Exxon Chemical Patents Inc v the Lubrizol Corporation
[1998] APO 32
•29 May 1998
official notice
decision of a delegate of the commissioner of patents
Application : No. 666346 in the name of EXXON CHEMICAL PATENTS INC
Title: Refrigeration Working Fluid Compositions
Action: Opposition under Section 59 of the Patents Act 1990 by THE LUBRIZOL CORPORATION, and an objection to an application under Regulation 5.10(2) of the Patents Regulations 1991 for an extension of time in which to serve evidence in answer
Decision: Issued .
Abstract
The applicant applied for an extension of time in which to serve the balance of the evidence in answer for reasons which essentially repeated those on which a number of extensions had previously been granted unopposed. The opponent was not estopped in these circumstances from contesting the application since (1) a party who chooses not to object to an application for an extension of time does not relinquish the unqualified right conferred by reg 5.10(5)(c)(i) to subsequently object to a further extension application (Elazac Pty Ltd v Commissioner of Patents 29 IPR 479 distinguished), (2) the grant of an extension of time is at the discretion of the Commissioner who is obliged to consider each application for extension on its merits (per A Goninan & Co Ltd v Commissioner of Patents 38 IPR 213), and (3) the Commissioner had not “finally decided” whether the reasons provided justified any of the extensions sought (per Ex parte MoleEngineering (1981) 35 ALR 117).
The applicant proposed changes to its specification during the course of proceedings and it emerged at the hearing that in the applicant’s view it should be allowed to await the outcome of those amendments before finalising the evidence in answer as this would be consistent with the practice of the Commissioner to issue directions under reg 5.10(1) which have the effect of “stopping the clock” (Stena Rederi Aktiebolag v Danyard A/S 34 IPR 111 considered). The power conferred by reg 5.10(1) is discretionary and is therefore exercised, not merely on the basis that the specification is being amended, but only if appropriate in all the circumstances. This was not the case here, even though one of the amendments was non-trivial.
The applicant has not adequately discharged the onus on it to make out a proper case justifying the delay in completing service of the evidence in answer. In all the circumstances the full extension of time sought is not appropriate. A short extension of time is allowed to enable the applicant to serve evidence that is immediately available. Costs are awarded against the applicant.
patents act 1990
decision of a delegate of the commissioner of patents
Re:Patent Application No. 666346 by EXXON CHEMICAL PATENTS INC, opposition thereto by THE LUBRIZOL CORPORATION, and an objection to an application under Regulation 5.10(2) for an extension of time in which to serve evidence in answer.
background
Patent application 666346 in the name of Exxon Chemical Patents Inc (Exxon) was filed on 3 December 1992 as PCT/US92/10408 claiming a convention priority date of 6 December 1991. The application was advertised accepted on 8 February 1996.
On 14 May 1996 The Lubrizol Corporation (Lubrizol) applied for and was granted an extension of time under section 223 in which to file a notice of opposition to the grant of a patent. Lubrizol subsequently filed a statement of grounds and particulars on 8 August 1996.
Service of the evidence in support was completed on 8 January 1997 after Lubrizol had been granted two extensions of time. Two applications for an extension of time in which to serve the evidence in answer were then made, respectively, for three months and two months and were granted without objection. Part of this evidence, in the form of a statutory declaration by Martin A Krevalis Jr, was served on 29 August 1997. On the preceding day Exxon filed a request under section 104 for leave to amend the complete specification of application 666346. Leave was granted and advertised on 26 February 1998.
During the period leading to advertisement Exxon applied for and was granted further extensions of time totalling six months. On 9 March 1998 Exxon applied for another (ninth) extension of time from 8 March 1988 to 8 June 1988 in which to serve evidence in answer. Lubrizol objected to this extension of time on 23 March 1998.
The matter came to a hearing in Canberra on 15 April 1998. Exxon was represented by Mr Richard H Baddeley, patent attorney of Watermark Patent & Trade Mark Attorneys, Perth, and Lubrizol was represented by Ms Elizabeth Eadie, patent attorney of Callinan Lawrie, Kew. Both appeared by telephone.
the application for extension of time
The application in suit provides the following reasons for the need for further time in which to serve evidence in answer:
“Since the last filing of an application for an extension of time substantial progress has been made in preparation of evidence to be served as Evidence-In-Answer to the above Opposition matter. Dr Krevalis’ evidence has now been served.
Initial comments have been received for Dr Huttenlocher and preparation of a declaration is under way. Further comments have been sought and received from Dr Huttenlocher in view of the amendment request; and on the Krevalis declaration. Further comments are required and the process of collating further questions requiring Dr Huttenlocher’s input is in progress.A request for amendment of the claims has also been filed. We are presently awaiting receipt of an examination report.
Further time is requested to progress the amendment to allowance following expiry of the Opposition period on 26th May, 1998 and finalise preparation of evidence.”
decision
Material to be considered
In a letter sent by facsimile on 10 March 1998 the office advised Mr Baddeley that no extension of time beyond 8 March 1998 would be granted unless detailed reasons to justify the extension were provided. A response to this advice by way of argument in rebuttal was received on 16 March which precipitated a further exchange of correspondence between the office and Mr Baddeley.
On 14 April both parties filed a written summary of the submissions to be made at the hearing. Mr Baddeley requested that his summary be read in conjunction with the submissions he had previously filed with the office (notably those dated 27 March 1998) which was acceded to by Ms Eadie after she had been given an opportunity to assess the content of the latter material. I note in passing that the material in question is clearly relevant to these proceedings but does not introduce any new line of defence of the extension application under dispute which could disadvantage Lubrizol in the preparation of its case.
Accordingly, I believe that the appropriate course of action is to proceed with this decision on the basis that all submissions before me are available for consideration.
Standing of the opponent
As a preliminary issue Mr Baddeley pointed to the fact that Exxon has been granted six extensions of time unopposed to allow processing of the request to amend. He then reasoned that Lubrizol should be precluded under the doctrine of estoppel from now making submissions amounting to argument that the disposition of the earlier applications for extension of time was wrong. In his written summary Mr Baddeley elaborates upon this point as follows:
“9. Lubrizol must be given a reasonable opportunity to make representations regarding an application for an extension of time (Regulation 5.10(5)(c)(i)) but is not entitled to seek disposition of this application on grounds inconsistent with the reasons for disposition of the earlier extension of time applications.
Reasonable opportunity was afforded to Lubrizol to make representations concerning the appropriateness of allowing an extension on the basis of processing of an amendment when the first application for an extension of time reciting this ground was lodged. Once the first application reciting this ground was allowed, it was no longer appropriate for this issue to be raised in the proceedings as the matter had been decided and perceived to be decided: see Elazac Pty Ltd vCommissioner of Patents (1994) 29 IPR 479 ... To do so amounts to a de facto appeal from six earlier decisions allowing an extension of time on this ground and results in injustice to Exxon which has reasonably proceeded on the basis that this issue had been decided and disposed of. Such appeals are not permitted: Ex parte Mole Engineering (1981) 35 ALR 117 ...”
Before considering this issue, I think it is convenient to firstly set out a summary (shown below in reverse chronological order) of the extension applications filed to date by Exxon.
8 April 1997
A draft declaration forming part of the evidence in answer has been prepared and sent to the applicant’s in-house attorney for review. It is expected that an amendment may be proposed to the claims.
8 July 1997
Preliminary comments on a draft declaration by the applicant’s Dr Krevalis have been received, the declaration discussed and amendments proposed. A second declarant, Dr Huttenlocher, has been tentatively identified.
8 September 1997
Dr Krevalis’ evidence has been served. Initial comments have been received from Dr Huttenlocher and preparation of a declaration is underway. A request to amend the claims has been filed.
8 October 1997
Dr Krevalis’ evidence has been served. Initial comments have been received from Dr Huttenlocher and preparation of a declaration is underway. Further comments have been sought from Dr Huttenlocher in view of the request to amend and on the Krevalis declaration. An examination report on the request to amend is awaited.
10 November 1997
Dr Krevalis’ evidence has been served. Initial comments have been received from Dr Huttenlocher and preparation of a declaration is underway. Further comments have been sought and received from Dr Huttenlocher in view of the request to amend and on the Krevalis declaration. The comments relating to the request to amend are repeated.
8 December 1997
The comments relating to Dr Krevalis’ evidence are repeated. The comments regarding Dr Huttenlocher are repeated except for the statement that further comments are required and the process of collating further questions requiring Dr Huttenlocher’s input is in progress.
8 January 1998
This application is identical to the application dated 8 December 1997.
9 February 1998
This application is identical to the two previous applications.
9 March 1998
This application is identical to the three previous applications except that it is stated that further time is requested to progress the amendments to allowance following expiry of the opposition period on 26 May 1998.
The primary thrust of Mr Baddeley’s argument is that Lubrizol is inhibited by issue estoppel from objecting to the extension application dated 9 March 1988 since the reasons provided in that application for the need for further time to serve the balance of the evidence in answer are (as shown by the summary above) the same as those upon which Exxon had already been granted a number of extensions of time unopposed. Mr Baddeley’s second line of argument as I understand it is that Lubrizol is equitably estopped from objecting to the present extension application since its failure to object at an earlier stage in proceedings has led Exxon to belief that it is entitled to further extensions up to the grant of leave to amend following the decision in Stena Rederi Aktiebolag v Danyard A/S 34 IPR 111, and Exxon has for some time acted on that assumption.
It is unclear whether issue estoppel applies to a tribunal (see Comcare v Grimes 121 ALR 485 and Bogaards v McMahon 80 ALR 342) which is of course the function of the Commissioner in proceedings such as these where he or she performs an administrative rather than a judicial role. However, even if issue estoppel is applicable to decisions of the Commissioner, in my opinion it does not apply to the circumstances here. More particularly, I do not see the conduct of Lubrizol as constituting an attempt to re-hear an issue that has been finally decided by the Commissioner as Mr Baddeley appears to be suggesting, and I draw support for this view from the decision of the High Court in Ex parte Mole Engineering (supra).
Formerly, an initial decision in accordance with section 60(1) of the 1952 Act was styled as “interim” while the decision following amendment of the specification consequential upon the interim decision was styled as “final”. The status of an interim decision was considered by the High Court who held that such a decision is a final decision in that it determines all issues of the opposition in so far as they are capable of final determination. As stated in Perkin-Elmer v Varian Techtron 5 IPR 321, this judgement provides authority for the proposition that “all decisions are ‘final’ in so far as they determine all issues capable of determination at the particular stage of the proceedings to which they relate.”
In the present case there is an application for extension which is separate from and independent of a number of preceding applications, albeit based on the same reasons. However, even though extensions were granted pursuant to the latter applications unopposed, none of these can properly be said to have been the subject of argument by the parties in terms of one or more of the reasons on which they, and hence the application at issue, were based. I therefore find myself in agreement with Ms Eadie that to date no decision has been made which conclusively determines the position of the Commissioner in relation to whether the reasons provided justified the extension sought by Exxon. Put simply, the Commissioner has not finally decided “all issues capable of determination”.
Moreover, in Domtar Inc v Westvaco Corporation (unreported office decision concerning application 653587 which issued in September 1997) the delegate, when considering a request to amend the statement of grounds and particulars which repeated a request previously refused in a decision of another delegate of the Commissioner, stated:
“The relevant regulation places no express restriction on the number of requests to amend which may be made, nor to their content, circumstances, or timing. Therefore there is no express compulsion on the Commissioner to regard the first decision as ‘final’, even if all the facts are the same.”
In my opinion this applies by analogy to the present situation. The grant of an extension of time is at the discretion of the Commissioner who is obliged to consider each application for extension on its merits, and this duty is not circumscribed by the grant of any previous extension (see A Goninan & Co Ltd v Commissioner of Patents 38 IPR 213).
This brings me to the question of equitable estoppel. Further to what I have said above regarding the Commissioner’s discretionary power in these matters, it is clear from Chapter 5 of the Patents Regulations1991 that a party seeking the grant of an extension of time carries the burden of establishing an appropriate case to justify that grant. This is quite inconsistent with the notion that in the absence of any objections to its earlier extension applications Exxon is entitled to the grant of the extension now sought as a matter of right. Nor is there anything before me to suggest that by reason of its silence Lubrizol had “acquiesced” to the earlier extensions as submitted by Mr Baddeley. The opportunity to object to the grant of an extension of time conferred by the regulations is not conditional upon the party concerned having objected to a precedent extension and thus, unlike the situations discussed in Elazac v Commissioner of Patents (supra) and Leonardis v StAlban 24 IPR 351, Lubrizol has not relinquished the right to object at this stage of proceedings.
On the basis of the foregoing, I find that Lubrizol is not estopped from contesting the present application for extension of time.
The relevant law
The time for serving evidence in answer is, in accordance with regulation 5.8, three months from the date of serving the evidence in support of the opposition. This time may be extended under regulation 5.10:
(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).
Regulation 5.10(5) provides:
(5) The Commissioner must not ... grant an application under subregulation (2)
... 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;
...
(c) ...(i) gives the parties a reasonable opportunity to make
representations concerning the application ...; and(ii) is reasonably satisfied that ... an extension of time ...
is appropriate in all the circumstances.
It is clear that Lubrizol has been notified of the extension application in suit, and that both parties have had a reasonable opportunity to make representations concerning it. Mr Baddeley intimated in his written outline of submissions that Exxon was prepared to finalise the service of its evidence in answer “significantly earlier” than the final date of the extension presently under consideration if Lubrizol agreed not to oppose the request for leave to amend. However, Ms Eadie advised at the hearing that she was unable to give such an undertaking.
As a consequence, the issue I must now resolve is as prescribed by subregulation (5)(c)(ii), ie. is an extension of time “appropriate in all the circumstances”?
A thorough consideration and summary of the law, as it stands, on the extension of time provisions was given by Burchett J in Ferocem Pty Ltd v Commissioner of Patents (1994) 28 IPR 243 and more recently by Sackville J in Goninan v Commissioner of Patents (supra). It is clear from these decisions that regulation 5.10 confers a broad discretion, which cannot be reduced to an imperative compliance with particular requirements. This would not concur with the relevant regulation. On the contrary it is necessary to give proper, genuine and realistic consideration to all relevant aspects of the case. Relevant aspects include:
The provision of an explanation or justification for the delay in completing the evidence in
support
The reasons why the evidence was not served in time are a relevant consideration, but a satisfactory explanation is not a mandatory requirement.
The interests of the parties involved in the opposition
Disadvantages to either the applicant or opponent are relevant considerations.
The public interest
The public interest in determining a serious opposition on its merits is a relevant consideration. There is also the efficient and orderly administration of matters before the Patents Office to consider.
If I am to be reasonably satisfied that an extension of time is appropriate in all the circumstances, then I must take into account all matters relating to the above aspects when deciding the issue.
Application of the law to the facts
The provision of an explanation or justification for the delay
As submitted by Ms Eadie, the onus rests with the party seeking an extension of time to explain or justify the need for the extension with sufficient details of the reasons why the extension is required (see eg Dominion Mining Limited v MIM Holdings Limited et al, an unreported office decision concerning application 663525 which issued on 11 June 1997). In the present case Exxon has given a number of reasons for the need for an extension of time in which to finalise the service of its evidence in answer. However, it seems to me that when considered individually the following reasons provided by Exxon do not justify the extension sought.
“Since the last filing of an application for an extension of time substantial progress has been made in preparation of evidence to be served as Evidence-in-Answer to the above Opposition matter. Dr Krevalis’ evidence has now been served.”
The fact that the service of evidence from one declarant has already been completed does not necessitate the need for subsequent extensions, and the mere assertion that “substantial progress” has been made in preparing evidence to be served does not dispel the impression gained from Exxon’s actions (or lack thereof) that little if any real progress has been made in this regard.
“Initial comments have been received from Dr Huttenlocher and preparation of a declaration is under way. Further comments have been sought and received from Dr Huttenlocher in view of the amendment request; and on the Krevalis declaration. Further comments are required and the process of collating further questions requiring Huttenlocher’s input is in progress.“
In my opinion nothing contained in this reason is supportive of Exxon moving with due expedition to complete the evidence of Dr Huttenlocher. Exxon has already had more than 4 months to collate further questions which require the input of this declarant, and there is no indication of whether any real difficulties have been encountered during the collation process such as may provide a basis to justify yet another extension of time. Indeed the case for Exxon is devoid of any explanation of the need to collate further questions, or when these are likely to be put to Dr Huttenlocher.
“A request for amendment of the claims has also been filed. We are presently awaiting receipt of an examination report.”
This reason fails to establish why evidence in answer has not been served in time since Exxon was officially advised in a letter dated 13 February 1998 that leave to amend had been granted. In other words, an “examination report” concerning the amendments issued almost 1 month before the expiry of the previously granted extension of time.
After considering the above reasons individually I have found that each of them does not justify an extension. In my opinion this position is not altered when the reasons are considered as a whole, and in this regard I make the following observations:
The reasons in the main amount to little more than unsupported assertions.
The regulations impose a 3 month period in which a party is normally expected to complete the service of its evidence. In the present case Exxon has taken longer than this to simply collate questions to be put to one of its declarants, with no indication of when the evidence from this declarant will be finally put together.
Further to the preceding point, Exxon is now asking for another 3 months extension having already had 14 months in which to serve its evidence in answer. This delay seems unreasonable given that the preparation of evidence in answer has involved only two declarants, while the material from Lubrizol which this evidence is intended to address is not voluminous or technically complex.
The activities undertaken by Exxon in the pursuit of evidence in answer prima facie are of a routine nature in the context of opposition proceedings, and any ensuing delays have resulted from Exxon’s own actions.
This leaves the final reason given in support of the present extension of time, viz.
“Further time is requested to progress the amendment to allowance following expiry of the Opposition period on 26th May, 1998 and finalise preparation of evidence.”
and it emerged at the hearing that Exxon relies heavily on this reason as justification for the extension of time it seeks here.
Mr Baddeley submitted that as shown by the Stena (supra) case it was in the interests of both parties to know with certainty the form of the claims which were to be the subject of the substantive opposition. He then went on to explain that as Dr Huttenlocher’s evidence was dependent upon the ultimate fate of the request to amend, which was yet to be determined, the proceedings could be expedited if Exxon was allowed to await the outcome of the amendments proposed to the claims before finalising its evidence in answer as this could possibly lead to a resolution of the opposition. Although this explanation is not transparent from a reading of the present extension application, it is nevertheless a relevant consideration that I should take into account (per Nippon Steel Corporation v BHP Steel (JLA) Pty Ltd, unreported office decision concerning application 675388 which issued on 26 February 1998).
In response Ms Eadie drew my attention to the Dominion Mining Limited decision (supra) where the delegate did not consider it relevant that the applicant had proposed amendments to the specification. Ms Eadie said that the amendments proposed by Exxon were in any event of such a trivial nature as to be incapable of resolving the opposition and, consequently, an extension of time pending their outcome was not justified.
It is true that the Stena Rederi decision (supra) alludes to the preference of resolving oppositions through amendments to the specification if possible.Support for this view may also be found in Orion-Yhtyma OY v Pickering (unpublished office decision concerning application 663995 which issued on 24 April 1997), and Dominion Mining v MIM Holdings (supra). However, in the latter case the delegate did not consider the proposal of amendments to be a relevant factor given the marked disagreement between the parties as to the likelihood of the amendments leading to a resolution of the opposition. Such disagreement is plainly evident here.
Mr Baddeley also alerted me to the practice of the Commissioner referred to in Stena (supra) whereby he or she may issue directions under regulation 5.10(1) which have the effect of “stopping the clock” for serving evidence in answer where a request to amend has been filed, provided the amendments are not trivial.
In the present case minor corrections have been made to claims 1 and 2 and I therefore agree with Ms Eadie that the amendments concerned are of a trivial nature. However, I must part company with Ms Eadie regarding the amendment proposed to claim 7, which reads as follows:
“A refrigeration working fluid comprising about 5-55 parts by weight of a synthetic ester lubricant and 95-45 parts by weight of a tetrafluorethane refrigerant, the ester having a viscosity range of from 10 cSt. to 55 cSt. at 40oC and the working fluid having a miscibility value of -20oC or less, said miscibility value being the highest temperature at which immiscibility occurs over the composition range of said working fluid, wherein said ester is prepared by reacting trimethylolpropane with an acid mixture consisting of up to 85% by weight of a linear C7-C10 alkyl monocarboxylic acid and 15% by weight or more of a branched C7-C10 alkyl monocarboxylic acid, and said acid mixture having an average effective carbon chain length equal to or less than 7.0 with the proviso that said acid mixture excludes 2-ethylhexanoic acid when viscosity [sic: the viscosity] of said ester is less than 20 cSt.”
In Stena (supra) the amendments were deemed to be non-trivial since they introduced some restrictions into the main form of the claimed invention. Although the delegate in the Stena case was presumably referring to claim 1, I do not see this as excluding similar reasoning from being applied to the present circumstances. Claim 7, due to its independent status, prima facie is directed to one aspect of the “main” or broadest form of the invention, while the disclaimer proposed to this claim (shown in italics above) cannot be said to have a non-limiting effect.
Nonetheless, there is nothing in the Stena case (supra) to suggest that the Commissioner is obliged to issue a direction under regulation 5.10(1) to defer the service of evidence in answer merely on the basis that the specification is being amended. Nor is this in fact the case since it is clear from regulations 5.10(1) and (5) that the Commissioner has a discretion that any direction issued is “appropriate in all the circumstances”.
It seems from Orion-Yhtyma v Pickering (supra) and Part 9 of the Australian Patent Office Manual of Practice and Procedure Volume 3 that in addition to those I have discussed previously, relevant considerations here are whether filing of the request to amend has been carried out expeditiously, and the extent to which the evidence in answer goes towards the proposed amended specification.
With regard to the first consideration I note that although the request to amend was foreshadowed in the first and second extension applications, Exxon has not explained the delay in actually filing the request which did not occur until nearly 8 months after service of the evidence in support was completed and over 12 months following service of the statement of grounds and particulars. Such delay appears excessive particularly as:
- the request to amend involves three amendments only;
- of these amendments, only one is non-trivial;
- on the face of it, only the non-trivial amendment has been proposed in response to the evidence
in support; and
- the evidence in support is relatively brief, being merely composed of 5 patent specifications
and a declaration from 1 expert witness.
I am for obvious reasons unable to form a concluded view regarding the second consideration as it applies to Dr Huttenlocher’s evidence, other than to observe that the case to be answered could potentially be influenced only by the non-trivial amendment proposed to claim 7. To this I would add that while Dr Krevalis (Exxon’s first declarant) has declared:
“I note that claims 1 and 7 of the Opposed Patent Application are proposed to be amended and I have been provided with a copy of the proposed amendment which I have read and also understand.”
the remainder of his evidence places no express reliance upon the amended claims which again casts some doubt as to the extent to which Dr Huttenlocher’s evidence is directed to these claims.
Taking all these considerations into account, I am not satisfied that a direction under regulation 5.10(1) which has the effect of “stopping the clock” until the amendments are allowed and incorporated into the specification is appropriate in all the circumstances.
Summary
I have found that Exxon has not justified the delay in completing service of the evidence in answer.
I have also found that although Exxon has proposed a non-trivial amendment to a main form of the claimed invention, this on balance does not justify a direction to defer service of its remaining evidence pending the final outcome of the proposed amendments.
Private and public interests
The considerations involved here were addressed by Burchett J in the Ferocem (supra) decision:
“The determination of an application for an extension of time under Regulation 5.10(2) involves a balancing exercise, in which competing considerations must be taken into account. There are the interests of the persons directly concerned in the application and opposition in question. There are also the public interests, which are not necessarily all ranged on the same side. They include the expeditious disposal of matters in the Patents Office, and questions of cost, of efficiency, and of insistence upon proper professional standards being maintained by those who deal with the office. But they also include, as Kitto J pointed out in Kaiser Aluminium & Chemical Corporation v The Reynolds Metal Company (1969) 120 CLR 136 at 143, “the public interest that a serious opposition by a person entitled in fact to oppose the grant of a patent should be dealt with on the merits, rather than that it should be shut out in consequence of a failure in procedure, lamentable though the failure may be””
Regarding the interests of the opposing parties, Mr Baddeley submitted that Exxon’s interests would be best served by granting an extension of time to allow its case to be presented in full. On the other hand, I accept that Lubrizol could be disadvantaged by a further protraction of proceedings if I grant the extension now sought. Exxon has chosen to seek to amend its application during the course of the opposition which has led to delays largely beyond the control of Lubrizol. Nonetheless, there is nothing before me to suggest that such protraction would have the same undue effect on Lubrizol as the effect on Exxon if it were denied the opportunity to fully state its case.
I note from SDS Digger Tools Pty Ltd v Pasdonnay Pty Ltd (unreported office decision concerning application 638571 which issued on 1 February 1995) that when dealing with the requirement that a serious opposition be dealt with on its merits, the correct approach in the present circumstances is to consider whether Exxon is mounting a serious defence to the opposition.
While Exxon’s delay in completing service of evidence in answer and the lack of a satisfactory explanation for the delay may suggest otherwise, I think Exxon is serious in its defence of the opposition. The filing of proposed amendments to avoid prior art identified in the statement of grounds and particulars, and the pursuit of a second declarant whose standing as an independent expert is likely to be accorded some weight in the opposition proceedings, prima facie attest to a serious undertaking by Exxon to defend its patent application. However, as the remainder of Exxon’s evidence is yet to be served, I am in no position to form a view as to the nature and significance of that evidence (per Goninan (supra) at 226).
In relation to the expeditious disposal of matters before the Patent Office, it is clear that any extension granted will further protract the prosecution of the opposition. The fate of the application has been in a state of uncertainty for a considerable time, and Exxon has shown minimum evidence of activity during the total period of extension granted to date in which to prepare evidence in answer. Moreover, Exxon has requested yet another period of extension merely in the hope that the final form of the claims will be settled during that time. The implication here is that even if the status of the amendments is determined by 8 June 1998, Exxon may well require an extension beyond that date to enable the service of its evidence to be finalised. It would not in my view be in the public interest to continually grant extensions of time on this basis.
In this light I think the balance of the public interest is against granting the full extension of time sought.
conclusion
I have found the Exxon has not adequately discharged the onus on it to make out a proper case justifying the delay. I have also found that the balance of the public interest favours closing off the period for serving evidence so that the opposition can proceed in an expeditious manner on its own merits. Accordingly, I conclude that the extension sought by Exxon is not appropriate in all the circumstances.
However, at the hearing Mr Baddeley advised that Dr Huttenlocher’s evidence was in fact immediately at hand, which I note is incongruent with a number of reasons given in the present extension application. This aside, I think it is appropriate to allow a short extension of time for Exxon to serve this evidence (per Ferocem (supra) at 248). The grant of a short extension of time avoids completely shutting Exxon out in this case where the extension of time is otherwise not justified. The short extension may also enhance the determination of patent validity, while at the same time avoiding any undue protraction of proceedings.
I therefore allow Exxon 5 days from the date of this decision to serve whatever evidence of Dr Huttenlocher is immediately available.
costs
The power of the Commissioner to award costs is discretionary, so I must take into account all relevant considerations.
Exxon has succeeded in obtaining a short extension of time, despite the fact that it did not make out a proper case to justify the extension sought. Instead, the public interest in determining the opposition on its merits is a significant consideration in this decision. Consequently, it is not appropriate to award costs against Lubrizol. I believe it is more appropriate to award costs against Exxon.
I award costs in accordance with schedule 8 against Exxon. The costs of these proceedings arise solely from the present application for extension of time, and I therefore think it inappropriate to defer an award of costs in this matter until after the substantive opposition is heard as requested by Mr Baddeley.
O L Haggar
Delegate of the Commissioner of Patents
Patent attorneys for the applicant : Watermark Patent & Trade Mark Attorneys, Perth
Patent attorneys for the opponent : Callinan Lawrie, Kew
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