E.I Dupont De Nemours and Company v DowElanco

[1994] APO 45

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 DOWELANCO to amend the Statement of Grounds and Particulars under regulation 5.9 and an objection by E.I. DUPONT DE NEMOURS AND COMPANY.

Decision:    Issued                   . 

Abstract:    Request to amend the Statement of Grounds and Particulars allowed.  Directions that certain particulars are not to be available to the opponent to argue at the substantive opposition hearing. 

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 request under regulation 5.9(1) to amend 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 90/00007, 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 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…