Kimberly-Clark Corporation v the Procter & Gamble Company - [1990] APO 43

PATENTS ACT 1952

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Application No. 586633 by KIMBERLY‑CLARK CORPORATION, opposition by THE PROCTER & GAMBLE COMPANY and objection to extension of time to lodge evidence‑in‑support.

Background
Patent application No. 586633 for an invention entitled "Diapers with elasticized side pockets" was advertised as accepted on 20 July 1989. On 12 October 1989 The Procter & Gamble Company (Procter) lodged notice of opposition under section 59 to the grant of a patent on the application and has been granted three unopposed extensions of time in which to serve its evidence‑in‑support.
On 31 August 1990 a fourth application for extension of time was lodged seeking to extend the period for lodging evidence for a further period of 2 months until 12 November 1990. Kimberly‑
Clark Corporation (Kimberly‑Clark) through its patent attorneys gave notice of its objection to the application for extension being granted, and in accordance with practice the matter was set down for hearing.
The hearing was held in Canberra on 5 October 1990. Mr Greg M. Turner, patent attorney of Spruson & Ferguson, Sydney represented the applicant for the patent, and Mr David Shavin of Counsel, instructed by Mr D.J. Ryan, patent attorney of Davies & Collison, Melbourne represented the opponent.

The Application for Extension
The circumstances and grounds given in the present application for extension of time are as follows:

"Further time is required for the reason that the attorney handling the matter has been required to visit the United States for the purpose of discussing the collection of the evidence and to consider certain further evidence which has recently become available.

Further time is required to enable us to complete these discussions and investigations and to prepare and serve the evidence."

Submissions
Mr Shavin lodged a statutory declaration made by Mr Ryan at the hearing which further explains the circumstances concerning the extension of time.
This declaration includes the following points in support of the application for extension of time:

(1)A number of prior art documents have been considered in relation to the opposition and have been filed with 2 declarations lodged on 11 April 1990 and 4 June 1990.
(2)It was difficult to find a suitable expert witness to determine the state of the art in Australia at the priority date of the application. An expert witness was engaged as a consultant on 11 July 1990 and reports were prepared during July and August.
(3)In late August Mr Ryan became aware of information disclosed in proceedings in the United States which may be relevant to the present opposition. Mr Ryan attended a conference in New York on 4 September 1990 where documents were made available to him which suggested that the invention had been obtained and which also went to the grounds of fair basis and sufficiency. Mr Ryan is considering this new material and is awaiting further material from the United States relating to these grounds. Before filing evidence Procter would like the new evidence and the…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

Continue reading Kimberly-Clark Corporation v the Procter & Gamble Company

Details

AGLC: Kimberly-Clark Corporation v the Procter & Gamble Company [1990] APO 43
Case: [1990] APO 43
Decision Date: 30 November 1990

CaseChat Overview and Summary

In the case of Kimberly-Clark Corporation versus The Procter & Gamble Company, the dispute arose from an opposition to a patent application No. 586633 for "Diapers with elasticized side pockets". The opposition was lodged by The Procter & Gamble Company (Procter) and objected by Kimberly-Clark Corporation (Kimberly-Clark) on the grounds of an extension of time for Procter to lodge evidence-in-support. The court was required to decide whether Procter's application for an extension of time to lodge evidence in support of its opposition to the patent application should be granted. The court also needed to determine if the delay caused by the extension was unreasonable and whether it would disadvantage Kimberly-Clark or infringe upon public interest.

The court considered that an extension of time should be granted if the applicant has made out a proper case justifying the extension, and it must consider not only the respective interests of the applicants and opponents but also those of the public by ensuring that worthless patents are not granted and that there are no unreasonable delays in the proceedings. The court found that Procter had made out a proper case to justify the extension of time, as it had been actively engaged in collecting evidence-in-support and had encountered difficulties in locating an expert witness. The court also concluded that the delay was not unreasonable, as it was necessary to consider the evidence that may affect the validity of the patent application. Consequently, the court allowed the extension of time to 12 November 1990.

In regards to costs, the court found that Kimberly-Clark's objection to the application for extension of time was justified to some extent because of the insufficient grounds specified in that application. However, the court decided not to make any award of costs as Kimberly-Clark's attorneys were informed of the necessity for Procter to seek a further extension of time and were given some information about the proceedings in the US before the hearing. Therefore, they should have taken account of this information as well as the other circumstances of the case, such as the time to locate an expert witness.

Orders