E.I. Du Pont De Nemours and Co. v DowElanco

[1993] APO 21

official notice

decision of AN acting deputy commissioner of patents

Application        :    No. 626551 in the name of E.I. DU PONT DE NEMOURS AND COMPANY

Title             :    TABLET FORMULATION OF PESTICIDES

Action:    Opposition by DOWELANCO, and an application under regulation 5.10(2) to extend the time for serving a statement of Grounds and Particulars

Decision:    Issued            .  Extension of one month granted.  Public interest consideration different to those relevant to extension of time for serving evidence.  Costs awarded against opponent.

patents act 1990

decision of AN acting deputy commissioner of patents

Re:Patent Application No. 626551 by E.I. DU PONT DE NEMOURS AND COMPANY, opposition by DOWELANCO, and an application under regulation 5.10(2) to extend the time for serving a 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 90/0007, and in Australia was allocated the application number of 36911/89. The application entered the national phase of processing on 28 Dec. 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 Monday 7 December 1992, the opponent applied for an extension of time of 1 month (from 6 Dec 1992 to 6 Jan 1993) to serve the Statement of Grounds and Particulars. On 18 January the applicant notified its objection to the granting of that extension and the matter was set for hearing in Melbourne on 18 March. The applicant was represented by Mr Bruce Caine (of counsel), assisted by Mr M Houlihan (patent attorney of Callinan Lawrie, Kew); the opponent was represented by Mr John Slattery (patent attorney) assisted by Dr T Corbett (patent attorney) and Ms D Beadle (all of Davies Collison Cave, Melbourne).

The Request

The request for the extension of time is in the following terms:

"Before the Notice of opposition was filed, some confusion arose in our company concerning exactly which patent attorney was handling the present opposition on behalf of the opponent. The original watch for acceptance of Patent Application No 626551 (36911/89) was initiated by Mr Thomas Zindrick who was located at the DowElanco offices in Midland, Michigan. The watch was subsequently transferred to Mr Dugal Sickert located at the DowElanco offices in Indianapolis, Indiana on 27 June, 1992. However this transfer was not communicated to other parties involved including Mr John Raynor of W.H. Beck Greener & Co (U.K.) who, on behalf of DowElanco, originally instructed Davies & Collison to initiate a watch on Patent Application No 626551 (36911/89).
Consequently, Mr Sickert only learnt of the opposition deadline of 6 November, 1992 when a copy of a letter dated 22 October, 1992 addressed to Mr Zindrick from Mr Raynor was received by him on 30 October, 1992. A more detailed version of the events leading up to this state of confusion is attached hereto as Appendix 1, together with copies of the documents referred to therein.

Since the filing of the notice of opposition, DowElanco has been conducting extensive searches. Despite having located more than ninety references, the full search results are not yet available. Further time is required to obtain the remaining search results and review all of the documents to determine which are relevant to this matter, so that the Statement of Grounds and Particulars will be served within the next month. Favourable consideration of this request is respectfully sought."

Accompanying that request as Appendix 1 is a 1 1/2 page 'summary of the events surrounding the watch/opposition ..'. A summary of that summary is:

October 1990   Mr Zindrick asked to 'find out any info you can ..' on the application.

October 24, 1990    Beck Greener & Co was requested to maintain a watch on the PCT publication WO 90/0007

November 9, 1990    Zindrick advised by Beck Greener & Co (inter alia) that their Australian Associates (Davies & Collison) have been asked (as instructed) to maintain a watch on a corresponding Australian application 893911 (sic).

December 7, 1990    Raynor advises Zindrick inter alia, that a watch has been set up in Australia.

May 31, 1991       Raynor advises Zindrick that the Australian application has entered the national phase.

June 27, 1991      Watch File transferred to Sickert

October 22, 1992    Raynor writes to Zindrick 

".. I have just received ... a copy of application no 36911/89 (626551) as accepted.

I remind you that the opposition period expires on

6th November 1992

Perhaps you could just let me have your confirmation before that date as to whether or not you wish to oppose the Patent"

This letter was forwarded to Sickert, and received by him on October 30 1992.

November 3, 1992    Raynor, now aware that Sickert is dealing with the possible opposition, reminds Sickert of the deadline.

November 4, 1992    Sickert requests Davies & Collison file a notice of opposition.

The day before the hearing, the opponent provided a declaration by Mr Sickert in support of the above summary. They also provided a declaration by Dr Terry Corbett (patent attorney of Davies Collison Cave, Melbourne) setting out the actions of the opponent since filing the notice of opposition. Those actions can be briefly summarised as:

November 6, 1992    Sickert wrote to DowElanco personnel in various parts of the world requesting copies of any references relevant to the opposed application.

November 11, 1992   Patent Office requested to provide copies of all OPI documents on the file.

November 12, 1992   Requested a copy of the corresponding European file wrapper.

November 20, 1992   Sickert requests advice of whether it is possible to obtain an extension of time.

November 23, 1992   Sickert advises Corbett that they would need more time to review and discuss references with technical experts.

November 24, 1992   Sickert advises they were still collecting references, had a meeting scheduled for 25 November with their Research and Development Managers to review the references. Also advised that they would be hard pressed to gather and review all references by 6 Dec 1992, as 26 and 27 November were national holidays in USA.

November 27, 1992   Received references from DowElanco New Zealand.

November 30, 1992   Received references from Sickert

December 1, 1992    Received further references from Sickert

December 2, 1992    Received still further references from Sickert. Also contacted a potential Australian expert, and received further references from him.

December 7, 1992    Filed an application for an extension of time to serve the statement of Grounds and Particulars.

December 11, 1992   Received further references from DowElanco Europe

December 14, 1992   Received a copy of the European file wrapper

December 24, 1992   Received further results of literature searches, from Sickert.

January 4, 1993     Forwarded draft Statement of Grounds and Particulars to DowElanco for their review prior to filing.

January 5, 1993     Sickert confirms his approval of the statement.

January 6, 1993     Statement filed and served.

Submissions

At the hearing, the opponent submitted that, by reason of the confusion within the opponent of who was the relevant attorney responsible for the potential opposition, the opponent was not in a position to conduct any searches before filing the notice of opposition. As a result, they did not have the benefit of a timely 'kick-start' in preparing their statement, and events proved that the time available for serving the statement was insufficient.

The applicant submitted that the material supplied by the opponent to support their extension of time did not constitute a full and frank disclosure of the circumstances. They explicitly stated that they did not contend there was any mala fides in the actions of the opponent - but rather that they had not provided sufficient material to enable me to exercise my discretion in their favour. They also invited me to compare the nature and extent of the material provided by the opponent with that as discussed in Kimberly-Clark v Commissioner of Patents (13 IPR 569)

Preliminary Matters

At the hearing, two matters arose which I here deal with preliminary to my decision in respect of the request for an extension of time.

Admissibility of late-filed evidence

At the commencement of the hearing, Mr Caine objected to the admissibility of the declarations by Mssrs Sickert and Corbett, which were filed and served at lunch-time the day before the hearing. He further argued that if the material was admitted and was in any way determinative of the present matter, the applicant should nevertheless be entitled to costs in the hearing.

In Kaiser Aluminium and Chemical Corporation v The Reynolds Metal Company (1969) 120 CLR 136 (at p.143) Kitto, J. stated:

"In my opinion, however, it is in the public interest that a serious opposition by a person entitled in fact to oppose the grant of a patent should be dealt with on the merits, rather than that it should be shut out in consequence of a failure in procedure, lamentable though the failure may be."

In my view, this statement is most apposite to the present circumstances; indeed that case involved a situation analogous to the present wherein the facts relied on (to establish locus standi vis-a-vis an extension of time) were not provided on the relevant form. In that case the opponent sought to put those facts before the Court, and the applicant objected. The Court found for the opponent, and the above quote must be read in the context that the lamentable failure of procedure was the failure to include certain material in a form.

In my view it is open to a party to a procedural action such as the present to provide the Commissioner with any material in support of their position at any time up to and including the hearing. This view is consistent with that expressed in Kaiser Aluminium (supra) - subject to certain matters - ie.:

-firstly, natural justice requires (indeed demands) that the other party should have a reasonable opportunity to consider and make representations concerning that material - and if that necessitates an adjournment of the hearing, the person late-filing that material is likely to be subject to an adverse award of costs for the reconvened hearing irrespective of the outcome;

-secondly, if the material is determinative of the matter being heard, it is appropriate to at least not award costs for that extra material to the party who late-filed it, and indeed perhaps award costs against that party; and

-thirdly, if there is any basis for concluding that the material was late filed in an effort to take the other party by surprise (or otherwise gain an unfair advantage), the Commissioner should refuse to admit it.

In the present case, I do not believe that the material was late filed in an effort to take the other party by surprise, and I admit it. Also the applicant clearly had time to consider the material (indeed it based much (if not most) of its submissions thereupon) so I do not believe the applicant has been denied natural justice. I will deal with the matter of costs later in this decision.
Serious Opposition

Mr Caine argued that the opponent had not demonstrated that its opposition was serious - and as a result, no extension of time could be justified. In support of this contention he referred to various pieces of correspondence provided by the opponent in its supporting evidence, and queried what actions (if any) the opponent had undertaken before the application was accepted. Mr Slattery commented that it was usual to not take any such action prior to acceptance.

Mr Caine also referred me to the Statement of Grounds and Particulars. He drew my attention to the large number of particularised documents; and also to certain particularised documents which must have been published after the application date of the application - suggesting that these were clearly irrelevant, there being no apparent disputation as to priority date. He noted the reasons stated in the request for an extension of time referred to determining which are relevant, and argued that the statement was inconsistent with the reasons, and this  indicated that the opponent was not serious in the opposition.

I note the opponent established a watch on the application at a very early stage in its life. Noting that in most cases the claims of an application are significantly amended during examination, it seems appropriate for a potential opponent to establish a watch on an application, but I would not expect a potential opponent to undertake detailed searches or like considerations until the application was accepted.

With respect to the Statement of Grounds and Particulars, I would agree with Mr Caine that the statement particularises a large number of documents (about 120 under the ground of lack of novelty). However that situation is dealt with in the (as yet unreported) decision in re Patent Application No. 623933 by Imperial Chemical Industries Plc and opposition thereto by Irenco Incorporated, Dyno Industrier A.S. and Dyno Wesfarmers Limited dated 16 February 1993.  I do not think it appropriate (let alone possible) to here consider the relevance of particularised documents; nor on the basis of that statement alone conclude that the opposition is not serious.

In my view the actions of the opponent over the course of the application, and particularly since filing the notice of opposition, are consistent with a serious opposition. 

I also observe here that a serious opposition may ultimately be found to be ill-justified (as distinct from mischievous or vexatious) - but that is an issue which can only be determined upon a consideration of the evidence.
Decision

The relevant regulation governing an extension of time to serve a statement of grounds and particulars is Regulation 5.10.  This regulation provides, in-so-far as it is relevant to the present matter, as follows:

5.10  (2)   The Commissioner may:

(a)on the application of a party in the approved form; and

(b)on such reasonable terms (if any) as the Commissioner specifies;

extend the time within which the party may take a step prescribed in this Chapter ... .

(5)The Commissioner must not ... grant an application under subregulation (2) ... unless the Commissioner:

(c) ...

(ii)is reasonably satisfied that ... an extension of time ... is appropriate in all the circumstances.

Prior to the hearing of this matter, there have been no decisions issued specifically on an application for an extension of time under sub-regulation 5.10(2) to serve a Statement of Grounds and Particulars. However the sub-regulation was considered in detail in Kent-Moore Corporation V Environmental Products Amalgamated Pty Ltd (1992) AIPC 90-915. From that decision, I particularly note the following:

"The law which was applied under the 1952 Act to this class of extensions has been comprehensively reviewed by the Federal Court in Vangedal-Nielsen v Smith and Gelphen Nominees (1980) 33 ALR 144 and in Lyons v Registrar of Trade Marks 1 IPR 416; in addition there are many Office decisions dealing with such extensions, quite a few of which are published in the Butterworth Industrial Property Reports (IPR) and in the CCH publication, Australian Industrial & Intellectual Property (AIPC). This law can be stated simply as follows:

(i)The Commissioner, before allowing the extension, must be satisfied that the person seeking the extension has made out a proper case justifying the extension;

(ii) The Commissioner must consider not only the private interests of applicants for patents, and opponents, but also the public interest, by ensuring that invalid patents are not granted, and that proceedings are not unreasonably protracted".

and also:

"...there have been many cases reported dealing with applications to extend the time for filing evidence, and the justifications therefore. However, whatever the justification might ultimately be, it seems to me that it is imperative that the person seeking the exercise of the Commissioner's discretion must provide the Commissioner will a full and frank disclosure of the facts which give rise to the need for the extension. That much is apparent from the words of Jenkinson J in Kimberly-Clark v Commissioner of Patents 13 IPR 569, when he was considering an extension of time under s 160 of the Patents Act 1952. At page 583 he says:

"The considerations that were identified by Bowen CJ in Vangedal-Nielsen v Commissioner of Patents (1980) 33 ALR 144 at 150 as relevant to the exercise of the power of extension conferred by s 59(1) will in my opinion be relevant also to the exercise of the power conferred by s 160(2)(a) in relation to the time prescribed by the former subsection for lodging notice of opposition, although the relative weight of each consideration may well be different in the two different discretionary judgements. In order to make out the "proper case ... justifying an extension" to which Bowen CJ referred in that case, an applicant would in my opinion have to go beyond a disclosure of the processes by which an agent's errors came to be committed, and would have to expose frankly, inter alia, all the conduct, knowledge, beliefs and mental processes of the applicant (or, in the case of corporation aggregate, of the relevant officers and other agents) relevant to an understanding of the way the failure to do the act or take the step occurred, or relevant to an evaluation of the reasonableness of that conduct"."

In my opinion, a person seeking an extension of time to serve a Statement of Grounds and Particulars is likewise bound by the same onus of disclosure. If that onus is not discharged, the Commissioner cannot be satisfied that the extension is appropriate in all the circumstances, and therefore cannot grant the extension of time.

From the material before me which sets out the actions of the opponent in the present matter, it is clear that:

-the opponent had a long-standing interest in the application, and had set up appropriate watches;

-in the period leading up to the filing of the notice of opposition, there was confusion within the opponent of who had responsibility for the matter;

-following the filing of the notice, the opponent sought information from 8 associates, and advised them of the 6 December deadline;

-the opponent expressed doubt to its Australian attorney that it could complete the statement for service by 6 December.

They sought information regarding a possible extension of time, and subsequently requested their Australian attorney to make such an application;

-the opponent initially proceeded (at least up to 23 November) on the basis that the statement would be served on 7 December

In considering the material before me, I particularly note that I have not been provided with copies of the correspondence from the Australian attorney to the opponent. This has particular relevance with respect to two letters to the Australian attorney, wherein the opponent states that they will proceed on the basis of serving the statement by Dec 6 - "unless I hear otherwise". There is nothing before me to show that they ever heard "otherwise".  At the hearing Mr Slattery was unable to state whether or not the opponents had "heard otherwise", but observed that there was a clear inference that they had through their continuing to forward search results after the due date.  Having regard to this, the earlier instruction to request an extension of time to serve that statement, and the previously stated concern about meeting the due date, I conclude that the opponent found itself in a position where it could not properly complete the statement in the time initially allowed. I am therefore satisfied that the opponent has sufficiently met the requirements for a full and frank disclosure of the facts which give rise to the need for the extension in the present case.

As to whether, in all the circumstances, I should grant the extension requested, I note:

-the opponent has requested an extension of the time to serve the statement of one month only;

-the statement was served within the period sought by the application for extension;

-the statement of grounds and particulars is an important document. As I said in Kent-Moore Corporation v Environmental Products Amalgamated Pty Ltd (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 is therefore desirable that an opponent should in the first instance serve a proper statement of grounds and particulars.

-with respect to the interests of the various parties, it is self evident that the interests of the opponent are best served by the granting of the extension, and those of the applicant by the refusal of the extension.

-with respect to the public interest, an application to extend the time for serving a statement of grounds and particulars is significantly different to an application to extend the time for serving evidence (as discussed in the Kent-Moore decision (supra)) - in that at the time the extension is sought, the Commissioner (and through him, the public) is unaware of the basis of the opposition.  In my view, the public interest in such circumstances is in favour of granting a short extension of time to serve the statement of grounds and particulars.

Thus, having regard to all the circumstances, my conclusions in this matter are:

-the opponent was hindered in preparing its statement of Grounds and Particulars through the initial internal confusion as to who was supposed to be handling the case;

-the opponent attempted to prepare its statement for service by 7 December, but was unable to do so;

-the above-mentioned hindrance can reasonably be said to have adversely affected the ability of the opponent to serve its statement within the time allowed;

-the statement was served by the end of the period sought by this extension.

-the public interest is in favour of granting a short extension of time.

In all the circumstances, I consider the extension of time to be justified.

Costs

In actions before the Commissioner, costs usually follow the event. Although I have found the present request for an extension of time justified, I do not think that would be the case in the absence of the evidence of the activities of the opponent subsequent to the filing of the notice of opposition. I note that such evidence was neither referred to nor provided until the day before the hearing; therefore the applicant was justified in objecting to the extension of time. Furthermore, the late-filing of that evidence did not provide the applicant with sufficient time before the hearing to reasonably reconsider its position in objecting to the extension of time. In these circumstances, I award costs against the opponent.
Directions

Following agreement (should I grant the extension) of the parties at the hearing, the time for serving evidence in support of the opposition, and for requesting dismissal of the opposition, is to commence at the date of this decision.

Conclusion

Having found the request for an extension of time justified, I extend the time for serving the statement of grounds and particulars to 6 Jan. 1993. The time for serving evidence in support of the opposition, and for requesting dismissal of the opposition, is to commence at the date of this decision.

D. HERALD

Acting Deputy Commissioner of Patents

Patent attorneys for the applicant  :  Callinan Lawrie, Kew

Patent attorneys for the opponent   :  Davies Collison Cave, Melbourne