Emory University v Biochem Pharma Inc

[1997] APO 46

official notice

decision of a deputy commissioner of patents

Application  :          No.658136 in the name of Emory University

Title:          Method and Compositions for the Synthesis of BCH-189 and Related Compounds

Action:          Objection by Biochem Pharma Inc to an application to serve further evidence and to a request to rely on oral submissions made by representatives from the US

Decision:          Issued            .

Abstract

Criteria set out in Micronair (Aerial) Ltd v Waikerie Co-op Producers Ltd (1986) 7 IPR 107

and ICI v Mitsubishi Gas Chemical (1994) 29 IPR 285 in relation to the exercise of the

Commissioner’s discretion to grant an application to serve further evidence applied.  There is no requirement in the Regulations for the evidence to be filed with the request.  The serving of further evidence was appropriate in all the circumstances.  Emory allowed 3 months to serve the further evidence which must only be in answer to alleged new matter in the evidence-in-reply identified in Emory’s oral and written submissions.  Biochem allowed one month to respond to the further evidence.

The Commissioner does have a discretion to allow unqualified persons to make oral submissions at a hearing. The discretion is to be exercised only where there is a perceived benefit to the outcome of the hearing which would be when the submissions facilitate the understanding of the issues by the Hearing Officer.  The Commissioner will insist on one person having overall responsibility for the conduct of the case being made for a party.  It is understood that the conduct of the hearing is under the control of the Hearing Officer.  The Commissioner expects to be notified of the intention for unqualified persons to appear well before the hearing.  Two US attorneys nominated by Emory granted leave to make oral submissions on Emory’s behalf at the substantive hearing.  Two US attorneys nominated by Biochem permitted to make oral submissions on Biochem’s behalf at the substantive hearing.

patents act 1990

decision of a deputy commissioner of patents

Re:Patent Application No. 658136 by Emory University and opposition thereto by Biochem Pharma Inc.; objections by Biochem Pharma Inc. to an application to serve further evidence and to a request to rely on oral submissions made by representatives from the US

background

Patent Application No. 658136 by Emory University (Emory) was advertised accepted on 6 April 1995.  Biochem Pharma Inc. (Biochem) opposed the application and filed a statement of grounds and particulars on 21 August 1995.  This statement has been amended on several occasions since then.

Evidence-in-support of the opposition was filed on 21 November 1995, evidence-in-answer was filed on 14 June 1996 and evidence-in-reply was filed on 24 January 1997.  The attorneys for Emory advised on 4 March 1997 that Emory would be filing a request to serve further evidence under regulation 5.10(4) and that request was filed on 17 March 1997.  The basis for the request was that Biochem had introduced 134 new documents in the evidence-in-reply which were not identified in the statement of grounds and particulars and this consequently expanded the case to be answered.  On 28 April 1997 the attorneys for Biochem filed submissions in rebuttal of this request and requested an immediate hearing if the submissions were deemed insufficient for the request for further evidence to be refused.

On 20 March 1997 Emory, through its attorneys, wrote to the Commissioner seeking leave to permit one or two US attorneys, Mr Robert Baechtold and/or Ms Sherry Knowles, to make oral submissions on behalf of Emory at any time during the opposition hearing.  Both parties were advised on 22 April 1997 that the Commissioner (as presently advised) considered it appropriate to accede to this request.  The Commissioner allowed Biochem 14 days to object to the request being acceded to.  On 28 April 1997 the attorneys for Biochem filed submissions giving reasons why the request should be refused and requested an immediate hearing if their submissions were deemed insufficient for the request to be refused.

I heard both matters in Canberra on 22 July 1997.  At the hearing Emory was represented by Mr David Catterns of Counsel assisted by Dr Bill Pickering, patent attorney of F B Rice & Co and Biochem was represented by Dr Annabelle Bennett and Ms Katrina Howard of Counsel and Mr Ron Haliday and Mr Ken Finney, patent attorneys of Cullen & Co.

At the start of the hearing both parties agreed that the two matters for consideration be heard in turn with submissions being made first on the question of further evidence.

further evidence

In written submissions presented at the hearing by Mr Catterns on behalf of Emory it was stated:

“As mentioned previously the opponent’s evidence-in-reply seeks to introduce over 100 new documents.  In our submission this is prima facie evidence that this is not strictly evidence-in-reply.  The fact that the opponent has now sought to rely upon these additional documents must lead to the conclusion that these documents are important to the opponent’s case.  If the opponent believed that they needed to use these documents, and to have these documents considered by their experts, to establish their case, then this evidence should have been presented as part of their evidence-in-support.  Further, these documents should have formed part of the opponent’s much amended statement of grounds and particulars.”

Mr Catterns pointed to a number of specific portions of the evidence-in-reply, in which the experts were referring to apparently new references in order to establish common general knowledge.  Mr Catterns also referred me to the decision by the Delegate of the Commissioner of Patents in Optech International v Buxton Hicrarium Ltd (sic), 28 IPR 649 page 654 which quotes Justice Graham in Ernest Scragg and Sons Limited’s application (1972) FSR 219 at 223:

“ To my mind it is quite wrong in these cases that there should be any sort of skirmishing in regard to evidence, and if an opponent has a case he should straight away state what his case is and should put in declarations dealing with any evidence which he thinks may be relevant to that case.  The applicant can then deal with the matter in the normal way, and a lot of time is saved, and the Office can get on with deciding the case.  If the opponent does not do that and waits until he sees what the applicant says, then obvious difficulties will result and oppositions will inevitably be drawn out and never finished.”

Mr Catterns indicated that it was Emory’s view that the evidence-in-reply raised new issues which the applicant had not had an opportunity to address.  The onus is on Biochem to support the opposition case with regard to obviousness by establishing common general knowledge.  Emory were not seeking that this evidence be disregarded, only that the applicant be allowed to submit further evidence in order to answer these new issues.  In their letter dated 17 March 1997, Emory requested a period of 3 months from the date on which the Commissioner grants leave to adduce further evidence in which to prepare and serve this evidence since Australian experts need to be consulted and also both the applicant and its attorney are based in the United States.

In their submissions, Emory’s attorneys pointed to the criteria to be considered in the exercise of the Commissioner’s discretion to grant an application to serve further evidence as set out in Micronair (Aerial) Ltd v Waikerie Co-op Producers Ltd (1986) 7 IPR 107 and ICI v Mitsubishi Gas Chemical (1994) 29 IPR 285:

“(a) It must be shown that the evidence could not have been obtained with reasonable diligence at an earlier stage;
(b) The evidence must be such that if given, it would probably have an important influence on the result of the case;
(c) The evidence is such as is presumably believed, that is it must be apparently credible, though not necessarily incontrovertible;
(d) If the request to serve further evidence were allowed:
           .would this cause unnecessary protraction of the opposition?
           .would there be any injustice to the other party?”

Mr Catterns also referred to comments made by the Hearing Officer in Simac SpA Macchine Alimentari v Semak Electrics Pty Ltd (1985) 5 IPR 281. Although this is a trade marks decision, it is relevant to the present case as the applicant was seeking to adduce further evidence in response to new matter raised for the first time in the opponent’s evidence-in-reply. The applicant in this case had provided a declaration describing the nature of the proposed further evidence but the evidence itself had not been formulated. On pages 283 and 284 the Hearing Officer states:

“As to the third factor, I am unable to express any view as to the credibility of the applicant’s proposed evidence.  The evidence has not so far been formulated, nor do the regulations require that it should be formulated for consideration at this stage.  All that the regulations require is that the applicant shall lodge a declaration setting out the nature of the evidence proposed.  Having read Ms Moore’s declaration (not included in this report) I can see no justification for rejecting this application on the ground that the evidence, when formulated, will be neither credible nor believable.”

Mr Catterns submitted that Emory had fulfilled the above criteria for serving further evidence. This evidence could not have been formulated earlier as it was in reply to matter raised for the first time in Biochem’s evidence-in-reply. The further evidence, he submitted, goes right to the heart of the opposition, to the question of obviousness. It was Emory’s position that the credibility and effect of their evidence cannot be assessed until the evidence is formulated and served and that Regulation 5.10 of the Patents Act 1990 (the Act), while permitting the serving of further evidence, does not require that the evidence be served with the application. Mr Catterns also indicated his position that any protraction of the opposition proceedings had been on the part of the opponent, not the applicant. In applying for leave to adduce further evidence, Emory were not attempting to circumvent the Delegate’s decision on their request for direction on the issue of the evidence-in-reply, as apparently suggested by Biochem, but were following one of the two courses of action suggested by the Delegate.

Dr Bennett presented written submissions at the hearing on behalf of Biochem in which the applicant’s right to adduce further evidence was refuted.  These submissions state:

“ 1. The opponent prior claimed and prior disclosed the racemic mixture and the enantiomers of BCH 189.  The evidence-in-support asserted broadly that it was known and obvious how to resolve enantiomers, including those of BCH 189.  The evidence referred to and cited well known texts, which were in fact cited in the prior patent.

2. The evidence-in-answer was voluminous (eleven declarations) and concentrated on a denial that it was known that enantiomers could be resolved and asserted that the skilled worker would not have known which of the classical resolution methods would work.

3. This raised as an issue, for the first time, a question of the extent of common general knowledge in the resolution of the enantiomers of BCH 189.  It is clear from the evidence given in support that the opponent assumed that that question was not in dispute, that it was a ‘given’.

4. Accordingly, it was necessary to reply to the specific allegations concerning resolution techniques known in Australia, especially chiral chromatography and enzymatic resolution.”

Dr Bennett stressed that while Regulation 5.10 of the Act would allow the applicant to serve further evidence, the applicant bears a heavy onus to satisfy the Commissioner that the serving of that further evidence is appropriate.  I was referred to decisions given in regard to Sandoz Ltd v Fujisawa Pharmaceutical Company Ltd (1993) 27 IPR 421 and ICI PLC v Mitsubishi Gas Chemical Co (1994) 29IPR 285. In the Sandoz decision, the Hearing Officer discussed the meaning of the word “may” in Regulation 5.10(4):

“On this point I am in agreement with Mr Tadgell for the applicant, who argued that the word ”may” is not mandatory and that the onus is on the opponent to justify the adducement of the evidence.”

Dr Bennett argued that although the applicant has had ample time to draft further evidence, they have provided no indication of the nature of the further evidence they propose to submit.  Thus, there is nothing upon which to establish the importance of the proposed additional evidence or satisfy the Commissioner that the serving of this further evidence is appropriate in all the circumstances.  Instead, it seems that Emory were seeking to unduly protract proceedings especially as they were seeking a period of 3 months in which to serve the further evidence from the date of their request being granted.

Decision

The cases on the exercise of the Commissioner’s discretion to grant leave to serve further evidence set down a number of criteria to be considered.  Three of these were followed in the Micronair decision (supra) and in the ICI decision (supra) a further criterion was also applied. These criteria are stated as points (a) to (d) at pages 3 to 4 above. In making my decision on the issue of the Emory’s request to serve further evidence, I will therefore apply these criteria.

I am of the opinion that Emory acted with diligence in its response to Biochem’s evidence-in -reply.  Biochem completed filing its evidence-in-reply on 23 January 1997 and on 6 February 1997 Emory made a request that this evidence be disregarded in full or the opponent should further amend the Statement of Grounds and Particulars since, in their view, substantial numbers of new documents were cited which would result in a clear expansion of the case to be answered by Emory.  In dealing with this request, the Delegate of the Commissioner of Patents considered that both options would require the Commissioner to determine whether or not the evidence-in-reply is properly in reply which was not appropriate outside the Section 59 hearing.  Further, the Delegate advised Emory that they may argue this matter at the Section 59 hearing or make a request to serve further evidence in response.  Emory followed the latter option by filing their application for leave to adduce further evidence on 17 March 1997.

I am similarly of the view that it is not appropriate to make a determination on whether or not the evidence-in-reply is properly in reply outside the Section 59 hearing.  However, in light of the sheer volume of evidence-in-reply and number of new cited documents, it would seem that there may be at the very least some new matter, relating to common general knowledge and supporting the obviousness argument, in Biochem’s evidence-in-reply which Emory should have the opportunity to respond to.  In fact, in their own written submissions, Biochem acknowledge that the issue of common general knowledge in regard to resolution of enantiomers had not been established in the evidence-in-support as they “assumed that that question was not in dispute, that it was a ‘given’”.  Inventive step is one of the grounds of opposition and the applicant should have been made aware of all the evidence relating to common general knowledge by its inclusion in the Statement of Grounds and Particulars and evidence-in-support.  Common general knowledge is something which can only be established by evidence; it is not sufficient for a party to an opposition to broadly assert what is the common general knowledge without backing that up with declarations from experts and evidence.

Although, according to Regulation 5.10 (5), the applicant bears the onus to satisfy the Commissioner that the serving of further evidence is appropriate in all the circumstances, there is no requirement in the Regulations for the applicant to file the evidence with the request.  I find that Emory could not have reasonably supplied this evidence at any earlier stage and have no reason to believe that they have not acted with all diligence in this matter.  If the evidence-in-reply indeed contains new matter, then Emory could not have obtained their further evidence at any earlier stage as they simply did not know it was required.  I am satisfied that, as soon as they were aware of the content of Biochem’s evidence-in-reply, Emory quickly sought to have that evidence disregarded or introduced by amendment to the Statement of Grounds and Particulars.

With regard to the second consideration, the influence of the additional evidence on the result of the case, I find an analogy with the situation in the Simac trade mark case (supra).  In that case the applicant applied to serve further evidence to respond to evidence raised belatedly by the opponent in its evidence-in-reply.  As stated by the Hearing Officer on page 283:

“The applicant does not here seek to raise new issues by way of its proposed further evidence, but simply to answer issues newly and belatedly raised by the opponent in its evidence-in-reply.  Moreover, it seems to me that the importance of the proposed evidence is no less than the importance of the evidence which it seeks to rebut.”

Similarly, in the present situation, I have no reason to believe that Emory’s further evidence, when filed, will be any less important to the outcome of the opposition case than that contained in Biochem’s evidence-in-reply.  Emory have indicated that their further evidence will be in response to new matter raised in the new documents.  This, I believe, will assist in determining the issues of common general knowledge and inventive step at the Section 59 hearing.

As to the credibility of the evidence, I cannot form any opinion on this since the evidence has not been submitted.  However, I will again take guidance from Simac (supra).  I have found that I cannot reject the application to serve the evidence on the grounds that the evidence has not yet been filed.  The Regulations do not require the request to be accompanied by the evidence and I do not have any reason to believe that the evidence, when served, will not be both credible and believable.  Emory have indicated the evidence will be in rebuttal of the new evidence which addresses common general knowledge and inventive step, and hence it would seem that this evidence should be credible.

If I allow Emory’s request for serving further evidence, I must also consider the issues of unnecessary protraction of the opposition proceedings and possible injustice to Biochem.  I do not believe that Emory are causing unnecessary protraction of the proceedings as they are only asking to be given the right of reply to alleged new matter raised in Biochem’s evidence-in-reply.  It is not incumbent on them to have already prepared or supplied this material so their request cannot be denied on that account.  I am inclined to agree with Mr Catterns who gave the view that protraction of the proceedings had, in fact been caused by Biochem’s inclusion in their evidence-in-reply of matter not properly in reply.  While it is inevitable that some protraction of the proceedings will necessarily occur if I allow Emory’s request, this must be weighed against the possibility of a better outcome of the opposition proceedings.  It is in the public interest that all evidence be put before the Commissioner so that the opposition is decided based on a consideration of all relevant facts. 

If Emory are allowed a limited time in which to serve their evidence, while causing some protraction of proceedings, I do not believe that this constitutes undue protraction.  Provided Biochem are given the opportunity to respond to Emory’s further evidence, I cannot see that Biochem are suffering any injustice in this matter.

On balance, having considered all the circumstances, I will allow Emory to serve the further evidence. It was not incumbent on Emory to have already prepared the further evidence at the time of making their request.  Furthermore I do not believe they should necessarily have been required to go to the trouble and incur the expense of preparing the evidence before they were sure it would be admitted in the proceedings.  Consequently I will allow Emory three months from the date of this decision in which to serve further evidence which is to be in response to matters newly raised in Biochem’s evidence-in-reply.  Three months seems a reasonable timeframe taking into consideration the volume of Biochem’s evidence-in-reply.  In line with normal practice I allow Biochem a period of one month in which to respond to this new evidence.  This should be adequate time given that the further evidence will be limited to the alleged new matter in the evidence-in-reply.

appearance at hearing

The letter of 20 March 1997 from Emory's attorneys seeks leave to permit two US attorneys specifically named "to make oral submissions on behalf of Emory University at any time during the hearing."  The request in respect of Ms Knowles is on the basis that she is:

"a US attorney who represents Emory University's interests in relation to the opposed application and corresponding applications in the US and a number of foreign jurisdictions including Australia......Ms Knowles' experience and knowledge of the subject matter of the opposed application is substantial in that she has prosecuted the corresponding US application to grant and has assisted substantially in the prosecution of foreign equivalent applications.  This depth  of knowledge and experience would greatly facilitate the Examiner's thorough understanding of the applicant's case."

In respect of Mr Baechtold the letter indicates:

"he has been retained by Emory University as lead Counsel in proceedings against the opponent in the US in relation to the opponent's alleged infringement of Emory University's corresponding granted US patent.  The conduct of those proceedings and Mr Baechtold's ongoing representation of Emory University means that his knowledge and understanding of the subject matter and issues in the case are substantial.......Mr Baechtold is a skilled and experienced practitioner in the field of pharmaceutical inventions and this skill combined with his depth of understanding would also facilitate the Examiner's thorough understanding of the applicant's case."

The attorneys for Emory indicate they are not aware of any precedent in seeking leave of this kind but they enclose a decision of the European Enlarged Board of Appeal in the Bogasky case [1996] EPOR 333 for the Commissioner's consideration.  They submit the criteria set out by the European Patent Office (EPO) in that case are appropriate to the present circumstances and indicate Emory is prepared to meet similar criteria.

In the letter of 28 April 1997 the attorneys for Biochem also indicate they are not aware of any precedent for Emory's request. They submit that while there is no specific provision in the Patents Act 1990 (the Act) for representation in opposition hearings, the making of oral submissions at a hearing by US attorneys would contravene chapter 20 of the Act since this would mean they would be:

"carrying on business, practising or acting as a patent attorney while not a registered patent attorney or a legal practitioner".

According to the attorneys for Biochem, section 200 of the Act is analogous to provisions in other Acts relating to the entitlement of legal practitioners to practice:

"These Acts .....explain the need for section 200 of the Act to permit registered patent attorneys what has been called in the Act the "privilege" of conducting proceedings.  It is clear that the prohibition extends to acting as a patent attorney or legal practitioner, which includes any presentation of argument to a Court or to the Office".

Biochem's attorneys also mention several discretionary factors which militate against acceding to Emory's request.  These include the factors that Emory has already retained the services of Counsel to present its case, the allowance of the request would "open the floodgates" on opposition practice and procedure and either the European decision has no relevance in Australia or it should not be followed.

At the hearing Dr Bennett for Biochem put forward further submissions.  In her view the Commissioner does not have the jurisdiction to accede to the request.  The Commissioner's powers in relation to hearings are set out in section 210 of the Act and there are no specific powers which enable the Commissioner to hear anyone other than the party, a registered patent attorney or a legal practitioner.  Similarly sub-section 60(2) does not give rise to a general power to grant rights of audience and section 200 suggests that only patent attorneys may be heard in opposition proceedings.
Dr Bennett then referred to procedures in other courts and tribunals. The role of the Commissioner of Patents is that of an administrative tribunal and decisions of the Commissioner are subject to review by the AAT or the Federal Court. There is a specific provision (section 32) in the Administrative Appeals Tribunal Act 1975 for a party to be represented by "some other person". The limitation is to one other person and not to a range of people. Similarly the Federal Court rules permit a party to be represented by a solicitor. There is a discretion in the Federal Court to permit unqualified persons to appear, but Dr Bennett pointed out that this discretion had been restricted to situations of necessity and emergency. In support of this point Dr Bennett referred me to the decisions in Re GJ Mannix Inc [1984] 1 NZLR 309 at 314, Abse v Smith [1986] 1 QB 536 at 545 and Hubbard Association of Scientologists International v Anderson and Just [1972] VR 340.

In relation to the Bogasky decision cited by Emory, Dr Bennett indicated that the EPO operated under a different statutory framework to the Australian Patent Office and the European Patent Convention makes specific provision for experts and witnesses to make submissions at a hearing.  In any event Bogasky set very rigorous criteria for submissions at the hearing and none of these have been set forth by Emory.

Dr Bennett then referred to the effect that allowance of the US attorneys to make submissions would have on the conduct of the opposition proceedings.  In her view there was a real risk that the hearing would be tainted because it was unlikely the US counsel would be able to divorce the facts and law relating to overseas litigation from what could be properly put before the Commissioner.  Dr Bennett also expressed concerns about the length of the hearing if other than counsel made submissions.

Dr Bennett concluded her submissions by indicating that, if Emory's application was acceded to, Biochem must be given corresponding leave.  Biochem had supplied details of the names and qualifications of their proposed representatives.

In response Mr Catterns for Emory submitted that the Commissioner does have the jurisdiction to accede to the request.  The Commissioner acts as a tribunal and not a court of law and as such has an overriding discretion to determine the conduct of proceedings in the Office, provided the rules of natural justice are applied.

Mr Catterns further submitted that Regulation 5.10(1) also provided jurisdiction since it allowed the Commissioner to give a direction.  He considered that chapter 20 of the Act was not relevant to the factors governing the conduct of an opposition hearing and pointed out the chapter makes no reference to any exclusive right of a patent attorney to make oral submissions at a hearing.  He further pointed out that the making of oral submissions before the Commissioner does not fall within the activities specified in sub-section 201(7)(c) of the Act.

In relation to the Hubbard case (supra), Mr Catterns referred to the general principle stated at page 342:

"The true position would appear to be that the general rule is that any court can, in the exercise of control over its own proceedings, allow itself to be addressed in a proper case by any person it considers a proper person to be allowed audience."

Mr Catterns referred me to the Bogasky decision as a case which showed that, even where there are specific provisions requiring representation by authorised representatives, it is appropriate to grant permission to a person to make submissions on specific legal or technical issues.  This had not “opened the flood gates” or caused the oral hearings in the EPO to become unruly.  A statutory declaration from Richard S Bassett, a European patent attorney, which was tendered at the hearing, supported Mr Cattern’s assertions.

Mr Catterns rebutted any suggestion that the appearance of Ms Knowles or Mr Baechtold would have an adverse effect on the hearing procedure.  On the contrary, in Mr Catterns' view, their submissions would provide an opportunity to fully understand Emory’s case which involves complicated technical evidence.  Mr Catterns made it clear that neither Mr Baechtold nor Ms Knowles would comment on Australian law or present evidence and they would not be appearing as technical experts.  The US attorneys would be under the continuing responsibility and control of counsel and a patent attorney.  In any event the Hearing Officer has complete control over the conduct of the proceedings.

With respect to Dr Bennett’s reference to the possibility of the hearing being tainted, Mr Catterns conceded that there was always a possibility of this happening, especially where evidence gets rejected.  However counsel would draw attention to any evidence tendered from the bar table.  In conclusion he submitted that colleagues on both sides be allowed to appear at the hearing under the control of counsel.

decision

The issues I need to decide are whether the US attorneys can make oral submissions at the substantive hearing, and if so whether there are any fetters on that appearance.  Neither Emory nor Biochem could point to any precedent on the question of appearance at a hearing before the Commissioner, and I am similarly unaware of any case in which the issue has been raised specifically.  I am aware that unqualified persons have made submissions at hearings on a number of occasions in the past and this has not been questioned.  I am conscious that the allowance of Emory’s request may have wide-ranging consequences for the future conduct of opposition proceedings before the Office.

Insofar as the Bogasky decision is concerned, I agree with Dr Bennett that this decision has no relevance to proceedings in Australia and therefore I will not consider it further.

Much of the argument for both sides centred on whether the Act provides jurisdiction for the Commissioner to grant Emory’s request.  Neither Dr Bennett nor Mr Catterns could point to any specific provisions in the Act relating to representation at hearings.  Dr Bennett considered that the reference in sub-section 200(1)(a) to a patent attorney “conducting all proceedings for the purpose of this Act” implied a limitation to the appearance in opposition hearings.  However Mr Catterns thought that chapter 20 made no reference to any exclusive right of appearance in a hearing.  He pointed out the substantive hearing in the present case would be under the control of counsel and a patent attorney.

I am inclined to agree with Mr Catterns that making oral submissions at a hearing does not constitute carrying on business, practicing or acting as a patent attorney.  The activities detailed in sub-section 201(7) in relation to carrying on business as a patent attorney do not seem to me to include the making of oral submissions before the Commissioner.  While I agree with Dr Bennett that section 210 of the Act defines specifically some of the Commissioner’s powers in relation to opposition proceedings, I can find no such specific provision to limit who should make submissions at a hearing.  If there were some limitation as to appearance at a hearing, I think this would have been made explicit in the Act.  Consequently I believe the Commissioner does have jurisdiction to accede to Emory’s request.

However Dr Bennett put to me that such jurisdiction in the absence of specific provision in the Act would be extraordinary in view of the limitations on appearance in the Courts.  As Dr Bennett pointed out, a party to a proceeding in the AAT may be represented by “some other person”.  There seems to be no limitation on who that person may be, and it would therefore seem to me to be inconsistent to restrict the appearance before the Commissioner when no such restriction applies before the AAT.

Dr Bennett further agreed that there was a discretion to permit unqualified persons to appear before the Federal Court, although in practice this had been limited to certain specific situations.  From the cases referred to by Dr Bennett it seems to me that this discretion is exercised in the interests of the efficient administration of justice.  There should be no reason therefore why the Commissioner should not exercise a similar discretion in relation to opposition hearings if it is likely to produce a more just outcome.  Furthermore the Commissioner is an administrative tribunal and not a Court and such a tribunal is master of its own procedure.  Therefore it seems to me the Commissioner has a discretion to permit people other that patent attorneys and legal practitioners to make submissions at a hearing.

It is desirable, for the orderly conduct of proceedings, that one person be responsible for making all the submissions on behalf of a party at a hearing.  I envisage that in most cases a legal practitioner or a patent attorney would be best placed to do this.  In cases where more than one person is to make submissions, I do not believe the Commissioner should exercise the discretion automatically to allow anyone at any time to make submissions at a hearing.  The discretion should only be exercised in those circumstances where there is some benefit to be gained in terms of facilitating a more complete understanding of the case by the Hearing Officer.

In the present case it has been put that the depth of knowledge and the experience of Ms Knowles and Mr Baechtold would facilitate the understanding of the case.  Mr Catterns has indicated that Emory’s case involves complicated technical evidence.  It seems to me that any assistance which the US attorneys could provide which would help the Hearing Officer to fully understand all the issues should lead to a better outcome for the opposition.  Similarly I believe that the two US counsel, Dr James F Haley, Jnr and Mr Robert G Krupka, P.C., may also assist the Hearing Officer to fully understand the issues from Biochem’s standpoint.  Consequently I believe they should be permitted to make submissions on behalf of Biochem at the hearing, as Dr Bennett requested.

In each case the submissions would be made under the control of the respective counsel representing Emory and Biochem and the counsel would have continuing responsibility for those submissions.  As Mr Catterns pointed out, the Hearing Officer has the control over conduct of the proceedings.  The Hearing Officer can terminate the submissions at any stage if this is considered appropriate.  Furthermore, in determining the award of costs, the Hearing Officer may take into account the value of any submissions presented by the unqualified parties.  This should overcome the concerns raised by Dr Bennett that the hearing would become unduly protracted.  Furthermore I consider there is no more risk of the hearing being “tainted” due to the allowance of unqualified persons to make submissions than there is in any hearing where evidence may be found to be inadmissible.

In summary I believe the Commissioner does have a discretion to allow unqualified persons to make oral submissions at a hearing.  However the Commissioner will insist upon a single person being responsible for the conduct of the case for a given party.  This would generally be counsel or a patent attorney who will ensure submissions by unqualified persons are properly made. Furthermore, when more than one person is to make submissions on behalf of a party, I do not believe the Commissioner's discretion should be exercised automatically.  It should only be exercised where there is a perceived benefit to the outcome of the hearing and consequently I believe this would be when the submissions would facilitate the understanding of the issues by the Hearing Officer.

While not an issue in this case, it seems for completeness there is one other issue I should consider.  It concerns the requirement of a party to specifically request the exercise of the Commissioner's discretion prior to the hearing where submissions are to be made by unqualified persons.  If the intention is that those persons will make a significant contribution to the proceedings the Commissioner would expect to be notified (and that other parties to the hearing would also be notified) of their intended appearance well before the hearing.  Absence of any notification would be a factor to be taken into account in deciding whether to allow the making of those submissions by the unqualified persons at the hearing.

conclusion

I have found that the serving of further evidence is appropriate in all the circumstances and therefore I allow Emory three months from the date of this decision to serve that evidence.  The evidence is to be in response to new matter raised in Biochem’s evidence-in-reply.  However I am conscious that an order of this form is extremely broad and could lead to further protraction of the opposition to decide whether the further evidence is really in response to new matter.  At the hearing Mr Catterns referred to specific passages in the evidence-in-reply which he alleged contained new matter.  The written submissions he presented at the start of the hearing also identify specific passages of “new matter” in the evidence-in-reply.  Therefore the further evidence must be in answer only to those specific passages in the evidence-in-reply identified by Mr Catterns in his oral and written submissions.  I allow Biochem a period of one month in which to respond to the further evidence.

I have also found that the Commissioner does have a discretion to allow unqualified persons to make oral submissions at a hearing.  Consequently I grant leave to permit Mr Robert Baechtold and/or Ms Sherry Knowles to make oral submissions on behalf of Emory during the substantive hearing.  Furthermore I see no reason why Dr James F Haley, Jr and Mr Robert G Krupka cannot make oral submissions on behalf of Biochem during the substantive hearing.  In all cases the conduct of the hearing will be subject to the control of counsel and the Hearing Officer conducting the hearing.

costs

At the hearing both parties submitted that costs should follow the event.  In this case I see no circumstances to depart from this practice.

I have found that both the request to lodge further evidence and the request for appearance of the US attorneys at the hearing should be allowed and hence Emory have been successful in both actions.  Consequently I award costs against Biochem.

Janet Werner
Deputy Commissioner of Patents

Patent attorneys for the applicant  :  F.B. Rice & Co, Sydney

Patent attorneys for the opponent   :  Cullen & Co., Brisbane