L'Air Liquide v CIG Ltd
[1992] APO 1
•30 January 1992
official notice
decision of a delegate of the commissioner of patents
Application : No. 610369 in the name of L'AIR LIQUIDE, SOCIETE ANONYME POUR L'ETUDE ET L'EXPLOITATION DES PROCEDES GEORGES CLAUDE
Title: Prepared Insecticidal Mixtures and Insecticide Treatment Process
Action: Request under regulation 5.5 for dismissal of an opposition
Decision: Issued . Opposition dismissed in respect of those grounds of opposition which were not supported by particulars.
patents act 1990
decision of a delegate of the commissioner of patents
Re:Patent Application No. 610369 by L'AIR LIQUIDE, SOCIETE ANONYME POUR L'ETUDE ET L'EXPLOITATION DES PROCEDES GEORGES CLAUDE, Opposition by THE COMMONWEALTH INDUSTRIAL GASES LIMITED and a Request by the Applicant for Dismissal of the Opposition
background
Patent application 610369 was advertised accepted on 16 May 1991. A notice of opposition by The Commonwealth Industrial Gases Limited under section 59 of the Patents Act 1952 was served on the applicant, L'Air Liquide, Societe Anonyme pour l'Etude et l'Exploitation des Procedes Georges Claude on 16 August 1991. On 13 September 1991 the opponent, in accordance with Regulation 5.4, served on the applicant a statement purporting to set out the grounds of opposition and the particulars relating to each ground. The applicant on 11 October 1991, invoking the provisions of Regulation 5.5, requested the Commissioner to dismiss the opposition.
The matter of the request for dismissal was heard in Canberra on 18 November 1991. Appearing for the applicant was Mr Paul W. Jones, patent attorney of the firm Phillips Ormonde & Fitzpatrick; appearing for the opponent was Mr Leon K. Allen, patent attorney of the firm Shelston Waters.
Issue
The applicant's case for dismissal is based upon the deficiencies it perceives in the opponent's statement of particulars. The full Regulation 5.4 statement of grounds and particulars is as follows:
"GROUNDS OF OPPOSITION
The invention as claimed is not a patentable invention because it does not comply with section 59, paragraphs (1)(e), (1)(f), (1)(g), (1)(h) and (1)(i) of Part V of the Patents Act 1952.
STATEMENTS OF PARTICULARS
The invention as claimed by at least claim 1 is not a patentable invention because:
(i)The pressurization of insecticidal mixtures or other liquid phase aerosol mixtures with gaseous nitrogen or similar gases is part of the common general knowledge in Australia, and
(ii)The invention lacks novelty and an inventive step when compared to Australian patent specification 494198 together with the common general knowledge feature of pressurization discussed in (i).
The specification does not comply with the requirements of section 40 because the claims are not clear and succinct and fairly based on the matter described in the specification."
Since this is the first occasion that a request under Regulation 5.5 has proceeded to a hearing, it is appropriate to set out in full the reasons given in the applicant's Application for Dismissal of Opposition:
"Our reasons for making this request are as follows:
Applicant seeks dismissal of the whole opposition and on each and every ground of opposition raised for the following reasons:
1.The test for validity under the Patents Act 1952 is not based on the concept of a patentable invention.
2.The Opponent has failed to support the grounds of opposition under Sections 59(1)(e), 59(1)(f) or 59(1)(i) of the Patents Act 1952 with a Statement of Particulars relevant to those grounds. Moreover the particulars provided effectively concede that there is no basis for the objections under Sections 59(1)(e) or 59(1)(f). The Statement of Particulars given under Section 59(1)(i) is a mere restatement of the requirements of Section 40.
3.The particulars provided in paragraphs (i) and (ii) of the Statement of Particulars comprise a combination of a separate integer of alleged common general knowledge, namely the pressurisation of insecticidal mixtures with gaseous nitrogen with the disclosure in Australian Patent Specification 494198.
Such a combination of an integer of common general knowledge with a published document cannot form the basis of an objection under Section 59(1)(g) or Section 59(1)(h). See inter alia Minnesota Mining v. Beiersdorf (Aust.) Limited 29 ALR 29 at pages 59 and 62 and Nicara Holdings v. Martin Engineering (1990) 16 IPR 545.
Such a combination is clearly and manifestly contrary to the relevant Patent law in Australia.
4.Australian Patent 494198 (the CIG patent) discloses a method of dispersing an active substance comprising dissolving said substance in liquid carbon dioxide under high pressure, and releasing said solution into the atmosphere to form a fine aerosol.
The CIG patent further discloses an apparatus for the distribution of an active substance, said apparatus comprising a sealed container filled or partly filled with the solution of said substance in liquid carbon dioxide, said container being provided with valve means adapted to release a stream of said solution into the atmosphere to produce a fine aerosol.
Australian patent application 610369 (the opposed specification) discloses and claims a packed insecticide mixture comprising an insecticide product in solution in liquid carbon dioxide and a cosolvent, maintained at ambient temperature and under a pressure of between 8 and 20 MPa, by pressurization with gaseous nitrogen.
Thus the opposed specification differs from the CIG patent in requiring
(a)the use of an insecticide mixture only;
(b)the inclusion of a cosolvent such as methylene chloride;
(c)the maintenance of the insecticide mixture at ambient temperature and under a pressure of between 8 and 20 MPa;
(d)the pressurisation of the insecticide nature with gaseous nitrogen.
Each of these features constitutes an essential integer of the invention.
It is accordingly manifestly clear in our submission that the claims of the opposed specification are novel over the CIG Patent.
The CIG patent is substantially identical to South African patent application 78/03981 already considered during the prosecution of the opposed specification.
Assuming arguendo that a combination of the CIG Patent with common general knowledge was permissible, (which it is not in our respectful submission) and assuming that the common general knowledge was at the priority date as presented by the Opponents in their Statement of Particulars, the combination is still silent on the essential integers of (a), (b) and (c) itemised in paragraph 4 above.
The combination is further silent as to why the skilled addressee would choose to use Nitrogen as the pressurising gas whilst still using liquid CO2 in addition thereto. The advantages of this combination are nowhere disclosed or even suggested in the prior art. The pressurisation with gaseous nitrogen is advantageous in that it -
-permits an improved purging of the distribution pipes;
-avoids the formation of carbon dioxide ice; and
-prevents an homogeneous injection of the insecticide mixture by a more regular rate of flow.
Thus, as shown on page 3, lines 8 to 11 of the description, for example, the relative variation of the withdrawing rate of flow from a storage cylinder is 25% with CO2 at 60 bars, 20°C, whereas it is only 5% with CO2 pressurised with gaseous nitrogen at 100 bars, 20°C.
It is again accordingly manifestly clear in our submission that the claims of the opposed specification are novel over the combination of the CIG Patent with an integer of alleged common general knowledge in the art.
For similar reasons to those presented in paragraph 4 and 5 above, it is manifestly clear in our submission that the claims of the opposed specification are not obvious over the CIG patent nor the CIG patent in combination with the alleged common general knowledge in the art.
Accordingly, even assuming the facts as presented in the Statement of Particulars are correct, the case on behalf of the Opponent is, in our respectful submission, so clearly untenable that it cannot possibly succeed."
As this is the first occasion since the commencement of the 1990 Patents Act on 30 April 1991 that an applicant for a patent has sought to utilize the provisions of Regulation 5.5 of that Act, this matter raises fundamental questions as to the operation of Regulation 5.5. As well, it raises fundamental questions as to the operation of Regulation 5.4 (also untested), since, as stated previously it is upon an assertion of non-compliance with Regulation 5.4 that the Regulation 5.5 request is founded. These two regulations read as follows:
"Filing of statement
5.4(1) An opponent must:
(a)within 1 month of filing the notice of opposition serve on the applicant a copy of a statement that sets out:
(i)the grounds of opposition; and
(ii)the particulars relating to each ground; and
(b)as soon as practicable after the copy of the statement has been served on the applicant, file the statement.
(2)If a notice of opposition is filed for the purposes of section 74 of the Act ("opposition to extension"), the statement and the copy of the statement must each have with it evidence in support of the opposition (if any) and copy of that evidence.
Dismissal of opposition
5.5.(1) An applicant may:
(a)within 1 month of being served with a copy of a statement by an opponent under subregulation 5.4(1) ("filing of statement"); or
(b)if the complete specification in relation to an opposed application is re-examined under sub-section 97(1) of the Act ("re-examination of complete specifications") - within 1 month from the day when the re-examination is completed under regulation 9.5 ("completion of re-examination");
request the Commissioner in the approved form to dismiss the opposition.
(2)As soon as practicable after a request is made, the Commissioner must inform the opponent of the request having been made.
(3)The Commissioner may dismiss the opposition whether or not the applicant has requested dismissal of the opposition."
The only direct guidance as to how these regulations are to operate is that provided by a number (currently seven) of Hearings Practice Notes issued by the Patent Office. These practice notes were prepared by the Office in consultation with representatives of the patent attorney profession.
SUBMISSIONS
At the hearing Mr Allen commenced by drawing my attention to the contents of Hearings Practice Note 1991 No 2. In particular, he referred to the following statements:
"The function of the statement of grounds and particulars is to give the applicant fair notice of the case to be met and to define the issues of the opposition."
"The statement of the grounds of opposition must set out the grounds of opposition on which the opponent relies. Generally, the statement of grounds would identify the relevant ground or grounds of opposition as explicitly available under the Act ..."
"The statement of particulars relating to each ground must set out the material facts on which each ground of opposition is based (but not the evidence by which those facts are proved)."
"A material fact is a fact which is necessary for the purpose of formulating a complete ground of opposition. The opponent is not required to state the legal effect of the facts on which they rely; they are only required to state the facts themselves."
"Whatever the generality adopted in the statement of grounds and particulars, it must be consistent with the purpose of the statement of grounds and particulars; ..."
"The statement of grounds and particulars should be in summary form, and be as brief as the nature of the opposition permits."
He went on to say:
"The statement of grounds and particulars is the launching pad from which the opposition is to proceed. They do not provide any evidence per se. Nor is it required that the full lines of argument to be pursued and set out in meticulous detail. Clearly the onus on the opponent is discharged by reciting of grounds and the material facts. In our submission this has clearly been done by the opponent in that the grounds are clearly recited as being those available under section 59, and the particulars have recited certain facts which on the basis of the established case law give rise to a substantive case. Those particulars identify publications and matters of common general knowledge to which evidence will ultimately be directed. It is not necessary or appropriate for arguments to be developed in the statement of particulars or at this hearing ... Given that the grounds and particulars recited in the statement give rise to issues which are arguable on the basis of the relevant case law it is believed that the opponent has discharged its obligation of foreshadowing a valid prima facie case, and the requirements of the practice notes have been complied with."
He next turned to Hearings Practice Note No 5, pertaining to dismissal of an opposition. He quoted the passage [itself a quote from General Steel Industries Inc v Commissioner for Railways (NSW) and others (1964) 112 CLR 125] that states, in relation to summary dismissal, the following:
"The text to be applied has been variously expressed; 'so obviously untenable that it cannot succeed'; 'manifestly groundless'; 'so manifestly faulty that it does not admit of argument'; 'discloses a case which the court is satisfied cannot succeed'; 'under no possibility can there be a good cause of action'; 'be manifest that to allow them (the pleadings) to stand would involve useless expense'."
Mr Allen went on to comment:
"Clearly this is not a test which relates to the strength of the case or the likelihood of success on the argument, but rather the question of whether there is a cause of action and a tenable case."
Of the present case, he said:
"It is our submission that the facts and grounds recited in the statement clearly show that the opponent has foreshadowed a case that is not only tenable but on the bases of the case law that is available is a case that will succeed."
In relation to the actual reasons proffered by the applicant in seeking dismissal, Mr Allen produced some general arguments in rebuttal of reasons 1, 2 and 3. However as regards reason 4 he was uncertain as to how to proceed, and sought my direction. Reason 4 enters into a fairly detailed dissection of the disclosure of both the present disclosure and the cited prior art and comparison of the (alleged) differences between them. As such it would appear to be at odds with the theme running through Hearings Practice Note 1991 No 5, exemplified by the following quote:
"It must be noted that if argument is necessary to establish the futility of the opposition, that argument is not a forum to argue the substantive issues of the opposition; the argument must relate to an issue which establishes that the opposition as a whole is futile, without going into the details of the opposition."
After a short adjournment to consider the matter, I informed Mr Allen that I would allow him to provide counter-argument to reason 4 and subsequent reasons. I did so bearing in mind the fact that the applicant's reasons for dismissal were now a matter of record. I was also influenced by the fact that this matter was the first hearing before the Commissioner into the dismissal of an opposition. However I also expressed my considerable concern that the hearing should not become a de facto hearing into the substantive opposition.
Mr Jones spoke at length about the opponent's Regulation 5.4 statement. Since this is a very brief document, it follows that much of which Mr Jones had to say was concerned with deficiencies he found in that document. He also reiterated arguments already provided in the reasons for dismissal, to the effect that:
(1)there was no basis in law for the proposition that a claim may be anticipated by a patent specification "together with" (in the words of the Statement of Particulars) common general knowledge;
(2)there were integers in the present claims which were not present in patent specification 494198 and upon which the Statement of Particulars was completely silent.
Accordingly, Mr Jones contended, not one of the grounds of opposition could possibly succeed, since for none but that of novelty had particulars been provided, and that of novelty, "on the simplest of investigations, is manifestly unsupportable".
Therefore the opposition should be dismissed.
Mr Jones referred me to two recent cases on novelty and obviousness, [Nicaro Holdings Pty Ltd v Martin Engineering Co (1990) 91 ALR 513; and Yamazaki Mazak Corporation v Interact Machine Tools Pty Limited, I.M.T. International Machine Tools Pty Limited and Nakamura-Tome Precision Industry Co Limited (not yet published)], as well as two well known older cases [Meyers Taylor Pty Limited v Vicarr Industries Limited (1977) 137 CLR 228 and Minnesota Mining & Manufacturing Co v Beiersdorf(Australia) Limited (1980) 29 ALR 29].
Mr Jones also drew my attention to three cases involving applications to have a statement of claim struck out. These were: Strix Limited v Otter Controls Limited (1991) FSR 354; Sun Earth Homes Pty Ltd and Others v Australian Broadcasting Corporation 19 IPR 201; and Bill Acceptance Corporation Ltd v GWA Ltd 1 IPR 496. In Mr Jones' view the last two of these cases established that the law in Australia at the moment remained as set down in General Steel Industries Inc v Commissioner for Railways (NSW) and Others (supra) and an earlier case Dey v Victorian Railways Commission (1948-49) 78 CLR 62, namely, the striking out of a claim should only be undertaken where the case is so clearly untenable that it cannot possibly succeed. There was no differing between parties on this point.
Finally, Mr Jones outlined what he believed to be the policy issues behind this new regulation (5.5):
"The Patents Act 1990 has as its basic policy that opposition should now be a rapid issue to be considered with as much expedition as justice will permit. To that end the Patents Act 1990 both for current and future opposition introduced the concept of a "statement of case". That statement of case was said to be of this sort: it was now no longer a matter of simply presenting the grounds of opposition. That is no longer sufficient. There is now to be a separate statement of case firstly setting out the grounds and secondly setting out particulars of each of those grounds. Those particulars are the case for the opponent. The opponent is now required, as a matter of law, to have the basics of his case in place within the first four months of the advertisement of acceptance of the application. The ability to amend his statement of case is limited and it is clearly the intention that the statement of case is a full and proper presentation of the opponent's case so that at an early stage in the process a decision can be made by the applicant and the Office as to the nature of the case. Policy has dictated the introduction of a review process at the point of time of the statement of case. That review process is the dismissal process that we are looking at today. That is the importance that the legislators have placed upon the expeditious processing of an opposition. They are telling us that unless the statement of case presents at least something which could possibly lead to a successful opposition, then we now introduce the concept of the dismissal of the opposition at that stage. This case is the type the legislators had in mind in introducing the concept of dismissal."
DECISION
In deciding this matter I must have regard to the relevant provisions of the Patents Act and Regulations, any decided cases which are to the point in question. I shall also have regard to the Hearings Practice Notes issued by the Patent Office, which set out the perceived policy of the legislation.
Central to this are Regulations 5.4 and 5.5, the full texts of which are to be found earlier in this decision. These regulations form part of Chapter 5 of the Patents Regulations which sets down procedures to be followed whenever a person invokes the provisions of section 59 of the Patents Act 1952 (for applications made under the 1952 Act and advertised accepted after 30 April 1991), or of the Patents Act 1990 (for applications made under the 1990 Act), to oppose the grant of a Patent. In essence, the question to be answered in this decision is: has the opponent complied with the requirement of Regulation 5.4? If not, a second question of `what course of action should be adopted in light of that failure of procedure?' follows.
Hearings Practice Note 1991 No 2 states in part that the statement of particulars must set out the particulars for each ground of the opposition. I therefore consider it appropriate in the present case to assess whether the statement of particulars does indeed set out particulars for each ground of opposition, as follows:
Section 59, paragraph 1(f) ("Manner of Manufacture")
Although Mr Allen claimed that the opponent may want to argue such questions as analogous use, clearly there is nothing in the statement of particulars purporting to concern that approach. I note paragraph 1(f) is in respect of manner of manufacture, rather than new manner of manufacture; I consider paragraph 1(f) must go to issues other than those which are properly covered under paragraphs 1(f) [obviousness], 1(e) [prior publication] or 1(h) [lack of novelty]. Hence the statement of particulars cannot be said to provide any "material facts" upon which ground Section 59(1)(f) is based.
Section 59, paragraph 1(g) ("Obviousness")
Mr Allen asserted that the reference in the statement of particulars to comparison being made with Australian patent specification 494198 together with a specified item of common general knowledge could be an adequate elucidation of the material facts upon which an obviousness ground is based. While the wording used in the statement of particulars is consistent with section 17 of the 1990 Act (in basing the particulars upon the consideration of a single document together with common general knowledge), in the present matter obviousness must be determined in accordance with the 1952 Act [see section 234(5)] - that is, and following Minnesota Mining and Manufacturing v. Beiersdorf 144 CLR 253, by having regard solely to matters of common general knowledge. Mr Allen attempted to construe paragraph (ii) of the statement of particulars as encompassing common general knowledge alone; however the words (on any reasonable reading) do not convey that meaning. I therefore find that the statement of particulars does not provide the material facts to support this ground of opposition.
Section 59, paragraph 1(i) (Section 40)
No material facts have been provided to support this ground of opposition; the statement of particulars merely summarises the wording of section 40 itself. I do not consider a mere enumeration of the requirements of the Act to be sufficient statement of particulars; rather, the statement of particulars should identify the specific deficiencies in the specification that give rise to the ground of objection.
Section 59, paragraphs 1(e) and (h)
It is convenient to deal with these grounds together, since the considerations involved in each are at basis the same. In either case, where a paper anticipation is involved it is appropriate to read the document in light of common general knowledge.
Mr Jones made much of the way the opponent's statement of particulars in relation to "novelty and inventive step" was expressed; in particular, the use of the expression "together with". It seems to me that the opponent is expressing an intention to rely upon a paper specification together with common general knowledge. If the statement of particulars admits a reasonable interpretation consistent with the law, it would be unreasonable of me not to presume that the opponent will rely on that interpretation. Certainly, I cannot infer from the statement of particulars that the opponent's case from a legal standpoint is "obviously" or "manifestly" "groundless" or "untenable".
The remainder of Mr Jones' case concerning the ground of novelty raised issues of fact and law, as expressed in paragraphs 4 and 6 of the applicant's statement in support of the dismissal of the opposition (see above). At the hearing I expressed concern that these matters would seem more appropriate to the substantive opposition. In the event, I find those submissions are not relevant to these dismissal proceedings.
An action for dismissal of an opposition is not intended to be a de facto hearing of the substantive opposition. Rather, it is intended to provide a mechanism to dispose, at an early stage of the proceedings, those oppositions that are "obviously" or "manifestly" "groundless" or "untenable". It may be appropriate to dismiss an opposition if one could readily conclude from the technical divergance of the citation and the opposed specification that an opposition could not possibly succeed (for example, a safety-pin cited against an airplane). A dismissal might also be appropriate if the publication date of the citation is later than the latest priority date that could be accorded the opposed specification (that is, the application date of the opposed specification or any later alleged priority date that may be determined under section 114 of the 1990 Act, or section 159A of the 1952 Act). In my view, an argument for summary dismissal that relies an interpretational analysis of the claims, pointing out that this or that feature is not present in the citation, is an argument which pre-empts the substantive opposition. (I also note here that any such analysis is properly open to expert evidence, which can only arise as part of the evidence in support of the opposition [or subsequent evidentiary stages] or at the substantive hearing. If expert evidence is required to support a particularised ground of opposition, I do not consider the absence of that expert evidence to be a justification for dismissal of the opposition.)
Mr Jones brought to my attention a case which I regard as being instructive in this matter, namely Strix Limited v Otter Controls (supra). I view this case as providing further support for my not entertaining a dismissal action based on a detailed analysis of the claims and comparison with the citation, as evidenced in the following extracts from that decision:
"The well-known authority usually cited for this proposition is Wenlock v Moloney [1965] 1 WLR 1238. There, Danckwerts L.J. said at page 1244 B-C, in a passage with which I respectfully agree:
'There is no doubt that the inherent power of the court remains. But this summary jurisdiction of the court was never intended to be exercised by a minute and protracted examination of the documents and facts of the case, in order to see whether the plaintiff really has a cause of action. To do that is to usurp the position of the trial judge, and to produce a trial of the case in chambers, on affidavits only, without discovery and without oral evidence tested by cross-examination in the ordinary way. This seems to me to be an abuse of the inherent power of the court and not a proper exercise of that power.'
The course which the judge adopted in the present case, in his critical examination of the evidence to see whether the plaintiff has adduced sufficient evidence, directed to the right points and supported by adequately cogent reasoning, to counter the points taken by the defendant is, in my judgment, essentially the course which Danckwerts L.J. there condemned.
The difficulty that arises where it is sought to strike out a patent action on the ground that there is no arguable case of infringement arises because the construction of a patent, though a question of law for the court, is not a mere question of the judge reading the patent with the assistance of the legal arguments in counsel; it is a much more sophisticated exercise for two reasons. First the language of the patent is deemed to have been addressed by the inventor not to a panel of equity draftsmen but to "the man skilled in the art", and consequently the court has to consider what the language of the patent would mean not to lawyers, but to the man skilled in the art with his knowledge of the art.
Secondly it has long been established that a person does not avoid infringing a patent if he departs from the strict requirements of the claims by what the man skilled in the art would recognise as an 'obviously immaterial variant' - (to adopt a phrase conveniently used by Nicholls L.J. in Anchor Building Products Ltd v Redland Roof Tiles Ltd [1990] RPC 283)."
"In giving the leading judgement in this court in Improver Corporation, I set out the position as I saw it in the following passage at page 78, lines 31 to 48, to which I adhere:
'Against that background it seems to me that the question of whether on a purposive construction this particular mechanical equivalent does or does not infringe the patent is a question of considerable difficulty. It is wholly inappropriate for a striking-out application under Order 18, rule 19. That rule applies to striking out on the ground that a pleading or indorsement of a writ discloses no reasonable cause of action, or is scandalous, frivolous or vexatious or an abuse of the process of the court (I omit certain points which are not relevant). But it is well established that it is only 'in plain and obvious cases that recourse should be had to the summary process under the rule' and it is only to be used where the claim is 'obviously unsustainable' and not to be 'exercised by a minute and protracted examination of the documents and facts of the case'. It seems to me that an application to strike out was a wholly inappropriate method of trying to obtain summary disposal of a patent action. This is a case in which infringement proceedings have been begun in many jurisdictions. They have not yet got very far, because the defendants' device is only recently on the market. It may ultimately be established that the defendants are right in saying that their device does not, on a proper construction of the patent, infringe claim 1, but an action is not an abuse of the process of the court just because at the end of the day it may be held that the plaintiffs' case is not well founded in law.'"
In Strix Limited v Otter Controls Limited the judge used the expression "mini-trial" to describe and criticize the way a judge in a lower court had treated the matter at hand - an application for a statement of claim to be struck out. In my opinion any attempt on my part to form a view as to the futility of the opponent's case in relation to prior publication and novelty on the basis of the arguments presently before me would amount to conducting a mini-opposition-proceeding; I should not entertain any such arguments. I therefore find that the statement of particulars provides material facts to support these two grounds of opposition.
In summary, I find that the statement of particulars only provides particulars to support an opposition based on the grounds of paragraphs 1(e) and 1(h); no particulars have been provided in respect of the grounds of paragraphs 1(f), 1(g) or 1(i).
The question I now have to address myself to, is what consequences flow from that situation. Three possibilities arise:
(1)Since the statement of particulars is clearly deficient, I could dismiss the opposition in toto.
I do not believe that this is an appropriate course of action. It would be contrary to the principles enunciated in General Steel Industries Inc v Commissioner for Railways (NSW) and others (supra). In my view, so long as at least one ground has at least one adequate particularization, the opposition should not be dismissed in its entirety.
(2)I could allow the opposition to proceed unfettered.
I do not believe that this is an appropriate course of action either. If an opposition is filed, the applicant has a right to know what the basis of the opposition is. I do not consider it appropriate for an opponent to make an ambit claim in their statement of the grounds of opposition, with an expectation of being permitted at some later stage to be able to particularize those grounds. In my view, if an opponent cannot provide particulars in support of an alleged ground of opposition, the opponent has no basis to oppose on that ground. The opposition should not proceed in respect of any ground of opposition that is not particularized; (subject, of course, to amendment of the statement of grounds and particulars under regulation 5.9)
(I note that this position is different from that specified in Hearings Practice Note No. 5 [issued August 1991], where it is stated that the Commissioner will only entertain dismissal of the whole opposition. In my view, this practice note did not address the above-mentioned issues.)
(3)In analogy with the Federal Court Rules, I could dismiss the opposition in respect of certain grounds only, namely, those for which insufficient particulars have been stated.
I this respect, I view each of sub-regulations 5.5(1) and (3):
"(1) An applicant may: ..... request the Commissioner in the approved form to dismiss the opposition"
"(3)The Commissioner may dismiss the opposition whether or not the applicant has requested dismissal of the opposition."
as conferring on the Commissioner the power of partial dismissal of the opposition by application of the legal maxim omne majus continet in se minus - the greater always contains the less.
Accordingly, my finding in this matter is that under the provisions of Regulation 5.5(3) of the Patents Regulations I should accede to the request by L'Air Liquide, Societe Anonyme pour l'Etude et l'Exploitation des Procedes Georges Claude that this opposition by Commonwealth Industrial Gases Limited in respect of patent application 610369 should be dismissed insofar as it relies on grounds 1(f), 1(g) and 1(i). However, the opposition may proceed in respect of grounds 1(e) and 1(h).
Other matters
There are two further matters raised by Mr Jones upon which, as this is the first hearing in respect of dismissal of an opposition, I feel I should comment briefly upon.
Firstly, the applicant suggested, inter alia, that dismissal of the opposition is justified because, during examination, the examiner considered the document specified in the statement of particulars. I reject this proposition entirely. If accepted, this proposition would result in any document cited during examination being excluded from subsequent opposition proceedings. However this would ignore several significant differences between examination and the opposition process. Firstly, in contrast with the opposition procedure, the input of expert witnesses to assist in placing a construction on documents, and to attest to the state of common general knowledge in the art, is not available to the examiner. Secondly, the onus of proof considerations are different in opposition proceedings to examination procedures. And finally, acceptance of the proposition would exclude an opponent from exercising a rightful remedy if the examiner misinterpreted the citation during the examination process.
Secondly, Mr Jones observed that if the applicant's request for dismissal was disallowed, the applicant would be condemned to suffer the full force of delay of the evidence providing procedure. This is not strictly correct. If the opponent's case is so manifestly bad as the applicant has suggested, the applicant will only need to wait until the evidence-in-support has been served before bringing on the substantive hearing, i.e. there will be no need for evidence-in-answer or evidence-in-reply.
Costs
Although the opposition has not been dismissed in its entirety, the applicants have been partly successful in this action. As the opponent's statement of grounds was largely unsupported by their statement of particulars, I award 50% costs of this action against the opponent.
Conclusion
I have found that the request for dismissal of the opposition has succeeded in part. That is, the opposition is dismissed in so far as it relates to paragraphs 1(f), 1(g) or 1(i) of section 59 (1952 Act), but continues in respect of paragraphs 1(e) and 1(h).
At some time in the future, the opponent might want to apply under the provisions of regulation 5.9 to amend the statement of grounds to incorporate a ground of objection that I have dismissed in this decision. I express no view at this time on the effect of this decision on the allowability of any such amendments sought.
Pursuant to regulation 5.8(1)(a)(iii), the time for filing evidence in support of this opposition is 3 months from the date of this decision.
(D. HERALD)
Assistant Commissioner of Patents
Patent attorneys for the applicant: Phillips Ormonde & Fitzpatrick, Melbourne
Patent attorneys for the opponent : Shelston Waters, Sydney
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