GENENTECH, INC. v AMRAD Corporation Limited

[1994] APO 17

official notice

decision of a delegate of the commissioner of patents

Application        :  No. 638839 in the name of GENENTECH INC.

Title:  METHOD AND COMPOSITION FOR TREATING INJURY

Action:  Application by AMRAD CORPORATION LIMITED for an extension of time in which to file a notice of opposition

Decision:  Issued            .   Extension allowed. Error or omission by AMRAD Corporation Limited.

patents act 1990

decision of a delegate of the commissioner of patents

Re: Patent Application No. 638839 by GENENTECH, INC. and a

request under S 223 of the Patents Act 1990 for an

extension of time in which to file a notice of opposition.

BACKGROUND

GENENTECH, INC. (hereafter referred to as GENENTECH) lodged application number 638839 as PCT/US91/02446 on 9 April 1991 under the provisions of the Patent Cooperation Treaty(PCT). That application was published under the PCT as WO9115227, and in Australia was allocated the application number 78565/91. 78565/91 was advertised open to public inspection on 5 December 1991, advertised accepted on 8 July 1993, and given the number 638839.

A person intending to oppose the grant of a patent under S 59 of the act must file a notice of opposition within three months of the publication of the notice of acceptance in the Official Journal of Patents(AOJP)(Reg 5.3 (1)). Thus the time limit for filing a notice of opposition in this case was 8 October 1993.

On 19 October 1993 AMRAD CORPORATION LIMITED (hereafter referred to as AMRAD) filed a notice of opposition simultaneously with a request for an extension of time under S 223 of the Patents Act in which to file the notice of opposition.

GENENTECH asked for and was granted an extension of time in which to file an objection to the AMRAD request for an extension of time. GENENTECH filed this objection on 2 December 1993 objecting to any allowance of an extension of time under S 223 in which to file a notice of opposition.

A hearing on this matter was held in Canberra on 10 January 1994. AMRAD was represented by Mr. PAUL JONES of PHILLIPS ORMONDE & FITZPATRICK and GENENTECH was represented by Dr. VIVIEN SANTER of GRIFFITH HACK & CO.

THE APPLICATION FOR AN EXTENSION OF TIME

AMRAD filed a statutory declaration setting out the circumstances and grounds for an extension of time on 5 November 1993 and a supplementary statutory declaration on 13 December 1993, both made by Mr. Robert J. Klupacs, Intellectual Property Manager, AMRAD CORPORATION LIMITED.

The first declaration sets out the reasons why the notice of opposition was not filed within the prescribed period, while the second expands upon statements made in the first declaration.

I have summarised the reasons given in the declarations as follows:

.     Mr. Klupacs states that he holds, inter alia, a post-
     graduate diploma in intellectual property law from the                  
     University of Melbourne and has either been granted
     exemptions, or has passed, several subjects in the
     examinations of the Patent Attorneys Professional Standards
     Board.

.     Mr. Klupacs states that he joined AMRAD in 1988 as Patents 
     Officer and in 1990 was promoted to Intellectual Property
     Manager, his duties including monitoring conflicting
     intellectual property in fields of interest to AMRAD.

.     Mr. Klupacs became aware of patent application 78565/91 in  
     February or March 1992 from his reading of the AOJP and
     obtained a copy of the specification.

.     He then formed the intention to oppose the grant of a
     patent on this application if and when it was accepted.
     He formed the opinion that the subject matter of the
     application was in a field in which AMRAD was active and
     that at least some of the claims at that time were not
     novel or lacked inventive step in the light of published
     AMRAD patent applications and other publications in
     scientific journals.

.     He states that he was aware in April 1992 that once the
     GENENTECH application was accepted its acceptance
     would be advertised in the AOJP and that AMRAD would then
     have three months from the date of advertisement in which
     to file a notice of opposition.

.     On 26 April 1992 he initiated a weekly search by Dialog,
     an electronic  database vendor, in a database called      
     Derwent World Patents Index(WPI). He arranged for Dialog to   
     report weekly on the status of patent applications which
     referred to "LIF"(leukaemia inhibitory factor). Reports
     were only to be made where there was any change in status
     from a previous report.

.     On 18 October 1993 he received a report in the post from
     Dialog showing that the GENENTECH application 78565/91 had
     been advertised accepted on 8 July 1993 under the number
     638839.

.     Mr. Klupacs contacted Mr. J. Slattery of Davies Collison
     Cave on 18 October 1993. Mr. Slattery was unable to act
     for AMRAD in this matter and Mr. Klupacs immediately 
     instructed Mr. Paul Jones of Phillips Ormonde & Fitzpatrick
     to act for AMRAD. On 19 October 1993 the notice of
     opposition and the request for an extension of time in
     which to file the notice was filed.

SUBMISSIONS

There are a number of factors which must be considered when assessing an application for an extension of time under S 223.

These were ably and succinctly put to me at the hearing by Mr. Jones and Dr. Santer. I will consider the present application against each of these factors where appropriate in my decision.

.     Mr. Jones contended that the decision of Mr. Klupacs to
     institute a status watch search only on Derwent World
     Patent Index database (WPI) through the database vendor
     Dialog constitutes an error of judgement because he did
     not know, and did not take any steps to find out if the
     information would be provided by Dialog within the time
     prescribed for filing a notice of opposition. This error of
     judgement caused AMRAD to miss the time limit on filing the
     notice of opposition. Further, he points out that "error or
     omission" has been succinctly defined in Weir Pumps Limited
     v Stork Pompen B.V. (1989) 13 IPR 163:

"An error or omission has been considered to have
         occurred where there has been a breakdown in procedure
         in effecting a party's intention in respect of an
          invention or application (e.g. in respect of making an
         application pursuant to section 141, in prosecuting an
         application to acceptance, or in lodging a notice of
         opposition)".

.     An error of judgement occurred after Klupacs formed the
     intent to oppose the sealing of 78565/91. The error was
     made when Klupacs decided to use Dialog to provide a watch
     on application No. 78565/91, relying upon them solely to
     inform him of the acceptance date of this application. This
     error was an error of judgement because he assumed that WPI
     files were updated promptly and that Dialog would pass the
     acceptance advertisement information to him in time to file
     a notice of opposition. Nowhere in Dialog or Derwent
     publications is there any clear statement of delay in
     reporting actions.

.     In the event Dialog only had the acceptance information
     available on 8 October 1993(9 October 1993 in Australia
     because of the time difference between Australia and the
     U.S.A.). Dialog performed the search on 8 October 1993
     (U.S.A.) and dispatched the search results because there
     had been a change in status. AMRAD received this report by
     mail on 18 October 1993 and immediately instituted steps to
     carry out its intention to oppose the sealing of 638839 as
     78565/91 had become, filing the notice of opposition
     together with a request for an extension of time, which
     is the subject of the present proceeding, on 19 October
     1993.

.     Mr. Klupacs formed the intention in April 1992 to oppose
     the sealing of application 78565/91 if and when it was 
     accepted. To this end he decided that a watch on the
     progress of this application must be maintained so that
     AMRAD could file a notice of opposition. He decided to
     employ Dialog to perform a status search in the WPI
     database. This decision is now known by them to be flawed
     in that WPI updates its data some time after the event
     reported and in this case three months after. The decision
     of Mr. Klupacs to rely exclusively on Dialog/WPI
     constitutes a clear error of judgement.

.     Mr. Klupacs formed a definite intention in or about April
     1992 to oppose the sealing of the application should it be
     accepted. To this end he instituted a watch on WPI through
     Dialog on 26 April 1992 for the advertisement of
     acceptance which occurred on 8 July 1993. It is contended
     that this decision provides the causal connection between
     the intention to oppose the application and the failure to
     file the notice of opposition within the prescribed time.

.     Dr. Santer contended that the decision of AMRAD to use
     Dialog/WPI to provide a watch on the progress of 78565/91
     through the patenting procedure was the product of a
     deliberate decision or policy and consequently did not
     constitute an error or omission in the relevant sense (Weir
     Pumps Limited v Commissioner of Patents (1989) AIPC 90-537.

.     The available evidence contains no suggestion that at the
     time this decision was made AMRAD had any misgivings as to
     whether a watch on WPI through Dialog would not reveal the
     information sought in time for them to file a notice of
     opposition within the prescribed time. No arrangements were
     made to ensure that when Dialog reported a change of status
     of any of the WPI abstracts being monitored that the report
     should have any priority and be sent by electronic mail
     instead of normal airmail from the U.S.A.

.     There is no suggestion that the watch was not diligently
     undertaken or that Klupacs realised during the watch that
     WPI took many weeks to make information available for
     searching.

.     Mr. Klupacs is familiar with Australian patent law. He
     states that he holds a Post-Graduate Diploma in
     Intellectual Property law from the University of Melbourne
     and has partially completed the examinations necessary for
     registration as a patent attorney. He has been employed at
     AMRAD since 1988, as Patent Officer until 1990, and then as
     Intellectual Property Manager up to the present. He is
     familiar with the AOJP and was aware at the time he
     formed the intention to oppose this application that the
     prescribed time for filing was three months from the date
     that the acceptance was advertised in the AOJP. Knowing
     this, and from his experience, he did not consult the
     acceptance notices in the AOJP, or use the facility of
     general status enquiries at the Patent Office as advertised
     in the AOJP, or consult AMRAD's patent attorneys as to the
     best method of providing an efficient watch on the progress
     of the application. Further, he has not made out a proper
     case justifying an extension because he has not given a
     full and frank disclosure of all the circumstances which
     led to the error or omission. There is no evidence of any
     reason why Dialog was selected as the only status watch on
     this application.

.     This failure to monitor the progress of 78565/91 as it
     proceeded through the Patent Office by readily available
     means in favour of maintaining a watch on Dialog
     constituted a deliberate policy and thus there was no
     error.

.     In the absence of any statement regarding the failure to
     consult the AOJP acceptance advertisements, or a patent
      attorney, or enquire of the Patent Office there has been no
     full and frank disclosure of all the surrounding
     circumstances (Kimberley-Clark v Commissioner of Patents,
13 IPR 569) and thus the commissioner's discretion cannot
     be exercised in favour of AMRAD.

DECISION

I must now decide whether, in the circumstances outlined in the extension application, an error or omission led to the notice of opposition being filed later than the prescribed period.  If I am of the view that such an error or omission is established, I then need to decide whether to exercise my discretion favourably and grant the extension of time.  I note with regard to the latter that I must take all relevant considerations (and no others) into account in deciding how to exercise this discretion (see, for example, Board of Control of Michigan Technological University v Deputy Commissioner of Patents (1982) 40 ALR 577 and Lehtovaara v Commissioner of Patents (1981) 39 ALR 103).

The definition of an error or omission in the context of sec 160 of the Patents Act 1952 was expressed by Jenkinson J in Kimberly-Clark Ltd v Commissioner of Patents 13 IPR 569 at pages 579 to 580 in the following terms:

"the word "error" is not easily assigned a clear meaning restricted by reference to one or several particular categories of flawed mental function.  The attempt is likely to lead to the drawing of fine and often unrealistic distinctions.  And some fine errors of judgement by agents and attorneys may be as      bizarre and as little to be anticipated as lapses of memory and accidental slips."

It is clear from this passage that the concept of what constitutes an error under the provisions of sec 160 of the 1952 Act should be interpreted broadly. I see no reason why this broad interpretation should not similarly apply to the corresponding provisions of S 223 of the 1990 Act.
Jenkinson J also held in the Kimberley-Clark v Commissioner of Patents case (supra) that it was sufficient for a finding that the failure to file a notice of opposition was "by reason of" the error or omission in question if there was a causal connection between the error or omission and the failure to lodge the notice. Sec 223 uses the wording "because of" which is clearly equivalent to "by reason of".

Section 223

In my opinion the evidence shows that Mr. Klupacs became aware of 78565/91 in early 1992 and formed an intention to oppose if or when it was accepted. He  decided to use Dialog/WPI to alert him of a change in status of this application from application to accepted application. He duly instructed Dialog on 26 April 1992. This decision was clearly taken so that the intention to oppose could be translated into action if or when 78565/91 was advertised as accepted. Mr. Klupacs had no reason to suppose that Dialog/WPI would not promptly report a change of status to this application. The decision to rely solely upon Dialog/WPI, rather than the alternatives open to him, for this status watch constitutes an error or omission within the guidance given in Weir Pumps Limited v Stork Pompen, supra, in that there was a breakdown in procedure in effecting a party's intention in respect of a patent an application, in this case opposing it. This was a breakdown in procedure rather than a deliberate decision or policy. Nothing in the evidence made in relation to this matter leads me to believe that Mr. Klupac's reliance upon Dialog/WPI was in any way due to a deliberate decision or policy of AMRAD not to maintain a watch on 78565/91.

Given Mr. Klupacs' reliance on information from Dialog/WPI as to the acceptance of the patent application and the timing of the provision of that application, I am also satisfied that a causal connection exists between the error or omission and the failure to file a notice of opposition by the due date.

Consequent upon the above, I am satisfied that the failure by Mr. Klupacs to initiate a watch only using Dialog/WPI, prima facie, constitute an "error or omission" on his part as an agent of AMRAD within the meaning of sec 223. I am also satisfied from the evidence that the recognition of this error or omission led to the opponent filing the notice of opposition on 19 October 1993 together with the request for an extension of time.

Having concluded that the application for extension of time satisfies paragraph 223.(2)(a) of the Patents Act 1990 I must now consider whether I should exercise my discretion favourably towards the applicant for extension of time. In considering this point I am guided by the decisions of the following:

Vangedal-Nielson v Commissioner of Patents and Gelphen 14 Nominees (1980) 33 ALR 144

Lyons v Registrar of Trade Marks (1983) 50 ALR 496, 1 IPR 416

The law developed from these decisions can be summarised as follows:

a)the applicant seeking the extension of time has to make out a proper case

b)there must have been no undue delay on the part of the potential opponent

c)the private interests of the applicant and the opposition as well as the public interest are considered by ensuring that invalid patents are not granted and that patent proceedings are not protracted

d)  there is a serious opposition in train.

Undue Delay

Regarding the question of undue delay, I am satisfied that Mr. Klupacs, immediately upon receipt of the search result from Dialog indicating acceptance of 638839, on 18 October 1993 took steps to initiate the filing of a notice of opposition. Only one day later on 19 October 1993 the notice of opposition together with an application for an extension of time was filed, and this included the briefing of Phillips Ormonde & Fitzpatrick because AMRAD's regular patent attorney Davies Collison Cave could not act for AMRAD in this matter. The notice and request were filed within eleven days of the time limit for filing a notice of opposition. There is no suggestion that AMRAD did not act immediately when the error was discovered. I am satisfied that AMRAD prosecuted the S 223 action without undue delay.

Private and Public Interest

On this issue I note that the interests of AMRAD are best served if I allow the extension of time and let the opposition proceed. Conversely GENENTECH's interests are best served by having any opposition matters finalized as soon as possible or no opposition at all against its application.

The public interest overrides the private interests only to the extent that it resides in the requirement for a balance between the state of uncertainty in which the application can exist pursuant to undue delay in the action, and the risk inherent in rapid, superficial and incomplete proceedings which might lead to the grant of an invalid patent. In this case I am satisfied that, on balance, the private and public interest is best served by allowing the extension.

Serious Opposition

I note that AMRAD identified the application and formed the intention to oppose by April 1992. The notice of opposition together with the request for an extension of time was filed one day after AMRAD became aware of 638839 and AMRAD has filed a statement of grounds, subsequent to this hearing, on 19 January 1993. This is within the time permitted if I allow this extension of time. Consequently I hold the view that there is a serious opposition in train.

Conclusion

After considering all the material before me I am satisfied that there was an error or omission which resulted in the notice of opposition not being filed within the prescribed time and that AMRAD has made out a proper case justifying an extension of time in which to file a notice of opposition. I therefore allow an extension of time under S 223(2)(a) until 19 October 1993 to file a notice of opposition.

Costs

In accordance with the general principle that costs follow the event, I award costs against GENENTECH.

(Malcolm Easthope)
Delegate of the Commissioner of Patents

Patent attorneys for the applicant  :Phillips Ormonde & Fitzpatrick, Melbourne.

Patent attorneys for the opponent   :Griffith Hack & Co, Melbourne