E.I Dupont De Nemours and Company v DowElanco
[1994] APO 45
•11 August 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 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 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 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. A written decision issued on 5 April 1994.
DowElanco filed a request to amend the statement of grounds and particulars, in response to the written decision dated 5 April 1994, on 3 May 1994 and DuPont objected. The matter was heard on 20 July 1994. Both parties appeared by telephone. DuPont was represented by Mr M. Houlihan, of Callinan Lawrie, Kew and DowElanco, by Ms D Beadle, of Davies Collison Cave, Melbourne.
THE REQUEST
DowElanco requested that
"the Statement of Grounds and Particulars of opposition in respect of Australian Patent Application No 626551 (36911/89) filed on 18 February 1994 be cancelled and replaced with the new Statement of grounds and Particulars enclosed herewith.
Our reasons for making the request are as follows:
We wish to amend the Statement of Grounds and Particulars filed on 18 February 1994 so as to provide further and better particulars including page and line references of the relevant documents and to remove particulars no longer intended to be relied on."
SUBMISSIONS
DuPont submitted that:
.the application to amend the statement of grounds and particulars refers to amending the statement filed on 18 February 1994. The Delegate decided that the statement of 18 February 1994 was irrelevant and amendments should be directed to the statement filed on 5 January 1993.
.the proposed amendments were not received by the applicant until 5 May 1994. The applicant questions whether or not the amendments to the statement were filed in time and in accordance with the delegates decision because the Patent Regulations provide that the "statement" is to be served on the patent applicant.
.The opponent has completed service of its evidence in support of its opposition. The statement of grounds and particulars is supposed to advise the applicant of the case it must defend. It is not reasonable or satisfactory to say that as the applicant now has the evidence in support it must be aware of the case it has to defend and that the opponent can change the statement of grounds and particulars to make it the same as the evidence.
.a satisfactory response to the Commissioner's Direction to amend the statement of grounds and particulars has not been made in that it contains numerous errors.
In ground (i) of the statement of grounds and particulars it is not clear which version of the Australian patent specification is being relied on, that is the specification as filed or as accepted as both the application and 6 figure acceptance numbers have been given. The opponent was asked to clarify this problem in the initial request for further and better particulars.
Ground (ii) of the statement
Particular 3 refers to a British patent specification but provides insufficient material facts to indicate the relevance of this specification (eg. relevant page and line references) to ground (ii). It is insufficient to describe the British specification as an equivalent of the Australian specification for reasons given in the delegates previous decision of 5 April 1994.
Particular 7 provides a new Japanese reference but there is no explanation as to why it has been included in the statement.
Particular 8 refers to both the Australian application number and its accepted number. It is not clear which version of the document is being referred to.
Particular 12 refers to the trade mark Polyplasdone XL but has not provided a proper explanation of the nature of the trade mark in accordance with the delegates direction.
Particular 14 refers to an English translation of a German patent specification. No such translation has been served as evidence. Page and line reference numbers have not been provided.
Particulars 15 and 16 suffer the same problem as particular 3.
Particular 21 provides another new reference with no explanation.
Particulars 22, 27 and 29 have no page and line references.
Particular 28 refers to a French patent specification. Exhibit 54 of the earlier Corbett declaration does not contain a page 1. The page and line reference appears to be those of the supposed English language equivalent, British patent specification 2104780 which was particular 39 of the proposed statement of amendments of 19 August 1993. It is therefore unclear as to what document the opponent will rely on in its evidence.
Particular 31 (a) to (g), which deals with common general knowledge, does not identify the person skilled in the art and does not provide page and line references to direct the reader to matters of particular relevance. Some of the page references are 33 pages long.
Particular 31 (g) refers to a trade name Avicel as a well known tablet excipient but does not satisfy the requirements of the delegates decision in relation to trade names.
.Particulars 2, 3 and 3a of Grounds (iii) and (iv) of the statement are objectionable for the same reasons listed under ground (ii).
.Particular 31 of grounds (ii) (iii) and (iv) is further objectionable in relation to what the delegate said in Mobay v Dow Chemical Company (1992) AIPC 90-895 at page 38465 that information of the type presented in particular 31 does not even include rudimentary details of fact but rather identifies evidence that will be used.
.It follows that the applicants request for further and better particulars has still not been satisfied. Consequently, the applicant is therefore seeking that several grounds be unavailable for arguing at the hearing.
.The applicant believes the decision of 5 April 1994 on this matter should be read as the opponents last chance to comply with the requirements in relation to the statement of grounds and particulars or it will suffer the necessary consequences. The delegate of the Commissioner of Patents, in his decision of 5 April 1994, has gone to considerable lengths to give to the opponent guide-lines on the way in which it is to overcome the deficiencies in its statement of grounds and particulars. The opponent should have had no difficulty in complying with what was required by the delegate but, yet again, has decided that it would not present a satisfactory statement of grounds.
.The proposed amendments are prejudicial to the applicant as there are new additional references included in the statement.
.It is not reasonable for the opponent to plead at this hearing that they did not understand the directions. They had 28 days in which to ask the hearing officer for clarification if they were unsure of the meaning of any of the directions. They could have appealled the decision. The opponent's lack of understanding is not the applicants problem. The opponent has to date proposed 5 different amended statements of grounds and particulars to try to rectify the problem and still cannot get it right. Are they to be given another chance to amend the statement?
.The opponent has disregarded the decision of the delegate and refused to amend the statement of grounds and particulars as directed. It should not be given another opportunity to amend. The grounds of opposition should be made not available for the opponent to argue at the hearing.
DowElanco's preliminary submissions at the hearing were of a general nature. They argued that they had amended the statement of grounds and particulars to overcome the hearing officers objections and had provided page and line references "as appropriate".
They later submitted that:
.it was their understanding that the delegate had allowed 28 days from the date of the decision to file amendments. The decision does not state that the amendments must be served on the applicant within that time.
.In ground (i) the opponent thought it would have been clear that when they referred to both the 5 figure application number and the 6 figure patent number that the document they wished to rely on was the patent specification. The granted patent specification had been included in the evidence.
.Ground (ii)
Particulars 3, 15 and 16 relating to the patent family members. The opponent did not understand that page and line references were required for all documents mentioned in these particulars and thought the requirement was only for the document to be relied on in their evidence. As the British and Australian patent specifications of particular 3 are the same, apart from an omnibus claim, it is submitted that it unnecessary for page and line references to be given for the British specification as well as the Australian.
Particular 7 is equivalent to particular 8 as set out in the original statement of grounds and particulars. The difference is that in one case the reference is to the Japanese rather than the Gregorian year. This is to identify the document in the same way it was identified in evidence in support.
Particular 8 refers to the Australian "B" specification (patent) which is what was included in evidence.
Particular 12 identifies "Polyplasdone" as a form of polyvinylpyrrolidone and as such satisfies the direction. The direction was in respect to the alleged prior use ground which has now been deleted.
Particular 14 was not in fact served on the applicant. This problem could easily be remedied by amendment.
Particular 21. The document quoted is part of evidence which has been served and corresponds to particular 23 in the original statement which contained an incorrect document number. The number in the amended statement has been corrected. It does not correspond to a new particular.
Particulars 22 and 27. The opponent agrees that there have been no page and line numbers provided and does not understand why there has been such an oversight. The matter can be easily rectified by amendment. The substantive information has been provided.
Particular 28 can also be rectified by amendment.
The person skilled in the art, In relation to the requirements for common general knowledge, has been identified by identifying the relevant art.
Although there may not be line references provided for the documents relied on for common general knowledge in particular 31, there are page references for most of the documents. The line references were not provided because all the information contained within the documents is relevant and the opponent believes the direction has been satisfied. The opponent only intends to rely on documents 31 (a) to (g) and did not intend to cause difficulty with the wording "for example documents including" used in the preamble to particular 31. It could be corrected by amendment if necessary. These comments are also appropriate to particular 3 in grounds (iii) and (iv).
The opponent believes that it has satisfied the direction to provide further and better particulars. There may be the "odd" error but the opponent believes this can be rectified by minor amendment and should not form the basis for knocking out the entire ground. The opponent does have a serious opposition and believes that the amended statement of grounds and particulars in its present form, with minor "fix-ups" in relation to some simple clerical errors, should be allowable and that the opposition be allowed to proceed so that there is no more time wasting in this matter.
Both parties have submitted that costs should be awarded in accordance with the decision.
DECISION
In my decision as hearing officer, I decided on 5 April 1994 as follows:
"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 (sic) (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."
In reaching my decision I provided the following guide-lines to assist DowElanco to provide a statement of grounds and particulars which gives DuPont a reasonable understanding of the case it has to defend.
"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)."
Compliance with the directions
I must determine whether the opponent has reasonably complied with the directions given in my decision of 5 April 1994 and if not what course of action is appropriate.
DuPont argued that the response to my decision was not made in time in that the statement was not served on them within 28 days from the date of the decision. There is no requirement, either in the Patents Act or Regulations or in my written decision of 5 April 1994, for the amendments to be served on Dupont within a certain time. Consequently, the response made on 3 May 1994, was made within time. I will consider the amendments to be a replacement for the original statement of grounds and particulars served on 5 January 1993. The reference on the amendment request to the proposed statement of 18 February 1994, although incorrect, is irrelevant to the present considerations.
I will examine the amended statement of grounds and particulars filed on 3 May 1994 and determine whether it has overcome my objections.
.DowElanco has satisfied requirements in relation to ground (i) of the statement. Prior claiming can only be sustained on the basis of either an active application or a patent which is still in force. This matter can easily be resolved by the applicant.
.There are still a number of deficiencies in respect to the particulars of ground (ii).
I agree with DuPont's submission that, although evidence in support has already been served, a statement of grounds and particulars must be sufficiently informative, in itself, to enable the applicant to understand the case it has to defend prior to evidence being served. It is potentially prejudicial to the applicant and unreasonable for an opponent to wait until after evidence in support has been served to provide a statement of grounds and particulars which agrees with the evidence served.
Particulars 3, 15 and 16 still refer to "equivalents" without providing sufficient information, either in the form of page and line numbers or a statement enabling the applicant to otherwise determine the material facts. This has wasted the applicants time and is clearly prejudicial.
Particular 7 seems to have been changed to align with the document provided in evidence. I have nothing before me to prove that the document in evidence is identical with the document particularised in the statement of grounds and particulars dated 5 January 1993 (the original statement). This has wasted the applicants time and is clearly prejudicial.
I am willing to accept DowElanco's argument that Particular 8 refers to the Australian B publication as it is common to cite both the Australian application and acceptance numbers together as a reference.
I think particular 12 is sufficient as amended as Polyplasdone XL is simply an example of a group of polyvinylpyrrolidone dispersing agents. Knowledge of the exact composition of Polyplasdone XL under these circumstances does not appear necessary.
Particular 14 was not served on the applicant but was included in the statement of 5 January 1994. This has wasted the applicants time and is clearly prejudicial.
DowElanco alleges particular 23 of the original statement contained an incorrect number and that particular 21 of the amended statement contains the correct number. I have nothing before me to prove this. Why has it taken so long for this information to be provided and why has nothing been provided to establish why the error occurred? This has wasted the applicants time and is clearly prejudicial.
Dowelanco admitted that particulars 22 and 27 are insufficient in that no page and line numbers are given but cannot understand why the "oversight" occurred. Page and line numbers have also been omitted from particular 29. This has wasted the applicants time and is clearly prejudicial.
The opponent has admitted that particular 28 is incorrect and suggests that the matter can easily be rectified by amendment. Why was this matter not resolved before this hearing? This has wasted the applicants time and is clearly prejudicial.
I draw the following conclusions in relation to particular 31:
"the person skilled in the art", that is the technology in which the skilled person is working has been identified
the phrase "for example documents including" is open ended in that it leaves the way open for other documents to be included. DowElanco has offered to remove the phrase
DowElanco has argued that each of references 31 (a) to (g) are sufficient in that all the material cited is relevant even though some do not contain line number references [that is 31(a), (c), (e)]. DuPont argues that in some cases the references contain up to 33 pages and this does not provide a sufficient pointer to the case to be defended. Two references have what may be considered to be a large number of pages with no line number references. Particular 31(a) has one reference containing 21 pages describing tablet disintegration and 31(c) has 33 pages describing the general state of the art regarding effervescent tablets. Another reference, particular 31(e), has only 5 pages but the passages of particular reference have not been identified by page and line number. Considering the extent of the material already facing DuPont I think line numbers should be provided at least with references 31(a), (c) and (e) to direct the applicant to the material forming the basis of DowElanco's case. Although 31(e) may be a smaller document, there is still a large amount of material for DuPont to consider. This has wasted the applicants time and is clearly prejudicial.
I do not think there is a problem with the trade name Avicel used in 31(g) for similar reasons to those I have used with Polyplasdone XL previously.
It is clear to me that that the requirements in response to ground (ii) have significantly not been met.
It is also clear that the requirements in response to grounds (iii) and (iv) have also not been met for similar reasons as described in relation to ground (ii).
Also amendments to particulars 1 and 2 of grounds (iii) and (iv) have not satisfied my directions. Ground (i) deals with prior claiming and ground (ii) with prior publication. Ground (iii) deals with obviousness/inventive step and ground (iv) deals with otherwise not novel. For an applicant to be clear about the case to be answered, these particulars should include page and line numbers relevant to the particular grounds for which they are used. That is, particulars relating to obviousness/inventive step should relate to the parts of the documents to be relied on for the grounds of obviousness/inventive step not prior publication. This has wasted the applicants time and is clearly prejudicial.
It is therefore clear to me that DowElanco, in a significant number of instances, has failed to satisfy the directions issued in the decision of 5 April 1994. The amended statement of grounds and particulars does not properly reveal the case to be answered. I believe the amended statement would still be unduly prejudicial to the applicant.
It is also open to question as to whether DowElanco has made a serious attempt to satisfy the Commissioner's directions in that they did not appear to have become aware of obvious deficiencies until faced with them at the hearing of 20 July 1994.
There has been a history of delays in this opposition proceedings. In my decision of 5 April 1994 I detailed the previous history of this action as follows:
"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 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."
Consequently, DowElanco does not appear to be prosecuting the opposition with due diligence. This is a factor I must take into account when exercising any discretionary powers under the Patents Act and Regulations.
Alternatives for non-compliance with the Commissioner's directions
It seems to me that if the Patents Act and Regulations enables the Commissioner to issue directions relating to the prosecution of opposition proceedings it must also enable him/her to deal with non-compliance with those directions, otherwise the directions provisions are a nonsense.
Consequently, I must look at the alternatives I have for dealing with DowElanco's non-compliance.
I could:
Allow DowElanco another opportunity to amend their statement of grounds and particulars. They have already filed a number of amended statements of grounds and particulars for consideration and the matter has still not been resolved. I am not convinced that further amendment, particularly after evidence has already been served and in the light of original particulars being changed to agree with evidence that has already been served, can resolve the matter without undue prejudice to the applicant;
Dismiss the opposition in part under regulation 5.5(3). In the decision in L'Aire Liquide v CIG Ltd 24 IPR 77 the hearing officer 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)."
Although the opponent has not satisfied the Commissioner's direction in relation to a significant number of particulars, there are still a large number of particulars which do provide the basis of a case to be answered. It is in the public interest for the opposition to be heard in relation to these particulars.
Consequently I do not think it appropriate to dismiss these grounds under regulation 5.5(3);
Use the provisions of regulation 5.10(1) to issue a direction that unsatisfactory particulars be unavailable for the opponent to argue at a substantive opposition hearing.
Regulation 5.10(1) and 5.10(5) are appropriate and provide:
5.10(1)The Commissioner may, on his or her own motion or on the application of a party:
(a)give a direction that is not inconsistent with the Act or these Regulations for the conduct of proceedings to which this Chapter applies; or
(b)determine that a period prescribed in this Chapter (except in regulation 5.3 (filing of opposition) or paragraph 5.4(1)(a) (filing of statement) is to be extended by such further period as the Commissioner reasonably allows.
5.10(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.
In this instance the requirements of regulation 5.10(5) have been satisfied in that the parties have had a reasonable opportunity to make representations on these matters at a hearing.
In my decision of 5 April 1994 I discussed the basis for directing that particulars be not made available for the opponent to argue at a substantive opposition hearing. Peptide Technology v Pitman-Moore Pty Ltd (1991) AIPC 91-010, CSIRO v CEM Corporation, re application No 635903, a decision of the Commissioner issued on 29 March 1994 and as yet unpublished, and Concorde Trading Pty Ltd v Croner Trading Pty Ltd, re application No 571375, a decision of the Commissioner issued on 4 May 1994 and as yet unpublished have also found that it was appropriate to give directions in relation to particulars.
I believe it is appropriate in these circumstances for me to allow the amended statement of grounds and particulars dated 3 May 1994 but to direct that the particulars not satisfying my directions of the 5 April 1994 not be available for the opponent to argue at the substantive opposition hearing.
Conclusion
I direct that particulars 3, 7, 14, 15, 16, 21, 22, 27, 29, 31(a) [in respect to Kirk Othmer, Encyclopedia of chemical Technology", Third Edition, 1983, Vol 21 pp 82-103] and 31(c) of ground (ii) and particular 2 of grounds (iii) and (iv) as they relate to particulars 3, 7, 14, 15, 16, 21, 23, 27, 28, 29, 31(a) [in respect to Kirk Othmer, Encyclopedia of chemical Technology", Third Edition, 1983, Vol 21 pp 82-103] and 31(c) of ground (ii), are not to be available to the opponent to argue at the substantive opposition hearing.
The period for completion of evidence in answer will commence from the date of this decision.
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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