Ethicon, Inc. v United States Surgical Corporation

[1992] APO 4

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Application No. 614678 by ETHICON, INC., Opposition by UNITED STATES SURGICAL CORPORATION, and Objection to an Extension of Time to lodge a Notice of Opposition.

Background

Patent application No. 614678 by Ethicon, Inc. (Ethicon) was lodged under the Patents Act 1952 on 6 November 1989, and was advertised accepted under the Patents Act 1990 on 5 September 1991. As a consequence, the opposition procedures for this case are governed by section 234(3) of the Patents Act 1990, and thus section 59 of the Patents Act 1952 applies. However, the Regulations under the 1952 Act are not retained, and the Regulations under the 1990 Act operate.

On 4 December 1991, United States Surgical Corporation (USSC) requested an extension of time of three months in which to lodge a notice of opposition under section 59(1) of the Patents Act 1952. On 17 December 1991, Ethicon indicated that it objected to the extension. The matter was heard in Canberra on 29 January 1992. Ethicon was represented by Mr J.Terry of Griffith Hack & Co, Sydney, and USSC was represented by Mr M.Ellicott of Counsel and Ms O.Gourley of Minter Ellison, Sydney.

Submissions

At the hearing, Mr Terry submitted that the Commissioner has no power to grant an extension of time to lodge a notice of opposition. Mr Terry's argument was that section 15AA of the Acts Interpretation Act requires section 59(1) to be given a construction that would promote the purpose or object of the Act. Mr Terry said that the intention of Parliament under the 1990 Act as revealed by regulation 5.3 is that an extension of time to file a notice of opposition is no longer available, and as a consequence section 59(1) should be read down so as to exclude the possibility of an extension. Mr Ellicott replied that section 59(1) is clear on its face, and should not be limited in the way Mr Terry had suggested.

In the application for an extension of time, the representatives of USSC specified six reasons why an extension was needed:

"1.  complete its consideration of the specification of application no 44435/89;

2.  continue and complete its consideration of the substantial searches and investigations already undertaken in relation to the alleged invention described in the application;

3.  undertake further searches and investigations in relation to the alleged invention of the application;

4.  consider and evaluate the results of the searches and investigations referred to in 3;

5.  communicate and confer with us and other advisers in Australia in relation to these matters; and

6.  have prepared, consider, and give instructions as to the lodgement of a Notice of Opposition"

Mr Ellicott made further submissions based on a declaration by Neil David Gershon, a United States patent attorney employed by USSC, a copy of which was filed at the Patent Office by facsimile on 24 January 1992.  The relevant points in this submission are:

.  USSC had taken actions in the United States with regard to the corresponding application, which resulted in Ethicon seeking re-examination of the US patent;

.  while USSC was aware of the patent application by Ethicon, it could not undertake further searches until it knew the claims of the accepted specification;

.  USSC was notified of the acceptance of the application, and received a copy of the accepted specification, on 21 October 1991;

.  on 27 November 1991, USSC was advised by its Australian agents that further extensive searches and investigations in Australia were required, and instructions were given to conduct these searches;

.  USSC's agents were carrying out these searches and investigations into issues including novelty and obviousness; and

.  it is USSC's intention, subject to the outcome of these investigations, to oppose the grant of the patent.

Mr Terry's submissions on why the extension is not allowable can be summarised as:

.  USSC has not made out a sufficient case justifying an extension; and

.  there was no evidence that USSC had a serious opposition under bona fide consideration at the time the extension was sought.

Both parties made submissions as to costs, and referred me to Kimberly-Clark Ltd v Commissioner of Patents (No 2) 13 IPR 551, Poltrock v Ennor 8 IPR 217, and Gansu Research Institution of Chemical Industry v ICI Australia Operations Pty Ltd 19 IPR 657.

Decision

Section 59(1) of the Patents Act 1952 applies to the present application by virtue of section 234(3) of the Patents Act 1990. Section 59(1) states:

"The Minister or a person interested may, at any time within 3 months after the date of the advertisement of the acceptance of an application for a standard patent or complete specification, or within such further period , not exceeding 3 months, as the Commissioner, on an application made to him within the first-mentioned period, allows ... oppose the grant of the patent ..."

The ability of the Commissioner to grant an extension of time under this section depends on whether the underlined words should be given their plain meaning.  Section 15AA of the Acts Interpretation Act provides guidance for the interpretation of statutes.  This section states:

"In the interpretation of a provision of an Act, a construction that would promote the purpose or object underlying the Act (whether that purpose or object is expressly stated in the Act or not) shall be preferred to a construction that would not promote that purpose or object."

Burchett J explained the effect of section 15AA in Trevisan v Federal Commissioner of Taxation 101 ALR 26 at 31 in the following way:

"Section 15AA requires a court to prefer one construction to another.  Such a requirement can only have meaning where two constructions are otherwise open.  The section is not a warrant for redrafting legislation nearer to an assumed desire of the legislature.  It is not for the courts to legislate; a meaning, though illuminated by the statutory injunction to promote the purpose or object underlying the Act, must be found in the words of Parliament."

Section 59(1) is perfectly clear on its face: a potential opponent can apply to the Commissioner to extend the time for lodging a notice of opposition by up to three months. There is no ambiguity in the meaning of the words used in the section. Consequently, this is not a situation where there is a choice between two possible interpretations of the section. I believe that the Commissioner has no choice other than to give effect to the clear words of the statute.

I conclude that the interpretation given in the Hearings Practice Note 1991 No 1 issued by the Patent Office in August 1991 is correct, and I will quote the relevant portion in full:

"The operation of regulation 5.3(1) with reference to the 3 month period for filing a notice of opposition is modified by the provisions of section 59(1) [1952 Act] - that is, the period for filing the notice of opposition is extendable by three months under the provisions of section 59(1) [1952 Act]."

Thus the Commissioner has the power to entertain this extension under section 59(1).

The law concerning extensions of time to lodge a notice of opposition is based on the decisions of the Federal Court in Vangedal‑Nielsen v Smith (1980) 33 ALR 144 and Lyons v Registrar of Trade Marks 1 IPR 416. These cases establish that:

(1)  an extension should only be granted where an appropriate case
       justifying an extension has been made out; and

(2)  the public interest in ensuring that worthless patents are
       not granted, and that there are no unreasonable delays, must
       be taken into account.

Extensions under section 59(1) "are not granted as a matter of course" (Poltrock v Ennor, supra at 219).  The party seeking the extension of time carries the onus of establishing an appropriate case, and cannot simply rely on the absence of exceptional circumstances why the extension should not be granted. 

The relevant reasons for an extension of time put forward on behalf of USSC amount to a need to complete searches already underway, and to carry out and assess further searches.  Although USSC was interested in this application before it was advertised accepted, it is not reasonable to expect searches to be undertaken before the accepted claims are available.  USSC obtained a copy of the accepted specification 16 days after it was advertised accepted, and gave instructions for further searches to be undertaken as soon as it was notified of the need for these searches.  It does not appear that USSC has been tardy.

It seems to me from the actions already taken in the United States that USSC already had reasons to question the validity of a patent which might be granted, so it is not just engaging in a fishing trip for related art.  Although USSC appears to have already identified some relevant material as a result of the overseas investigations, it does not follow that it does not need to conduct any further searches in Australia.  The aim of these searches is said to be to uncover material which could be the basis of novelty and obviousness grounds of opposition.  It seems to me that it is reasonable to carry out further searches and investigations in Australia, especially if issues of common general knowledge are involved. 

As a consequence, I believe that USSC has made out an appropriate case justifying an extension.

The evidence also indicates to me that USSC is genuinely intending a serious opposition, and is not merely frivolous in this matter.  I agree with Mr Terry that the potential opponent should have a serious opposition under consideration at the time that an extension is sought.  The evidence presented is not inconsistent with this.  Consequently, I believe that there is a public interest in affording sufficient opportunity to raise a potentially serious opposition.

I believe that USSC has satisfied the criteria for an extension.

Conclusion

An extension of time under section 59(1) is available in the present case.

I believe that an appropriate case for an extension has been made out, and that a serious opposition is genuinely intended.  Consequently, I allow USSC an extension of three months to 5 March 1992 in order to lodge a notice of opposition.

Costs

I have reached my decision on the basis of information contained in the submission of 4 December 1991, and the Gershon declaration, filed at the Patent Office on 24 January 1992.  Due to the public holiday on 27 January 1992, this allowed only one working day for Ethicon to consider the Gershon declaration.  Unlike the situation in Gansu Research Institution of Chemical Industry v ICI Australia Operations Pty Ltd, supra, I do not believe that this allowed adequate time for Ethicon to consider the issues in the declaration.  I award costs against USSC.

(S.D.BARKER)
Delegate of the Commissioner of Patents

Patent attorneys for the applicant:       Griffith Hack & Co, Sydney
Solicitors for the opponent:              Minter Ellison, Sydney