Ishihara Sangyo Kaisha Ltd v the Dow Chemical Company

[1983] APO 31

In the Matter of the Patents Act 1952

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In the Matter of Application 527957 by ISHIHARA SANGYO KAISHA LTD.

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In the Matter of Opposition thereto by THE DOW CHEMICAL COMPANY

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In the Matter of an Application for Extension of Time under Section 59.

DECISION OF THE COMMISSIONER OF PATENTS:
        This is a matter relating to an application for extension of time to lodge Notice of Opposition to the grant of a patent on patent application 527957 pursuant to section 59(1) of the Act.   The applicant for Letters Patent is Ishihara Sangyo Kaisha, a company incorporated in Japan (ISK).   The potential opponent and applicant for extension of time is The Dow Chemical Company, a company incorporated in the United States (Dow).
        Dr. M.G. Horner, patent attorney, of Griffith, Hassel & Frazer, appeared for the applicant and Mr. C.M. Bentley, patent attorney, of Clement Hack & Co., appeared for the potential opponent.
        Application No. 527957 was advertised accepted in the Official Journal of 31 March, 1983 and Notice of Opposition was therefore due under section 59(1) of the Act by 30 June, 1983.  The application for extension of time under section 59(1) was lodged on 24 June, 1983 by Dow.  The extension of time sought was a period of three months, i.e. until 30 September, 1983.   ISK, in

accordance with Office practice, was informed of the application and by telex, the attorneys for the applicant on 25 July, 1983 gave notice of objection to the extension of time and the matter was set down for hearing by the Commissioner.   The hearings were held in Canberra on 16 August, 1983 and in Melbourne on 26 August, 1983.
        The circumstances in which, and the grounds upon which the application is made are given in the application as:

"Experimental work is being carried out in relation to processes disclosed in the subject specification and it is expected that the results of that work will be relevant to our decision whether to oppose the application or not.  Accordingly further time is required within which to receive and consider the results of the said experimental work and decide whether Notice of Opposition shall be lodged."

Details of the experimental work carried out were provided in a declaration by Merlin Bruce Davy dated 23 August, 1983.
        This declaration indicates that the experimental work was in fact carried out in relation to a process disclosed in the Japanese priority document upon which the claims of the subject specification rely for Convention priority.
         ISK objected to the extension of time on the following grounds:

(a)There has been a lack of diligence by Dow in considering whether to lodge a Notice of Opposition.

(b)Dow have not sufficiently discharged the onus on them by showing good cause for the extension.

(c)Dow have not revealed any serious grounds of opposition.

(d)The balance of equity with respect to the parties and the public interest does not favour granting the extension.

It was argued on behalf of ISK that Dow had sufficient knowledge of the ISK application, which was advertised accepted on 30 March, 1983, to lodge a Notice of Opposition within the statutory period.  It was further argued on behalf of ISK that Dow had not sufficiently explained why their experimental work was necessary nor what grounds of opposition such work might relate to.   Evidence was introduced on behalf of ISK that Dow had initiated revocation proceedings in respect of the corresponding ISK British patent.
        It was submitted that no serious grounds of opposition could arise from the experimental work undertaken by Dow as the Japanese priority document describes five separate working preparation examples and it is unreasonable to suppose, and it is apparently not alleged that all five do not work.   It was further submitted that there is no requirement under Australian patent law that a priority document should comprise a sufficient description in order that the claims of an Australian application shall be fairly based thereon and that the allegation of insufficiency can only be legally applied against the Australian complete specification as published.
        It was argued also that the public interest would not be served by allowing the opposition to proceed on the grounds that Dow would be able to market a competitive produce in the meantime whilst ISK would be prevented from instituting appropriate infringement proceedings.  It was submitted that refusal of the extension would not cause any appreciable loss to Dow as it is always open to Dow to institute revocation proceedings after grant.
        In reply it was submitted for Dow that due diligence was observed in that at the due date for the filing Notice of Opposition, Dow was awaiting corroborating experimental evidence from independent experts in Japan.  It was contended that this evidence challenges the priority date of the claims of the subject complete specification insofar as they relate to certain compounds.   It was argued for Dow that it was not necessary in an application for extension of time to establish the substance of the grounds of opposition.   There had however, to be genuine reasons for extension of time and that, in this case, the extension of time was necessary for the experimental work to be carried out so that the grounds of opposition could be more clearly established.   It was also argued that there was not a heavy onus on an application for extension of time under section 59(1) to establish the substance of the grounds of opposition.
        The judgement in the Erling Vangedal‑Nielsen case reported in 1981 AOJP 298 indicates that for an application for extension of time under section 59(1) to be successful the party seeking the extension must show:

(i)that some good reason existed why it had not been able to mount its opposition within the initial period of 3 months provided,

(ii)that a potentially serious opposition is foreshadowed.

Furthermore the judgement indicates that in exercising his discretion on the extension application, the Commissioner needs to have regard to the public interest, and needs to be satisfied that an applicant seeking an extension has made out a proper case justifying the extension.
        According to the evidence before me, Dow carried out experiments in relation to example 5 of the Japanese basic document.  It was found that attempts to reproduce the process described in the example resulted in a failure to produce the particular compound purported by the Japanese document to be produced.  It is asserted on behalf of Dow that example 5 is the only example of the priority document directed to the family of 3‑chloro derivatives defined in the claims of the subject specification.  It was also found that the melting point given in the basic document for the purported end product of example 5 differed significantly from that found for "pure authentic" sample produced by the Dow chemist.  It is alleged that the experiments showed a similar situation with another 3‑chloro derivative mentioned in the basic document.
        On the basis of these experimental results Dow contends that the compounds had not been actually produced.  It is submitted on behalf of Dow that these experimental results show that the disclosure of the Japanese document is not sufficient to establish a Convention priority date pursuant to section 141 of the Act in respect of the 3‑chloro derivatives.  It was further submitted that independent corroborating evidence was needed before a decision could be made to file the Notice of Opposition.  According to the Davy declaration the corroborative work was in progress as of 2 June, 1983 when Dow informed its Australian patent attorneys that it sought an extension of time.
        I am satisfied on the evidence put before me that the experiments carried out for Dow in Japan showed a sufficient reason for seeking an extension of time.   I am also satisfied that these experiments are relevant to matter required for pursuing a serious opposition in that they relate to the question of the priority date of the present claims, and thus to such potential grounds of opposition as prior claiming, prior publication, want of novelty and obviousness.
         It seems to me in the light of the Erling Vangedal‑Nielsen case it is not necessary for me to consider that there is a substantial opposition fore‑
shadowed but merely that a serious opposition is genuinely intended by the potential opponent.   I am satisfied on the material before me that such a serious opposition is to be prosecuted.
        I therefore allow the extension of time.
        As I have relied on further evidence provided on behalf of Dow at the hearings in arriving at my decision and because I consider that the ISK was led to object as a result of the inadequate grounds and circumstances set out in the application for extension, I award costs against Dow.

(F.J. Smith)