E.I. DuPont De Nemours and Co. v DowElanco

[1993] APO 69

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:    An application by DOWELANCO under regulation 5.10(2) for an extension of time of three months to serve evidence in support, and an objection thereto.

Decision:            Issued            .  An appropriate case for an extension of time for 3 months has not been made out, however, an extension of time from 19 July 1993 to 15 September 1993 was allowed to permit the service of evidence which had already been prepared and filed.

A further application for extension from 19 October 1993 to 19 December 1993 logically cannot be of any effect since an extension has only been granted until 15 September 1993.

Special circumstances preventing filing of application for extension of time before the time sought to be extended elapsed, was also considered.

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, an application under regulation 5.10(2) for an extension of time to serve evidence in support, and an objection thereto.

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 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 file an amended 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.  I note that whereas 117 documents were cited in the statement originally served in January 1993, this number was reduced to 50 in the amended statements filed in July and August 1993.

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 I heard the matter in Canberra on 18 October 1993.

At the hearing DuPont were represented by Mr M. Houlihan, patent attorney of Callinan Lawrie, Kew; DowElanco were represented by Mr J. Slattery, patent attorney of Davies Collison Cave, Melbourne.

I note that evidence in support was served on 20 July 1993, 19 August 1993, 8 September 1993 and 15 September 1993 and that an application for extension of time to serve further evidence in support from 19 October 1993 to 19 December 1993 was filed on 19 October 1993.

EVIDENCE

The application for extension of time (from 19 July 1993 to 19 October 1993) in which to serve evidence in support, is expressed in the following terms:

We have now served part of our evidence in support.  The preparation of the remaining evidence in support is well advanced.  Copies of at least the abstracts of the 117 documents listed in the statement of grounds and particulars filed on 5 January 1993 were obtained and forwarded to our formulations personnel for their review.  Due to the large number of documents involved, this review took about 2 months.  On the basis of the review, we have now deleted many of the documents from the statement of grounds and particulars and provided further particulars in respect of the remaining documents.  We have also identified two experts in the art and an initial review has been obtained from one of them.  We now propose to forward copies of all of the documents listed in the statement of grounds and particulars filed on 14 May 1993 (sic) to each of the experts for their detailed consideration.  We also propose to serve copies of the remaining documents and/or English language versions thereof on the Applicant, together with publication evidence.

Further time is required to allow both experts to review the 50 documents now relied on in the statement of grounds and particulars and provide their comments so that statutory declarations can be prepared, settled and executed.  Further time also is required to serve the outstanding documents and/or English language versions thereof on the Applicant, together with the publication evidence.  It is anticipated that the remaining evidence in support will be served in the next three months.

At the hearing Mr Slattery referred to a statutory declaration upon which he said he would be relying to establish that it was because of the existence of special circumstances that the extension of time (to serve evidence in support from 19 July 1993 to 19 October 1993) had been filed (on 20 July 1993) outside of the time sought to be extended.  The statutory declaration, dated and filed 20 July 1993, is expressed in the following terms:

I, Debra Anne Beadle, of Davies Collison Cave of 1 Little Collins Street, Melbourne 3000, State of Victoria, Commonwealth of Australia, do hereby solemnly and sincerely declare as follows:

1. I am a technical assistant employed by Davies Collison Cave (hereinafter referred to as "my firm"), the patent attorneys acting on behalf of the opponent in respect of the opposition to Australian patent application no. 626551 (36911/89) (hereinafter referred to as "the opposition")

2. I am responsible for handling the opposition under the supervision of Dr Terry Corbett who is a partner of my firm.

3. The due date for serving the evidence in support and/or filing an application for extension of time for serving the evidence in support in respect of the opposition was 19 July 1993.

4. My firm was instructed by the opponent to serve part evidence in support on Callinan Lawrie, the patent attorneys acting on behalf of the applicant in respect of the opposition on 19 July 1993.  I had been receiving documents from the opponent for the purpose of filing the evidence in support over the past few weeks.  However, on the morning of 19 July 1993 I was still awaiting English translations of some of the documents from the opponent who is based in the United States of America.  I was unable to complete the statutory declaration comprising the part evidence in support until these translations were received.

5. I received the translations by facsimile on the morning of 19 July 1993.  I immediately instructed my secretary to photocopy all of the documents comprising the part evidence in support.  The final draft of the statutory declaration by Terence G. Corbett exhibiting these documents was finalised at this stage, together with an application for an extension of time for serving the evidence in support.  However we were hindered in our efforts to complete the statutory declaration and the extension of time application because of a computer breakdown in our office.  As I did not know how long the computer system would be out of order, I immediately contacted Mr Michael Houlihan of Callinan Lawrie who is the patent attorney acting on behalf of the applicant and explained that there would be some delay in serving the part evidence in support.  Mr Houlihan explained to me that he would be leaving his Office at 4.15p.m.  and that he would ring me back and advise the latest time at which service of the part evidence in support could be completed.

6. Mr Houlihan subsequently advised that while normally his office would close at 4.50p.m., he had arranged for Mr Jeffrey Ryder to be present at the office until 5.30p.m.

7. While awaiting Mr Houlihan's advice, we were endeavouring to complete the part evidence in support and the application for an extension of time, notwithstanding computer problems.  We also prepared an application for an extension of time under Section 223 as a precautionary measure in the event that the part evidence in support was not served on the applicant by 19 July 1993.  A copy of this document and associated correspondence is attached and marked "Exhibit DAB-1".

8. At approximately 3.00p.m., my secretary had advised the filing clerk responsible for delivering documents to the Melbourne Patents Sub-Office that we had documents which would require filing in the late box.

9. The statutory declaration by Terence G. Corbett together with Exhibits TGC-1 to TGC-40 and the two extension of time applications were finalised at approximately at 5.00p.m.  At this time my secretary was unable to locate the filing clerk.  My secretary was advised by another employee of the firm that the filing clerk was still present in the office and that if the documents were left on the filing clerk's chair, she would be sure to get them.

10. A courier picked up the documents from our office at about 5.05p.m.  with instructions to deliver them to Callinan Lawrie in Kew by 5.30p.m.

11. I have been advised by one of our switchboard operators that Mr Ryder had telephoned at 5.30p.m.  on 19 July 1993 and advised that the documents had not yet arrived and that he was leaving his office, but I was not told of this until the morning of 20 July 1993.  I do not understand why this message was not conveyed to me at the proper time.  I also understand that the courier left a message with our switchboard stating that there was no-one at the offices of Callinan Lawrie when he arrived in the early evening of 19 July 1993 and consequently he was unable to deliver the documents.  The courier advised that the documents would be sent to Callinan Lawrie early in the morning of 20 July 1993.  I have now been advised by the secretary of Mr Houlihan that the documents were in fact served on the morning of 20 July 1993.

12. Later in the morning of 20 July 1993, I was advised by our records clerk that the Patent Office fee list for 19 July 1993 did not include fees for the two extension of time applications in respect of the opposition.  It was then discovered that the part evidence in support and the two extension of time applications which I had intended to be filed in the late box on 19 July 1993 and which I had every reason to believe had been so filed, were in fact still sitting on the chair of the filing clerk.  I do not understand why these documents were not included in the late box.

13. In summary, it was always my intention to complete and serve the part evidence in support and file the two extension of time applications by the close of business on 19 July 1993.  That I failed to do so was due to a chain of events and mishaps which were beyond my control.

SUBMISSIONS

In their submissions both parties referred to the decision in Kent-MooreCorporation v. Environmental Products (1992) AIPC 90-915. In that decision the hearing officer indicated that in his view, before he could grant an extension of time to file evidence in support he must be reasonably satisfied that there is a justification given in respect of which the answer to all of the following factors is "no":

a. Is the extension being sought for reasons which are based on matters not referred to (either directly or by clear implication) in the statement of grounds and particulars?

b. Is the extension being sought to find evidence to support speculative or non-specific particulars?

c. Is the extension being sought because the opponent requires more time to determine whether a particularised document is relevant?

d. Has there been any undue delay in putting the evidence together?

Mr Slattery's main submissions at the hearing on behalf of the applicant for an extension of time may be summarised as:

- the fact that the opponent has been serving evidence in support on a continuous basis shows that a serious opposition is in train.

- given the large number (50) of documents cited in the amended statement of grounds and particulars, the time taken to assemble, translate where necessary, and establish publication dates was commensurate with the complexity of the task such that there had not been any undue delay in putting together the copies of cited documents part of the evidence in support; re Sandoz Ltd. v. Fujisawa Pharmaceutical Co. Ltd. (1993) AIPC 90-972.

- by the date of the present hearing, serving of the cited documents had been completed and the only evidence in support yet to be finalised was that to be provided by two experts who had been retained and briefed.  The opponent is an overseas company and time consuming difficulties had been experienced in finding local experts who were not only suitably qualified but also were willing to spend the time necessary to provide the evidence.

- The statutory declaration by Debra Beadle establishes that special circumstances existed in the firm of Davies Collison Cave on 19 July 1993 which prevented the application for extension of time from being filed on that day.  A chain of events arising from the computer breakdown resulted in actions being taken late in the day.  Debra Beadle had every reason to believe that the actions which she took would result in the application being filed in time.  The application had been filed the next day so that there had been no delay in rectifying the matter.

- In considering whether "special circumstances prevented" a broad meaning should be given to the term "prevented"; re Genentech Inc v. Wellcome Foundation Ltd. 11 IPR 401.

Mr Houlihan's main submissions at the hearing on behalf of the objector to the application for extension of time may be summarised as:

- the opposition was not serious because the opponent appeared to have allocated insufficient resources to the conduct of the matter resulting in actions being done in an untimely and haphazard way.

- the application for extension of time contains a reference to a statement of grounds and particulars having been filed on 14 May 1993.  This date is incorrect and misleading as amended statements were filed on 14 July 1993 and 19 August 1993 but not on 14 May 1993.  No attempt has been made to correct the error and it may well have gone undetected had there not been an objection to the application for extension of time.  The accuracy of statements made in an extension of time application is a circumstance which is relevant to the question of whether the extension of time should be allowed; re GerberScientific Products Inc. v. L.Vogel & Sons Pty. Ltd. (1991) AIPC 90-759.

- it appears from the application for extension of time that the opponent had been spending its time determining the relevance of documents from a general search list.  However no reasons were given in the application to explain the delay in filing evidence in support.

- documents are cited in the presently amended statement of grounds and particulars which were not cited in the original statement.

- alleged difficulties in finding local experts do not ring true in view of the statement by Terence G.  Corbett, in a statutory declaration dated 17 March 1993, that on 2 December 1992 he had "contacted a potential Australian expert and received further references from him".

- it has not been established that there were in fact special circumstances which prevented the application for extension of time being filed before the end of the time sought to be extended.  Computer failure is not uncommon in offices and in this instance the source material was not locked up in the computer but was readily available.  That an alternative means for preparing the documentation (which is not complex) such as using another computer, a typewriter or handwriting, was not adopted seems to have resulted from a deliberate decision to just wait until whenever the computer came back up; re Paracel Holdings Pty. Ltd. v. McIraith McEachern Operations and Robert L. Sands (1993) AIPC 90-982.

- from the declaration by Debra Beadle it is surprising that, having left the documentation on the filing clerk's chair, no check seems to have been made that the filing clerk had taken appropriate action, even though the staff responsible at Davies Collison Cave were clearly aware of the urgency of the matter; re the Genentech decision, supra.

In reply Mr Slattery submitted that whereas there were some patent documents cited in the amended statement of grounds and particulars which appeared not to have been cited in the original statement, this was in fact because they were English language equivalents.

DECISION

An application for extension of time may be made under reg 5.10(2) before or after the time sought to be extended has elapsed.  In my view, however, in the latter case the party applying for the extension, apart from establishing grounds for the extension being granted, must also show that special circumstances existed which prevented the application being made before that time. "Special circumstances" in this context are of the same nature as those relevant to considerations under the "former opposition extension provisions" (see reg 82(b) of the Patents Act 1952)." The rationale for this view is that under the current structure of the regulations:

.the other party may be disadvantaged or unnecessarily inconvenienced; and

.the proceedings may be unnecessarily delayed,

if evidence or notice of a request for an extension of time is not served/filed before the time for completion of evidence has expired.

Subregulation 5.10(2) enables the Commissioner to grant an extension of time to (inter alia) file evidence in support of an opposition.  This subregulation provides:

(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, not being a step that is taken under regulation 5.3 ("filing of opposition").

Subregulation 5.10(5) sets out the conditions precedent for the Commissioner to grant an extension of time under regulation 5.10(2) (inter alia).  This subregulation provides:

(5)   The Commissioner must not give a direction under subregulation (1) or grant an application under subregulation (2) or (4) unless the Commissioner:

(a)if he or she proposes to grant an application by a party-is reasonably satisfied that the other party has been notified of the application; and

(b)if he or she proposes to act on his or her own motion-ensures that the parties are notified of the proposed action; and

(c)in either case:

(i)gives the parties a reasonable opportunity to make representations concerning the application or proposed action; and

(ii) is reasonably satisfied that a direction, an extension of time or the serving of further evidence is appropriate in all the circumstances.

I note that, before I can grant an extension of time in this matter, I must be reasonably satisfied that the extension of time is appropriate in all the circumstances.  If I am not so satisfied, I cannot grant an extension of time.

Special Circumstances

In considering the reasonableness of the behaviour of the staff responsible at Davies Collison Cave in relation to the failure to file the application for extension of time within the time sought to be extended, I assess what I consider to be the relevant factors as follows:

1. In the mid-afternoon of 19 July 1993, Debra Beadle telephoned Michael Houlihan of the agents for DuPont and explained that DowElanco intended to serve part evidence in support but would not be able to do so until late in the day.  Mr Houlihan agreed to arrange for his Office to remain open for longer than otherwise would have been the case.  At this stage it seems that the staff responsible at the agents for both parties recognised that the completion of actions required to be done within the prescribed time allowed was sufficiently important for everyone involved to put themselves out to at least a reasonable extent to ensure that matters were attended to on time.

(ii)  I am prepared to accept that the computer breakdown at Davies Collison Cave on 19 July 1993 may have prevented the documentation associated with the application for extension of time from being prepared earlier than it was.  However, given the urgency of the matter I regard it as unreasonable to just wait for whenever the computer came back up again rather than to go to the somewhat extra effort of preparing the documentation by an alternative means.

(iii) The required documentation was eventually prepared late in the day on 19 July 1993 and left on the filing clerk's chair with the expectation that she would be sure to find it and file it that day in the late box at the sub-office.  I think that the apparent failure to check on the day concerned that the filing clerk had in fact taken the appropriate action was not reasonable.  I also think that it would have been reasonable to make alternate arrangements to ensure that the documents reached the late box at the sub-office, particularly as Davies Collison Cave is located a short walking distance from the sub-office. 

(iv)  It would also have been reasonable for staff at Davies Collison Cave to have notified Michael Houlihan's office later in the day of progress in relation to the evidence to be served, to ensure that somebody was present to accept service of the evidence.

It is clear that the staff responsible at Davies Collison Cave knew that the matter was urgent and that an expectation had been established that everyone responsible would put themselves out at least to a reasonable extent to ensure that the matter was done on time.  In my view, it is also reasonable, in these, circumstances, for staff to ensure that every reasonable action is taken to satisfy the requirements of the Act and Regulations.  It is questionable as to whether this was done in this case.

However, in my view, the opponent has established, on the basis of the statutory declaration by Debra Beadle, that special circumstances existed which prevented the application being made until after the end of the period of time sought to be extended.  I am prepared to accept that the circumstances prevailing in the office of Davies Collison Cave relating to the delays caused by the computer breakdown were special and provide a basis for an extension of time, particularly since the relevant material was filed and served the next day.  Consequently, I will not reject the application for extension of time on this basis. 

Extension of time

In Kent-Moore Corporation v Environmental Products Amalgamated Pty Ltd (1992) AIPC 90-915 on pp10-12 the hearing officer states:

"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."

The opponent's case relies on their assertions that the opposition is a complex and involved matter and that it has not been easy for them to retain and obtain evidence from local experts.

As the hearing officer said in Kent-Moore (supra)

"... 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."

(My emphasis added.)

In my opinion, a person seeking an extension of time to serve evidence in opposition proceedings is 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 must not grant the extension of time."

I agree with the hearing officer.  In my view, the comments of Jenkinson J in Kimberly-Clark v Commissioner of Patents (supra) about the need for a full and frank disclosure sufficient to enable a proper evaluation of the reasonableness of the conduct in the circumstances, leading to the need for an extension of time, are relevant to the consideration under regulation 5.10(2) (which does not involve establishing an error or omission), even though that decision was made in relation to an extension of time under section 160 of the 1952 Act dealing specifically with error or omission.

It has been argued on behalf of the opponent that there has been no undue delay in putting the evidence together because the opposition is a complex and involved matter.  It is true that the original statement of grounds and particulars referred to a large number of documents and that the amended statement still refers to a relatively large number of documents.  What has not been established is that this complexity arises from any situation other than that of the opponent's own making.  See Imperial Chemical Industries Plc v Ireco (sic) Incorporated, Dyno Industrier A.S. and Dyno Wesfarmers Limited (unreported decision on application no. 623993) dated 3 May 1993.  In this case the hearing officer 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. 

In the application for extension of time it is stated that "further time is required to allow both experts to review the 50 documents now relied on in the statement of grounds and particulars and provide their comments so that the statutory declarations can be prepared settled and executed"; no reason is given why further time is required for these actions.  At the hearing Mr Slattery made submissions which referred to difficulties experienced in the process of obtaining evidence from local experts; I attach little weight to these assertions in the absence of substantiating evidence.

I further note that the opponent had a period of approximately 8 months from 6 November 1992 (the date of filing a Notice of Opposition) to 19 July 1993 (the end of the period allowed for service of evidence-in-support).  Even if the time available to the opponent was to be discounted by the time between DuPont's objection to the application for an extension of time to serve the Statement of Grounds and Particulars and the emergence of the delegates decision on this matter (19 April 1993), on the basis that the opponent could not be expected to pursue the opposition until there was a clear basis for the opposition, the opponent would still have had 5 months to pursue evidence in support.  (see Sandoz Ltd. v. Fujisawa Pharmaceutical Co. Ltd, supra).

As stated above, it is incumbent upon a person seeking an extension of time to provide a full and frank disclosure of the facts which give rise to the need for the extension.  The opponent has provided no evidence or justification for an extension of time apart from assertions and submissions about the complexity of considering a large number of documents, including the need for some translations, and difficulties in obtaining evidence from local experts.  DowElanco has been unable to provide evidence to support these assertions and submissions, or, of any unexpected problems, or, of any other matters, to clearly justify the amount of time taken so far.

It is not clear why the opponent left it to the last day to provide material necessary to serve the relevant evidence.  In my view, it would have been reasonable to expect that in leaving matters to the last day, unforseen circumstances may arise which make it impossible to meet the requirements of the Act and Regulations.

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.

Public Interest

In dealing with the public interest the hearing officer in Kent-Moore (supra), page 13, said

"In my view, the introduction of the statement of grounds and particulars has significantly changed the outcome when considering the balance of the interests. Following the filing of the statement of grounds and particulars, the Commissioner (and through him, the public) is aware of the basis of the opposition.  If there is no evidence in support filed, the opposition nevertheless continues, and the opponent can still appear at the hearing.  Furthermore, even if the opposition ceases by withdrawal of the opposition, the Commissioner can (and does) conduct a bar-to-sealing action on the basis of material referred to in the statement.  (The 'bar-to-sealing' procedure is elaborated in Re Applications by Gould Inc 13 IPR 644.) In so doing, the public interest in ensuring only valid patents are granted is largely met; as a result the only remaining public interest is in ensuring that the proceedings are not unreasonably protracted."

and on page 15, followed Vangedal-Nielsen v Commissioner of Patents (1980) 33 ALR 144, where Bowen CJ in referring to Kaiser Aluminium (supra) states:

"Clearly the Commissioner will have to consider the interests of the prospective opponent who, for some good reason, has not been able to mount his opposition within the initial period of three months.  The Commissioner will further have to have in mind, where a serious opposition is foreshadowed, the public interest which has been mentioned, but he will have to require to be satisfied by an applicant for an extension that a proper case has been made out justifying the extension. It would be wrong if he granted an extension simply because no-one had raised rather exceptional circumstances why it should not be granted.  Reasons why this is so include the desirability of operating the system efficiently and without unreasonable delays and also the interests of the applicant for a patent which are also clearly involved."

It appears to me that what is being said here is that it is not sufficient that a serious opposition be in train.  The applicant for an extension of time must make a proper case justifying the extension.  Also, the public interest desirably is served by ensuring that proceedings are concluded without unreasonable delays. 

The opponent's reasons for the need for the extension of time are limited to assertions and submissions about the complexity of considering a large number of documents, including the need for some translations, and difficulties in obtaining evidence from local experts.  In my view, this provides some, but not much, justification.

On the basis that there is some justification provided, I consider it is in the public interest to allow service of the evidence in support that has been prepared and filed up to the hearing date.  I can, however, find no reason to extend the time to serve evidence in support beyond the date on which the last evidence was filed before the hearing, that is, beyond 15 September 1993.

CONCLUSION

I believe that an appropriate case for an extension of time for 3 months has not been made out, however, I allow an extension of time from 19 July 1993 to 15 September 1993.

The further application for extension from 19 October 1993 to 19 December 1993 logically cannot be of any effect since an extension has only been granted until 15 September 1993.

The period for serving evidence in answer commences from the date of this decision.

COSTS

In this case both DowElanco and DuPont have been partially successful in achieving their objectives.  Consequently, I make no award of costs.

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