Imperial Chemical Industries Plc (Ici) v Ireco Incorporated, Dyno Industrier A.s. & Dyno Wesfarmers Limited

[1993] APO 31

official notice

decision of a delegate of the commissioner of patents

Application        :    No. 623933 in the name of IMPERIAL CHEMICAL INDUSTRIES PLC

Title:    Emulsion Explosive Composition

Action:    Objection to applications under reg. 5.10(2) for extensions of time to serve evidence-in-support of oppositions.  Hearing.

Decision:    Issued            .  Extensions refused.  Testing of the prior art would lead to unreasonable delay.

patents act 1990

decision of a delegate of the commissioner of patents

Re:Patent Application No. 623933 by IMPERIAL CHEMICAL INDUSTRIES PLC (ICI), oppositions by IRECO INCORPORATED, DYNO INDUSTRIER A.S. and DYNO WESFARMERS LIMITED, and application by the opponents for extensions of time under regulation 5.10(2) to file evidence-in-support.

background

Application No. 623933, for an invention entitled "Emulsion Explosive Composition" was lodged on 6 October 1989 and advertised as accepted on 28 May 1992.  The opponents filed notices of opposition on 28 August 1992 and statements of grounds and particulars on 28 September 1992.  On 13 November 1992 ICI filed requests for directions under regulation 5.10(1) in respect of the statements of grounds and particulars; the matter was heard on 22 December 1992 and a decision by the Commissioner's delegate issued on 16 February 1993.  The statements referred to, inter alia, a total of 32 patent specifications and the delegate directed, inter alia,

"that further and better particulars be provided by amending the statement of particulars, under regulation 5.9, by filing a new statement of grounds and particulars..." and "should the amendment of the statement of particulars include the deletion of documents which are the subject of this direction then further particularisation in relation to each remaining document is required only where the total number of documents listed under each ground exceeds 10".

Thus on 16 March 1993 the opponents filed requests to amend the statements of grounds and particulars. I note that the number of patent specifications cited under each ground has been reduced to 10 in the proposed amendments.

On 18 December 1992 each of the opponents filed copies of a declaration and accompanying exhibits as part of their evidence-in-support, and on 30 December 1992 each of the opponents applied for an extension of time of 3 months, to 28 March 1993, to serve further evidence-in-support.  ICI objected to the extensions and the matter was heard by telephone on 24 March 1993.  ICI was represented by Mr Ray L. Evans, patent attorney, and all three opponents were represented by Mr Michael Houlihan, patent attorney.

On 29 March 1993 each of the opponents applied for a further extension of time of 3 months, to 28 June 1993, to serve further evidence-in-support, and on 29 April 1993 the applicant objected to these further extensions.

CIRCUMSTANCES

The applications for extension of time indicate that there are three reasons why the time allowed so far has proven insufficient, viz:

"Firstly, in the Statement of Grounds of Opposition, we referred to several Statutory Declarations that constituted evidence-in-support on Australian Patent 574140, from which the present application claims divisional status.  As the evidence-in-support on 574140 is considered relevant in respect of numerous of the present grounds of opposition and copies thereof would be lodged, as evidence in the present opposition, enquiries were made by our Patent Attorneys, Callinan Lawrie, of the Patent Office to supply them with a certified copy of certain of the Statutory Declarations of the 574140 evidence.  Substantial delays in the Patent Office appear to have occurred in the processing of that request.  The initial request (copy enclosed) was forwarded to the Patent Office via facsimile transmission on 2 October 1992 which transmission was also followed up by a confirmation copy thereof lodged at the Melbourne Sub-Office on 5 October.  On 23 October 1992 we forwarded to the Patent Office a reminder facsimile request dated 22 October, attaching a copy of our initial 2 October 1992 request.  Again, a confirmation of the 22 October transmission (copy enclosed) was lodged on 23 October at the Melbourne Sub-Office.  In absence to a reply to either of the 2 or 22 October facsimile letters, we sent to the Patent Office again via facsimile transmission and confirmation another reminder on 10 November 1992 (copy enclosed).  The request certified copy of the 574140 evidence was finally received by us on 13 November 1992.

It had not been anticipated that such a simple and routine request for this type of information could take so long a time in being answered.  If and until we could obtain the certified copy of numerous of the Statutory Declarations as referred to in the evidence of 574140, its consideration by our experts and its place in relation to the other prior art already brought to the attention of the Patent Office and the patent applicant in the Statement of Grounds of Opposition could not be carried out.  Clearly, some six weeks were lost to us, due to circumstances beyond our control and in spite of substantial efforts to obtain the requested information from the Patent Office.

Secondly, the opponent is still reviewing the disclosures of the opposed complete specification and is conducting comparative tests in relation to explosive compositions as per numerous of the prior art specifications already identified, to contrast them against the compositions of the claims of the opposed application.  These tests are necessary since the thrust of the invention according to the opposed application resides around the fact that its claimed compositions based upon a conductivity value result in explosive compositions having improved storage stability.  The comparative testing of the prior art compositions has not yet been completed nor fully evaluated.

Thirdly, we also consider valuable time has been lost, in that neither we nor our Attorneys have been able to fully concentrate their efforts for the filing on the evidence-in-support, in view of the need for us and them having to respond to the patent applicant's Application for directions for further and better particulars.  On this point, we note, that there have also been several communications between our Attorneys and the Patent Office following their receipt of the Patent Office letter of 25 November 1992 to clarify whether the directions Application was pertinent to our opposition.  In the absence of a response from the Patent Office to their 3 December transmission our Attorneys sent a reminder transmission on 7 December 1992.  The Attorneys were then involved in telephone discussions and facsimile exchanges with [the Acting Assistant Commissioner] to resolve the Directions Application matter.  A Hearing in respect of the Application for direction for further and better particulars has only just taken place and this at the patent applicant's request diverted our and our Attorneys attention from addressing the evidence-in-support matters.

We believe it is in the public interest that the prior art documents now on file, together with the forthcoming comments of our witnesses be put before the Commissioner, so that the Commissioner is in a position to have the fullest disclosure of facts, when the opposition is finally decided.

The additional time is requested so that the above, including the test and evaluation may be performed with due care and attention to detail".

SUBMISSIONS

Both parties discussed the decision in Kent-Moore Corporation v Environmental Products (1992) AIPC 90-915. In that decision, the hearing officer indicated that

"...given a statement of grounds and particulars, factors that need to be taken into account when considering whether an extension of time to file evidence in support is justified include:

a.Is the extension being sought for reasons which are based on matters not referred to (either directly or by clear implication) in the statement of grounds and particulars?

b.Is the extension being sought to find evidence to support speculative or non-specific particulars?

c.Is the extension being sought because the opponent requires more time to determine whether a particularised document is relevant?

d.Has there been any undue delay in putting the evidence together?

The hearing officer also indicated:

. that before an extension of time can be granted, a justification must be "given for which the answer to all these factors is `no'", and

. that the law which had been applied under the 1952 Act "is also appropriate to extensions of time under regulation 5.10(2), so long as account is taken of the consequences that flow from there being a statement of grounds and particulars...".

Mr Houlihan's main submissions for the opponents can be summarized as follows:

.Relevant evidence has already been lodged; this indicates that a "serious opposition is foreshadowed"; re Vangedal Nielsen v Commissioner & Anor. (1981) 33 ALR 144.

.The opponents have given "a prompt, frank, comprehensive and clear disclosure of all the circumstances"; re Kimberly-Clark v Commissioner & Anor. (1988) 13 IPR 569.

.The opponents to the present application are not the opponents who opposed the parent application, therefore the evidence-in-support of the opposition to the parent was not in the possession of the present opponents, and copies had to be obtained from the Patent Office.

.The claims of the specification define the invention "by result", thus requiring tests to be carried out on the prior art to determine relevant electrical conductivity.  Claim 1 reads as follows:

"1. An emulsion explosive composition comprising a discontinuous phase containing an oxygen-supplying component and an organic medium forming a continuous phase wherein the composition contains an electrical conductivity modifier in an amount effective to provide an emulsion which, in the absence of supplementary adjuvant, exhibits an electrical conductivity, measured at a temperature of 600C, not exceeding 60,000 picomhos/metre, said modifier comprising a hydrophilic portion and a lipophilic portion which lipophilic portion comprises a hydrocarbon chain derived from a polyolefin selected from polymers of olefins said olefins containing from 2 to 6 carbon atoms".

.The patent applicant would not be disadvantaged by the extension since the scope of the claims of the present divisional application are "within the umbrella of the parent" which would enable the applicant to police the invention against infringement.

Mr Evans' submissions for the patent applicant can be summarized as follows:

.The official date of advertisement of acceptance is 28 May 1992; however, the acceptance was originally advertised, in error, on 7 November 1991; this in effect gave the opponents extra time to consider the specification.

.The patent specifications referred to in the statements of grounds and particulars are not "particularized" and are merely the "results of a search" related to the parent application.  The opposition therefore is "not serious".

.It is not clear why the present opponents did not have copies of the evidence lodged in the parent case, and "nothing was done" whilst waiting for copies of the evidence from the Patent Office.

.The opponents have not provided any "verification" of further testing being done with the prior art; the tests may be open-ended, there is nothing to indicate when they might be concluded, and the tests may be related to utility, which is not a ground of opposition.

.ICI is inconvenienced by the delay in sealing its patent, its divisional status is not relevant to the extension of time matter and the "balance of convenience clearly favours granting a patent".

Mr Houlihan responded to Mr Evans' submissions by arguing that:

.The early advertisement of acceptance is not relevant because a corrigenda in the Official Journal on 2 January 1992 indicated that all reference to the early advertisement should be deleted.

.The opposition is serious: the results of some of the tests are in the evidence-in-support already lodged.

.The opponents should not be required to file any declarations verifying the tests; the Kent-Moore decision, supra, indicates that statutory declarations are only "an example" of "relevant evidence" justifying an extension of time.

DECISION

The first reason for the extension is that there were delays in the Patent Office providing the opponents' attorneys with copies of the evidence on parent application 574140.  Regarding that application, I note that, even though the opponents were not the same opponents as in the present oppositions, Mr Houlihan was the attorney dealing with both cases for all the opponents, and it is somewhat surprising that he had to obtain copies of the evidence from the Patent Office.  However, I am prepared to resolve the doubt in this matter in the opponents' favour and accept that it was necessary to obtain copes of the evidence from the Office and that there was some delay of about 5 or 6 weeks resulting from these circumstances.

I think it is  reasonable to conclude that the opposition is serious since some evidence-in-support has already been served on the applicant.  The seriousness of the opposition, however, is not a strong factor in the determination of whether an extension of time to lodge evidence is allowable, since:

.The Vangedal Nielsen case, supra, where this criterion is discussed, relates to an extension of time to lodge a notice of opposition; a circumstance where seriousness is more critical.

.Seriousness was not a factor considered in the Kent-Moore decision, supra.

.Oppositions generally tend to be treated as serious once some evidence is served; this is the usual situation in the progress of an opposition, and therefore is only of minor significance.  Conversely, a situation where the patent applicant could demonstrate that the opposition is not serious is rare, and therefore of relatively more significance.

As the evidence stages progress in oppositions, more time elapses and the matter of delay thus tends to become more significant than seriousness.  The matter of delay in the present case is linked to the testing of the prior art, so I will now consider this second reason for the extension given by the opponents.

.I have some degree of sympathy for the opponents having to deal with claims which are claiming by result, however I consider that such claims are not unusual and therefore should be given the same status with regard to opposition as any other accepted claim.

.The circumstances relating to testing the prior art, in my view clearly fail paragraph "c" of the test set out in the Kent-Moore decision: the tests are being done to determine whether the particularized documents fall within the scope of the accepted claims.

.I agree that the period of time required for testing seems to be rather "open-ended".  Not enough information has been provided by the opponents to clearly indicate when the tests will be complete; for example, Mr Houlihan submitted that "the opponent has to construct and calibrate a testing device".  The applications for further extensions of time lodged on 29 March 1993 also give no clear indication when the testing may be complete; the circumstances referred to in those applications confirm that some testing equipment has not yet been constructed, "that setting up and calibration of the testing equipment may not be completed until possibly late May 1993", and "that formal testing for conductivity...may not take place until early June 1993".

Thus I consider that the opponents' second reason for the extension of time relates to circumstances which would involve an unreasonable amount of delay in the opposition and prosecution of the patent application, and that the second reason is therefore not a justification for an extension.

The opponents' third reason for the extensions is that they and their attorney were distracted by the direction for further and better particulars.  This I consider not to be a sufficient justification for an extension; I cannot think of any good reason why the opponents and their attorney could not have dealt with the evidence at the same time as the direction for particulars; either matter should have been a reminder that the other needed some attention. The problems experienced by the opponents' attorney in this matter seem to be a direct result of the large number of documents referred to in the original statement of grounds and particulars, and therefore are problems of the opponents' own making.

CONCLUSION

I have decided that there has been some delay in opposition proceedings caused by delays within the Patent Office, and thus beyond the opponents' control. This delay was about 5 or 6 weeks; I therefore grant extensions of time of 2 months to 28 February 1993 to serve evidence-in-support.

However, I have found that there is no justification for any further extensions of time, so I refuse to grant the extensions of 3 months applied for by the opponents.

The applications for extension from 28 March 1993 to 28 June 1993 logically cannot be of any effect since there have been no extensions granted for the period between 28 February 1993 and 28 March 1993.

I direct that the period for serving evidence-in-answer begins from the date of this decision.

In actions before the Commissioner, costs usually follow the event, and in this matter all parties sought an award of costs on that basis. Having regard to my granting only a limited extension of time, I make no award of costs. 

J. I. WELSH
Delegate of the Commissioner of Patents

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

Patent attorneys for the opponent   :  Callinan Lawrie, Kew