Hercules Incorporated v EKA Nobel AB

[1998] APO 53

official notice

decision of a delegate of the commissioner of patents

Application  :          No. 646110 in the name of Hercules Incorporated

Title:           Process for making Epichlorohydrin resins

Action:           Dismissal of a s.104 opposition

Decision:          Issued            .

Abstract

Amendment request dated 3 April 1996

Allowance of amendments is a mandatary action under s.104(6) and r.10.6 if the following circumstances apply:

• The Commissioner has granted leave to amend;

• A Notice of this fact has been published in the Official Journal

• A person has not opposed allowance of the amendment within the prescribed time (r.5.3(3)) (3 months from the date of advertisement of leave granted to amend).

An opposition was not filed within the prescribed period.

The amendments, in relation to the amendment request filed on 3 April 1996, have been allowed in accordance with the Patents Act 1990 and Regulations. The opponent under s.59, was advised of each amendment request as it arose and given the opportunity to make comments in accordance with r.10.2.

The Commissioner sent a letter to the applicant advising that leave to amend the specification had been granted but not to the opponent.  The letter referred to the wrong filing date for the amendment request but gave the correct date for advertising the particulars of the request.

Letters were sent to both parties advising that “the amendments have been allowed and incorporated into the specification on file.”  Again, these letters referred to the wrong request date.

It is Patent Office practice to send letters to both parties to an opposition notifying them of the advertisement of the granting of leave to amend and of the allowance of amendments.  This is, however, only a matter of courtesy, and not a requirement under the Act and Regulations.

There may be an expectation on the part of opponents that the Commissioner will advise them when leave to amend is advertised so that they can file a Notice of Opposition, within the prescribed time, if desired.  A letter from the Commissioner is a matter of courtesy in these circumstances.  It is not a requirement under the Act and Regulations.

The opponent should not have relied on the Commissioner’s letter as the only means of ensuring that they were aware of the granting of leave to amend and its advertisement.

Once the Commissioner granted leave to amend the details were advertised in the Official Journal.  Details were again advertised after no oppositions were received and the amendments allowed.  The Commissioner has therefore done what is required under the Act.

An opposition filed after the period provided by r.5.3(3) is too late.  See the Federal Court decision of Heerey J in Elazac Pty Ltd v Commissioner of Patents and Dean Robert Butler (1994) 29 IPR 479.

The Commissioner’s discretion under s.216 does not apply in the present circumstances as the allowance of a s.104 amendment request, made under the regulations, is mandatory once the conditions for allowance have been met.

There is no provision under the Act for retrospectively un-allowing an amendment.

Time to oppose an amendment request, made under s.104, cannot be extended under s.223 once the amendment has been allowed.  Section 104(6) clearly precludes an opposition to an amendment request once it has been allowed.

Amendment request dated 5 June 1997

Regulation 10.3 provides grounds for opposing the allowance of amendments to the Patent Request and Notice of Entitlement.  If a Patent request has been accepted under sections 49 or 50 of the Act then an amendment to convert from an application for a standard patent to an application for a petty patent or vice versa is not allowable.  Otherwise amendments that ensure that the Patent Request and Notice of Entitlement are in accordance with the requirements of the Act and Regulations, for example s.29, s.39 and r.3.1, would be allowable.

The requirements of r.10.3(4) have been met.  That is, the Commissioner has given Nobel a copy of the request for leave to amend and the statement of proposed amendments and has given them a reasonable opportunity to be heard.

Grounds of opposition under section 102 of the Act do not apply to amendments relating to the Patent Request or Notice of Entitlement.  Section 114 relates to priority dates and is not a ground of opposition.  Priority dates may be an issue for the s.59 opposition.

There are no grounds to support the present opposition under s.104.  The opposition under Section104 is dismissed.

patents act 1990

decision of a delegate of the commissioner of patents

Re:Patent Application No. 646110 by Hercules Corporation (Hercules) and an opposition under s59 by Eka Nobel AB (Nobel) and dismissal of an opposition under s104.

background

Acceptance of application 646110 was advertised on 10 February 1994 and an opposition under s59 filed by Nobel on 6 May 1994.

On 20 February 1998 Nobel filed an opposition under s104 to two sets of amendments.  The amendment requests were proposed on 3 April 1996 and 5 June 1997 respectively.

The request filed on 3 April 1996 related to amendments to the specification.  The request filed on 5 June 1997 related to the Patent Request and the Notice of Entitlement.  The 5 June 1997 request involved converting the present application (no. 646110) to a divisional application of patent application No. 81519/91 (patent no.637516).

Leave to amend the request of 3 April 1996 was advertised on 3 October 1996 and the amendments consequently allowed and incorporated in the specification.  There was no opposition to the amendments filed within the time allowed by r.5.3(3) (3 months).

Leave to amend the request of 5 June 1997 was advertised on 20 November 1997. 

A Notice of Opposition to both requests was filed on 20 February 1998.

On 20 May 1998, Nobel served a statement of Grounds and Particulars and filed a letter as follows

“We forward herewith a Statement of Grounds and Particulars in respect of the above indicated opposition to the allowance of amendments proposed under the provisions of Section 104 dated 3 April 1996 and 5 June 1997.

In addition, we point out that the opponent was not informed of the decision to advertise the amendments forming the subject matter of the request dated 3 April 1996 to enable the opponent to object to the allowability of these amendments and their incorporation into the specification.  Additionally, the official letter dated 26 March 1997 erroneously identified the amendments which were the subject of the request and which were being allowed and incorporated into the specification by indicating an incorrect date.  We confirm that relevant personnel within the Patent Office are aware of the oversight in this regard.  A copy of the official letter dated 26 March 1997 is attached to the Statement of Grounds and Particulars.”

On 22 June 1998 Hercules applied, under r.5.5, to dismiss the s.104 opposition.  The matter was heard in Canberra on 21 August 1998.

Hercules was represented at the hearing by Katrina Howard of Counsel and John O'Connor and Jill Newton of Spruson & Ferguson, patent attorneys, Sydney and Nobel was represented by John McCormack of Griffith Hack, patent attorneys, Melbourne, with written submissions.

The specification disclosed a two step process for making an epichlorohydrin resin involving reacting the epichlorohydrin with a polyamine in a mixture first at a temperature of 25-40°C and then heating the mixture at 25-85 °C.

decision

The statutory provisions

Patents Act 1990

“104. (1) An applicant for a patent or a patentee, may, subject to this Act, and subject to and in accordance with the regulations, ask the Commissioner for leave to amend the relevant patent request or complete specification, or any other filed document, for any purpose including either or both of the following:
(a)       removing a lawful ground of objection to the request or specification, whether that objection is raised in the course of an examination or re-examination or otherwise;
(b)       correcting a clerical error or an obvious mistake.
(2) Where an applicant or patentee asks for leave to amend a patent request or complete specification, or any other filed document, the Commissioner must consider and deal with the request in accordance with the regulations.
(3) Subject to the regulations, the Commissioner may allow an amendment subject to conditions.
(4) The Minister or any other person may, subject to and in accordance with the regulations, oppose allowing an amendment.
(5) The Commissioner must not allow an amendment that is not allowable under section 102.
(6) On the allowance of an amendment, the amendment is to be taken to have been made.
(7) An appeal lies to the Federal Court, against a decision of the Commissioner allowing, or refusing to allow, a requested amendment, other than a prescribed decision.”

Patents Regulations

“Amendments not allowable
10.3     (1)  A proposed amendment of a provisional specification is not allowable if it would materially alter the meaning or scope of the specification.

(2)       A proposed amendment of a complete specification is not allowable if:
(a)        it is in respect of a matter mentioned in paragraph 6 (c) of the Act ("deposit requirements"); and
(b)       after the amendment were made the specification would not include each of the matters specified in that paragraph.

(3)       A proposed amendment of a patent request is not allowable if:
(a)       the patent request has been accepted under section 49 ("acceptance of patent request: standard patent") or 50 ("consideration and acceptance of patent request: petty patent") of the Act; and
(b)       it would convert the patent application from:

(i)        an application for a standard patent to an application for a petty patent; or

(ii)       an application for a petty patent to an application for a standard patent.

(4)       The Commissioner must not allow a proposed amendment of a complete specification if he or she has:
(a)       under subregulation 10.2 (8) or (9) ("Commissioner to consider and deal with requests for leave to amend") given a person a copy of the request for leave to amend and the statement of proposed amendments; and
(b)       not given the person a reasonable opportunity to be heard.

Commissioner to grant leave to amend
10.5 (1) The Commissioner must grant leave to amend a patent request, complete specification or another filed document, if:
(a)       a report under subregulation 10.2 ("Commissioner to consider and deal with requests for leave to amend") is not an adverse report; and
(b)       in the case of proposed amendments of a patent request or complete specification made in anticipation of, or response to, a report relating to an examination or a notice relating to a consideration of a complete application for a petty patent under section 50 of the Act ("consideration and acceptance of patent request: petty patent")‑ the Commissioner reasonably believes that the amendments would remove all lawful grounds of objection to the patent request or specification.

(2)       If the Commissioner grants leave to amend, he or she must publish a notice of that fact in the Official Journal, where:
(a)       the patent request and complete specification to which the leave to amend relates have been accepted under section 49 ("acceptance of patent request: standard patent") or 50 of the Act; and
(b)       the proposed amendments are in respect of:

(i)        the complete specification; or

(ii)the patent request or another filed document and the proposed amendments would materially alter the meaning or scope of the request or document.

(3)       The Minister or another person may oppose allowance of an amendment if a notice is published under subregulation (2).

(4)       For the purposes of paragraph (2)(b), if:
(a)       a request for leave to amend is filed before a patent is granted on an application under section 61 ("grant of standard patent") or 62 ("grant and publication of petty patent") of the Act; and
(b)       the proposed amendments relate to the name or address of an applicant for the patent;
           the proposed amendments are not taken to materially alter the meaning or scope of the patent request or other filed document.

Allowance of amendments
10.6     (1)  If, under subregulation 10.5(1) ("Commissioner to grant leave to amend"), the Commissioner grants leave to amend a patent request or complete specification and the request or specification has not been accepted under section 49 ("acceptance of patent request: standard patent") or 50 ("consideration and acceptance of patent request: petty patent") of the Act, he or she must, subject to any conditions, allow the amendments forthwith.

(2)       If the Commissioner grants leave to amend a patent request or complete specification to which paragraph 10.5(1)(b) applies and:
(a)       the proposed amendments do not relate to a matter mentioned in section 5 of the Act ("associated applications"); or
(b)       the proposed amendments of the complete specification would include matters mentioned in paragraph 6(c) of the Act ("deposit requirements");
the Commissioner must allow the amendments immediately before acceptance.

(3)       Subject to subregulation (4), if under subregulation 10.5(1):
(a)       the Commissioner grants leave to amend a patent request or complete specification; and
(b)       publishes a notice of that fact under subregulation 10.5(2);

the Commissioner must allow the proposed amendments:
(c)       where a person has not opposed allowance of the amendments; or
(d)      subject to the terms of any decision of a prescribed court, the Tribunal or the Commissioner in respect of the opposition.

(4)       If the Commissioner requires the patentee to file a statement that, to the best of the  knowledge of the patentee, relevant proceedings are not pending, the patentee must file the statement within 1 month.”

The amendment request of 3 April 1996 (relates to the specification only)

The Commissioner granted leave to amend under r.10.5(1) and a Notice of that fact was published in the Official Journal of 3 October 1996.  No Notices of Oppositions were received in accordance with regulations 5.3(3) and 10.5(3) and notification of the allowance of the amendments appeared in the Official Journal on 27 March 1997.

The amendment request of 5 June 1997 (relates to the Patent request and the Notice of Entitlement only)

The Commissioner granted leave to amend under r.10.5(1) and a Notice of that fact was published in the Official Journal on 20 November 1997.

Submissions

Nobel submitted that:

• The onus is on applicant for dismissal to show that the opposition must be dismissed.  The applicant has not discharged this onus.  Applicant has not satisfied the tests for dismissal.

• Oppositions are dismissed only if there is absolutely no issue to be investigated.  The Grounds and Particulars clearly demonstrate that there are issues to be investigated.

• The Statement of Grounds and Particulars satisfies all requirements as it provides grounds and supports each of the grounds with particulars.  The applicant is aware of the case it has to answer.  There are real issues raised in the opposition that need to be investigated fully.  The first major issue is whether relevant official procedure was observed and the second major issue is whether the patent application in suit is entitled to proceed with an earlier priority date as a result of the change of status to a divisional application of Patent No. 637516.

• An opposition should not be terminated on procedural grounds, but rather both parties should be allowed to present their best possible case.

• The Commissioner or Delegate of the Commissioner exercised discretion to allow the first amendment without adequately informing the opponent, thereby effectively preventing the opponent from being heard in this matter.  Official procedure of the Patent Office has not been followed, which has resulted in the opponent being adversely affected.  Provisions of Section 216 were not followed.

• The Commissioner has the right to intervene and use discretion where appropriate, over and above the requirement of Section 216.

• It is in the public interest that the opposition proceeds to ensure that only valid patents are granted with the correct priority date and that all issues surrounding the application in suit are canvassed.

• The present hearing is in respect of the dismissal of the opposition and not in respect of any technical matters.  If technical matters are raised, apart from being incidental to the submissions, it is clear that there is a serious issue to be investigated.

In summary, Hercules submitted that the opposition should be dismissed because:

• the time for opposing the request of 3 April 1996 has expired and the Patents Act does not have provision to disallow the amendments, once amendments have been allowed;

• Although there is not an application to extend the time for opposing the amendment request under Section 223, there has not, in any case, been a relevant error or omission on the part of the Commissioner.  S.223 can not be used to extend time once the amendment has been made.  You can consider an amendment of a patent analogous to the sealing of a patent.  After a patent is sealed you cannot oppose the grant of the patent.  There are other mechanisms available in the Act for complaining about the grant of the patent.  The same situation applies once an amendment is made.  Section 104(6) provides that once an amendment is allowed, it is taken to have been made.  There is simply no provision for extending the time for allowance of amendments;

• the amendment request of 5 June relates only to the Patent Request and the Notice of Entitlement, not to the specification, therefore the grounds of s.102 do not apply;

• the right to oppose this request is given under r.5.10(3).  This regulation does not specify grounds of opposition.  This cannot be construed as being unlimited as any grounds of opposition must not be inconsistent with the Act and Regulations;

• the first three grounds in the s.104 Statement of Grounds and Particulars relate to s.102 and are not available for any document other than a specification.  They are not appropriate to an opposition to the Patent Request or Notice of Entitlement;

• the fourth ground relates to s.114 of the Act, that is, to the priority dates of the claims and specification as filed.  This is also not a ground that is appropriate to an opposition to the Patent Request and Notice of Entitlement.

Consideration

The amendment request of 3 April 1996

Allowance of amendments is a mandatary action under s.104(6) and r.10.6 if the following circumstances apply:

• The Commissioner has granted leave to amend;

• A Notice of this fact has been published in the Official Journal

• A person has not opposed allowance of the amendment within the prescribed time (r.5.3(3)).

An opposition was not filed within the prescribed period.

The amendments, in relation to the amendment request filed on 3 April 1996, have been allowed in accordance with the Patents Act 1990 and Regulations. Nobel, as an opponent under s.59, was advised of each amendment request as it arose and given the opportunity to make comments in accordance with r.10.2.

There is a copy on file of a letter from the Commissioner to Hercules advising that

“the delegate considers that:

(a)   the request for leave to amend dated 29/11/91 is as prescribed; and

(b)   leave has bee granted, to amend the specification.

Particulars of the request will be advertised in the Official Journal dated 3/10/96”

This letter should refer to the request dated 3 April 1996 rather than 29/11/91 (the filing date of the specification). It is Patent Office practice to send letters to both parties to an opposition notifying them of the advertisement of the granting of leave to amend and of the allowance of amendments.  However, it appears from the file that a copy of the letter advising of the granting of leave to amend was not sent to Nobel.

On 12 March 1997 and 26 March 1997, respectively, letters were sent to Hercules and Nobel advising that “ the amendments, subject of the request dated 29/11/91 have been allowed and incorporated into the specification on file.”  Again, these letters should have referred to the 3 April 1996 rather than 29/11/91.

Once the Commissioner granted leave to amend, the details were advertised in the Official Journal.  Details were again advertised after oppositions were not received and the amendments allowed.  The Commissioner has therefore done what is required under the Act.

There may be an expectation on the part of opponents that the Commissioner will advise them when leave to amend is advertised so that they can file a Notice of Opposition, within the prescribed time, if desired.  Hercules submitted, however, that attorneys should be aware that they need to keep watch on the Official Journal in these circumstances and not rely on the Commissioner’s letter.  Nobel failed to keep watch on the Official Journal to ensure that an advertisement of the granting of leave to amend was found and that an opposition was filed within the prescribed time.  I accept this submission.  A letter from the Commissioner is a matter of courtesy in these circumstances.  It is not a requirement under the Act and Regulations.

Nobel should not have relied on the Commissioner’s letter as the only means of ensuring that they were aware of the granting of leave to amend and its advertisement.

The opposition filed on 20 February 1998 is too late where the request of 3 April 1996 is concerned. The Notice of Opposition was filed more than 13 months after the time for filing oppositions expired (3 January 1997). 

In Elazac Pty Ltd v Commissioner of Patents and Dean Robert Butler (1994) 29 IPR 479, Federal Court decision, Heerey J decided an appeal against a decision of the Commissioner of Patents to allow an amendment under section 104 of the Act. The applicant to the Court did not oppose the allowance of the amendments within the prescribed time and appealed the Commissioner’s decision. In his reasons for disallowing the appeal, Heerey J said

“Before the relevant decision of the Commissioner is made there is provision for the giving of notice and for the hearing of opponents.  Opponents become parties to the decision:  see s.104(4).  Thus the legislation contemplates an applicant for an amendment, an opponent, and the Minister as being potentially persons who may wish to complain about the decision.  The natural meaning of the word ‘appeal’ suggests such persons are intended to have a right of recourse to the Court but that such a right is not to be extended to the community at large, even to persons such as the present applicant who might have a legitimate commercial interest in the amendment.  Their opportunity to oppose is given at the publication stage.”

There is no provision under the Act for retrospectively un-allowing an amendment.

Time to oppose an amendment request, made under s.104, cannot be extended under s.223 once the amendment has been allowed.  Section 104(6) clearly precludes an opposition to an amendment request once it has been allowed.

The Commissioner’s discretion under s.216 does not apply in the present circumstances as the allowance of a s.104 amendment request, made under the regulations, is mandatory once the conditions for allowance have been met.

The public interest issues of ensuring that only valid patents are issued and that serious issues are investigated are matters that are dealt with under s.59.

Amendment request of 5 June 1997

Regulation 10.3 provides grounds for opposing the allowance of amendments to the Patent Request and Notice of Entitlement.  If a Patent request has been accepted under sections 49 or 50 of the Act then an amendment to convert from an application for a standard patent to an application for a petty patent or vice versa is not allowable.  Otherwise amendments that ensure that the Patent Request and Notice of Entitlement are in accordance with the requirements of the Act and Regulations, for example s.29, s.39 and r.3.1, would be allowable.

The requirements of r.10.3(4) have been met.  That is, the Commissioner has given Nobel a copy of the request for leave to amend and the statement of proposed amendments and has given them a reasonable opportunity to be heard.

Nobel’s grounds of opposition under section 102 of the Act do not apply to amendments relating to the Patent Request or Notice of Entitlement.  Section 114 relates to priority dates and is not a ground of opposition.  Priority dates may be an issue for the s.59 opposition.

I agree with Hercules’ submission that the grounds of opposition to the amendment request of 5 June 1997, as contained in the Notice of Grounds and Particulars, are not appropriate to an amended Patent Request or Notice of Entitlement. 

Consequently there are no grounds of opposition relevant to either of the amendment requests.

Conclusion

There are no grounds to support the present opposition under s.104.  Consequently, I dismiss the opposition.

Costs

Costs in these proceedings normally follow the event.  I see no reason to vary this.  I award costs against Nobel.

Bob Sawyer
Delegate of the Commissioner of Patents

Patent attorneys for the applicant  :  Spruson & Ferguson

Patent attorneys for the opponent   :  Griffith Hack