Gynelab Products, Inc. v Packard Development S.A

[1996] APO 41

official notice

decision of a delegate of the commissioner of patents

Application  :          No. 646630 in the name of GYNELAB PRODUCTS, INC.

Title:          Intrauterine cauterizing apparatus and method

Action: Opposition under section 59 of the Patents Act 1952 by PACKARD DEVELOPMENT S.A.;  request to amend the statement of grounds and particulars and a request to file further evidence

Decision:          Issued            .

Abstract:          The document that it was sought to include in the particulars was known to the opponent for over a year, and the delay was unexplained.  Request to amend the statement of grounds and particulars refused.

When considering a request to serve further evidence, the question of whether the statement of grounds and particulars has been amended is a key consideration.  Request to serve further evidence refused.

patents act 1990

decision of a delegate of the commissioner of patents

Re:Patent Application No. 646630 by Gynelab Products, Inc., and a request to amend the statement of grounds and particulars and file further evidence in an opposition by Packard Development S.A.

background

Patent application number 646630 in the name of Gynelab Products, Inc. (hereafter referred to as GYNELAB) was advertised accepted on 3 March 1994.  A notice of opposition to the grant of a patent was lodged by Packard Development S.A. (hereafter referred to as PACKARD) on 2 June 1994.  The statement of grounds and particulars was served on 2 September 1994 (an amendment was made on 21 November 1994 and allowed without opposition).  Evidence in support was completed on 3 April 1995 (following two extensions of time), and evidence in answer was completed on 10 January 1996 (following three extensions of time).  PACKARD gave notice of intention to serve evidence in reply, but did not serve any evidence within the allowed period (i.e. by 10 April 1996).

On 26 April 1996 PACKARD filed a request to amend the statement of grounds and particulars, and requested leave to file further evidence.  GYNELAB opposed the requests, and the matter was heard in Canberra on 19 July 1996.  GYNELAB was represented by Mr A.Ryan, barrister, assisted by Mr B.Connor, patent attorney of Carter Smith & Beadle, Melbourne.  PACKARD filed written submissions and was not represented at the hearing.

request to amend the statement of grounds and particulars

The request to amend the statement of grounds and particulars has the effect of adding a new particular to the ground of section 59(1)(e) of the Patents Act 1952.  The new particular states:

"11.     German Patent Specification No. DE A 3725691
           This document describes a heat curing apparatus for destroying diseased body tissue including a catheter insertable into a body cavity and having a flexible balloon into which a liquid such as water can be introduced and expanded and heated to contact the tissue to be treated and wherein the heating of the liquid is carried out by a thermister internal to the balloon."

further evidence

In its request to file further evidence, PACKARD identified the further evidence as:

(i)        German patent specification DE A 3725691

(ii)       English translation of DE A 3725691

(iii)      Confirmation of publication date in Australia

This evidence relates solely to the amendment to the statement of grounds and particulars.

submissions

PACKARD filed written submissions on the day before the hearing.  Mr Ryan made submissions on behalf of GYNELAB at the hearing.  I will refer to these submissions where appropriate in my decision.

decision

1. The relevant law

Patent application number 646630 has a lodgement date of 11 September 1989 (which was the international filing date of the international application), advertised accepted on 3 March 1994 and a notice of opposition was lodged on 2 June 1994.  By virtue of subsections 234(2) and 234(3) the present opposition is governed by the Patents Act 1990, except that Part V of the Patents Act 1952 replaces Chapter 5 of the Patents Act 1990.

1. Request to amend the statement of grounds and particulars

The allowability of amendments to the statement of grounds and particulars is determined by regulation 5.9, which states:

"Amendment of statement

5.9      (1)  The Commissioner, on the written request of an opponent and subject to such terms as the Commissioner may specify:  ...

(c)must amend particulars relating to a ground referred to in subregulation 5.4 (1).

(2)       The Commissioner must not allow an amendment requested under subregulation (1), if:

(a)an application for dismissal of opposition is being considered; or

(b)an application for determination of opposition is being considered; or

(c)in the case of opposition under section 59 of the Act ("opposition to grant of standard patent")‑a specification relating to the opposed application is being re-examined; or

(d)he or she does not reasonably believe that the applicant has been notified of the proposed amendment; or

(e)he or she reasonably believes that a person will be unduly prejudiced by the amendment."

The power of the Commissioner to amend the particulars of a statement is not discretionary provided the requirements of subregulation (2) have been satisfied (The Boots Company PLC v Hamilton Laboratories Pty Ltd, Patent Office decision, 21 December 1992, patent application number 614998, unreported).

In the present case the amendment relates only to the particulars and not to the grounds.  There is no pending application for dismissal, an application for determination of the opposition is not being considered, there is no re-examination, the applicant has been notified of the proposed amendment and both parties have had an opportunity to make representations.  The only remaining issue that I must consider is whether I reasonably believe that "a person will be unduly prejudiced by the amendment" (regulation 5.9(2)(e)).

The issue of undue prejudice has been considered in many decisions of the Commissioner.  Both parties referred to Diamond Scientific Company v CSL Limited (1992) AIPC 90-927, 26 IPR 15, where the Delegate of the Commissioner concluded that undue prejudice will occur if:

i)the amendment is detrimental or disadvantageous to the patent applicant;  and

ii)the circumstances surrounding the amendment cause the degree of that detriment or disadvantage to be unwarranted, excessive, improper, inappropriate or unjustified.

I will discuss the evidence and submissions relevant to each of these considerations.

(a)       Is the amendment detrimental?

The new citation DE 3725691 (hereafter referred to as the DE document) that PACKARD seeks to include in the statement of grounds and particulars changes the specific details of the case to be answered, but it does not substantially change the case to be answered.  I consider that such an amendment is prima facie detrimental to the patent applicant.  This leads on to the second consideration - the degree of the detriment.

(b)      Is the detriment excessive?

In other decisions of the Commissioner it has been found that the degree of detriment inherent in a change in the specific details of the case is small (see Abundant Lawn Grass Industries Pty Ltd v Crancove Pty Ltd (1993) AIPC 90-973). However, this is only one consideration, and it is essential to have regard to all relevant considerations (for example, see Ferocem Pty Ltd v Commissioner of Patents (1994) 28 IPR 243). Other relevant considerations are the delay in requesting the amendment, how the opponent became aware of the new document(see Diamond Scientific v CSL, supra), the public interest (Porter v Abortech Investments Pty Ltd (1994) 31 IPR 169) and any consequential delays that would be produced (Diamond Scientific v CSL, supra).

Delay

It is apparent from the submissions of PACKARD that they were aware of the new document at least on 9 January 1995, when this document was presented by them to proceedings in the European Patent Office.  This was 2 months before the completion of evidence in support of the present opposition, and 15 months before the request to amend the statement of grounds and particulars.  This is a very long delay.  While it is probably not essential to provide an explanation of the delay (note Ferocem v Commissioner, supra), the reasons are a relevant consideration.  The only explanation of the delay is in the submissions on behalf of PACKARD:

"Through inadvertence the existence of that document was not communicated to the Australian attorneys responsible for the opposition."

The way in which the Australian patent attorneys became aware of the DE document is explained in a declaration by Malcolm Neil Bell, attached to the submissions for PACKARD.

"I first became aware of the existence of the document DE A 3725691 on 14 March 1996 when my firm received a telefax from the opponent's Swedish attorneys, Messrs Awapatent, dated 13 March 1996 forwarding a copy of part of the decision given in the European Patent Office (EPO) relating to European patent application no. 89910571.2 being the European equivalent to the opposed application, and in which reference was made to the German specification.  A copy of the German specification in either English or German was not included at that time.  ...  As a result of that telefax I requested further information in relation to the German specification from Awapatent and sought details of the date it became open for public inspection in Australia from the Australian Patent Office.  ...  By telefax dated 18 April 1996 I received a copy of an English translation of DE 3725691 and immediately sought leave to amend the statement of particulars to include the document and to serve further evidence."

It is apparent that PACKARD were aware of the DE document before their evidence in support was filed in Australia, and were aware of the document's significance (as they were advancing the document in proceedings in Europe), but did nothing until prompted by Mr Bell.  PACKARD then took over a month to respond to Mr Bell's request.  While I accept that Mr Bell acted promptly, and showed commendable initiative, PACKARD's behaviour demonstrates a regrettable tardiness.  These delays by PACKARD, which have not been explained, are strong reasons against allowing the amendment.

How did the opponent become aware of the DE document

The circumstances surrounding how PACKARD became aware of the DE document have not been explained.  There is no evidence that the document was discovered incidental to the preparation of the case in the present opposition.  There is no evidence of any mitigating factor in the way that GYNELAB became aware of the DE document.

Public interest

The next consideration is the public interest.  PACKARD submitted that the DE document is highly relevant to the substantive opposition, and thus it is in the public interest to allow the amendment so that a correct result can be achieved in that opposition.  The evidence of the relevance of the document is in the decision of the European Patent Office on the European equivalent of the present application.  PACKARD submitted:

"The decision of the EPO found as a matter of fact that all structural features of the apparatus defined in claim 1 of the European equivalent of the opposed application were disclosed in the German specification.  Whilst the Commissioner is obviously not bound by these findings, they do, we submit demonstrate the potential real relevance of this document.  These findings of fact have been made by an independent tribunal and do not depend on any particular legal considerations."

A copy of the European decision was attached to the submission. Mr Ryan suggested that the DE document is not relevant, as it is particularised under the ground of section 59(1)(e) (i.e. lack of novelty), but is not relevant to novelty. This argument necessarily involves a consideration of substantive issues of the opposition, which are not appropriate in this matter. The decision of the European Patent Office seems to refer to inventive step issues rather than novelty, which suggests it may not be as relevant as PACKARD suggested. However, while I would not be prepared to say that the DE document could not be the basis of a novelty argument under Australian patent law, I must equally conclude that it is not clear that the DE document would render the invention not novel. I conclude that the public interest considerations do not clearly support either party's submissions.

Further delays

Finally, I will consider further delays.  Clearly GYNELAB may wish to file answering evidence (and Mr Ryan indicated that this would be their intention).  This would cause further delay to the opposition.  I suggested that this delay might be minimal as the evidence had already been tested in Europe.  Mr Ryan stated that a different expert would be engaged in Australia, and that this would still take time.  I accept that further delay would result from allowance of the amendment.

c)        Conclusion

On the one hand, the change to the case to be answered is not substantial.  On the other hand, (i) it is unknown how PACKARD located the DE document;  (ii) PACKARD clearly did not propose amendment until long after the document was identified;  and (iii) some further delay would arise due to GYNELAB serving answering evidence.  I consider that the circumstances as a whole suggest that the degree of detriment is excessive, and thus the amendment should not be allowed.

1. Request to serve further evidence

Requests to serve further evidence are governed by regulations 5.10(4) and 5.10(5):

"(4)     The Commissioner may:

(a)     on the application of a party; and

(b)     on such reasonable terms (if any) as the Commissioner specifies;

permit the party to serve further evidence on the other party.

(5)       The Commissioner must not give a direction under subregulation (1) or grant an application under subregulation (2) or (4) unless the Commissioner:  ...

(c)     in either case:

(i)      gives the parties a reasonable opportunity to make representations concerning the application or proposed action; and

(ii)     is reasonably satisfied that a direction, an extension of time or the serving of further evidence is appropriate in all the circumstances."

The key question in deciding whether to grant an application to serve further evidence is whether I am reasonably satisfied that it is appropriate in the circumstances to allow the further evidence.  Requests to adduce further evidence under the former regulations were determined according to principles in decisions such as Micronair (Aerial) Ltd v Waikerie Co-operative Producers Ltd (1986) AIPC 90-325, 7 IPR 107 and Sue v Carpenter (1991) AIPC 90-750, 19 IPR 187. However, the opposition system that applied when these decisions were made did not include the statement of grounds and particulars. The statement identifies the basis of the opposition, and matters outside the statement cannot be argued by the opponent (see Kent-Moore Corporation v Environmental Products Amalgamated Pty Ltd (1992) AIPC 90-915, 25 IPR 233). Consequently, where further evidence is of a kind that needs to be the subject of particulars, that evidence cannot be argued by an opponent unless that evidence has been made the subject of particulars (by amendment of the statement under regulation 5.9 if necessary). If the evidence is not the subject of particulars, then the further evidence would not be part of the opposition, so it would not be appropriate to allow that further evidence to be filed. Consequently, amendment of the statement of grounds and particulars is an essential prerequisite to allowing a request to serve further evidence. On this basis, the present request should be refused.

If I am wrong in my conclusion above, and it is possible to serve further evidence even if the statement of grounds and particulars has not bee amended (presumably such evidence would not be part of the opposition, and would be dealt with ex parte), then I believe that the present request to serve further evidence still cannot be allowed.  The factors that are relevant to this decision, in addition to whether the statement has been amended, are

(i)is the evidence relevant, in the sense that it would contribute to a more correct, just and expeditious result,

(ii)would there be unnecessary protraction of the opposition,

(iii)would there be injustice to the other party,  and

(iv)has the party been diligent in prosecuting the opposition?

(see Tasman Engineers Pty Ltd v Austbelt Splicing Services (International) Pty Ltd, Patent Office decision, 27 February 1996, patent application number 645150, unreported)

Point (i) has already been discussed above under the heading "Public Interest".  It is uncertain whether the DE document would lead to a more correct result.  There is no evidence to suggest that the DE document would produce a more expeditious result.  Overall, it is not certain whether the DE document would lead to a more correct.

Point (ii) has already been discussed above under the heading "Further delays".  I concluded that there would be further delays if the statement were amended and the evidence was served, so I conclude that there would be further protraction if the evidence were served.

Point (iii) is addressed by noting that I found that there would, overall, be undue prejudice to GYNELAB if the statement were amended.  I consider there would also be injustice if the evidence were served (although this could be minimised if GYNELAB were allowed time to serve evidence in answer).

Point (iv) has already been discussed above under the heading "Delay".  I concluded that there had been significant unexplained delay in dealing with the DE document.  I consider that PACKARD have not been diligent with regard to the DE document.

I conclude that in the light of the above four considerations it is not appropriate to allow further evidence to be served.  Overall, request to serve further evidence is not allowable.

Conclusion

I refuse the amendment to the statement of grounds and particulars.  I refuse permission to serve further evidence.

costs

The power of the Commissioner to award costs is based on section 210 and regulation 22.8.  The power to award costs is discretionary, so I must take into account all relevant considerations (see American National Can Co. v W.R. Grace & Co.-Conn (1994) AIPC 91-063, 29 IPR 292). In the present case the request to amend the statement of grounds and particulars and the request to serve further evidence were unsuccessful. In this situation, it is appropriate to award costs against PACKARD.

I award costs in accordance with Schedule 8 against Packard Development S.A.

Dr S.D.Barker

Delegate of the Commissioner of Patents

Patent attorneys for the applicant  :  Carter Smith & Beadle, Melbourne

Patent attorneys for the opponent   :  Phillips Ormonde & Fitzpatrick, Melbourne