Kimberly-Clark Corporation v the Procter & Gamble Company

[1992] APO 37

official notice

decision of a delegate of the commissioner of patents

Application        :    No. 612742 in the name of KIMBERLY-CLARK CORPORATION

Title:    A Disposable Incontinence Garment or Training Pant

Action: Objection to an application under regulation 5.10(2) of the Patents Regulations 1991 for an extension of time to serve evidence in support of an opposition under section 59 of the Patents Act 1952 by THE PROCTER & GAMBLE COMPANY

Decision:    Issued            .  Extensions of time to serve evidence in support allowed.  Requirements of regulation 5.10(2) discussed.

patents act 1990

decision of a delegate of the commissioner of patents

Re:Patent Application No. 612742 by KIMBERLY-CLARK CORPORATION, Opposition by THE PROCTER & GAMBLE COMPANY, and Objection to an Extension of Time to file Evidence in Support.

background

Patent application number 612742 in the name of Kimberly-Clark Corporation was advertised accepted on 18 July 1991.  The Procter & Gamble Company filed a notice of opposition on 18 October 1991, and filed a statement of grounds and particulars on 18 November 1991.

Evidence in support was due to be served by 18 February 1992.  An application for an extension of time until 18 May 1992 in which to serve evidence in support was made by Procter & Gamble, and objected to by Kimberly-Clark.  The hearing of this matter was set down for 9 June 1992 in Canberra because the patent attorney for Procter & Gamble was not available during May 1992.  A further application for an extension of time to 18 August 1992 was filed, and objected to.  Both parties were informed that the hearing on 9 June 1992 would consider both applications for extensions of time.

Mr G.Turner, patent attorney of Spruson & Ferguson, Sydney represented the applicant, and Mr G.Pryor, patent attorney of Davies Collison Cave, Melbourne represented the opponent.

THE APPLICATIONS FOR EXTENSION

The first application for extension of time stated that the grounds for the extension were:

"The particulars in support of the opposition identify a number of instances of prior publications of documents in Australia and prior use of products in Australia.  More time is required to fully analyse the documents and investigate the prior user.  Accordingly, more time is required to prepare and serve the evidence-in-support of the opposition."

The second application for extension of time stated that the grounds for the extension were:

"A draft of the principal declaration for the evidence-in-support has been prepared.  The attorney handling the matter will be visiting the United States to visit the opponent company to talk about a number of matters including the draft declaration.  The attorney concerned will not return to the office until 1st June, 1992.  More time will be required to finalise and serve the evidence after his return."

SUBMISSIONS

On 5 June 1992, the working day before the hearing, a statutory declaration by Mr Pryor was filed.  This declaration stated in part:

"2.  THAT, the statement of grounds filed at the Patent Office on 18th November, 1991 and the evidence served in connection with an opposition to a related case, namely Patent Application No. 607,293 which is also being opposed by the opponent herein, establish that there are strong prima facie grounds of a serious opposition to Application No. 612,742.

3.  THAT, a draft of the principal declaration to be used in the evidence-in-support has been prepared.

4.  THAT, I travelled overseas from 2nd May, 1992 and I did not return to the office until 1st June, 1992.  During my trip I visited the opponent company in the United States and discussed the draft declaration referred to above.  Since my return, there has been insufficient time to finalise the draft.

5.  THAT, on 13th March, 1992 I requested information from the Patent Office Library regarding the publication of certain prior art documents in Australia but as yet I have received no reply. ... The relevant information is proposed to be used as part of the evidence-in-support proving publication in Australia of some proposed exhibits."

Mr Pryor's submissions at the hearing included the following points:

1. A serious opposition is foreshadowed.  This is evidenced by the statement of particulars, and the evidence in support filed on 607293.

1. The interests of the parties lies in favour of allowing the extensions.  The opponent would suffer a commercial prejudice if an invalid patent were granted; the public interest is against sealing invalid patents; and there is no evidence that the applicant would be prejudiced by the delay.

1. The statutory declaration by Mr Pryor explains why the delay had occurred.  The declaration also raises supplementary points in support of the extension (the opposition on related application number 607293, and the request for publication dates from the Patent Office) which are not essential to finding in favour of the opponent.

1. Travel to the United States was necessary to discuss the evidence of a local expert which was not available earlier.

1. The total delay in this case has not been very great.  Mr Pryor referred me to British-American Tobacco Co Ltd v Philip Morris Ltd 1991 AIPC 90-738 and British-American Tobacco Co Ltd v Philip Morris Ltd 1991 AIPC 90-773.

1. Mr Pryor was not able to give an undertaking as to when the evidence would be served.

Mr Turner's submissions in response included the following points:

1. The opponent has had since the application was advertised accepted on 18 July 1991 to collect its evidence.  The opponent has only shown minimum evidence of activity.  No evidence has yet been filed, and it cannot be said that there has been a legitimate effort to bring the matter to a conclusion.

1. There was no indication in the application for extension or the declaration of Mr Pryor as to why it was necessary to travel to the United States to prepare the declaration.

1. The opponent was aware of the anticipations on which it was going to rely when it filed its statement of grounds and particulars in November 1991.  It chose to wait until March 1992 to request the Patent Office to supply publication dates.

1. In The Wellcome Foundation Ltd v Peptide Technology Ltd 14 IPR 567 an extension was allowed because the technology involved was complex, and the evidence voluminous. In the present case the technology was straight forward, and there was no proof that the evidence was voluminous.

1. The opposition on application number 607293 is irrelevant because it is not mentioned in the grounds of opposition filed for the present opposition.

1. The mere listing of particulars does not indicate that a serious opposition is involved.

1. In The Dupps Company v Stord Bartz A/S 17 IPR 397 an extension was not allowed, even though there was evidence of a serious opposition, because the opponent had not progressed the matter in a satisfactory manner. The opponent in the present case has not even established a serious opposition.

1. The public interest favoured the sealing of a valid patent without undue delay.

1. The applicant would be seriously disadvantaged by the extension because they would be hindered in progressing with promotion of their product.

10.The fact that there have been only two applications for extension of time does not matter.  The party seeking extension must have been diligent in progressing the matter.  There has only been minimal evidence of activity by the opponent.

DECISION

This is the first decision on an extension of time to serve evidence in support under the provisions of the Patents Act 1990. The power of the Commissioner to give such an extension is found in regulation 5.10(2):

"(2)     The Commissioner may:

(a)on the application of a party in the approved form; and

(b)on such reasonable terms (if any) as the Commissioner specifies;

extend the time within which the party may take a step prescribed in this Chapter, not being a step that is taken under regulation 5.3 ("filing of opposition")."

Serving evidence in support under regulation 5.8(1) is a step prescribed in Chapter 5 of the Regulations, so the time for carrying out this step can be extended under regulation 5.10(2). 

The corresponding extension provision under the Patents Act 1952 was found in regulation 55: "... or within such further time as the Commissioner on application in accordance with Form 11 allows ...". Apart from the provision of terms, the extension provision of the Patents Act 1990 is very similar to that of the Patents Act 1952. As a consequence, I believe that the law which governed extensions under the Patents Act 1952 is also applicable to the Patents Act 1990. The law concerning this category of extensions of time under the Patents Act 1952 is based on the decisions of the Federal Court in Vangedal‑Nielsen v Smith (1980) 33 ALR 144 and Lyons v Registrar of Trade Marks 1 IPR 416. These cases established that the Commissioner must consider three factors:

1. whether an appropriate case justifying the extension has been made out;

1. whether a potentially serious opposition is in train; and

1. the public interest in ensuring that worthless patents are not granted, and that there are no unreasonable delays.

These factors have been elaborated in a large number of Patent Office decisions.  However, there is an extra requirement laid down in regulation 5.10(5):

"(5)     The Commissioner must not give a direction under subregulation (1) or grant an application under subregulation (2) or (4) unless the Commissioner:

(a)if he or she proposes to grant an application by a party ‑ is reasonably satisfied that the other party has been notified of the application; and

(b)if he or she proposes to act on his or her own motion ‑ ensures that the parties are notified of the proposed action; and

(c)in either case:

(i)gives the parties a reasonable opportunity to make representations concerning the application or proposed action; and

(ii)is reasonably satisfied that a direction, an extension of time or the serving of further evidence is appropriate in all the circumstances."

This subregulation essentially states that there is a requirement for the Commissioner to apply natural justice in the decision making process, and that the onus lies on the party seeking the extension to reasonably satisfy the Commissioner. These requirements were present under the Patents Act 1952: natural justice was a general requirement, and reasonable satisfaction was factor 1 above. Consequently, the law and practice developed under the Patents Act 1952 are equally applicable to extensions of time under the Patents Act 1990. The same result is suggested by section 15AC of the Acts Interpretation Act.

Another new requirement of the Patents Act 1990 is that an opponent must file a statement of grounds and particulars which sets out the statutory grounds for the opposition, and the material facts necessary to support those grounds (see Mobay Corporation v The Dow Chemical Company (1992) AIPC 90-895). As a consequence, the nature of the case to be presented is already a matter of record. An application for an extension of time to serve evidence in support will have to be based on reasons which are connected with the opposition as revealed in the grounds and particulars in order to make out an appropriate case. For instance, gathering information on a matter which had not been raised in the particulars would not be relevant to an extension.

The First Extension

The reason given for the extension is to analyse the prior publication and prior use grounds.  These matters are raised in the statement of grounds and particulars, and so are relevant reasons.

There is no evidence that the technology is complex, or that the evidence is voluminous.  However, I believe that the opponent has made out a case which justifies further time to consider the prior publication and prior user.

The detail presented in the particulars indicates prima facie that a serious opposition is in train.  As a consequence, I do not need to consider whether the opposition to a related case also indicates that a serious opposition is in train.

The interests of the parties appear to be opposed.  The public interest appears to me to favour having all relevant material placed before the Commissioner so that a decision on the merits may be made (Kaiser Aluminium and Chemical Corporation v Reynolds Metal Co (1969) 120 CLR 136).

The extension sought is for three months, and is the first extension.  I consider that the present extension will not cause unreasonable delay, and should be allowed.

I note that Hearings Practice Note 1991 No. 6, at point 7, says that the first application for extension will be given less rigorous consideration.  I do not think that this means that the first extension is automatic.  It is always necessary to establish that the extension is justified, but it is more likely that a short extension can be justified.

The Second Application

The reason given for the extension is that time was needed for the draft of the principal declaration to be discussed with the overseas opponent.  It appears that this is connected with the particulars of the opposition, so is a relevant reason.  I note that there is no reference to analysing the prior publication and prior user, so I conclude that these tasks are now finished.

The opponent's contention that it was necessary for the attorney to personally take the draft declaration to the United States seems to be unusual, and was not fully explained.  It also appears that the declaration is incomplete because publication dates of the citations have not yet been obtained from the Patent Office.  Overall, it seems that there is a case for an extension of time.

For the reasons already given under the first application for an extension, I believe that a serious opposition is in train.

The balance of interests is virtually the same as for the first application for extension.  There is an additional consideration that the period of the extension now totals six months, and no evidence has yet been served.  However, from the information provided by Mr Pryor it appears that although he could not guarantee when the evidence would be served, the process of preparing the evidence is nearing completion and no further extension should be needed.  As a result, it is in the public interest that this extension be allowed so that the matter is considered on its merits.

CONCLUSIONS

I allow both the first and second applications for extension of time to serve evidence in support.  The time for serving evidence is extended to 18 August 1992.

COSTS

Both parties argued that costs should be awarded in their favour.  I have reached my decision on the first application on the basis of the information in the application itself.  I have reached my decision on the second application on the basis of information contained in the statutory declaration filed on the working day prior to the hearing, and submissions made at the hearing.  Consequently I believe that Kimberly-Clark were justified in opposing the second application, but not the first application.  In these circumstances, I make no award of costs.

S.D.BARKER
Delegate of the Commissioner of Patents

Patent attorneys for the applicant  :  Spruson & Ferguson, Sydney

Patent attorneys for the opponent   :  Davies Collison Cave, Melbourne