Exxon Chemical Patents Inc v Sealed Air Corp

[2000] APO 45

OFFICIAL NOTICE

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Application  :          No. 698910 in the name of EXXON CHEMICAL PATENTS INC

Title:          Ethylene Copolymers Having Narrow Composition Distribution, Their Production and Use

Action:          Opposition under section 59 (Patents Act 1990) by SEALED AIR CORP.  Application for an extension of time in which to serve evidence in support (regulation 5.10(2)).

Decision:          Issued            .

Abstract

In all of the circumstances, including that no evidence has been served to date notwithstanding earlier extensions, relatively uninformative statements in support, lack of convincing evidence that a serious opposition is in train, and the existence of a second opposition, it is considered that the extension is not appropriate.  The application for an extension of time in which to serve evidence in support is refused.

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Patent Application No. 698910 by EXXON CHEMICAL PATENTS INC and opposition thereto by SEALED AIR CORP

BACKGROUND

Patent application 698910 (the application) was filed as 69112/94 on 11 May 1994 under the provisions of the PCT in the name of EXXON CHEMICAL PATENTS INC (Exxon), claiming a priority of 13 May 1993 from a US application.  Acceptance was advertised on 12 November 1998.

On 12 February 1999 a notice of opposition was lodged by SEALED AIR CORP (Sealed Air), followed by a statement of grounds and particulars on 12 May 1999.  This was followed by three applications for extensions of time in which to serve the evidence in support, each for three months, which extensions were granted without objection.  On 12 May 2000 a fourth application for extension was made, for the period 12 May 2000 to 12 August 2000, to which Exxon has objected.

The case-file shows that Sealed has experienced some difficulty in obtaining the services of a suitable declarant.  In the first application for an extension, dated 12 August 1999, it is said that the then-identified expert had recently been found to be "not suitable for making a declaration in this matter.  As such, a new Declarant in Australia has been located and documentation will be forwarded to that Declarant within the next few days….".

In the second application, dated 12 November 1999, it is said that in late October 1999 it was discovered that this declarant was also unsuitable on conflict of interest grounds.  Another person who "may be suitable" had been identified, and would be contacted immediately.

The third application, dated 11 February 2000, provides no detail, and merely indicates that the matter is proceeding with this new declarant, and further time is required etc.  A delegate of the Commissioner then advised Sealed Air that further information justifying the extension was required. 

Sealed Air responded as follows:

"We refer to the official notification dated 17 February, 2000 and, in response thereto, we advise that the new declarant in this matter is in possession of the relevant documentation in relation to this opposition.  However the declarant is an academic in the field and, due to the Christmas break between the last extension of time granted from 12 November, 1999 to    12 February, 2000, it has been difficult to contact the declarant.  Furthermore, the declarant has, and continues to have, other commitments and has been unable to provide us with comments on this case at this stage.  We expect that comments will be received from the expert within the next month and that the draft declarations for this matter will be completed in the following month.

While we appreciate that the time for completion of the Evidence-in Support is now becoming lengthy, we trust that it is appreciated that the problems as outlined in previous requests for extensions of time in this matter relating to difficulties which have been encountered in securing a declarant have been excessive.  It has always been the applicant's intention to file the Evidence-in-Support in this matter at the earliest possible time, but it has been due to the above-referenced difficulties which have made the filing of Evidence-in-Support at this stage impossible."

This extension was granted without objection.  As I have said, a fourth extension has been applied for, and Exxon has objected.  The matter was set for hearing in Canberra on 6 July 2000, but in the event neither party appeared, choosing to rely on written submissions instead.  At the set date Sealed Air had not lodged any of its evidence in support.

The Application for Extension of Time

In its application Sealed Air makes the following statement in support:

"Comments have now been received from the expert in this matter on 14 April, 2000 and draft declarations are now being finalised,  However, further time is required in which to finalise the declarations and forward these for consideration and execution by the relevant declarants.  As stated in our letter of 21 February, 2000, it is appreciated that the time for completion of the Evidence-in-Support is becoming lengthy.  However, it should also be recognised that a substantial amount of time was initially lost due to the conflict encountered by our original declarant as outlined in the earlier applications for extensions of time to serve the Evidence-in-Support in this matter."

The Relevant Law

Regulation 5.10(2) reads as follows:

"(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)."

The time for service of evidence falls under regulation 5.8 and therefore the above regulation applies.  However the application of this regulation is governed by regulation 5.10(5), which relevantly (the regulation also refers to some other matters which are not issues in this case) reads as follows:

"(5) The Commissioner must not….grant an application under subregulation (2)….unless the Commissioner:

(ii) is reasonably satisfied that….an extension of time….is appropriate in all the       circumstances."

These regulations have been judicially considered, the principal cases being Ferochem Pty Ltd v Commissioner of Patents (1994) 28 IPR 243 and A Goninan & Co Ltd v Commissioner of Patents (1997) 38 IPR 213. The judgements show that this regulation confers a broad discretion, which cannot be reduced to an imperative compliance with particular requirements. Expressed generally, in exercising the discretion, the Commissioner must:

(i) before allowing an extension, be satisfied that the person seeking the extension has made out a proper case justifying the extension;

(ii) take into account, not only the private interests of applicants for patents and their opponents, but also the interest the public has in the granting of valid patents and the timeliness of proceedings before the Commissioner.

SUBMISSIONS

From Sealed Air

The brief written submission basically repeats the reasons given in Sealed Air's applications for extension of time, set out previously.  Essentially Sealed Air relies on the time lost in acquiring the services of a suitable declarant, the first two being found to be unsuitable.  This, they say, amounts to nine months lost, and if the evidence is completed within the presently sought extension, amounts in effect to only six months for completion.

From Exxon

The written submission from Exxon refers to the relevant legislation, decided cases, and expresses a view as to the interests of all of the parties involved, including those of a second opponent, who has completed service of evidence in support.  The conclusion is that Sealed has not provided sufficient information to justify the extension sought.

I will refer to the parties' submissions where necessary in my decision.

DECISION

Has a proper case justifying the extension been made out?

The Ferochem case shows that, while the reasons for requiring the extension are a relevant consideration in reaching a decision, nevertheless a satisfactory explanation is not a mandatory requirement.  As indicated earlier in this decision, Sealed Air's explanation is that the services of two earlier declarants had to be dispensed with, the first for no given reason except being "not suitable", the second for a conflict of interest.  Also, it is said, the third declarant has other commitments and time was lost during the 1999 Christmas break.

It appears then from the dates given in the supporting statements that it has taken almost the whole of the three months allowed to lodge evidence in support to discover that the first declarant was "not suitable", and then about another two months to find out that the second declarant had a conflict of interest.

Although the statement in support of the third extension says the third declarant will be contacted "today" (12 November 1999), it appears from Sealed Air's written submission that constructive discussion with the new declarant about this case did not occur until mid-February 2000.  The only explanation for this lost three months is the declarant's other commitments and the 1999 Christmas break.  But I think it is fair to say that expert witnesses always have other commitments, commitments have obligations, and Christmas should not come as a surprise to anybody.

I also note from the statements that a significant amount of work appears to have been done with the first two declarants in the preparation of the evidence; surely it does not all need to be done again from the beginning with each successive declarant?  It also seems to me that an opponent which was diligently pursuing its case would be looking to prepare its evidence from the earliest possible date, which is likely to be earlier that the date of lodging the statement of grounds and particulars.

In my opinion, on the material before me, which is short on detail, Sealed Air has not provided a satisfactory explanation for the delay.  However this does not determine the application.

The interests of the parties

As put by Exxon, clearly its interests are best served by the expeditious grant of a patent for its invention.  Any unnecessary protraction of these opposition proceedings is to Exxon's disadvantage.

Clearly Sealed Air's interest is in obtaining an extension in order that it can serve evidence in support of its opposition.  Given that to date no evidence at all has been served, if an extension is not granted Sealed Air is effectively shut out entirely.

While not a party to the present proceeding, there is a second opponent to the patent application in suit.  This opponent has completed service of its evidence in support, and given the normal Office practice in the conduct of hearings, delay in the resolution of the matter could be to the disadvantage of this opponent.

The interests of the public

The public interest has two components.  First, that a serious opposition should be dealt with on its merits, as opposed to being shut down because of a procedural failure.  See Kaiser Aluminium & Chemical v The Reynolds Metal Co (1969) 120 CLR 136. This of course goes to the interest the public has that invalid patents are not granted. Second, that proceedings before the Commissioner should be conducted in an efficient and expeditious manner.

In many cases involving an extension of time in which to serve evidence in support, the public interest in the validity of granted patents is given greater weight than the interests of the (patent) applicant, and thus the extension (or a part of it) is granted, since otherwise the opposition would be untenable.  But that is not entirely the case here, as a second opposition is proceeding.  If it continues, and is successful, then the public interest will have been protected without Sealed Air's action.  But of course this cannot be known.

Another issue is that there is really nothing concrete before me to show that a serious opposition is in train, except for the statement of grounds and particulars.  The nature of the evidence and the identity of the declarant are unknown.  I note that the statement in support of the present extension actually refers (line 4) to declarants, though this may be an error.  There has also not been any partial service of the evidence.  This is often an influential factor in reaching a decision in this type of proceeding, but perhaps by its nature it does not lend itself to partial service.

CONCLUSION

Taking into consideration all of the factors mentioned above, I am not reasonably satisfied that the extension is appropriate in all the circumstances.  While I have considered granting a short extension in which evidence at hand could be served, following the comments of Burchett J in Ferochem at 248, I consider this to be inappropriate as Sealed Air's supporting statements do not suggest to me that there is evidence at hand that could be served.

Consequently I refuse to grant this extension of time.

COSTS

In proceedings before the Commissioner costs normally follow the event, and I see no reason in this case to do otherwise.  As Exxon's objection to Sealed Air's application has been successful, I award costs against Sealed Air.

RG Tolhurst
Delegate of the Commissioner of Patents

Patent attorneys for the applicant  :  Watermark, Melbourne

Patent attorneys for the opponent   :  Davies Collison Cave, Melbourne