Imperial Chemical Industries Plc (Ici) v E I Du Pont De Nemours and Company (Du Pont)

[1996] APO 2

official notice

decision of a delegate of the commissioner of patents

Application  :          No. 654176 in the name of IMPERICAL CHEMICAL INDUSTRIES PLC

Title:          REFRIGERANT COMPOSITIONS

Action:          Request to amend the statement of grounds and particulars under regulation 5.9 by E I DU PONT DE NEMOURS AND COMPANY; and objection to the request by IMPERICAL CHEMICAL INDUSTRIES PLC.

Decision:          Issued  .

Abstract:          Request to amend to provide extra particulars (nine extra documents of prior art); extra particulars arose incidental to the preparation of the case; the particulars were included by way of amendment at the earliest reasonable opportunity, but would result in a protraction of the preparation of the case in respect of all but two of the particulars; the particulars would also substantially change the case the applicant had to answer; would unduly prejudice the applicant; amendment not allowed.

Statement of grounds and particulars inadequate; opponent given the opportunity to amend the statement to provide better particulars.

patents act 1990

decision of a delegate of the commissioner of patents

Re:Patent Application No. 654176 by IMPERICAL CHEMICAL INDUSTRIES PLC (ICI), and opposition thereto by E I DU PONT DE NEMOURS AND COMPANY (Du Pont), and objection to amendment under Regulation 5.9 to the Opponent’s Statement of Grounds and Particulars.

background

Patent application 654176 was advertised accepted on 27 October 1994.  Du Pont filed a notice of opposition on 27 January 1995.  They subsequently filed a statement of grounds and particulars on 27 April 1995.  Two applications for extensions of time in which to serve evidence-in-support have been granted unopposed.  On 25 September 1995 Du Pont filed a request to amend the statement of grounds and particulars.  ICI objected to allowance of this amendment on 10 October 1995 and the matter was set for hearing on 6 December.  A second request to amend the statement was filed by Du Pont on 2 November 1995 to which ICI objected on 23 November.  ICI asked that they be heard in relation to this amendment at the same hearing.  However the attorney for Du Pont stated at the hearing that she had no prior knowledge of this objection.  Consequently the hearing was held in relation to only the first request to amend, namely the request filed on 25 September.  Ms E. Eadie, patent attorney of Callinan Lawrie, represented Du Pont.  Mr R. Evans, patent attorney of Phillips Ormonde & Fitzpatrick, represented ICI.

DECISION

Regulation 5.9 provides for amendment of a statement of grounds and particulars.  The pertinent point in this case is that the statement cannot be amended if the Commissioner believes that a person would be unduly prejudiced by the amendment (Regulation 5.9(2)(e)).  Both parties at the hearing relied on the Office’s decision in Diamond Scientific Company v CSL Limited ((1992) AIPC 90-927) in discussing whether the proposed amendment would unduly prejudice the applicant. According to that decision and the parties’ submissions I should take into account whether there has been active pursuit of further particulars in the opposition or whether they arose incidentally to the preparation of the case. I should also determine whether there would be any resultant protraction in the preparation of the case, whether the amendment was sought at the earliest reasonable opportunity and whether the extra particulars would substantially change the case the applicant has to answer.

The amendment proposes to add nine new documents to the nine originally mentioned in the statement filed on 27 April 1995.  The opponent’s attorney, Ms Eadie, pointed out that document 15 is the same as document 3 and should be ignored.  However I do not think it is appropriate to ignore document 15 as different passages of text are cited compared with document 3.

Concerning the discovery of the extra particulars the only evidence before me is the statutory declaration of Ms Elizabeth Eadie, dated 1 December 1995.  The declaration asserts that the additional documents 10 to 17 were identified when preparing the Statement of Grounds and Particulars for opposition to a co-pending application 658005 by ICI.  Document 18 is the application 658005 itself.  Mr Evans, for the applicant, pointed out that the evidence-in-support which had already been filed included documents which were not particularised in the original statement.  He suggested that this made it clear that the opponent was building its case by active pursuit of further particulars.  I find it a little difficult to adopt this view.  For the most part, the evidence-in-support already filed is in respect to documents particularised either in the original statement or in the statement as proposed to be amended.  In the latter situation the statutory declaration states that these documents were uncovered only during preparation of the opposition case against co-pending application 658005.  I am prepared to accept that the extra particulars arose incidentally to the preparation of the present case.

According to the Diamond Scientific Company v CSL Limited decision documents which arise incidental to the preparation of the opponent’s case will not prima facie unduly prejudice the applicant if they:

1. do not result in any protraction of the preparation of the case;

ii.  are included by way of amendment of the statement at the earliest reasonable opportunity; and

iii. do not substantially change the case the applicant has to answer.

Mr Evans referred to the Kent Moore Corporation v Environmental Products Amalgamated Pty Ltd decision ((1992) 25 IPR 233) to describe the purpose of the statement of grounds and particulars. He pointed out that the statement sets the basis of the opponent’s case and expedites proceedings by fully informing applicants at an early stage of the case they have to answer so they can commence preparation of their case. Mr Evans submitted that the extra particulars in the proposed statement and the uncertainty over when the opponent’s evidence-in-support would be completed results in a protraction of the preparation of the applicant’s case.

Ms Eadie relied on two decisions to support the view that there will not be any protraction of the preparation of the case.  The Abundant Lawn Grass Industries Pty Ltd v Crancove Pty Ltd decision ((1993) AIPC 90-973) allowed the inclusion of a US patent in the statement of grounds and particulars and in the evidence. The hearing officer in that decision formed the view that the details of the patent could be considered by the applicant at the same time as the details of the declaration of the evidence-in-support, and hence would not, in itself, result in any protraction of the preparation of the case. The Commonwealth of Australia v Australia Sonar Systems Pty Ltd decision (unreported decision on application 621418 issued 3 May 1993) similarly allowed the inclusion of a specification on the basis that there would not be any such protraction.

Two things distinguish the present situation from these decisions.  Both decisions involved the inclusion of only one extra document as opposed to the nine documents sought to be included in the present case.  Furthermore the extra document in each of those decisions was served on the applicant as an exhibit to a declaration which completed the evidence-in-support.

It may be possible that the details of the nine extra documents can be considered by the applicant at the same time as the details of the documents included in the original statement.  The main declaration providing evidence on most of the documents has already been filed.  It may also be possible to consider all of the documents concurrently with the preparation of the case for application 658005.  However I believe that the inclusion of a large number of additional documents as partial evidence-in-support places an unreasonable additional burden on the applicant beyond that which would have been evident from the original statement. 

Ms Eadie drew my attention to the fact that document 18 is the applicant’s co-pending application 658005 and that the applicant should be familiar with that case and the relevance of it to the present opposition.  I believe this is a relevant consideration.  Additionally document 15 is the same as document 3.  While different passages of text are cited in these two particulars I believe the material can be considered together particularly as all passages relate to the use of hydrofluorocarbons with glycol or ester containing lubricants.  I think that documents 15 and 18 would not unduly protract the preparation of the applicant’s case.  This still leaves seven additional documents.  My view is that these extra documents would result in a protraction of the preparation of the applicant’s case.

I turn now to the issue of whether the extra documents were included by way of amendment of the statement at the earliest reasonable opportunity.  Mr Evans submitted that the opponent must have been aware of the extra documents at least three months before filing the request to amend.  He noted that the time between the opponent filing a notice of opposition against co-pending application 658005 and filing of the request to amend was about three months.  Mr Evans also noted the reasons put forward by the opponent for making the request to amend.  These were that:

“The Statement of Grounds and Particulars is required to be amended because the Opponent has recently become aware of further pertinent prior art which was discovered whilst evaluating another patent application for possible opposition.”   (my underlining).

Mr Evans suggested that the reference to evaluation for possible opposition meant that the opponent must have been aware of the extra documents much earlier than the time of filing the notice of opposition to application 658005 and much earlier than three months before filing the request to amend.

Ms Eadie submitted that the proper consideration was not when the opponent became aware of the extra documents but when the opponent realised the significance of the documents to the present case.  This submission is in line with the Porter v Arbortech Investments Pty Ltd decision (on application 633978 issued 20 September 1994) where the determination of whether there was undue delay in filing the request to amend was reckoned from the time of realising the significance of the document.  Ms Eadie also explained that the expression, “possible opposition”, was merely a poor choice of words and that the prior art was discovered while preparing the opposition case against application 658005.

From Ms Eadie’s declaration it is evident that she has had concurrent responsibility for the conduct of both the 658005 opposition and the present opposition since late August /early September.  On 18 September Ms Eadie received a list of prior art from Du Pont in relation to the 658005 opposition.  On or soon after this date she realised the apparent relevance of this prior art and the 658005 application itself to the present opposition.  There followed some correspondence between Ms Eadie and Ms K. King of Du Pont to confirm the relevance of the documents and to await instructions, culminating in the request to amend the statement of grounds and particulars on 25 September.  Ms King’s correspondence (attachment to Ms Eadie’s declaration) and Ms Eadie’s analysis at the hearing of the independent claims of 658005 and the present application seek to explain why the prior art located for 658005 was not located earlier when the prior art search was conducted for the present application.  Having briefly considered the claimed subject matter of both applications I accept that the closeness of the subject matter of these applications is not immediately apparent.

Mr Evans submitted that the onus is on the opponent to show that it has been diligent in requesting amendment at the earliest reasonable opportunity.  He suggested that this is not evident from the declaration or any other material and that Du Pont may have delayed the disclosure of relevant prior art to this opposition until it was necessary to do so in the co-pending application.  However I note the level of correspondence between Du Pont and their attorneys in the week prior to filing the request to amend.  In my view this demonstrates appropriate diligence in attempting to rectify perceived deficiencies in the statement of grounds and particulars.

I accept that, while Du Pont may have been aware of the prior art in relation to 658005 for some time prior to filing the request to amend, neither Du Pont nor their attorneys were aware of the significance of that art or the 658005 application itself to the present opposition until at least 18 September 1995.  It follows that I hold the view that Du Pont sought to include the extra particulars by way of amendment of the statement at the earliest reasonable opportunity.

Regarding the issue of whether the extra particulars substantially change the case the applicant has to answer Mr Evans submitted, for the applicant, that the addition of the extra documents would result in a significant increase in complexity, expense and time in addressing the new documents.

Ms Eadie argued that, rather than being a substantial change in the case, the amendment results in a change in the specific facts which the applicant has to answer.  For this contention she relied on the Abundant Lawn Grass Industries Pty Ltd v Crancove Pty Ltd decision.  This decision held that the inclusion of an additional patent in the same general field of art as the documents already particularised involved a change in the specific facts and not a substantial change in the case the applicant had to answer.  Ms Eadie asserted that the present case is analogous to that decision.  She stated that the additional documents are all further examples of the use of synthetic lubricants such as ester containing lubricants with hydrofluorocarbon refrigerants or mixtures of hydrofluorocarbon refrigerants.

On the other hand Mr Evans submitted that the field of art had changed and raised new issues in that the new documents included examples directed to lubricant solubility and particular formulae of esters.

The invention described and claimed is a refrigerant composition having a ternary or higher mixture of various hydrofluorocarbons and a polyalkylene glycol or ester containing lubricant.  I have considered all of the particulars to the degree necessary to gauge their relevance.  Both the original and the extra particulars are all in respect of compositions of various refrigerants and glycol or ester based lubricants.  I am satisfied that they all relate to the same general field of art.

On the whole however, the extra particulars are rather voluminous.  While the statement of grounds and particulars identifies relevant passages for all the documents it is a little difficult to determine the exact relevance of the documents to the present invention.  Accordingly I think there would be a need to resort to other passages as well.  Consequently I find that changes to the original statement of the scale envisaged here, together with the volume of extra documentation to be considered, must involve a substantial change in the case for the applicant to answer.

I think that documents 15 and 18 (mentioned earlier) are exceptions in this case.  Document 15 is the same as document 3 and merely quotes some additional relevant passages of text.  Document 18 is the applicant’s co-pending application, appears to be the main example of relevant prior art and is representative of the subject matter cited in the original statement of grounds and particulars.

Even excluding these two documents I think there is sufficient change to the original statement to involve a substantial change in the case to be answered.  Once again the present situation is distinguished from the Abundant Lawn Grass Industries Pty Ltd v Crancove Pty Ltd decision where only one extra document was sought to be included.

In the light of the Diamond Scientific decision I conclude that the amendment request is prima facie unduly prejudicial to ICI.  This means the onus is on Du Pont to show why I should allow the request.  I consider that Du Pont has not adequately discharged this onus.  Consequently I cannot accept the request to amend.

Mr Evans also questioned the adequacy of the statement.  He submitted that the amended statement complicated and obscured the case the applicant had to answer, particularly for inventive step.  Mr Evans stated that paragraphs (a) to (c) under the Section 18(1)(b)(ii) heading of the statement require the applicant to consider innumerable combinations of some or all of the eighteen documents to extract parts of common general knowledge.  This makes it virtually impossible to understand the case against inventive step.  He also pointed out that there is no clear reference as to what is the common general knowledge of a person skilled in the refrigeration art.

The E I Du Pont De Nemours and Company v DowElanco decision ((1994) AIPC 91-067) sets out the basic requirements for statements of grounds and particulars. In respect to common general knowledge it requires a brief description of the alleged common general knowledge and identification of the person skilled in the art (that is, the particular field of technology relevant to the subject matter - not the actual person). The description should also include brief details of any material facts needed to establish a prima facie case.

I agree with Mr Evans that the statement is inadequate in these respects.  It is silent in respect to what the common general knowledge of a person skilled in the refrigeration art would have been at the priority date(s) of the claims.  The statement also fails to provide brief material facts regarding the relevance of that common general knowledge and/or any of the documents to the case against inventive step.  However the amendment itself has not created this complication in the case the applicant has to answer.  The same assertions were made in the original statement.  Any new complication in the amended statement only arises from an increased number of possible combinations of eighteen documents instead of nine.  In any case I think it is appropriate to allow the opponent the opportunity to amend the statement to provide better particulars to overcome these deficiencies.

A minor technical issue raised by Mr Evans is that Du Pont’s request to amend is inappropriate in that it was made under Section 104 which does not provide for amendment to a Statement of Grounds and Particulars.  The intent of the request as a Regulation 5.9 request is clear and has been treated in this way by the office.  Previous correspondence from the office to both parties has made references to the request as a Regulation 5.9 request.  At the start of the hearing I also referred to this regulation in confirming the matter set down for the hearing.  Applying a purposive approach I accept the request as a Regulation 5.9 request.

CONCLUSION

I have found that the extra particulars in the proposed statement of grounds and particulars arose incidentally to the preparation of the case.  While I accept that Du Pont sought to include these particulars by amendment of the statement at the earliest reasonable opportunity I have also found that all except two of those particulars would result in a protraction of the preparation of the case and that they substantially change the case ICI has to answer.  Accordingly the amendment would prima facie unduly prejudice ICI.  Furthermore Du Pont has not adequately discharged its onus to show why I should allow the amendment.  Consequently I cannot accept the request to amend.

Even though I have not allowed the request the delegate hearing the substantive opposition may invoke Regulation 5.11 to determine which, if any, of the extra documents are to be part of that hearing.  These documents may also be scrutinised in any possible bar-to-sealing action.  In this way the public interest is not overlooked in ensuring the granting of valid patent rights.

I have also found that the statement of grounds and particulars is inadequate in view of the E I Du Pont v DowElanco decision (cited earlier).  The statement does not provide appropriate descriptions of the common general knowledge of persons skilled in the refrigeration art nor other brief material facts relevant to the case against inventive step.  Additionally I have accepted that documents 15 and 18 do not create the difficulties mentioned in the Diamond Scientific decision.  Accordingly under Regulation 5.10(1) I allow Du Pont fourteen days from the date of this decision to amend the original statement to include these two documents and to briefly elaborate the case against inventive step.

COSTS

Both Ms Eadie and Mr Evans made submissions that costs should normally follow the event.  Mr Evans further submitted that even if I allowed the amendment I should consider the time of filing of Ms Eadie’s declaration just a few days before the hearing and the adequacy of the reasons provided by Du Pont in making the request to amend.  Mr Evans suggested that ICI was fully justified in objecting to the amendment request based on the evidence available at the time of objecting and the reasons given by Du Pont.  In any case I have found that I cannot allow the amendment and so I award costs against Du Pont.

M.G. Kraefft
Delegate of the Commissioner of Patents

Patent attorneys for the applicant   :  Phillips Ormonde & Fitzpatrick

Patent attorneys for the opponent   :  Callinan Lawrie