Kippville Pty Ltd v Ici Australia Operations Proprietary Limited
[1993] APO 14
•3 March 1993
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No.593185 by KIPPVILLE PTY LTD, Opposition by ICI AUSTRALIA OPERATIONS PROPRIETARY LIMITED, and Objection to Extension of Time to serve Evidence-in-Reply.
BACKGROUND
Patent Application No. 593185 by GANSU RESEARCH INSTITUTION OF CHEMICAL INDUSTRY entitled "Chemically Foamed Emulsion Explosive Composition and Process for its Preparation" was advertised as accepted on 1 February 1990 on which date the application became open to public inspection for the first time. The time for lodging Notice of Opposition expired on 1 May 1990 and on 27 April 1990, ICI AUSTRALIA OPERATIONS PROPRIETARY LIMITED (afterwards referred to as ICI) lodged an application under section 59(1) of the Patents Act 1952 for an extension of time of three months, from 1 May 1990 to 1 August 1990, in which to serve Notice of Opposition, which extension was allowed. On 10 July 1990, ICI lodged their Notice of Opposition.
As the patent application was both lodged and accepted before the commencement of the Patents Act 1990, the provisions of section 234(3) of the 1990 Act, and regulation 23.3, are applicable and therefore the matters in hand are in substance determined in accordance with the relevant provisions of the Patents Act 1952 and the regulations thereto.
Following allowed extensions of time the lodgement of ICI's Evidence-in-Support was completed on 21 March 1991.
Evidence-in-Answer was completed on 20 May 1991.
On 29 April 1991, a first statement of proposed amendments was lodged under section 77 of the Patents Act 1952, and, following comments by ICI filed under the provisions of subregulation 10.2 (7) of the Patents Act 1990, further amendments under section 104 of the Patents Act 1990 were proposed. The granting of leave to amend was advertised on 15 October 1992. ICI opposed the proposed amendments and to date this matter is outstanding.
In the meantime, KIPPVILLE PTY LTD (afterwards referred to as Kippville) requested the Commissioner to direct that the application proceed in their name and the Commissioner so directed on 3 September 1992.
Applications for extensions of time to 22 November 1992 to lodge Evidence-in-Reply were allowed to ICI but the latest application i.e. from 22 November 1992 to 22 February 1993 is the subject of an objection by Kippville and the matter was therefore set down for hearing.
The hearing took place in Canberra on 28 January 1993. The applicant (Kippville) was represented by Catherine M Hustwick, patent attorney, of R.K.Maddern & Associates, who appeared by telephone. The opponent (ICI) was represented by Raymond L Evans, patent attorney, of Phillips Ormonde & Fitzpatrick, who appeared in person.
THE APPLICATION
The application states:
" The circumstances in which and the grounds upon which this
application is made are as follows:
The Applicant lodged a first request to amend on 29 April
1991 in which substantial changes to the claimed invention
were proposed. The Opponents provided a detailed submission
on the amendments and the Examiner has issued an adverse
report.
A second request to amend the complete specification was
lodged by the Applicant on or about 29 November 1991. The
second set of proposed amendments include further changes to
the invention defined by the claims and the Opponents have
lodged a detailed submission under Regulation 10.2(7) in
which they contend that the amendments are not allowable.
An adverse report issued on 5 March 1992.
A third request to amend the complete specification was
lodged by the Applicant on or about 6 May 1992. The third
set of proposed amendments include further changes to the
invention defined by the claims. The Opponents lodged a
detailed submission under Regulation 10.2(7) on 29 July
1992 in which they contend that amendments in the third
request are not allowable.
Advertisement of acceptance of the amendment request was
advertised on 15 October 1992.
The amendments make significant changes to the invention
which is claimed. Indeed the scope of the changes before
and after amendment are mutually exclusive.
The amendments thus have a significant effect on the prior
art base which is relevant to the Opponent's case. It has
therefore been necessary to re-examine the prior art and to
consult with experts in the technology with regard to the
invention which is claimed in the amended claims and
the common general knowledge relevant thereto.
Opposition to the amendments is also under consideration
and further time is required for the Opponents to complete
re-examination of the prior art and discussions with experts,
to finalise evidence in answer (sic) and serve it on the
Applicant in the prescribed form."
SUBMISSIONS
As I see it, the main submissions put on behalf of the opponent by Mr Evans are as follows:
* The delay to date is entirely due to the actions on behalf
of the applicant in lodging and prosecuting requests for
amendment of the application, particularly as ICI consider it
necessary to object to the proposed amendments.
* ICI are faced with responding to Evidence-in-Answer which
is not directed to the claims on file, as advertised as
accepted, but to claims to which the applicant hopes to amend
the application. This contrasts with ICI's Evidence-in-Support
which was directed to the claims as accepted.
* Claim 1, particularly, has changed three times since the filing
of Evidence-in-Support and hence as a result ICI are not in a
position to complete their Evidence-in-Reply. Since acceptance
the applicant has sought to change claim 1 as follows:
(a) The final phrase of claim 1 as advertised as accepted on
1 February 1990 reads:
"said emulsion foamer is an oil in water emulsion containing
sodium nitrite."
(b) The corresponding phrase of claim 1 in the first request
to amend dated 29 April 1991 reads:
"the said emulsion foamer comprises a continuous oil phase
containing sodium nitrite."
(c) The corresponding phrase of claim 1 in the second request
to amend dated 29 November 1991 reads:
"the said emulsion foamer comprises a continuous oil phase
containing aqueous sodium nitrite."
(d) The corresponding phrase of claim 1 in the third request
to amend dated 6 May 1992 reads:
"the said emulsion foamer comprises a water in oil emulsion
containing aqueous sodium nitrite."
An "oil in water" emulsion cannot be a "water in oil" emulsion
since the terms are in opposite phase orientation and are
mutually exclusive. This means that an investigation directed
to claim 1 as accepted would be significantly different to an
investigation to claim 1 as proposed to be amended in
accordance with the third request even though the art cited by
ICI refer to emulsion foamers in general.
* It is not possible for ICI to expend time and effort on
completing their Evidence-in-Reply before the claims and
the nature of the features which the applicant claims are
inventive are finalised. ICI cannot be expected to
anticipate what the claims are likely to be in the future.
Clearly ICI are entitled to assume that the specification has
been drafted to define the invention which Kippville wish to
claim.
* ICI are providing evidence that one of the examples does not
adequately provide the invention which has relevance to the
omnibus claims.
* ICI question the standing and relevance of the letter from
Hoche Time Ltd in Hong Kong dated 7 December 1992 which
initiates the objection to the extension of time now being
sought.
* The applicant has deliberately chosen not to submit their
requests to amend the claims until after the opponent has
completed their Evidence-in-Support thus resulting in much of
the work ICI had done being rendered redundant.
* The opponent should not be put to the expense of obtaining
extensions of time where amendments to an opposed specification
are being considered.
* The Evidence-in-Reply stage has been reached without any party
addressing the present set of claims i.e. those claims which
are the subject of the proposed amendments.
* In each application for an extension ICI have said what their
progress in the matter has been. In each case they have
referred to ICI's submissions on the amendments, their timing,
and the need to consider them carefully to see what effect they
will have on the invention claimed.
* If the amendments are allowed and accepted, it will not be
possible for ICI to address the allowability of those
amendments in the main opposition and it is therefore critical
to ICI's case that they maintain their opposition to the
amendments.
Similarly, the main submissions put forward by Ms Hustwick on behalf of the applicant are:
* The onus is on ICI to show that the extension requested is
justified.
* The chronology of the requests to amend has been slightly
misrepresented by ICI. In effect the chronology supports
Kippville's case.
* ICI have already had well over a year to prepare and submit
their Evidence-in-Reply.
* The original requests to amend were as a result of Kippville
considering ICI's Evidence-in-Support and it was ICI who first
realised that there were some problems with how the
specification was written.
* The wording of claim 1 as accepted with respect to the emulsion
foamer was inconsistent with various references within the body
of the specification and the priority document and ICI were
well aware of these problems. As a result, ICI cannot now
claim that they were unaware of the true import of claim 1
before it was sought to be corrected. In fact the evidence
submitted by ICI is on the basis of a "water in oil" emulsion
foamer rather than a "oil in water" emulsion foamer and it has
not been necessary for ICI to speculate on what is meant by the
claims .
* Because of the opposition proceedings ICI have been kept
fully informed of Kippville's requests to amend as evidenced
by ICI's comments to the Patent Office in relation to the
proposed amendments.
* ICI's original declaration does not discuss any prior art
specifically directed to an "oil in water" emulsion foamer. In
fact the citations contain "water in oil" emulsion foamers
which is just what Kippville are trying to get their claims
to contain.
* The Chinese priority document has been available for study
by the public for over two years and has obviously been
studied by ICI otherwise it would not have been mentioned in
their Yates declaration of 9 February 1991.
* Kippville see ICI's opposition to the amendments as part of
ICI's delaying tactics since ICI have already had ample
opportunity to put their case with respect to the amendments.
* It is not in the public interest for matters to be delayed
indefinitely.
* There have been no significant changes to the claims since
the first request to amend and well before any Evidence-in-
Reply had to be lodged.
* There has been no undue delay on Kippville's part but it
has been detrimental to Kippville to have the grant of their
patent delayed by ICI for so long.
* Kippville's objection to the instant extension request is an
effort to expedite matters.
* ICI have given no indication in their application for an
extension of time of what they have done to date in preparing
their Evidence-in-Reply.
* If the main opposition and the opposition to the amendments
proceed in parallel, proceedings could go on indefinitely. To
obviate this, ICI should drop their opposition to the
amendments and leave the matter of how the claims are finally
worded to the main opposition.
DECISION
The law in relation to this type of extension has been established by a number of decisions, the major ones being:
Vangedal-Nielson v Commissioner of Patents and Gelphen Nominees (1980) 33 ALR 144
Lyons v Registrar of Trade Marks (1983) 1 IPR 416
Nautical Services v Hitech Distillation (1986) 7 IPR 567
Simply put, before allowing the extension the Commissioner:
has to be satisfied that the party seeking the
extension of time has made out a proper case,
(ii) has to be satisfied that there has been no undue delay in
the general proceedings,
(iii) has to be satisfied that there is a serious opposition in
train and,
(iv) must not only consider the private interests of the
applicant and opponent but also the public interest by
making sure invalid patents are not granted and that patent
proceedings are not unreasonably protracted.
I have reviewed the ICI and Kippville submissions with respect to the law and the various points that need to be satisfied and my conclusions are these:
Proper Case.
The majority of ICI's submissions are in relation to the amendments
proposed by Kippville and centre around the proposition that until such time as the amendments are finalised and the final form of the complete specification and claims is known, it is not possible for ICI to complete their Evidence-in-Reply.
Kippville on the other hand maintain that ICI have been kept informed of Kippville's requests to amend and hence there is no reason why ICI cannot frame their Evidence-in-Reply accordingly.
There is one major problem with both of these propositions. As matters presently stand, although the granting of leave to amend has been advertised, since ICI have opposed the proposed amendments, the amendments have not as yet been allowed notwithstanding that due to an Office error they were advertised under the heading of "Amendments Made" in the Official Journal of 5 November 1992. At this stage therefore, the only lawfully allowed claims are those contained in the complete specification as accepted. Consequently, unless there is any change in this situation, the proceedings can only confidently address the invention described and claimed in the complete specification as accepted.
During the course of his submission Mr. Evans drew my attention to the case of Gerber Scientific Products Inc v L Vogel & Sons Pty Ltd (1991) AIPC 90-759 where the Delegate of the Commissioner of Patents, M Kendall, discusses the likely effect on the preparation of evidence by an opponent where there is a request to amend a specification under section 77 as there is in this case. Mr. Kendall stated: " Thus I think the request to amend the specification under section 77 may have complicated the preparation of the evidence-in-support of the opposition".
While it may be claimed that this statement lends weight to the view that where a request to amend claims as filed during the course of an opposition, the preparation of evidence should take the proposed amended claims into account, I do not consider that this course should necessarily be followed. This is because until the claims are actually allowed they do not have the force of law. This is apart from the fact that, firstly, for whatever reason the Office may not allow the claims e.g. after taking into account comments on the proposed claims received from interested parties, and secondly, the applicant could at any time withdraw the request to amend on their own volition.
In coming to this conclusion I have taken into account an unreported Office decision, Application No. 564783 - The Wellcome Foundation Limited v Peptide Technology Limited - Issued 9 May 1990 by Delegate of the Commissioner M Kendall who then said when confronted with a similar situation to that of the present case: "It seems to me there is no need for Peptide's Attorneys to consider the amended specification until the section 77 request is allowed".
I have also considered another unreported Office decision, Application No. 586930 - Du Pont (Australia) Ltd v Newkem Australia Pty Limited - Issued 7 February 1992 by Delegate of the Commissioner S D Barker. In this instance Mr Barker said " An opponent cannot be expected to present their case until they know precisely the form of the specification they are opposing" but, as in this unreported case the amendments were made before the serving of Evidence-in-Support the facts are different from those of the present case.
In her submission Ms Hustwick drew my attention to the decision in The Procter & Gamble Company v Kimberly Clark Corporation 23 IPR 45 where there was a similarity with the present case in that there were two parallel opposition actions before the Patent Office on the same case running at the same time in addition to the main opposition, one being a regulation 76 matter and the other a regulation 55 matter. In this case Delegate of the Commissioner
J I Welsh decided that although the opponent was trying to introduce an additional ground of opposition by way of the regulation 76 request, which was opposed by the applicant, the fact that the regulation 76 matter had not been settled was not, in itself, a reason why he should allow an extension of time on the regulation 55 matter.
While I agree there are certain similarities between this reported decision and the present case, the fact that the present applicant made the requests to amend, which could directly effect the claims and complete specification on file, as opposed to an opponent raising an entirely unconnected new matter, means that the considerations are different.
Having regard to the decisions mentioned it is clear that when amendments are lawfully allowed during the course of opposition proceedings, then, such amendments can be taken into account during any subsequent preparation of evidence. On the other hand, where amendments have not been allowed, this can create some element of uncertainty and confusion, especially where the amendments are opposed.
The occurrence of the proposed and/or allowed amendments to opposed
specifications is not infrequent and I think that I should make some general observations about opposition proceedings in those circumstances. In my view, the relationship between proposed or allowed amendments to an opposed specification and the evidentiary stages of the opposition should generally be on the following basis:
(a) opposition evidence should be directed to the specification
in its current form and not have regard to proposed and
unallowed amendments;
(b) if amendments to the specification are allowed before
Evidence-in-Support is completed, then the Evidence-in-
Support should take into account the amended specification;
(c) if amendments to the specification are allowed after an
evidence stage is, or all evidence stages are, completed,
then in order for an opponent or an applicant to address
opposition matters which arise consequential to the
amendments, the opposition provisions relating to "further
evidence" may be the (only) appropriate forum available to
address those particular matters.
In the present case, the first request to amend was submitted before the completion of the Evidence-in-Answer and the Evidence-
in-Answer itself claims that an error occurred in translating the English specification from Chinese with respect to "water in oil emulsion" as opposed to "oil in water", which point was raised in the Evidence-in-Support. It is this very matter which is the main subject of the proposed amendments.
While it can be said that Evidence-in-Reply should strictly be limited to answering the Evidence-in-Answer with no outside considerations, I can understand why, because of the uncertainty and confusion stemming from the proposed amendments, the opponent wishes to wait to see the outcome of the requests to amend before finalising their Evidence-in-Reply. This does not explain however why those parts of the Evidence-in-Reply which do not rely on the outcome of the requests to amend have not been served. As a consequence, I am doubtful whether ICI have established a proper case for an extension of time.
(ii) No Undue Delay
The normal time for serving Evidence-in-Reply without extensions expired on 22 August 1991 and therefore ICI have had ample time, under normal circumstances, to serve Evidence-in-Reply. While I am not fully convinced of their reasons for not doing so, because of the uncertainty surrounding the allowability of the amendments, I am unable to categorically say that ICI have caused undue delay in the proceedings.
(iii) Serious Opposition
From the evidence before me, particularly ICI's Evidence-in-Support and Kippville's acknowledgement thereof in their Evidence-in-Answer, I am satisfied there is a serious opposition in train.
(iv) Interests and Protraction of Proceedings.
Because the outcome of Kippville's requests to amend is not yet available there will be a delay in any case before the final form of the claims is known and therefore, if I grant the extension requested it will have little, if any, affect on the applicant's interest. It will of course be in ICI's interest to grant the extension since it is they who have requested it.
I am mindful that it is in the public interest to ensure that proceedings are not unreasonably protracted. Since the question of the proposed amendments is still to be settled, any extension granted will not in the short term unreasonably protract the proceedings.
Having considered all the various aspects, although I have my doubts about the strength of ICI's case, bearing in mind the uncertainty occasioned by the requests to amend and the confusion that this has caused, on balance, I consider that an extension of time is justified to allow ICI to serve their Evidence-in-Reply.
Accordingly I grant the extension of time to 22 February 1993 within which to serve Evidence-in-Reply.
OTHER MATTERS
During the course of the hearing both the representatives for ICI and Kippville asked that I guide them as to how matters could be expedited given that there were now two oppositions proceeding in parallel on this case i.e. the main opposition and the opposition over the amendment requests. In particular they wished to know if there was any way the matters in hand could be consolidated.
It is not within my province to offer such advice and all I can do is to make some general observations. Proposing amendments
during the course of an opposition to grant has the potential to expedite matters, particularly where the prospective parties to the opposition are in prior agreement in relation to the proposed amendments, and be to the advantage of all parties if it results in an opposition being withdrawn. However, if on the other hand the proposed amendments are opposed, thus giving rise to a separate opposition, this has the potential to delay matters beyond what may have been the case were the substantive opposition to take its normal course and where perhaps amendments are proposed in response to the Hearing Officer's decision.
Furthermore, in situations such as in this case where there are two
parallel opposition actions, generally speaking Office practice has been to set both matters down for hearing on the same day and to be heard sequentially, if it is at all practical to do so given the nature of the proposed amendments and if the parties agree. Whether that may be possible in this case depends very much on when the evidence stages of each opposition is completed and on the advice and agreement of the parties.
COSTS
While I have decided in ICI's favour mainly because of the uncertainty and confusion caused by the proposed amendments, some of this confusion and uncertainty is as a result of an Office error in dealing with the proposed amendments. I also note that there is no evidence that either party recognised at the time that a mistake had been made. Under the circumstances I make no award as regards to costs.
J.M.Sellars
Delegate of the Commissioner of Patents
Patent attorneys for the applicant : R K Maddern & Associates
Adelaide
Patent attorneys for the opponent : Phillips Ormonde & Fitzpatrick, Melbourne
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