GENETICS International, Inc. v Serono Diagnostics Limited

[1988] APO 50

In the Matter of the Patents Act 1952 - and - In the Matter of Patent Application NO. 569076 by GENETICS INTERNATIONAL, INC. - and - In the Matter of an Application under Section 160 by SERONO DIAGNOSTICS LIMITED for an Extension of Time in which to Lodge Notice of Opposition.

 

DECISION OF A SUPERVISING EXAMINER OF PATENTS:

Background

The Office advertised acceptance of application 569076 by GENETICS INTERNATIONAL, INC. (GENETICS) in the Official Journal of Patents on 21 January, 1988 and consequently the three month period allowed by sub-section 59(1) for lodging notice of opposition expired on 21 April, 1988. Pursuant to sub-section 66(1), sealing was due by 21 July, 1988, but had not been effected as of 8 July, 1988.

On 8 July, 1988 SERONO DIAGNOSTICS LIMITED (SERONO) lodged a notice of opposition pursuant to sub-section 59(1) accompanied by an application under paragraph 160(2)(a) of the Act for an extension of time of three months within which to lodge the notice. In accordance with practice, the Office informed GENETICS of the extension of time application. GENETICS objected, and the matter was set down for hearing in Sydney on 12 October, 1988. Mr. J. Terry and Mr. G. Wilson, both patent attorneys of Griffith Hack & Co., appeared for GENETICS and Mr. J. Siely, patent attorney of Arthur S. Cave & Co. (Caves), appeared for SERONO. Messrs. Terry and Wilson lodged certain evidence at the hearing in respect of which Mr. Siely desired to consult his client to ascertain the necessity or otherwise of replying thereto. Subsequently, Mr. Siely informed me that his clients wished him to reply, and I allowed him till 24 November to do so.

The Application under Section 160

The application for extension of time has been made under paragraph 160(2)(a) (i.e. based on error or omission on the part of the person concerned or of his agent or attorney) and the circumstances in which, and the grounds upon which it is made are set out in statutory declarations by Mr. Siely (lodged 22 July, 1988) and Mr. Woodman (lodged 10 August, 1988). A summary of the pertinent points from these declarations follows.

Mr. Siely, a registered patent attorney, handles patent matters in Australia for SERONO. SERONO currently has at least three patent applications pending before the Australian Patent Office. On 19 May, 1988, Caves received a 4 page letter (Exhibit JGS1) from Frank B. Dehn & Co., British Patent Agents for SERONO, in connection with SERONO's patent application AU 38115/85, providing instructions to answer an Examiner's first report. The letter was referred to mr. Siely. Mr. Siely declares that he noted that the due acceptance date was a "few months away" (as mentioned in the opening paragraph of the letter) and so briefly acknowledged receipt of the letter to Dehn & Co. (by letter dated 7 June, 1988), but did not read the letter "in detail at that stage". On considering the letter in detail on 7 July, 1988, he noted references on page 2 to AU 569076 - the relevant portion of the letter reads as follows:

"Unfortunately, we learned from your letter of 2nd May 1988 in connection with Serono's Australian application No. 39538/85, that publication of acceptance of this Australian equivalent [an AU equivalent to an EP patent application by GENETICS] occurred at the end of January of this year under No. 569076 and hence we are now outside the opposition period. Nevertheless, we ask you to proceed with a response to the outstanding Official Action for the Sensors 2 case application [i.e. 38115/85] in your country in the hope that the prior claiming problem posed by AU 569076 can be obviated at a later date.

With regard to this, we would inform you that Serono are pursuing legal action against G.I. [GENETICS], the University of Oxford and Dr. Hill before the English High court with a view to obtaining inter alia an order that G.I. merely hold AU 569076 and equivalents elsewhere in trust for Serono. Unfortunately, however, this dispute would seem to have little prospect of an early resolution, particularly since various formalities difficulties have arisen with regard to opening legal proceedings against G.I. stemming from the fact that G.I. is a U.S. company. It is our understanding that the only additional action open to Serono as regards AU 569076 is to start revocation proceedings in your country, but we would welcome your confirmation whether this is correct. Please also advise whether there are any other steps which could be beneficially taken by Serono with a view to maintaining the Sensors 2 case in your country."

In view of these references, Mr. Siely apparently formed the view that AU 569076 "would have been opposed, on serious grounds, had its acceptance been known in time". Mr. Siely's subsequent actions are covered in para 5 of his declaration viz:

"On enquiring on 8th July, I learned that Australian Patent Application 569,076 had not yet proceeded to sealing but was about to be sealed. Accordingly, with the matter judged to be of considerable importance, and opposition proceedings still a possibility but only if immediate action was taken, a Notice of Opposition was prepared and filed on the same day. Lodgement of the Notice of Opposition was effected by facsimile transmission with the original documentation, together with the prescribed fees, being filed in the Sydney Sub-office."

Mr. Woodman is a British Chartered Patent Agent of the firm Frank B. Dehn & Co. having responsibilities for patent work of SERONO and for other companies within the Ares-Serono Group. Dehn & Co. in turn receive instructions in relation to SERONO patent matters from Dr. Vannini and others who are employed in Rome by the Ares-Serono Group. In his declaration, Mr. Woodman firstly provides background to current disputes between SERONO, GENETICS and others including Dr. Hill, briefly alluded to in the letter quoted above. Secondly, Mr. Woodman declares that the existence of GENETIC's application AU 27753/84 (now 569076, the application in suit) was known t6 him well before its acceptance. In particular, in the course of seeking instructions concerning the prosecution of SERONO's application AU 38115/85 in a letter dated 27 October, 1987, he drew Dr. Vannini's attention to the "possibility of opposing AU-A 27753/84 in due course" and in fact he suggested that Dr. Vannini ,o should authorise him to "instruct my Australian associates to monitor this application". Mr. Woodman's letter to Dr. Vannini includes the following sentences:

"I would further point out, however that, if necessary, it will be open to us to oppose grant of AU-A 27753/84 on the ground of "obtaining". As you will no doubt be aware, opposition to grant of an Australian patent can be lodged at any time up to 3 months from the advertisement of grant [sic]."

Dr. Vannini replied by letter dated 1 December, 1987, stating that "All the points commented [sic] in your letter are perfectly acceptable", and that "A monitoring of AU-A 27753/84 would be prudent". Thirdly, Mr. Woodman declares that having noted Dr. Vannini's statement regarding monitoring AU-A 27753/84, he discussed with his assistant (Dr. Irvine) the need to inform Caves of the position, intending that this be done fairly promptly. However it seems that as the discussions with Dr. Irvine included matter concerning the preparation of a response to Caves regarding SERONO's application AU 38115/85 and as this response was not needed immediately, both matters were put to one side without any diary entries being made while other matters were addressed. It further appears that due to the absence of any diary entry to remind Woodman or Irvine of the need to instruct Caves to put a monitoring watch on GENETICS' application 27753/84, this matter continued to be overlooked.

Fourthly, GENETICS' application 27753/84 only came to Woodman's attention again after a copy of the Examiner's first report in respect of SERONO's patent application AU 39538/85 was received from Caves on 20 April, 1988 - this report cited AU 569076 which Woodman subsequently found corresponded to AU 27753/84 (on receipt of a copy of AU 569076 from Caves on 12 May, 1988), at which time he realised the application had been accepted and that the normal 3 month opposition period had passed. The letter forming Exhibit JGS1, which in part dealt with AU 569076, arrived shortly thereafter at Caves.

Other Declarations lodged in this matter

At the hearing two statutory declarations were lodged on behalf of GENETICS, one by Mr. Ruffles, a British Chartered Patent Agent who acts for GENETICS, the other by Mr. Behean, a solicitor who acts for GENETICS in England. Both declarants provide additional background information concerning firstly, the existing disputes between SERONO, GENETICS and others, and secondly, matters associated with the suspension of the prosecution of GENETICS' EP application 125139 (corresponding to AU 569076) before the EPO, which suspension issue was raised in the Woodman declaration.

Given the nature of these declarations, Caves were permitted a limited time subsequent to the hearing to provide declarations in reply on behalf of SERONO. On 24 November, 1988, Caves lodged three declarations. These comprised:

(i) A second declaration by Mr. Woodman in which he responds to matters concerning the suspension of prosecution of GENETICS' EP application.

(ii) A declaration by Mr. Burnett-Hall, a solicitor who acts for SERONO in England, and who refers to events surrounding the Court action by SERONO against GENETICS and others and the present position of those actions.

(iii) A declaration by Dr. Vannini, a patent attorney of Rome registered in the EPO, who states that it remains SERONO's intention to pursue its claim against GENETICS and others concerning patent rights under dispute.

Applicability of Section 160 to Sub-section 59(1)

Mr. Terry submitted on behalf of GENETICS that section 160 had no applicability to permit an extension of the time prescribed in sub-section 59(1). In particular it was argued that the lodging of a Notice of Opposition is not an act or step either "in relation to an application for a patent" or "in proceedings under this Act" and thus sub-section 160(2) can have no operation to enable a notice of opposition to be lodged after the time prescribed in sub-section 59(1). Generally, as to the applicability of section 160, the Federal Court in AB Scaniainventor v. The Commissioner of Patents 36 ALR 101 has stated that:

"Section 160 is a remedial section and should be applied where it appears to be applicable unless there is some indication to the contrary."

Furthermore, Pincus J. in Danby Pty. Ltd. v. The Commissioner of Patents & Anor (1988) AIPC 90-489 (Federal Court) upheld a decision of the Commissioner in which sub-section 160(2) had been applied to extend the time specified in sub-section 59(1) to allow late lodgement of notice of opposition. This accords with the long established practice of the office. Consequently, I find the arguments advanced to the contrary to be presently irrelevant.

Error or Omission

In support of its application under sub-section 160(2), SERONO has placed before me detailed accounts of the events leading up to lodgement thereof, and in particular the activities in the office of SERONO's patent agents in London, Dehn & Co., spanning the period October 1987 to May 1988. For the purposes of the present extension of time application, SERONO must establish that an error or omission occurred which resulted in the failure to lodge a notice of opposition within the normal time, i.e. by 21 April, 1988. From the evidence before me, it is clear that a number of errors or omissions occurred in the offices of Dehn & Co. in connection with the application in suit which, in my view, clearly resulted in SERONO failing to either oppose, or being placed in a position to oppose, the application in suit by 21 April, 1988. Mr. Woodman had arranged with his assistant Dr. Irvine in December 1987 to notify Caves to monitor AU 27753/84 (now 569076) clearly with the intention of being informed if it were accepted, but while it was intended that this notification concerning monitoring be promptly attended to, it was not. Furthermore, no reminder entry was created to avoid Woodman or Irvine overlooking prompt attention to the monitoring matter.

It is evident from Mr. Woodman's letter to Dr. Vannini dated 27 October, 1987 that the possibility of opposing GENETICS application AU 569076 was raised, including reference to a relevant ground of opposition, viz., obtaining. Furthermore, Dr. Vannini's acknowledgement that monitoring of AU 569076 would be prudent together with Woodman's intentions to instruct Caves to monitor the application, (and I note also the existing disputes between SERONO and others at the time), indicate to me that had the watch been in place and the acceptance of AU 569076 been notified to SERONO's London agents prior to 21 April, 1988, it was virtually certain that opposition would have been lodged to the application within the prescribed time.

Given the above considerations, I am satisfied that SERONO has established the existence of an error or omission on behalf of its agents or attorneys within the terms of sub-section 160(2).

Discretion

Having concluded that the application for extension of time satisfies paragraph 160(2)(a) of the Act, I must now consider whether I should exercise my discretion favourably towards the applicant for extension of time. In considering this point I shall have regard to the following matters:

(a) whether there is a serious opposition foreshadowed,

(b) the respective interests of the applicant, the potential opponent and the public, and

(c) whether there was any undue delay in making the extension application.

Both parties made submissions at the hearing on the question of whether a serious opposition is foreshadowed. It was submitted on behalf of GENETICS that in the circumstances of the development of the invention and making of the patent application, it was not the case that the invention had been obtained from SERONO. Accordingly, the ground of obtaining specified in paragraph 59(1) of the Act was not open to SERONO in its opposition and as this appeared to be the only opposition ground SERONO would pursue, the opposition could not be serious. In my view whether the invention "was obtained from the opponent" is not a matter capable of determination without evidence and full investigation of all the surrounding circumstances. However, on the material before me, opposition by SERONO on the ground of obtaining does not seem totally inappropriate. Further, it seems to me from the evidence and submissions that SERONO is not embarking on an opposition which is at all frivolous : quite the contrary is apparent, given the comments in woodman's letter to Dr. Vannini of 27 October, 1987 and other references to the disputes between SERONO and GENETICS in Europe concerning a corresponding patent application by GENETICS.

As to the interests of the parties, SERONO clearly believes it has good ground to oppose and would be disadvantaged if the matter could not be argued prior to grant. GENETICS, however, would be disadvantaged by the delay in obtaining sealing of its patent if I allow the extension. It seems to me that these interests are balanced, consequently I am not inclined to exercise my discretion in this matter adversely against SERONO, the party seeking the extension.

Finally, I must consider the public interest. The public firstly has an interest in seeing that worthless patents are not issued : secondly, it is important that the public is expeditiously made aware of the outcome of a patent application, i.e. whether a patent is to issue, and if so, in what form. To a certain extent these requirements might seem contradictory as the first usually involves delay pursuant to opposition proceedings. However as the public perception includes the knowledge of opposition proceedings and the concomitant delays, the second requirement is normally expressed as the avoidance of undue delay. In the present case Mr. Terry put it to me that as obtaining is apparently the only ground of opposition, the first requirement is not relevant and therefore granting the extension will merely lead to undue delay. I cannot agree with this - the granting of the extension will certainly lead to delay, but in the light of my comments above concerning the public perception, that delay would not be undue.

Regarding the question of whether there has been undue delay in making the extension application, it seems to me that whilst Woodman was aware in May 1988 that AU 569076 had been accepted, he was obviously not aware that lodgement of a belated opposition may be possible (see his letter to Caves quoted earlier). The letter to Caves was entitled in relation to SERONO's application 38115/85 primarily providing instructions to answer an Examiner's report. In view of this, Mr. Siely did not consider the letter in detail at the time (a normal reaction in a busy environment) and only became aware of the reference to AU 569076 some time later. Whilst there has therefore been delay from the time Woodman realized AU 569076 had been accepted to the time the section 160 application was filed, I do not consider this delay to be undue, i.e. unreasonable, in the circumstances.

Decision

I am satisfied that an error or omission within the meaning of paragraph 160(2)(a) of the Act did occur. Furthermore I consider that the Commissioner's discretion should be exercised in favour of the applicant for the extension of time. I therefore grant an extension of time to 8 July, 1988 in order to validate the notice of opposition which was lodged on that date.

On the question of costs, the usual principle is that costs follow the event. SERONO has been successful in this matter with the evidence of Woodman (first declaration) and Siely explaining adequately the circumstances and grounds on which the extension was sought. I see no reason therefore why SERONO is not entitled to its costs. Accordingly I award costs against GENETICS.

As neither party could be sure that there was to be an opposition before the issuance of this decision, I determine that the time for lodging evidence in support shall commence on the date hereof.

(J L Roveta)

Supervising Examiner of Patents 15 DEC 1988

Patent Attorneys for the patent applicant: Griffith Hack & Co., Sydney

Patent Attorneys for the applicant under Sec. 160 Arthur S. Cave & Co., Sydney