Fujisawa Pharmaceutical Co Ltd v Banyu Pharmaceutical Co Ltd
[1994] APO 52
•12 September 1994
official notice
decision of a DEPUTY commissioner of patents
Application : No. 644648 in the name of Fujisawa Pharmaceutical Co., Ltd
Title: Peptide Compound and its Preparation
Action: Opposition under s.59 by Banyu Pharmaceutical Co., Ltd., and a request for dismissal of that opposition.
Decision: Issued .
Request for dismissal refused.
The words of section 59(b) are not per se a ground of opposition - rather they bring in sections 18(1)(a), 18(1)(b)(i) and 18(1)(b)(ii) as separate grounds of opposition.
The priority date of a claim is prima facie the date of filing the specification [s.43(2)(a)]. An applicant may claim an earlier priority date, but it will be for the applicant to establish entitlement to that earlier priority date. Where the relevance of a citation is dependent upon the opponent establishing a priority date different to that provided by s.43(2)(a), the facts relevant to establishing that different priority date are clearly material facts necessary for the ground of opposition.
Particulars for two of the three grounds of opposition are manifestly inadequate; but because some particulars have been provided, it is inappropriate to dismiss those grounds at this time.
Further and better particulars directed. If further and better particulars are not filed within 21 days, the Commissioner will direct that the relevant particular will be unavailable at the main hearing. If this direction is given effect in this case, there will be no particulars left in support of the respective ground - in which case the Commissioner will proceed to dismiss such grounds pursuant to regulation 5.5(3).
patents act 1990
decision of a DEPUTY commissioner of patents
Re:Patent Application No. 644648 by Fujisawa Pharmaceutical Co., Ltd, opposition under s.59 by Banyu Pharmaceutical Co., Ltd., and a request for dismissal of that opposition.
background
Patent application 644648 was applied for on 9th May 1991 as application 76446/91. The application claims priority from three basic applications, viz:
GB 9010740 dated 14 May 1990,
GB 9026254 dated 03 Dec 1990, and
GB 9104064 dated 27 Feb 1991.
The application was advertised accepted on 16 Dec. 1993. The opponent filed its notice of opposition on 15 March 1994, the statement of grounds and particulars was served on 15 June 1994, and on 15 July 1994 the applicant requested dismissal of the opposition.
The parties were heard on the matter of the dismissal on 30 August 1994. The applicant was represented by Mr J. McCormack (patent attorney of Griffith Hack & Co, Melbourne), while the opponent was represented by Mr. R Evans (patent attorney of Phillips Ormonde & Fitzpatrick, Melbourne).
The Statement of Grounds and Particulars
The statement in the present matter relies on one cited document alone. That document is Australian Patent Application AU-78182/91, which has now matured into patent number 632695 in the name of the present opponent.
It is pertinent to record here that application 78182/91 was filed on 5 June 1991, claims priority from a single basic application - JP 2-149105 dated 7 June 1990, and became open to public inspection on 12 December 1991.
The statement of grounds and particulars can be summarised as follows:
A single 'ground' is specified - namely that of s.59(b)
Three particulars are provided under separate headings, namely:
(1)s.18(1)(a) - The invention claimed in any one of claims 1 to 15 is not a manner of manufacture within the meaning of section 6 of the Statute of Monopolies, based on the above cited document;
(2)s.18(1)(b)(i) - The invention claimed in any one of claims 1 to 15 is not novel, "in particular" based on the above cited document (with no other document being cited); and
(3)s.18(1)(b)(ii) - The invention claimed in any one of claims 1 to 15 does not involve an inventive step, "in particular" based on the above cited document (with no other document, nor any common general knowledge, being cited or referred to).
The criteria for dismissal of an opposition were discussed in L'Air Liquide v The Commonwealth Industrial GasesLtd (1992) AIPC 90-872 and a number of subsequent cases. Three points of particular note to the present case arise:
-firstly, in appropriate circumstances I can dismiss a ground of an opposition (rather than the whole opposition). However, I cannot dismiss a particular of an opposition [Norwood Industries v Macbird Floraprint Pty Ltd (1992) AIPC 90-912];
-secondly to dismiss an opposition I must be satisfied that it is obviously or manifestly groundless or untenable; and lastly
-in appropriate circumstances argument, perhaps even of an extensive kind, may be necessary to demonstrate that the case is so clearly untenable that it cannot succeed - General Steel Industries Inc v Commissioner for Railways (NSW) and others (1964) 112 CLR 125.
At the hearing, it was common ground that a key issue in the present opposition was the priority date to be accorded the relevant claims. The various scenarios that arise from different possible priority dates are:
-if all claims of the present application are entitled to the earliest priority date claimed, the opposition cannot possibly succeed.
-if the claims of the present application are only entitled to claim priority from the second or third basic application, or none of the basic applications, the opposition cannot possibly succeed if the relevant matter in the citation is not entitled to the priority date of its basic application; and
-if the claims of the present application have their priority date determined, in accordance with s.114, as being the date of filing certain amendments, the citation would be open to public inspection before the relevant priority date.
I also observe that, pursuant to s.43(3), a claim may have different priority dates for different forms of an invention - that is, there is a possibility that one or more claims of the present application may not have a single priority date.
The principle argument at the hearing concerned whether, or to what extent, I should make some determination of the priority dates in the respective applications - either directly, or by parallel deduction.
However the circumstances of the present case require that I deal with certain other matters as well.
Grounds of Opposition
The first question that I must resolve in the present matter is what are the grounds of an opposition, and in particular whether subsection 59(b) sets out a single ground of opposition [viz, non-compliance with paragraph 18(1)(a) or (b)], or refers to three grounds of opposition [viz. those specified in paras. 18(1)(a), 18(1)(b)(i) and 18(1)(b)(ii)].
This question is of significance in the present matter as I can only dismiss a ground of opposition - not a particular. It is of more general importance given the distinction provided in regulation 5.9 regarding the criteria for amending the statement of grounds and particulars.
Section 59 of the Act provides:
59. The Minister or any other person may, in accordance with the regulations, oppose the grant of a standard patent on one or more of the following grounds, but on no other ground:
(a)that the nominated person is not entitled to a grant of a patent for the invention;
(b)that the invention is not a patentable invention because it does not comply with paragraph 18 (1) (a) or (b);
(c)that the specification filed in respect of the complete application does not comply with subsection 40 (2) or (3).
and subsection 18(1) relevantly provides:
18.(1) Subject to subsection (2), a patentable invention is an invention that, so far as claimed in any claim:
(a)is a manner of manufacture within the meaning of section 6 of the Statute of Monopolies; and
(b)when compared with the prior art base as it existed before the priority date of that claim:
(i) is novel; and
(ii) involves an inventive step; and
...
I note that wording similar to that used in s.59 is used in section 138(3) in setting out the grounds of revocation. Subsection 138(3) relevantly provides:
(3)After hearing the application, the court may, by order, revoke the patent, either wholly or so far as it relates to a claim, on one or more of the following grounds, but on no other ground:
...
(b)that the invention is not a patentable invention;
....
with "patentable invention" being defined in the Dictionary to the Act as 'an invention of the kind mentioned in section 18'.
I note that both sections 59 and 138 refer to "one or more of the following grounds, but on no other ground", and both include a reference to section 18 - s.59 in a restricted sense; s.138 with no such restriction.
Section 138 has been the subject of judicial consideration by the full Federal Court in NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd 26 IPR 513, (1993), AIPC 91-025. Lockhart J (Northrop J and Burchett J concurring) stated, in the context of novelty:
It is thus one of the essential features of a patentable invention that, when compared with the prior art base as it existed before the priority date of the claim, the invention is novel: s 18(1)(b)(i). Hence, lack of novelty deprives an invention of the status of being a "patentable invention" and constitutes a ground of revocation under s 138(3)(b).
(see 26 IPR @ page 528).
Similar findings were made in respect of other 'grounds of objection', identifiable with particular sub-paragraphs of s 18; and that a patent is revocable under s.138(3)(b) if it did not meet the requirements of that paragraph. It follows that, rather than itself setting out a ground of objection, s 138(3)(b) imports the individual paragraphs of section 18 as separate grounds of objection under section 138. It follows that s 59(b) likewise imports the specified individual paragraphs of s.18 as separate grounds of objection.
I find further support for this construction through a consideration of the difference between a ground of objection, and a particular. As explained in Mobay Corporation v Dow ChemicalCompany 24 IPR 379, (1992) AIPC 90-895, the particulars must state all material facts necessary for the ground of opposition, and the particulars must only state material facts. If the individual paragraphs of s.18 as referenced by s.59(b) do not constitute grounds of objection, they must constitute particulars of relevant objections. But a statement that a claim "is not novel" is not a material fact; rather it is an identification of a relevant criterion that is applied to material facts - that is, it is a ground of objection.
Thus I consider that the literal words of s.59(b) do not per se set out a ground of opposition. Rather, they are a short-hand way of bringing into s.59 the criteria expressed in s 18(1)(a), 18(1)(b)(i), and 18(1)(b)(ii), as individual grounds of opposition.
The opponent has phrased their statement on the basis of a single ground - repeating the words of s 59(b), and provided particulars under three headings - viz. s 18(1)(a), 18(1)(b)(i), and 18(1)(b)(ii). Having regard to the above, and despite the wording the opponent has used, I take the present statement of grounds and particulars as in fact setting out 3 grounds of objection - viz those of subsections 18(1)(a), 18(1)(b)(i), and 18(1)(b)(ii).
Manner of Manufacture
The first ground of opposition asserts the invention is not a manner of manufacture, and particularises one document. There is no particularisation beyond the identification of that document.
A simple inspection of the claims show them to be directed to substances per se, processes of making substances, and pharmaceutical uses of those substances. (I note the decision in Anaesthetic Supplies Pty Ltd v Rescare Ltd (1994) AIPC 91-076, where it was held that there is no statutory provision in Australia prohibiting the grant of a patent for a process of medical treatment of a human ailment or disease in a human being, and that such processes are not per se excluded from being a manner of manufacture.) Nothing about the claims is suggestive that they are directed to inappropriate subject matter.
In submissions, the opponent referred me to the judgement of Lockhart J in Philips v Mirabella (supra) whilst the applicant referred me to the judgement of the full Federal Court in CCOM v Jiejing (1994) AIPC 91-079. I also note the dissenting judgement of Burchett J in Philips v Mirabella
Whatever the criteria to uphold the requirement of s 18(1)(a) may in fact be, the rationale for the objection is not at all apparent to me from the particulars (which merely identify the one citation). I am therefore satisfied that the applicant could not know the case they have to answer, and that the ground is inadequately particularised.
However, I cannot say that the ground is not supported by any particulars, as a 'relevant' document has been particularised. I am also mindful of the comments of Kitto J. in Kaiser Aluminium and Chemical Corporation v Reynolds Metal Company (1969) CLR 136 at page 158:
"In my opinion, however, it is in 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."
I consider a failure to provide fully adequate particulars (as distinct from no relevant particulars) to fall within the category of a failure of procedure, and that therefore it is inappropriate that I dismiss this ground of opposition at this time.
Novelty
The objection of lack of novelty is apparently based on the 'whole of contents' provisions that arise from para (b) of the definition of the prior art base. Furthermore, in the present case the critical issue is the priority date to be accorded to the present claims, and notionally to the disclosures in the citation.
The invention relates to a class of chemical compounds with various substituents, most of which are common between the application and the citation. The primary arguments involve one only of the substituent groupings. The applicant argued that:
-their first basic application disclosed a specific class of compounds for this substituent, while their specification claimed a broader class;
-the opponent's basic application disclosed a small number of specific compounds, while their complete specification described the broader class;
-in these circumstances, logic suggests that if the opponent is entitled to the priority date of their basic application, the present applicant is likewise entitled to a priority date from their basic application. Alternatively if the present applicant was not entitled to priority from their first basic application, the opponent is likewise not entitled to priority from their basic application; and
-consequently, the priority date of the claims of the present application are inevitably earlier than that which would be notionally accorded the disclosures in the citation, and therefore the novelty objection must fail.
On the other hand, the opponent argued that the matter of determining the priority dates required evidence from skilled addressees as to what was disclosed in the respective documents.
Whilst the argument of the applicant is superficially attractive, I think a full consideration shows it to be insufficient to justify dismissal of the opposition.
It seems to me that if it can readily be shown (perhaps after extensive argument) that the priority dates of all relevant claims precedes the relevant date of the citation, it is appropriate to consider dismissal. However, this can only occur when the determination of a priority date clearly does not require the evidence from skilled addressees as to the relevant disclosures.
At the hearing, the attorney for the opponent suggested that in the present case, expert evidence was required to determine the priority date. In arguing this, he suggested that it was even necessary to have expert evidence to replace a standard chemical abbreviation (such as Trp) with its corresponding chemical formula - which I consider to somewhat overstate the situation.
The issue of substance in the present case is whether the skilled addressee, in considering the disclosure in the applicant's basic application, would come to the same conclusions (whatever they might be) as regards its disclosure as would the skilled addressee reading the basic application for the citation - and this is in the context of the basic document providing a limited explicit disclosure and the later specification referring to a broader class. The argument of the applicant assumes that this must be the case; it skips over the possibility that, in their respective contexts, the basis for providing support for a priority date may in fact be different as between the contexts of the two basic documents. For this reason, I am satisfied that a proper determination of the respective priority dates may properly be dependent upon expert testimony (which, of course, is properly put forth in the opponent's evidence).
In these circumstances, I cannot be satisfied that this ground of opposition is obviously or manifestly groundless or untenable. Consequently, I refuse to dismiss this ground of opposition.
Inventive Step
The ground of inventive step is again supported by one particularised document. To support this ground of objection, that document must be part of the prior art base by way of being published before the priority date of the relevant claims. In fact it was published on 12 December 1991 - a date well after the application date of the present application.
The apparent basis for this ground of objection is that the priority dates of some or any of the claims may be determined in accordance with s.114 - that is, on the basis that amendments to the specification have resulted in the specification claiming matter not in substance disclosed in the specification as filed. I note that there have been one set of amendments made; this was during examination, with the amendments being filed on 14 October 1993.
At the hearing, it was observed that the only amendment to the claims was the deletion of claim 16 as filed; furthermore the amendments to the description superficially seemed very minor. The opponent argued that they should not be shut out of arguing that some or all of the claims have a late priority date. I invited the opponent's attorney to indicate which, if any, of the amendments resulted in a late priority date - but he was unable to provide any such indication.
As stated in Mobay (supra), the particulars must state all material facts necessary for the ground of opposition. Absent special conditions, the priority date of a claim is the date of filing the specification [s.43(2)(a)]. An applicant may claim an earlier priority date (as by way of a Convention application under s.94, by association under s.38, or a divisional application under s.39), but it will be for the applicant to establish that any particular claim is entitled under regulation 3.12 to an earlier priority (if such is necessary). However, where the relevance of a citation is dependent upon the opponent establishing a priority date different to that provided by s.43(2)(a) - especially one flowing from the operation of s.114 - the facts relevant to establishing that different priority date under regulation 3.12 are clearly material facts necessary for that ground of opposition.
In the present case, the particulars make no reference to any basis for according a late priority date. Further, when the opponent's attorney is unable to indicate which amendments result in a priority date being accorded by reason of section 114, there can be no expectation that the applicant knows the case they have to answer. The particulars for this ground are obviously inadequate.
However, and as before, I cannot state that nothing has been particularised in support of the ground - a 'relevant' document has been particularised - and that therefore it is inappropriate that I dismiss this ground of opposition at this time.
Conclusion
I have found that I cannot dismiss any of the grounds of opposition at this time. I therefore refuse the request for dismissal in its entirety.
Consequently, pursuant to regulation 5.8(1)(iii) the time for serving evidence in support commences on the date of this decision.
However the particulars in support of two of the grounds of opposition are manifestly inadequate. I do not consider that inadequate particulars should be maintained. Consequently I direct the opponent to provide further and better particulars to set out material facts:
-under ground 18(1)(a), relevant to establishing that the invention claimed is not a manner of manufacture on the basis of the particularised document; and
-under ground 18(1)(b)(ii), relevant to according a priority date to the claims which is later than the publication date of the particularised document.
I further direct that the further and better particulars be provide by way of amendment to the statement (under regulation 5.9), within 21 days of the date of this decision.
Finally, I direct that if further and better particulars are not provided within this time, the relevant particular will be unavailable for argument at the hearing in the opposition.
A consequence of this last direction is that, if given effect, there will be no particulars to support the respective grounds of opposition. In that event, those grounds are open to dismissal [see L'Air Liquide (supra)], and in the present circumstances the Commissioner will proceed to dismiss such grounds of opposition under the provisions of regulation 5.5(3).
Costs
Both parties made submissions that costs should be in their favour whatever the outcome. The applicant has failed to justify dismissal of the ground of novelty. However the opponent has provided manifestly deficient particulars for the grounds of manner of manufacture, and inventive step; and failure to comply with a direction for further and better particulars will lead to dismissal of those grounds. In these circumstances, I make no award of costs.
D Herald
Deputy Commissioner of Patents
Patent attorneys for the applicant : Griffith Hack & Co, Melbourne
Patent attorneys for the opponent : Phillips Ormonde & Fitzpatrick, Melbourne
2
0