proportions of ingredients in the examples fall within the scope of the DuPont patent specification.
42. Common general knowledge in Australia relating to a reduced list of those reference contained in the original statement.
(iii) that the invention, so far as claimed in any claim, is not a manner of manufacture within the meaning of Section 6 of the Statute of Monopolies.
PARTICULARS
The invention at least insofar as it involves a composition is not a manner of manufacture as it simply comprises a mere mixture of known ingredients.
(iv) that the invention so far as claimed in any claim was obvious and did not involve an inventive step having regard to what was known or used in Australian (sic) on or before the priority date of that claim.
PARTICULARS
The invention as claimed in any claim is obvious and does not involve an inventive step having regard to the following:
1. Document 1 as set out above in the Particulars to Ground (i).
2. Documents 2 to 41 as set out in the Particulars to Ground (ii).
3. Common general knowledge in Australia relating to:
(a) Document 1 as set out above in the particulars to ground (i).
(b) Documents 2 to 41 as set out in the particulars to ground (ii).
(c) Documents 42 (a) to (g) as set out in the particulars to ground (ii).
(v) that the invention, so far as claimed in any claim, was before the priority date of the claim, otherwise not novel in Australia.
PARTICULARS
The invention as claimed in any claim is not novel having regard to the following:
1. Document 1 as set out above in the Particulars to Ground (i).
2. Documents 2 to 41 as set out in the Particulars to Ground (ii).
3. Common general knowledge in Australia relating to
(a) Documents 42 (a) to (g) as set out in the particulars to ground (ii).
(vi) that the complete specification does not comply with the requirements of Section 40 of the Act.
PARTICULARS
(a) The specification does not fully describe the invention having regard to the following:
1. The specification including the claims is wholly silent as to the significance of the melting point of the pesticide or growth regulant being "at least about 100°C".
2. The specification including the claims uses the term "dispersants" which is unclear in meaning. This term is introduced at page 2, lines 31 to page 3, line 9 and further explained at page 19, lines 9 to 12 of the specification. The manner in which the term "dispersants" is explained in the specification tends to disguise the fact that these dispersants are in fact anionic surfactants and nonionic surfactants.
3. The phrase "physical integrity" as used in the specification at page 18, lines 17 to 23 is unclear. Although there is an outline of the reasons for requiring physical integrity, there is no disclosure in the specification as to how this requirement is achieved.
4. The specification acknowledges the rapid break-up and dispersion of tablets as being a requirement achieved by the invention. However, the reason for the repeated reference to the dispersion being achieved in very cold hard water is unclear in view of the fact that disintegration of tablets, whether effervescent or not, should not be critically dependent on temperature, nor on the hardness of the water. Furthermore, no comparative data or standard tests for disintegration such as those which appear in the United States and British Pharmacopoeias are provided in the specification to substantiate this advantage.
5. The specification states at page 19, lines 3 to 8 that "it is substantially impossible to obtain rapid break-up of a tablet of substantially water-insoluble active ingredient in aqueous media without the use of effervescence". This statement is neither qualified or substantiated in the specification. The scope of the term "rapid" is also unclear.
6. The specification states at page 20, lines 5 to 8 that "dispersion times for active ingredients formulated as described herein are much more rapid than in formulations that produce tablets designed for flotation". This statement is neither qualified or substantiated. The scope of the term "rapid" is also unclear.
7. There is no reference in the specification to the large scale manufacture of the tablet formulations. It is important to perform large scale manufacture with appropriate stability studies, particularly with effervescent tablets.
(b) The claims do not clearly define the invention and are not fairly based, having regard to the following:
"1. The claims are not fairly based in that the description at page 1, lines 21 to 31 states that "This invention concerns ... complementary to the pesticide of (i)" which is inconsistent with the claims.
2. The claims are speculative and not fairly based due to the use of the term "complementary". This term is unclear and there is no indication in the specification which components of the tablet formulation are complementary with which pesticides or growth regulants and under which circumstances the non-active components may be uncomplimentary with some pesticides or growth regulants.
3. The claims are unclear due to the use of the word "glogging"."
SUBMISSIONS
DowElanco's written submissions were as follows:
1. Further amendments have now been proposed to the Statement of Grounds and Particulars filed on 19 August 1993 in order to correct clerical errors and remove particulars no longer intended to be relied on.
2. The addition of English equivalents of foreign language patent specifications in our previous request to amend dated 19 August 1993 is allowable under Regulation 5.9 as the particulars remain the same and therefore do not unduly prejudice the Applicant.
3. It is submitted that a Direction under Regulation 5.10(1) is no longer required as the Statement of Grounds and Particulars as proposed to be amended does provide full and sufficient particulars.
4. The Applicant cannot state that they are not fully aware of the documents on which they are to rely in preparing their Evidence-in-Answer, as they have been served with the Evidence-in-Support. Hence further and better particulars are no longer necessary.
We are uncertain as to whether or not the applicant intends to appear at the hearing in Canberra on 22 February 1994, but it is submitted that in the light of the above, this is a matter in which there should be no award of costs."
In summary, DuPont's submissions are as follows:
The applicant's case for further and better particulars has been spelt out in the request for further and better particulars filed on 16 June 1993. That is:
"We ask the Commissioner of Patents to direct as follows:
1. That further and better particulars be lodged in respect of the statement made under ground (iii);
2. (a) That further and better particulars be lodged in respect of the documents listed under ground (ii);
(b) That further and better particulars be lodged in respect of the documents listed under ground (iv);
(c) That further and better particulars be lodged in respect of the documents listed under ground (v);
3. That further and better particulars be lodged in respect of the common general knowledge relied on under grounds (ii), (iv) and (v).
4. That further and better particulars be lodged in respect of the alleged prior knowledge, use and sale in Australia of effervescent tablet formulations relied upon under grounds (ii), (iv) and (v).
5. That further and better particulars be lodged in respect of the alleged prior knowledge, use and sale in Australia of POLYPLASDONE XL10 in Australia including (a) the nature of the alleged composition, (b) the date and place of use of the composition and (c) the person or persons to whom the composition was allegedly disclosed and sold.
The grounds upon which application is made are as follows:-
1. The Statement of Particulars in respect of ground (iii) is that the invention at least insofar as it involves a composition is not a manner of manufacture as it simply comprises a mere mixture of known ingredients. There is no supporting documentation given to underpin that statement.
2. The Statement of Particulars contains lists of at least 100 documents including some 40 odd patent documents listed by number only. In fact, with numerous of the listed patent specifications, two numbers are given which appear to be the patent application number and its subsequent accepted or granted patent number. The applicant therefore does not know whether the opponent is citing the specification of the patent application or granted patent or both. This together with the numerous documents listed makes it impossible for the applicant to know the complete case it has to answer in the opposition. Indeed, we believe the Statement is rendered meaningless. To support this request we refer to the opponent's Application for further time for serving the Statement of Grounds and Particulars. We refer particularly to Exhibit TGC-1 of the Statutory Declaration of Terrence G. Corbet dated 17 March 1993. Exhibit TGC-1 is a letter dated 6 November 1992 from Mr. Dugal Sickert of the opponent company. In that letter Mr. Sickert makes a request of several people to provide prior art references for use in the opposition. Mr. Sickert instructs that they "consider what references you may have or be able to find relating to this patent which we could want to argue and cite in this Opposition". Mr. Sickert further states that "These references can be practically anything", and that those references "prior to 28 June 1988, the priority date of the patent, should be considered very carefully". Mr. Sickert then goes on to instruct that "even references after that date could prove to be very useful. So please include any reference which you think may even be remotely related" (our emphasis). The analysis of such a large list of documents places an unrealistic burden and resulting unjustifiable expense upon the applicant to determine the nature of the case that it has to answer. This quite clearly contradicts the views as expressed in the Diamond Scientific Company v CSL Limited decision given on 29 September 1992 by Assistant Commissioner Herald (see especially page 12), and more particularly in the recent decision re Patent Application No. 623933 by Imperial Chemical Industries PLC and opposition thereto by Ireco (sic) Incorporated, Dyno Industrier A.S. and Dyno Wesfarmers Limited given on 16 February 1993. The purpose of the Statement, as expressed in the above decisions and Kent- Moore Corporation v Environmental Products Amalgamated Pty. Ltd. (1992) AIPC 90-915 is that it is "to expedite the determination of opposition" and that the opponent should not provide a list of possible citations with an expectation that the applicant can identify those in the list that the opponent will ultimately rely on".
3. The very broad reference to common general knowledge gives the patent applicant no indication of the case it has to answer in respect of grounds (ii), (iv) and (v) and fails to provide any facts relevant to the opponent's case.
4. The very broad reference to prior knowledge, use and sale gives the patent applicant no indication of the case it has to answer in respect of grounds (ii), (iv) and (v) and fails to provide any facts relevant to the opponents case.
5. The reference to POLYPLASDONE XL10 which is identified as a registered trade mark gives no indication of the nature of this compound nor its relevance in the opponents case."
The opponent has not made any attempt to seriously address the applicant's request for further and better particulars. The request for amendment of the Statement of Ground and Particulars dated 18 February 1994 still has the flaws mentioned above, that is, many documents (more than 7 to 10 in some of the grounds) which have not been described in the terms specified in ICI v Irenco & Ors 26 IPR 154. Examples of this occur with reference 15 in ground (ii) (EP specification 85376) which was first introduced in the proposed amendments of 19 August 1993 and to references 25, 34 and 39.
References 42(c) and 42(e) of ground (ii) of the amended statement included with the request of August 1993 have been removed from the statement with the latest request but are referred to in the Corbett statutory declaration provided as evidence-in-support. The applicant is concerned that this material may be relied by the opponent in the future in some way.
References have been made to English language equivalent documents, were not included in the original Statement Grounds and Particulars, which have not been certified to be the same as the foreign language document. This places an additional burden and expense on the applicant who has to obtain a translation of the original document and determine the difference, if any, between the documents. The reasons for this are not clear as the opponent has been happy, in relation to other foreign language documents, to file translations.
A number of references (21) contained in the Statement of Grounds and Particulars are not referred to in evidence-in-support. The applicant is not certain what case they have to answer in relation to these references.
Here we are over a year from when the original Statement of Grounds and Particulars was served and the applicant is still unaware of the case it has to defend. The opponent is using not providing a proper Statement of grounds and Particulars as a vehicle for delaying and protracting the opposition. The applicant has been unduly prejudiced by this process. Reference is made to the grounds listed in the decision in Diamond Scientific Company v CSL Limited 1992 AIPC 90-927.
The applicant requests the Commissioner to use his/her powers under regulation 5.5(3) to dismiss the opposition because of the manner in which the opponent has conducted its opposition to date. The opponent is not being serious in providing a proper Statement of Grounds and Particulars, particularly in the light of its comment about its decision to "put on hold" consideration of its evidence by its experts "until the extension of time had been resolved so as to avoid any unnecessary consulting fees should the extension be refused" (from the reasons given for the extension of time request by Dowelanco filed 19 October 1993).
The applicant should not be placed in a position of having to complete its evidence-in-answer until the issue of the statement of grounds has been finalised. Mr Houlihan also referred to the decision in Diamond Scientific v CSL Limited 26 IPR 15 where the delegate, in referring to a situation where there had already been two requests to amend the Statement of Grounds and Particulars, said that "I therefore foreshadow should the opponent seek to include further amendments and statements and valid objections arise I will consider the request should be refused in its entirety". The applicant submits that we are at that stage now as the opponent has already had 4 attempts to provide a proper Statement. The applicant submits that because it is still not in a position to know the case it has to defend, evidence-in-answer should commence from the time the Statement of Grounds and Particulars is finalised.
Costs
The applicant was advised of the latest proposed statement of amendments very late on 18 February 1994 and has only had a short period, prior to the hearing, to study them. The manner in which the opponent has conducted the case has resulted in delays and unnecessary expenditure by the applicant. The applicant believes costs should be awarded against DowElanco.
DECISION
In studying Office decisions relating to the Statement of grounds and Particulars, I have found the following to note as being particularly relevant to the present circumstances.
In Mobay Corporation v Dow Chemical Company (1992) AIPC 90-895 the following criteria were developed for the Statement of Grounds and Particulars:
the particulars must state all material facts necessary for the ground of opposition;
the particulars must only state material facts;
the evidence by which the facts are to be proved must not be included;
matters of law should not be included; and
the particulars are to be in summary form.
In ICI v Irenco & Ors 26 IPR 154 the issue of a large number of documents cited in a particular was considered. The hearing officer stated:
"However I believe that the Hearing Officer in stating general rules for the statement of particulars did not anticipate the present circumstances. It seems to me to be logical that where a statement of particulars by reference to a long list of documents makes the substance of the opponents case difficult to determine, then further and better particulars should be sought even if more detail is obtained than would otherwise be the case. As to what constitutes a "long list" I believe that it very much depends on the circumstances in each case. However, in my view, the listing under a particular ground of opposition of any more than 7 to 10 documents by number only would place an unreasonable burden on the applicant in determining the case against it and further particulars should be provided in relation to each document listed."
and
"The further particulars should briefly and generally identify what information in each of the documents is relied upon in relation to the particular ground of opposition. Any more than that would unduly fetter the opponents case and tend towards the arguing of evidence."
In Borden Inc v Elkem A/S 24 IPR 146 at 152 the hearing officer said
"I note that the gathering of evidence to establish common general knowledge may be a time consuming endeavour. Hence to have the expectation that a Statement of Particulars should contain anything more than rudimentary details of the common general knowledge to be produced in the opposition would seem both unrealistic and unreasonable."
In L'Aire Liquide v CIG Ltd 24 IPR 77 at 84 referred to the provision of "material facts" to support grounds alleging no manner of manufacture.
Request to amend the Statement of Grounds and Particulars
I have before me an original Statement of Grounds and Particulars which the applicant alleges contains reference to over 1000 documents. I also have a number of requests to amend the original statement in response to the applicants request for further and better particulars which are alleged to be around 400 or 500 references. Without counting the references myself I can see that the particulars for all grounds total to a very large number of references with individual grounds having more that the "7 to 10" references of Irenco (supra).
It seems to me that this number of references, without clear particulars to clearly identify the case to be defended provides the applicant with a very onerous task. The decided decisions, particularly Mobay (supra), Irenco (supra), Borden (supra), L'Aire Liquide (supra) and Diamond Scientific (supra) provide guidance in deciding the present case.
A Statement of Grounds and Particulars must provide sufficient detail for the patent applicant to understand the case to be defended. The particulars must state all material facts necessary for the ground of opposition and they must state only material facts. The particulars are to be in summary form, but, the evidence by which the facts are to be proved and matters of law are not to be included (Mobay (supra)). But, it is clear to me, that to expedite determination of the opposition (from Kent-Moore (supra)), in cases where the particulars involve a large number of references, as in the present case, the requirements for the particulars for grounds involving more than 7 to 10 references per ground from Irenco (supra) is insufficient. I believe the information requirements relating to material facts must be extended to all grounds, whether individual grounds refer to more than 7 to 10 documents or not. In these circumstances it makes no sense to treat some references in a different manner to others. This merely adds to the applicant's already large burden and is unreasonable.
Furthermore, it may be reasonable to conclude that, by sheer reason of the number of references involved, nothing has been 'particularised'. For example, a huge list of all Australian patent specifications of similar subject matter to the opposed application would not, in my view, 'particularise' anything, as it would give the applicant no idea whatsoever of the case they have to defend; and in my view that ground of opposition would be open for dismissal. It may also be reasonable to infer that by providing a huge number of references by document number or a non-patent literature reference only - for example, a list of more than about 70 to 100 (although with large or complex documents the number may be less) - the opponent has served speculative particulars and is not undertaking a serious opposition; and that the opponent is engaging in an unreasonable practice which is contrary to the principles from Kent-Moore (supra) and Irenco (supra), as the particulars must enable an applicant to clearly understand the case it has to defend.
After considering this issue in this case, where the number of particularised references is clearly in excess of 70 to 100, I have concluded that, in this case, as the issue was not raised by the parties and evidence in support has been completed, it is not appropriate for me to dismiss those opposition grounds where particulars are identified by patent number or non-patent reference only.
I understand the "material facts" of Mobay (supra) to mean the facts needed for the opponent to establish a prima facie case, but without legal argument, argument based on the facts, corroborative evidence, or references to legal precedent. In my view, an opponent needs to provide more than just a mere allegation of the case to be answered. For example, a reference to "prior knowledge, use and sale" or "mere mixture of known ingredients", without the facts to establish a prima facie case, does not provide an applicant with reasonable details of the case to be answered and so defend itself.
For example, for the applicant to understand the case it has to defend in the present circumstances, without placing an undue burden on the opponent, the particulars should briefly and generally include:
.for documents, the relevance of the reference to the ground together with page and line references to direct the reader to the specific part of the document that is to be relied on. Also, where patent documents have been published in more than one version, then the version being relied on should be identified and if reference is made to patent family members then material facts relevant to the family member should also be clearly identified;
.for common general knowledge, a brief description of the alleged common general knowledge and identification of the person skilled in the art including brief details of any material facts needed to establish a prima facie case;
.for manner of manufacture, a brief description of the particular type of manner of manufacture, eg. a mere mixture of known ingredients, together with brief details of material facts to establish a prima facie case;
.for matters such as prior knowledge, sale, prior use, a brief description of their relevance to the ground together with a brief details of the material facts to support a prima facie case, for example, (a) the date and place of any use, (b) the person or persons to whom the invention was allegedly disclosed or sold;
.for trade marks or trade names, a brief description of the nature of the material together with a description of its relevance to the opponent's case. Of themselves, references to trade marks or trade names are meaningless particulars; it is quite possible for the constituents of a product to be changed and for the product to continue to be sold under the same trade mark or trade name;
.for section 40 matters, a brief description of the specific subject matter causing section 40 not to be satisfied, a clear statement of the specific statutory requirement and the identification of the deficient part of the specification (by reference to page and line and/or claim numbers).
I will consider in turn both the original Statement and the Statement filed with the request to amend dated 18 February 1994.
The particulars of grounds (i), references 1 to 107 of ground (ii), references 1 and 2 of grounds (iv) and (v) of the original Statement do not direct the reader to the specific part or parts of the each document to be relied on. The particular reference of ground (i) does not specify which of the opposed claims are alleged to be the subject of which of the claims of the cited document.
Reference 108 in ground (ii) and references 3 (a), (b) and (c) in grounds (iv) and (v), of the original statement, refer to common general knowledge in Australia relating to a variety of non-patent literature references but do not identify what subject matter is alleged to be common general knowledge or the person skilled in the art.
Ground (ii) reference 109 provides no material facts at all.
Ground (iii) provides no material facts to establish a prima facie case for "mere mixture of known materials". There are no material facts provided to establish what is known.
The reference to POLYPLASDONE XL10 which is identified as a registered trade mark, in grounds (iv) and (v) gives no indication of the nature of this compound nor its relevance in the opponents case.
In my view, the particulars of ground (vi) do enable the applicant to determine the section 40 case it has to defend.
Therefore the original Statement of Grounds and Particulars provides particulars for grounds (i), (ii), (iii), (iv) and (v) simply by reference to patent documents by number, journal and text book references by journal or text book name, article title and page number or by reference to general allegations without supporting facts. The large number of references involved, in my view, places an unreasonable burden on the applicant to determine the case against it.
The proposed Statement filed on 18 February 1994 expands this material, to some extent, with a brief but insufficient, description of the subject matter relevant to each reference. In some cases, for example, particulars 13 and 16 and 20 of ground (ii), the particulars provide references to the parts of the document being relied on to support the prima facie case, but, the majority of particulars for grounds (i) to (v) lack material facts to establish a prima facie case.
Therefore the Statement provided with the Request to amend dated 18 February 1994, apart from the particulars of ground (ii) references 13, 16 and 20 and those of ground (vi), is also deficient for similar reasons as the original Statement. Changes were also made to the particulars of the original statement to include facts not included in the original statement. Reference 15, 25, 34 and 39 of ground (ii), for example, include references to English language equivalents which were not certified to be exactly the same as the foreign language document.
In this context, the delegate of the Commissioner issued a decision on 21 Dec 1992, in the matter of The Boots Company Plc v Hamilton Laboratories Pty Ltd (application no 614998, unreported), in which it was stated:
"It is appropriate in the present case for me to say a word about amendments which would cause the particulars to become inadequate for their purpose. This situation would arise if an inadequately particularised fact was inserted into the Statement of Grounds and Particulars. Such an amendment not only changes the case to be answered, it does not properly reveal the new case to be answered. I believe this would be unduly prejudicial to the applicant."
The Statements accompanying the requests dated 14 July 1993, 19 August 1993 are also deficient for similar reasons.
Dupont allege that they have been and will be unduly prejudiced by the original and proposed Statements. The issue of undue prejudice was considered in Diamond Scientific v CSL 1992 AIPC 90-927
"...I note the opponent cannot be expected to have full knowledge of the prejudice to the other party - let alone any person as referred to in the regulation. Therefore, broadly speaking the onus of establishing undue prejudice rests with the applicant (or any other person alleging undue prejudice), rather than with the opponent having to establish that no person is unduly prejudiced.
However, where:
- the applicant objects to an amendment, and
- the amendment of the statement can reasonably be said to prejudice the applicant (such as by the addition of extra particulars), and
- the circumstances are such that there is a reasonable inference that the prejudice is undue - such as by the time at which the amendment is sought, or the nature or extent of the amendment sought;
there is in my view a reasonable basis for the Commissioner to prima facie conclude that the applicant will be unduly prejudiced by the amendment. In this event, for the Commissioner to allow the amendment I consider the opponent has an onus of demonstrating that its activities have not been such as to have unduly prejudiced the applicant. "
Following these principles, I find that:
. the applicant has objected to the amendment; and
.the amendment of the statement can reasonably be said to prejudice the applicant (because the amended statement does not provide satisfactory particulars); and
.the circumstances are such that there is a reasonable inference that the prejudice is undue - because of the number of references involved and the lack of material facts provided by the references and the time that has elapsed from the service of the original Statement (over 12 months).
There is a reasonable inference that the applicant is unduly prejudiced because neither the original or the proposed Statement provide satisfactory particulars. Therefore, I will not allow the request to amend the Statement of Grounds and Particulars.
Request for Directions to provide further and better particulars
The opponent has submitted that further and better particulars are no longer necessary. The reason given for this is that the applicant is now fully aware of the documents on which they are to rely in preparing their evidence-in-answer as they have been served with the evidence-in-support. The opponent has also filed a request to amend the Statement of Grounds and Particulars - to correct clerical errors and remove particulars no longer to be relied on.
As the hearing officer said in Kent-MooreCorporation v. Environmental Products (1992) AIPC 90-915
The "statement of grounds and particulars" is perhaps the key procedure introduced to expedite the determination of oppositions. The statement sets out the basis of the opposition, and it follows that the opponent's evidence is circumscribed by that statement. (It also enables the applicant to start preparing their defence upon receipt of that statement, as they are then aware of the basis of the opposition.)
This case differs from most in that evidence in support was completed before a decision had been made on whether a Direction for further and better particulars should issue.
In my view, an issue I have to decide here is whether the Statement of Grounds and Particulars provides the applicant with sufficient information to determine the case it has to defend. This, in my view, may be unrelated to the time evidence-in-support is served.
An opponent is entitled to present a defence against matters raised in such a Statement even where evidence has not been presented. The opponent could present submissions, at the substantive opposition hearing, on material contained within the Statement of Grounds and Particulars but not in evidence. This is particularly the case with section 40 material. The opponent, it appears, has seen value in amending the Statement of Grounds and Particulars after evidence-in-support has been served. The consequence of any such amendment must be to provide better particulars.
Therefore, in my view a Direction for further and better particulars can still issue after evidence-in-support has been served. In this particular case evidence has been served and consists of:
.(a) two statutory declarations by Terrence G Corbet which provide a list and copies of patent and non-patent documents;
.(B) a number of statutory declarations attesting to the publication dates in Australia of these documents,
consequently, there is a need for further and better particulars.
The applicant has requested further and better particulars in relation to grounds (ii), (iii), (iv) and (v). It is my view that once the issue of further and better particulars has been raised it is within the Commissioner's descretion to consider all particulars, not just those included within the request.
I have already found the original Statement of Grounds and Particulars to be deficient and the request to amend not to be allowable.
Consequently, I Direct the opponent to provide further and better particulars as follows:
.The particulars of grounds (i), which only provides an Australian patent specification number, should include a reference to the prior claim(s) and the opposed claim(s). The reference in the particulars to "any claim" is not sufficiently precise to enable the applicant to determine which claims are prior claimed.
.The particulars of references 1 to 107 of ground (ii), references 1 and 2 of grounds (iv) and (v) of the original Statement, should include the relevance of the reference with page and line references to direct the reader to the specific passages within each document that are being relied on;
.The particulars of reference 108 in ground (ii), and references 3 (a), (b) and (c) in grounds (iv) and (v) of the original statement, should include a brief description of the common general knowledge and the person skilled in the art together with brief details of any material facts to establish a prima facie case, in this case, page and line numbers of particular relevance to establish common general knowledge.
.The particulars of ground (iv) references 3(e) and (f) and ground (v) reference 3(c) should describe the nature of the Polyplasdone XL10.
As I have previously found that the particulars of ground (ii) reference 109, ground (iv) reference 3 (d), (e) and (f), ground (iii) and ground (v) references 3(b) and (c) include no materials facts, it seems to me, that any amendment to include a material fact would substantially change the case the applicant has to answer and would, prima facie, cause the applicant to be unduly prejudiced. Such an amendment would not be allowable according to regulation 5.9(2)(e).
.Consequently, I further direct that the particulars of ground (ii) reference 109, ground (iv) reference 3 (d), (e) and (f), ground (iii) and ground (v) references 3(b) and (c) are not to be available to the opponent to argue at the substantive opposition hearing.
The question of the circumstances under which it was appropriate to direct dismissal rather than request further and better particulars was addressed in Mobay (supra). Where there are no material facts at all a direction to provide further and better particulars is not appropriate.
It is, however, open to the Commissioner to dismiss the opposition in part (L'Air Liquide (supra)), that is, in relation to ground (iii). In this decision the hearing officer decided to dismiss certain parts of the opposition under regulation 5.5(3) and said
Accordingly, my finding in this matter is that under the provisions of Regulation 5.5(3) of the Patents Regulations I should accede to the request by L'Air Liquide, Societe Anonyme pour l'Etude et l'Exploitation des Procedes Georges Claude that this opposition by Commonwealth Industrial Gases Limited in respect of patent application 610369 should be dismissed insofar as it relies on grounds 1(f), 1(g) and 1(i). However, the opposition may proceed in respect of grounds 1(e) and 1(h).
.Consequently I dismiss ground (iii) of the Statement of Grounds and Particulars.
However, I do not think it appropriate for the Commissioner to dismiss the entire opposition under regulation 5.5(3), in this instance. The opponent does have a Statement of Grounds and Particulars which is capable of redemption and evidence-in-support which has been served.
I now have to consider the time in which the opponent should be given in which to provide further and better particulars.
Over 12 months has elapsed since the original Statement of Grounds and Particulars was served on 6 January 1993. A decision allowing an extension of time to serve the Statement resulted in a period for serving evidence-in-support commencing on 19 April 1993 and finishing on 15 September 1993 (following another decision on a request for an extension of time issued in November 1993). The applicant's request for further and better particulars was filed in June 1993. There have been 3 requests to amend the Statement, following the applicant's June request, each of which has been objected to by the applicant. The parties agreed to have the objection to the application for an extension of time to serve evidence-in-support from 19 July to 19 October 1993 heard before the objections to the request to amend the Statement were heard.
Mr Houlihan submitted that the applicant was unduly prejudiced by the way in which this matter had proceeded so far in that it still was not in a position to determine the case it had to defend.
Mr Houlihan also submitted that the opponent was not serious in its opposition and was delaying the outcome for some unknown purpose. He also submitted that because of the opponent's conduct of the case the Commissioner should dismiss the opposition under regulation 5.5(3).
In my decision on an extension of time to serve evidence-in-support on this case, issued on 29 November 1993, I concluded that much of the delay in this matter was of the opponents own making. I said
"The problems experienced by the opponents' attorney in this matter seem to be a direct result of the large number of documents referred to in the original statement of grounds and particulars, and therefore are problems of the opponents' own making.
Clearly the opponent has taken a considerable time to determine which documents are particularly relevant, from a list of generally relevant documents, and that as a result the overall process of putting the evidence together has been delayed. However, no evidence has been presented to establish that the there were any unexpected problems arising within the timeframe allowed for serving evidence in support. I note that some of the documents did require translation, but no evidence has been presented to enable me to verify to my satisfaction that the need for this activity to be undertaken justifies the extension of time sought."
I also commented in this case that
"In view of the previous history of this opposition which includes a written decision dated 19 April 1993, I would also have expected the opponent to take particular care to ensure that opportunities for further disadvantageous circumstances would be minimised to avoid any undue delay. From the evidence before me, I have no reason to believe that such has happened."
I have nothing before me to conclude that the opponent has engaged in delaying tactics, as alleged by the applicant. However, from the previous history of this opposition, I conclude that the opponent has done nothing to expedite matters.
The opponent has, in my view, had sufficient time to determine which documents are particularly relevant to it's opposition and to be in full possession of the material facts needed to establish a prima facie case. It should also have had this information at the time it served its original Statement of Grounds and Particulars.
Consequently, I believe only a short period of time will be necessary for the opponent to provide further and better particulars. I will allow 28 days from the date of this decision for this to occur.
In the absence of further and better particulars in response to my Direction within the time allowed, I will adopt the approach envisaged by the hearing officer in Diamond Scientific v CSL 26 IPR 15 where he said
"Finally, I note that any substitute statement filed will be the third statement filed since my decision of 29 September 1992; I therefore foreshadow that, should the opponent seek to include further amendments to the statement over and above those dealt with in this and the previous decision and valid objections arise as a result thereof, I will have to consider whether the request should be refused in its entirety."
I agree with the applicant's submission that it was not in a position to finalise evidence-in-answer by the end of February due to its inability to establish the case against it. I agree that the time for evidence-in-answer should be extended until 3 months after the Statement of Grounds and Particulars is finalised.
CONCLUSION
I do not allow the request to amend the Statement of Grounds and Particulars.
I direct the opponent to provide further and better particulars be given for the grounds of the Statement of Grounds and Particulars dated 5 January 1993 as follows:
.The particulars of grounds (i), which only provides an Australian patent specification number, should include a reference to the prior claim(s) and the opposed claim(s). The reference in the particulars to "any claim" is not sufficiently precise to enable the applicant to determine which claims are prior claimed.
.The particulars of references 1 to 107 of ground (ii), references 1 and 2 of grounds (iv) and (v) of the original Statement, should include the relevance of the reference with page and line references to direct the reader to the specific passages within each document that are being relied on;
.The particulars of reference 108 in ground (ii), and references 3 (a), (b) and (c) in grounds (iv) and (v) of the original statement, should include a brief description of the common general knowledge and the person skilled in the art together with brief details of any material facts to establish a prima facie case, in this case, page and line numbers of particular relevance to establish common general knowledge.
.The particulars of ground (iv) references 3(e) and (f) and ground (v) reference 3(c) should describe the nature of the Polyplasdone XL10.
I further direct that the particulars of ground (ii) reference 109, ground (iv) reference 3 (d), (e) and (f), ground (iii) and ground (v) references 3(b) and (c) are not to be available to the opponent to argue at the substantive opposition hearing.
I dismiss the opposition in relation to ground (iii) of the Statement of Grounds and Particulars.
I allow the opponent 28 days from the date of this decision to file further and better particulars. If a satisfactory response is not filed within that time, I will give a further direction that the relevant grounds are not to be available to the opponent to argue at the substantive opposition hearing.
The period for serving evidence in answer commences from the date at which the Statement of Grounds and Particulars is finalised.
COSTS
I have found for DuPont in this matter and in accordance with the general principle of costs going with the event, award costs against DowElanco.
R J Sawyer
Delegate of the Commissioner of Patents
Patent attorneys for the applicant : Callinan Lawrie, Kew
Patent attorneys for the opponent : Davies Collison Cave,
Melbourne
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