Gansu Research Institution of Chemical Industry v. Ici Australia Operations Pty Ltd

[1990] APO 26

PATENTS ACT 1952

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Application for a patent number 593185 in the Name of GANSU RESEARCH INSTITUTION OF CHEMICAL INDUSTRY

‑ and ‑

Application under Section 59(1) by ICI AUSTRALIA OPERATIONS PTY LTD for Extension of Time to Serve Notice of Opposition

Background
         On 7 June 1989 GANSU RESEARCH INSTITUTION OF CHEMICAL INDUSTRY (GANSU) lodged an application for a standard patent entitled "Chemically Foamed Emulsion Explosive Composition and Process for its Preparation", together with a request for examination.  This application is a Convention application based on a Chinese application with a priority date of 4 March 1989.  The Office expedited examination of the application, upon the applicant's request, and advertised acceptance on 1 February 1990.  On that date, the application became open to public inspection for the first time.
         On 27 April 1990, ICI AUSTRALIA OPERATIONS PTY LTD (ICIA) lodged an application under section 59(1) for extension of time of three months, from 1 May to 1 August 1990, in which to serve notice of opposition.  The ground upon which the application is made is:

"Further time is required to consider the scope of the exclusionary rights claimed by the Applicant and likely effect on our business in order to determine whether we should oppose the above‑mentioned Application."

GANSU, through their patent attorneys, Cullen & Co, notified this Office on 4 May that they opposed the application for extension of time.  The Office set down the matter for hearing in Canberra on 24 May 1990.
         On 17 May, ICIA lodged three declarations in support of the application for extension of time and sent copies to Cullen & Co.  ICIA also asked that GANSU withdraw its opposition to the extension of time.  Cullen & Co advised the Office that GANSU did not wish to attend the hearing and lodged instead two sets of written submissions dated 21 and 22 May, the latter being in reply to ICIA's declarations.
         At the hearing, Dr J.R. Davy, patent attorney, and Mr M.L. Angliss, both with ICIA, represented the applicant for extension of time.
Submissions
         Dr Davy referred to the three declarations previously sent to GANSU.  They are statutory declarations by Michael Leigh Angliss, an Industrial Property Officer, Dallas Leigh Wilkinson, a research scientist with responsibility to conduct research and investigations into explosives, and David Edwin Yates, the Explosives Research Manager, all with ICIA.
          The declarations indicate that on 9 February 1990 ICIA received and scanned the Australian Official Journal of Patents (AOJP) of 1 February 1990 which contained the abridgement of the accepted application 593185.  Angliss circulated the abridgement within ICIA and sent a copy to their overseas affiliates, Imperial Chemical Industries PLC and CIL Inc.  Wilkinson ordered, and on about 15 February 1990 received, the full copy of the accepted specification.  Under the direction of Yates, Wilkinson reviewed the accepted specification and a related application, number 28771/89, entitled "Chemical Foaming of Emulsion Explosive Compositions", to which ICIA has exclusive rights.  The review of the latter application was completed on 28 February and of the former on 18 April 1990.  Wilkinson declares:

"That the review of 593185 was complicated and delayed by what I felt was the vague and indefinite language used in 593185 and that I found it necessary to consult with a number of my colleagues in order to attempt to interpret both the claims and specification of 593185. ...

That on completion of my review of 593185 it was my opinion that any patent sealed upon 593185 as accepted had the potential to be detrimental to ICIA's business interests but the extent of the effect on ICIA's business would be determined by a detailed interpretation of the scope of the claims."

Yates declares that his responsibility includes advising Darrell A. Williams, the Explosives Technical Manager, who has overall authority and control of patent matters relating to explosives.  The declaration states that Yates was overseas between 13 and 30 March 1990 and that Williams was overseas between 17 and 28 April 1990.
         Yates states that some terms in application 593185 are unclear and indefinite and a reference in the examples is insufficient to enable complete understanding of the process described.  At meetings between the three declarants in the week commencing 23 April 1990, Yates concluded that

"ICIA should proceed to establish whether significant grounds exist on which to oppose 593185 as I believed that if a patent was granted on 593185 it could be detrimental to ICIA's interest and to the explosives industry in Australia."

The declaration further indicates that in order to determine if ICIA could mount an opposition with a significant chance of success Yates was of the opinion that further investigations were required including a detailed prior art search, obtaining advice on the vague and indefinite language and the effect on the scope of claims as accepted and consideration of the possible overlap of 593185 and 28771/89.  At discussions, on the return of Williams, it was agreed that

"any patent granted on 593185 could detrimentally affect ICIA's business and that ICIA should establish the grounds that were available to ICIA upon which 593185 could be opposed and subject to having established a significant likelihood of success a notice of opposition should be lodged."

I note at this point that there appears to be no significant delay caused by the overseas trips of Yates or Williams ‑ Wilkinson completed the review well after the return of Yates and Yates had authorised the application for extension of time before the return of Williams.  ICIA received a facsimile message on 4 May from their overseas affiliates advising of relevant prior art.  Yates, at the end of his declaration, listed four Australian specifications as relevant prior art.
         Cullen & Co, on behalf of GANSU, submitted that:

(1)the reason given in the application for extension of time is insufficient to justify the grant of any extension,

(2)ICIA has not established its locus standi in the application for extension,

(3)the public and applicant's interest would be prejudiced if there were any delays in sealing the patent as the applicant will not exploit the invention in Australia until a patent is granted,

(4)ICIA had 2‑1/2 months to get its case in order but failed to make a prima facie case for extension,

(5)refusal of the extension will not deprive ICIA of the opportunity to advance its interest since it could petition for revocation,

(6)the specification is clear and the cited art is not relevant to the invention.  The invention is not at all worthless and the patent application has been fully examined and accepted,

(7)costs should be awarded against ICIA "in view of the time and expense that [GANSU] has been subjected".

Cullen & Co related the above argument to what they considered to be the criteria for allowability of this type of extension as enunciated in Vangedal‑Nielsen v Commissioner of Patents 33 ALR 144 and summarised in Poltrock v Ennor 8 IPR 217:

‑That the applicant seeking an extension of time make out a case justifying the extension.  That a potentially serious opposition is, in fact, foreshadowed.

‑That some good reason existed as to why the prospective opponent had been unable to mount its opposition within the initial period of three months.

‑The public interest in ensuring that worthless patents are not granted because insufficient time has been allowed for lodging a notice of opposition.

‑The public interest in ensuring that there are no unreasonable delays in proceedings.

‑The interests of the patent applicant should not be unduly prejudiced.

Cullen & Co also attempted to distinguish the present circumstances from those of Kimberley‑Clark v Commissioner of Patents 13 IPR 551 by submitting that "a significant reason found by Jenkinson J. for granting an extension" was that Kimberley‑Clark's patent attorney had prejudiced its chances of opposing. No such situation applies here as the prospective opponent is acting on its own behalf and was aware of the requirements.
         At the hearing Dr Davy agreed that the above are the relevant authorities and criteria but submitted that in view of those authorities and others (which he listed) the extension of time should be granted.  He submitted that the declarations clearly establish locus and that a serious opposition is foreshadowed.  He stressed the diligence of ICIA in trying to formulate a decision within the initial three months opposition period.  He suggested that the usual practice would be that 18 months after the priority date of a standard application the complete specification would be open to public inspection (OPI).  There would usually be a length of time between OPI and acceptance and hence prospective opponents would have adequate time to review the specification.  But in this case the first publication, possibly anywhere in the world, was the accepted specification and this allowed only two and a half months to review it.  Also it was the diligence of ICIA perusing the AOJP rather than relying on overseas abstracting services that resulted in the early awareness of patent application 593185.
         Dr Davy further submitted that the public did not have the chance to inform the Commissioner under section 57 of matters affecting validity as the application was not opened to public inspection before acceptance.
         On the subject of costs Dr Davy submitted that it should follow the event.  He tendered a copy of a letter from Cullen & Co dated 21 May 1990 which mentions:

"We refer to your letter of 17 May 1990 and advise that we will not be withdrawing the opposition to the extension of time which you have sought."

Dr Davy said that the declarations which accompanied that letter of 17 May provided a full, detailed explanation of the grounds and reasons for the extension. It was not necessary, he said, to file the declarations at the same time as the application for extension of time. He referred to similar circumstances in Re Albright Wilson v Colgate‑Palmolive (1987) AIPC 90‑444 and Poltrock v Ennor (supra) wherein extensions were granted and costs awarded in favour of the applicant for extension of time.
         Finally, Dr Davy in rebutting the argument presented on behalf of the patent applicant referred me to, inter alia, Kimberley‑Clark v Commissioner of Patents (supra) wherein similar issues were raised and decided in favour of the applicant for extension of time.
Decision
         The applicant and prospective opponent agreed that the criteria which ought to be considered are those listed by Cullen & Co in their written submissions on behalf of the applicant GANSU.
         On the first two criteria, ICIA's declarations make it abundantly clear that a potentially serious opposition is foreshadowed and why the prospective opponent was unable to mount its opposition within the initial period of three months.  I accept that prima facie some of the terminology used in the specification appears to be indefinite and some of the prior art cited appears to be pertinent.  I also accept that ICIA required more than the usual three months period to conduct a search, interpret the accepted specification, evaluate the relevance of the prior art and obtain advice as to the effect of the patent on its interests and the likelihood of succeeding in the opposition because while normally some of these steps would be carried out between OPI and acceptance, in this case acceptance and OPI occurred on the same date.  Indeed the declarations indicate to my satisfaction that ICIA acted diligently.
         Regarding the public interest and the effect which a short delay in sealing the patent may have on the public and applicant's interests I note that the application was accepted only eight months after lodgement.  An extension of a further 3 months cannot be said to be an unreasonable delay in proceedings or to unduly prejudice the interests of the applicant.  It is also in the public interest to ensure that worthless patents are not granted.  Since ICIA had not been able to determine with certainty if a patent when granted in respect of the accepted specification would be worthless, in the sense of being anticipated by other disclosures or ambiguous, and since the public in general has only had three months in which to decide on its worth, then the public interest would be served by an extension of time.
         On the subject of precedent, while I agree with Cullen & Co's submission that in Kimberley‑Clark v Commissioner (supra) a significant reason for granting an extension was that Kimberley‑
Clark's patent attorney had prejudiced its chances of opposing the grant of a patent, there were other significant factors.  For example it was held that:

‑the opportunity to institute revocation proceedings after grant must be balanced against the more substantial circumstance that the legislature chose to include an opposition process before grant,

‑no substantial weight ought to be accorded the circumstance that opposition proceedings might delay sealing,

‑it is sufficient that the applicant for extension is shown to have under bona fide consideration a ground of opposition which is serious.

I agree with Dr Davy that there is ample precedent to allow extensions in circumstances similar to or less substantial than the circumstances of this case.
         There remains one issue which Cullen & Co raised in their written submission, that the application for extension of time itself is insufficient to establish locus or to justify the grant of extension.  While I agree with this, I am of the opinion that ICIA, one of the main operators in the explosives industry in Australia, has locus and in any event the declarations served shortly after the application for extension of time complete the application in as far as they provided details of ICIA's interest and the circumstances, reasons and grounds which were pertinent at the time the application for extension was made.  While it is desirable to have such details at the same time as when the application was made, I agree with Dr Davy that there is no requirement that the applicant for extension of time must do so. 
         I am satisfied that ICIA has established a case to justify the grant of extension of time to serve notice of opposition.  Furthermore, I note that indeed a notice of opposition has been lodged on 10 July.  Accordingly, I allow the extension of time to validate this notice of opposition.
         Regarding costs, I have made my decision mainly on the basis of the information provided in ICIA's declarations.  Cullen & Co received these declarations together with ICIA's request to withdraw the opposition to the extension of time several days before the hearing.  Since Cullen & Co had adequate time in which to consider the issues, indeed they replied to the declarations on 22 May, I award costs against the patent applicant GANSU.

(R.H. EL‑KILANY)

Patent attorneys for the patent applicant: Cullen & Co, Brisbane
Patent attorneys for the prospective
  opponent  : ICI Australia Operations
  Pty Ltd, Industrial