Exxon Chemical Patents Inc. v BP Chemicals Limited
[1999] APO 22
•26 March 1999
OFFICIAL NOTICE
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No. 681147 in the name of EXXON CHEMICAL PATENTS INC.
Title: Process for polymerizing monomers in fluidized beds
Action: Request to amend a statement of grounds and particulars for an opposition by BP CHEMICALS LIMITED, and a request to extend the time for serving evidence in support.
Decision: Issued .
Abstract
The request to amend the statement of grounds and particulars is refused.
The addition of two new documents under the ground of novelty is prima facie prejudicial to the other party.
The degree of prejudice is assessed by considering all relevant factors.
There is little evidence in relation to the degree of prejudice, but that evidence suggests that the degree of prejudice is excessive.
The request to extend the time for serving evidence in support is refused.
No reasons in support of the extension have been produced.
Against this there is an inconvenience to the patent applicant and the Patent Office.
A short extension is not appropriate as the time period sought has now expired.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No. 681147 by Exxon Chemical Patents Inc. and a request to amend the statement of grounds and particulars for an opposition by BP Chemicals Ltd, and a request to extend the time for serving evidence in support.
BACKGROUND
Patent application number 681147 in the name of Exxon Chemical Patents Inc. (hereafter referred to as Exxon) was advertised accepted on 21 August 1997. A notice of opposition was filed by BP Chemicals Ltd (hereafter referred to as BP) on 21 November 1997. A statement of grounds and particulars was served on 23 February 1998. The statement was amended without objection on 29 June 1998.
The time for serving evidence in support was extended several times, and is now due to be completed by 23 February. A request to extend this time to 23 March 1999 has been made, and the extension was objected to by Exxon. No evidence in support has been filed since 22 January 1999.
On 15 January 1999 BP requested amendment to the statement of grounds and particulars. Exxon objected to the request, and the matter was set for hearing in Canberra on 22 March 1999. The request for extension of time was set for hearing at the same time. BP were not represented at the hearing. Exxon was represented by Mr Richard Baddeley, patent attorney of Watermark, Perth, who appeared by telephone.
THE AMENDMENT TO THE STATEMENT
The amendment proposes three changes to the statement:
(i)Correction of the title of a journal from "Chemicals and Industry" to "Chemistry and Industry" in document (L) of the particulars; and
(ii)Two new documents, designated (R) and (S), are added to the particulars.
Exxon stated in a letter dated 15 February 1999:
We object to the request on the following grounds:
1.No explanation has been provided as to the circumstances in which documents (R) and (S) were located. Why are the documents being raised at this stage?
2.The publication date of each document (R) and (S) has not been provided in the Statement of Grounds and Particulars. No explanation has been provided as to how these documents constitute prior art (note the earliest priority date of the Opposed Application is 20th April, 1993).
THE EXTENSION OF TIME
The application for extension of time states:
To date, a substantial proportion of the Evidence in Support has been filed, namely Statutory Declarations by Peter John Williams with Exhibits PJW-1-PJW-8 dated 22 May 1998, Ngaire Ann Pettit-Young dated 8 December 1998, Elizabeth Swan dated 10 December 1998, Margaret Pratt dated 15 December 1998, Kingsley John Cavell with Exhibits KJC1 and KJC2 dated 21 December 1998, and Brendan John Nugent with Exhibits BJN1-BJN30 dated 20 January 1999.
Further time is required for the opponent to settle, secure execution of and to serve the balance of the Evidence in Support which comprises Statutory Declarations by European resident Declarants.
The reference to BJN-30 should presumably read BJN-20, as there are no exhibits beyond BJN-20.
DECISION
Amendment of the statement of grounds and particulars
The present opposition is governed by Chapter 5 of the Patents Regulations. Amendment of the statement of grounds and particulars is governed by regulation 5.9.
5.9 (1) Subject to subregulation (2), the Commissioner, on the written request of an opponent and subject to such terms as the Commissioner may specify: …
(c)must amend particulars relating to a ground set out in a statement that is served and filed under subregulation 5.4(1).
(2) The Commissioner must not allow an amendment requested under subregulation (1), if:
(a)an application for dismissal of opposition is being considered; or
(b)an application for determination of opposition is being considered; or
(c)in the case of opposition under section 59 of the Act ("opposition to grant of standard patent") - a specification relating to the opposed application is being re-examined; or
(d)he or she does not reasonably believe that the applicant has been notified of the proposed amendment; or
(e)he or she reasonably believes that a person will be unduly prejudiced by the amendment.
(3) The Commissioner must give the parties an opportunity to make representations concerning the proposed amendment.
In the present case, the matters in paragraphs (a) to (c) of subregulation 5.9(2) are not applicable. I am satisfied that Exxon has been notified of the proposed amendment. Both parties have been given an opportunity to make representations. Consequently, the issue on which the present matter turns is whether a person will be unduly prejudiced by the amendment.
A number of decisions of the Commissioner have considered the question of what constitutes undue prejudice to a person. The basic principle is that undue prejudice occurs when an amendment is detrimental or disadvantageous to the patent applicant, and the circumstances surrounding the amendment cause the degree of that detriment to be excessive (for example, see Diamond Scientific Company v CSL Limited (1992) AIPC 90-927). I am conscious of the fact that in making this decision I must have regard to all relevant factors, and cannot reduce the consideration to imperative compliance with an arbitrary rule.
Is there prejudice as a consequence of the amendment?
The correction of the name of the journal in document (L) merely corrects a clerical-type of error. Exxon did not object to this change. I do not consider there is any disadvantage to Exxon in this change.
The insertion of documents (R) and (S) are a different matter. The documents are stated to be prior art documents for the ground of novelty. These documents are:
(R)Proceedings of Metcom '93 - Worldwide Metallocene Conference, evidencing presentation 26-28 May 1993 by A B Furtek entitled "Ultra Strength Polyethylene Resins Produced in a Fluid-Bed Process Utilising Metallocene-Based Catalysts".
(S)Proceedings of Metcom '93 - Worldwide Metallocene Conference, evidencing presentation 26-28 May 1993 by A A Montagna entitled "EXXPOL Single-Site Catalysts: Leading the Revolution to New Polyolefin Products and Processes".
Thus the amendment results in two new documents under the ground of novelty. Consequently, there is a change (or expansion) in the case to be answered by Exxon, which is prima facie prejudicial to Exxon.
What is the degree of prejudice?
In assessing the degree of prejudice to Exxon, I must have regard to all relevant factors. In the present case, the nature of the change in the case to be answered, the circumstances leading up to the identification of the new documents, any delay in making the amendment, and any further delay that is likely if the amendment is allowed are relevant considerations.
Nature of the change in the case
The new particulars state:
Document (R) ("Ultra Strength Polyethylene Resins Produced in a Fluid-Bed Process Utilising Metallocene-Based Catalysts")
The opponent relies on the whole of this document.
Document (R) is a report of the development by Mobil of metallocene catalysts for use in a fluidised-bed polymerisation process. The details of the process are found in an article in the October 1992 edition of CHEMTECH at page 616 entitled "A Continuing Success: The UNIPOL Process", to which reference is made in the proceedings. A description of the operation of such a reactor in the condensed mode occurs at pages 621 and 622 of the CHEMTECH article. Given the manner in which the CHEMTECH is referred to in document (R) the two may be considered a singe source of information and so document (R) discloses the use of metallocene catalysts in a fluidised-bed reactor operating in the condensed mode.
Document (S)
The opponent relies on the whole of this document.
Document (S) contains a discussion of the metallocene catalysts used by EXXON. Slide 15 of the presentation indicates that the metallocene catalysts "can be retrofitted into existing processes" and the text of the paper specifically refers to the use of supported catalysts in gas phase processes.
Magnitude of the change
There were originally 17 documents particularised under the ground of novelty. The amendment introduces two additional documents. Mathematically this represents a 12% increase in citations.
Nature and significance of the new documents
The new particulars relate to the ground of novelty. Mr Baddeley's written submissions include the statement:
No reasons have been provided by BP Chemicals to support the relevance of the additional documents. Are they prior art? The publication dates are after Exxon's priority date.
I have briefly examined the documents to form my own opinion. Document (R) relates to use of metallocene catalysts in fluid bed polymerisation. Document (S) relates to single-site catalysts used in polyolefin production. The present application relates to polymerisation of monomers in fluidised beds. Neither document includes much detail - they are broad discussions only. The Chemtech article is similarly reasonably broad and general. It seems unlikely that these documents would be able to anticipate all of the claims of the present application. I do not think it is appropriate to examine the documents in any greater depth in order to form a view as to whether these documents would be able to anticipate any subject matter not anticipated by the 17 documents already particularised.
The documents (R) and (S) clearly lie in the same general art as the present application, so they may be relevant to the present opposition. However, it appears unlikely they would be determinative of the opposition.
Deficiencies in the new particulars
Exxon's objection stated that the publication date of the new documents has not been given. It is not essential for particulars to include this information, so this matter is not relevant to this decision.
How were the new documents identified
Mr Baddeley's written submissions state:
No explanation of the circumstances leading to location of the documents has been provided. It may be inferred that the location did not occur incidental to the preparation of BP Chemicals' case.
and also:
Considerable time, about 11 months (cf. About 7 months in Sumitomo (supra) amendment refused), elapsed from filing of the original statement to the amendment request of 15th January, 1999. It is open to conclude from this delay that additional investigations have been underway to find prior art documents to place the Opposition on a better footing especially as BP Chemicals admits (without recent contrasting evidence) that such investigations may occur in its statement at last page:
"The opponent reserves the right to amend the statement if and when further information comes to hand."
I find this submission logical, and I conclude that the very long delay in putting forward this amendment indicates that the new documents were not identified incidental to the preparation of the case.
Delay
Mr Baddeley's written submissions state:
No explanation has been provided to this date which confirms that amendment has been proposed at the earliest reasonable opportunity.
As there is no evidence before me on when BP became aware of these documents, I cannot conclude whether BP acted promptly or delayed in seeking to amend the statement.
Documents (R) and (S) are now filed in evidence (exhibits BJN 18 and BJN 20). The Chemtech article referred to in the particulars on document (R) is also filed in evidence (exhibit BJN 19). Consequently, there is no obvious reason why there should be any further delay. However, it may be necessary to obtain evidence of experts in relation to these documents.
Conclusion
The correction of the name of the journal would be allowable if it were the only amendment.
In relation to the documents (R) and (S), I am left with the situation where there is no evidence on most of the critical considerations, leaving the considerations finely balanced. The new particulars are not clearly of high relevance, and were probably not found incidental to the preparation of the case. On the other hand, further time for serving evidence in support will probably not be needed. In this situation the prejudice to Exxon seems to me to be excessive. I conclude that Exxon would be unduly prejudiced by the amendment. I refuse to allow the amendment.
Extension of time
The time for serving evidence in support of an opposition is 3 months from the date of serving the statement of grounds and particulars (regulation 5.8(1)(a)). This time can be extended under regulation 5.10(2)
(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 or paragraph 5.4(1)(a).
This provision must be read in conjunction with regulation 5.10(5)
(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 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.
Consequently, it is a prerequisite to any decision that the Commissioner must ensure that the other party has been notified, and that both parties have had the opportunity to make representations. An extension can only be granted if the Commissioner is reasonably satisfied that it is appropriate.
The operation of the extension of time provisions was considered by Burchett J in Ferocem Pty Ltd v Commissioner of Patents (1994) AIPC 91-057; 28 IPR 243 and Sackville J in A Goninan & Co Ltd v Commissioner of Patents (1997) AIPC 91-330; 38 IPR 213. From these decisions it is clear that the principles that govern extensions of time to serve evidence are
a)The power is discretionary: Regulation 5.10 confers a broad discretion, which cannot be reduced to imperative compliance with particular requirements. It is necessary to give genuine and proper consideration to all relevant considerations. (Ferocem at AIPC 38,208; IPR 247-8, Goninan at AIPC 39,434; IPR 220)
b)Explanation of delay: The reasons why the evidence was not served in time are a relevant consideration, but a satisfactory explanation is not a mandatory requirement. (Ferocem at AIPC 38,207-8; IPR 247)
c)The public interest: The public interest in determining a serious opposition on its merits is a relevant consideration. (Goninan at AIPC 39,435-6; IPR 222)
· In order to do this, it is necessary for the Commissioner to form a view as to the nature of the evidence that it is sought to adduce, and the significance of that evidence for the opposition proceedings. (Goninan at AIPC 39,438; IPR 225-6)
· The Commissioner must also consider whether a short extension should be given to permit the filing of any evidence which is immediately available. (Goninan at AIPC 39,438; IPR 225) Logically, this is only relevant if the Commissioner determines that the extension sought is not justified.
· The public interest is not protected merely because some evidence has already been served. (Goninan at AIPC 39,438; IPR 225)
d)The interests of the party seeking an extension: The interests of the party seeking the extension are a relevant consideration. (Ferocem at AIPC 38,208; IPR 247)
e)The interests of other parties: It is relevant to consider the disadvantage to the other party of delays in determining the opposition, and the effect of delays on the efficient and orderly administration of the Patents Office. (Ferocem at AIPC 38,208; IPR 247, Goninan at AIPC 39,436; IPR 222)
In the present case the other party has been notified, and the parties have been given the opportunity to make representations. Consequently the prerequisites to the exercise of the power have been satisfied.
Explanation of the delay
The only attempt at an explanation of the delay is in the Application for Extension of Time, which states that further time is required. This is a restatement of the request, and not an explanation of the delay.
Nature and significance of the evidence
The public interest in determining a serious opposition on its merits requires me to form a view on the nature and significance of the evidence that the patent applicant will serve.
No submissions are available as to what evidence BP wants to serve. It is apparent that the evidence is not the documents (R) and (S), as this evidence has already been served.
The interests of BP
No submissions are available, but it is reasonable to conclude that BP's interests are in having all evidence available for consideration at the hearing. However, there is nothing to indicate that there is any such evidence.
The interests of Exxon and the Patent Office
The interests of Exxon would be expected to favour speedy finalisation of the opposition. The effect of the delay on the efficient and orderly administration of the Patent Office lies against allowing the extension.
Conclusion
No reasons in support have been presented, or can be deduced. Against this there is the inconvenience to Exxon and the Patent Office. I am not reasonably satisfied that an extension of time is appropriate.
I turn now to consider whether a short extension should be allowed for BP to serve any evidence immediately to hand. The basis for this extension is the Ferocem decision, where Burchett J noted (at AIPC 38,208; IPR 248):
Indeed, even where an application … is regarded as unjustified, it seems to me a decision maker, having a discretion of the kind conferred by reg 5.10, should always consider whether some short period ought to be allowed, so that an applicant who may have assumed some extension would be granted will not be shut out entirely from presenting evidence that may be immediately available.
[emphasis added]
It is clear that the judge had in mind the situation where the decision to refuse was made before the expiry of the extension sought. In the present case the extension sought has now expired, so BP are not being shut out by virtue of my refusal.
I further note that no evidence has been filed during the period of extension sought. Consequently I do not need to consider an extension for the purpose of validating such evidence.
I conclude that it is not appropriate to allow any extension of time in this case.
Conclusion
I refuse the amendment to the statement of grounds and particulars.
I refuse the extension of time to serve evidence in support.
The time for serving evidence in answer shall run from the date of this decision.
Costs
The award of costs is a discretionary matter. In the present case BP have been entirely unsuccessful, and have not provided an arguable case for either of their requests. It is appropriate to award costs against BP.
I award costs in accordance with Schedule 8 against BP Chemicals Ltd.
Dr S.D.Barker
Delegate of the Commissioner of Patents
Patent attorneys for the patent applicant : Watermark, Perth
Patent attorneys for the opponent : Griffith Hack, Brisbane
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