Ici Australia Operations Pty Ltd v Commercial Polymers Pty Ltd

[1995] APO 26

official notice

decision of a delegate of the commissioner of patents

Application        :  No. 606285 in the name of ICI AUSTRALIA OPERATIONS PTY LTD

Title:  Cable

Action: Opposition under S.59 of the Patents Act 1952 by COMMERCIAL POLYMERS PTY LTD; application for special leave to adduce further evidence; hearing.

Decision:  Issued            .

Abstract:  Special leave refused; evidence had no special characteristics, would not have an important influence on the result of the opposition or could have been obtained earlier in the proceedings.

patents act 1990

decision of a delegate of the commissioner of patents

Re:Patent Application No. 606285 by ICI AUSTRALIA OPERATIONS PTY LTD, opposition under S.59 of the Patents Act 1952 by COMMERCIAL POLYMERS PTY LTD, and application by the patent applicant for special leave to adduce further evidence under R.59(1).

background

Application 606285 was filed on 15 June 1989, advertised as accepted on 31 January 1991 and opposed on 18 April 1991. Thus the opposition proceeded under the Patents Regulations 1952. The evidence stages were completed on 16 December 1994 and a hearing on the opposition had been set down for 20 March 1995.

On 3 February 1995 the patent applicant lodged an application to lodge further evidence and the opponent subsequently objected to the application. The application was treated as an application made under paragraph (b) of Subregulation 59(1). The Subregulation reads as follows:

"59. (1) An opponent or applicant may not adduce further evidence except-

(a) by leave of the Commissioner, if the parties agree in writing to further evidence being adduced; or

(b) by special leave of the Commissioner granted on an application made for that purpose."

The matter was heard in Melbourne on 17 February 1995; the applicant was represented by Mr J McCormack, patent attorney, and the opponent was represented by Mr G Chambers, patent attorney, who was accompanied by Mr C Schlicht. The applicant lodged a declaration by Mr McCormack, dated 3 February 1995, in support of the application and the opponent lodged a declaration by Mr Chambers, dated 16 February 1995, in support of its objection to the application. The further evidence, a declaration by one of the inventors, John Joseph O'Leary, dated 15 March 1995, was lodged by the applicant on 15 March 1995.

declarations and submissions

Mr McCormack's declaration indicates, inter alia, that the applicant wishes to adduce further evidence:

.to respond to the evidence-in-reply which questions the expertise of one of the applicant's declarants, Ms Styzinski,

.to comment on the opponent's Exhibit QC21, first referred to in the evidence-in-reply, and

.to show that the invention is inventive in the light of comments made in the evidence-in-reply.

Mr Chambers' declaration indicates that, if the further evidence is adduced, it would be difficult to obtain further evidence-in-reply to the further evidence from the opponent's declarants because one lives in remote part of Indonesia and is hard to locate, and he has lost interest in the case, and the other declarant is in poor health. Mr Chambers also declares that, if such evidence could be obtained, it is likely that further time delay and expense for the opponent would be involved.

Mr O'Leary's declaration I observe is of considerable substance, some 33 pages and 65 paragraphs deal with inter alia the development of the invention, the state of the art, responses to the evidence-in-reply and advantages of the invention.

At the hearing, Mr McCormack dealt with the matters in his declaration in further detail and he made the following submissions, referring to published decisions where appropriate:

.   Considerable time has been expended so far in the evidence stages of the opposition, including many extensions of time, and three earlier decisions. Therefore, any delay caused by adducing further evidence would be insignificant in comparison with the time expended so far.

.   The invention relates to termite resistant optical communications cables and is of significant public interest; therefore both parties should be allowed to present their "best possible case".

.   The further evidence is "of benefit to the opposition"; a "more correct and just decision" could be reached if the inventor's comments on Ms Styzinski's expertise and on the state of the art were to be considered.

.   The 7-week delay between the completion of the evidence-in-reply and lodging the application for further evidence was not unreasonable because it covered the annual Christmas holiday period, the applicant's patent department had "closed down" and the inventor Mr O'Leary no longer works in the same area of the applicant company, ICI.

.   The further evidence could not have been adduced earlier in the opposition because the matters of Ms Styzinski's expertise and Exhibit QC21 were first brought up in the evidence-in-reply, and because the inventor is "no longer involved" in the case.

.   Exhibit QC21 addresses "new" evidence which is not in reply to the evidence-in-answer.

.   The further evidence would have an "important influence on the result of the case" since it is relevant and relates to the background thinking of the inventor.

Mr Chambers' submissions can be summarized as follows, he also referred to published decisions where appropriate:

.   Under the 1952 Regulations, special leave has to be granted by the Commissioner to adduce further evidence; this is a more stringent test than under the 1991 Regulations and is not a matter of right. The evidence has to have "special characteristics".

.   The further evidence lodged is merely a "reply to the evidence-in-reply" or a "matter of opinion" on inventiveness and therefore has no special characteristics.

.   The inventor moving to a different department in the applicant company is an inadequate reason for not obtaining his complete opinion on the inventiveness of the invention as part of the evidence-in-answer.

.   The evidence may not be "credible" because, generally, an inventor would be "the least credible witness to prove inventiveness". Thus the evidence would not have an important influence on the result of the opposition.

decision

In letters dated 3 May 1995, I notified both parties that I had decided to refuse the application to lodge further evidence and that I would subsequently issue a full written decision. The following comments reflect my views now and at the abovesaid time of notification.

After consideration of the facts of this case in the light of relevant criteria from the decisions in Canadian Industries Ltd. v Australian Paper Manufacturers Ltd (1981) 50 AOJP 4565, Micronair (Aerial) Limited v Waikerie Co-operative Producers Ltd (1986) AIPC 90-325, Sue v Carpenter (1991) AIPC 90-750, and other decisions referred to at the hearing, I draw the following conclusions:

.   On the matter of the alleged deficiencies in expertise of the applicant's declarant, Ms Styzinski, I am not convinced that this would be determinative of the opposition; it is a minor part of Mr O'Leary's declaration and therefore of minimal significance. Also, I imagine that the applicant could adequately respond to the allegation by making appropriate submissions at the substantive hearing.

.   On the matter of the alleged "new" evidence Exhibit GC21, I note that the exhibit is very brief, viz. a one-page record of minutes of a meeting, generally relating to the state of the art, and is referred to briefly in paragraph 9 of the associated declaration by Mr Cooke, the opponent's declarant. Thus the response in Mr O'Leary's declaration is also relatively brief, and again I am not convinced that this matter would have an important influence on the result of the opposition. The issue of whether the evidence-in-reply is properly in reply cannot be determined with any certainty until the evidence is dealt with fully at the substantive hearing of the opposition, however it appears to me prima facie that paragraph 9 of Mr Cooke's declaration and Exhibit QC21 are in reply to matters brought up in the evidence-in-answer.

.   The bulk of Mr O'Leary's declaration consists of comments on inventiveness and his response to comments made on this matter by the opponent's declarants. Based on a prima facie view of the declaration, I think this part of the declaration is essentially in reply to the evidence-in-reply and has no special characteristics. Also, I am not certain that evidence similar to the general thrust of this evidence could not have been obtained earlier in the opposition proceedings: Mr O'Leary may have changed departments in ICI but he was still working for the company and therefore should have been encouraged to prepare his evidence in time.

.   I am somewhat concerned that the application for special leave was made after a date for the substantive hearing had been set and some 7 weeks after the evidence stages had been completed. I also take cognizance of Mr Chambers' comments on the potential for more delay in this case if special leave is granted. At this stage of the proceedings a strong case has to be made for special leave, the onus is on the applicant for special leave to prove its case, and taking all the matters discussed above into account in the present case, I am of the view that the case made is not strong enough. It may be that an in-depth analysis of the evidence at the substantive hearing of the opposition will reveal some reason to justify further evidence from the applicant: if the evidence-in-reply is not properly in reply for example; but it is not appropriate for me to make an in-depth analysis of the evidence at this stage to determine that matter.

On the matter of costs, I have refused the application to lodge further evidence and thus found in favour of the opponent. However, I think Mr Chambers' declaration relating to the potential for further delay was a significant factor in my decision and the applicant did not receive its copy of this declaration until the day before the hearing. The applicant's case may then have been different had it received the declaration in a reasonable time prior to the hearing. So, under these circumstances I think it is appropriate to not award costs.

John Welsh
Delegate of the Commissioner of Patents

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

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