Lesaffre Et Cie v Burns Philp Research & Development Pty Ltd

[1997] APO 5

official notice

decision of a delegate of the commissioner of patents

Application  :          No.  666302  in the name of LESAFFRE ET CIE

Title:          New strains of bread-making yeast, a process for obtaining the same, and the corresponding fresh and dry yeasts

Action:          Opposition by BURNS PHILP RESEARCH & DEVELOPMENT PTY LTD, and an application for an extension of time under Regulation 5.10(2) to serve evidence in support of the opposition

Decision:          Issued            

Abstract:          A proper case for the extension of time was not made out in respect of the submission of evidence by expert witness Professor Ian Dawes.  A short extension of time was granted for the service of evidence in support to be submitted by Professor Dawes.

An extension of time to the service of evidence which is conditional upon the opponent obtaining samples of the microorganisms described in the specification was justified.  However, the extension was not granted, as such, and in its place a direction was proposed for the service of evidence contingent upon issuance of the Commissioners Certification authorising release of microorganisms.

patents act 1990

decision of a delegate of the commissioner of patents

Re:Patent Application No. 666302 by LESAFFRE ET CIE;

Opposition by BURNS PHILP RESEARCH & DEVELOPMENT PTY LTD; &

An application under regulation 5.10(2) for an extension of time to serve evidence in support of the opposition, and objection thereto.

background

Patent application No 666302, in the name of LESAFFRE ET CIE (the applicant), was advertised accepted on 8 February 1996.  BURNS PHILP RESEARCH & DEVELOPMENT PTY LTD (the opponent) filed a notice of opposition on 8 May 1996, and subsequently served the statement of grounds and particulars on 8 August 1996.

On 8 November 1996, the due date for serving evidence in support, the opponent filed an application for an extension of time to 8 February 1997 in which to serve its evidence.  The applicant filed an objection to the extension on 9 January 1997 and subsequently the agent for the opponent filed further explanation in declaratory form in support of the extension of time, in order to clarify the issues raised in the applicant’s objection.

The matter was set down for hearing in Canberra on 5 February 1997.  The applicant was represented by Ms Karen Sinclair, patent attorney, of Watermark, Melbourne.  The opponent was represented by Dr Bill Pickering, patent attorney, of F. B. Rice & Co, Melbourne who appeared by telephone.

the application

The reasons for the extension of time are twofold, and are summarised as follows:

¨    Further time is required in order to enable an expert witness, namely Professor Ian Dawes, to review specific prior art documents and for him to prepare appropriate declaratory evidence.

¨    The opponent has requested the Commissioner’s certification authorising release of yeast strains deposited under the Budapest Treaty, which are described in the opposed application.  The opponent is waiting to receive the certificates and samples of microorganisms in order to conduct experiments which may form part of the evidence.

SUBMIsSIONS of the opponent

Dr Pickering’s submissions on behalf of the opponent in support of the extension being granted are summarised below:

• The law in relation to extension time is as set out in Ferocem v Commissioner of Patents
  28 IPR 243. In that case, it was made clear that the Commissioner has a general discretionary power for the granting of extensions of time. There is no ultimate prerequisite for the granting of an extension under regulation 5.10 such as a “full and frank disclosure” of the facts which give rise to the need for extension. The only determination to be made by the Commissioner is whether “the extension is justified in all the circumstances” and this is to be based solely on what is in the application for extension. Notwithstanding the above, the opponents have made a full and frank disclosure of the facts leading to the application in both the application itself and the declaration by Dr Pickering.

• The opponent sought to engage an independent expert who has no connection with their company in order to provide evidence which is not questioned on the ground of bias towards the opponent.  They have engaged Professor Ian Dawes, but due to important academic commitments he has not been able to provide the evidence to this point in time.  Professor Dawes has pressure on his time and opponent has no control over his actions or the prioritisation of his tasks.  The number of such experts in Australia is limited.

• During preparation of the statement of grounds and particulars a number of strains were identified which the opponents believed anticipated the claims of the current application.  Just prior to service of the statement it became apparent that there were difficulties in carrying out tests described in the specification as, prima facie, there was insufficient information in the specification.  The opponent’s in-house experts attempted to produce the required evidence in absence of requesting access to samples of the microorganisms, but were having problems interpreting test results in the absence of positive controls.  The tests involved are not simple as each company has its own series of tests and there is difficulty in switching over from one assay to another.  Consequently a request for the Commissioner’s certification authorising release of the deposited microorganisms was filed.  There was no undue delay in requesting release of the microorganisms, the opponents proceeded with tests and during the tests difficulties were encountered which could not be overcome.  Certificates authorising release were not requested at an earlier point as difficulty in obtaining the samples was envisaged, and if the opponents didn’t need the microorganisms they did not want to request them.

• The applicant has made an assumption that the Section 27 notice filed in relation to this application was filed by the current opponent, but there is nothing on record to show that is the case.  The idea that an incident completely unrelated to the opposition, ie the S. 27 notice, can be taken into account during the opposition proceedings is totally unsupported.

• The applicants assertion that the office has already looked at seven of the currently particularised documents as they were listed in the S. 27 notice, is irrelevant and is a position which is totally insupportable, see Borden and Elkem 24 IPR 146. The idea that one should not further consider a document as that document has already been considered during prosecution of the application is not supported at all. Indeed, courts have and do consider documents which have been previously considered during examination of an application, in their proceedings.

• The applicant’s assertion that the non-service of evidence up to the date of the hearing should be taken into account is irrelevant.  Circumstances which occur after date of application for extension are not relevant to the determination of the extension, only circumstances which have occurred prior to the lodging of the application and in a sense gave rise to the application itself should be considered.

• The decision in Kent-Moore Corporation v Environmental Products Amalgamated Pty Ltd (1992) AIPC 90-915 set down four factors to be considered where an extension of time for filing evidence is requested. a) The opponents have clearly outlined matters of novelty, manner of manufacture, obviousness & section 40 deficiencies in the statement of grounds and particulars and are seeking the extension for matters specifically referred to there. b) The extension is not sought to find evidence to support speculative or non-specific particulars, as the particulars are not speculative or non-specific. c) The extension is sought to allow Professor Dawes to provide expert evidence in relation to the particularised documents. d) There has been no undue delay in putting the evidence together.

• The decision referred to by the applicant in Minproc Technology Pty Ltd v CSIRO 35 IPR 48 can be distinguished from the present case on the basis that it relates to service of evidence in reply and is also distinguishable on the basis that the experts in that matter were under the control of the opponent as opposed to the present situation where an independent expert is being used.

• On costs, the applicant’s objection was based on speculation and incorrect assumption.  The opponent attempted to correct any incorrect assumptions on the part of the applicant prior to the hearing by explaining in greater detail, in the Pickering declaration, the facts leading to the application.  Despite this the applicants, as is their right, have continued with their objection and this should be taken into consideration in awarding actual costs as opposed to costs to scale.

SUBMIsSIONS of the applicant

Ms Sinclair’s submissions on behalf of the applicant in objecting to the extension being granted are summarised below:

• The applicants stand by the comments made in the objection to the extension of time.  Which include, that the opponent has lodged submissions under Section 27 of the Patents Act.  Seven of the documents now particularised were identified in the S. 27 notice and have been the subject of consideration during the examination process.  The statement of grounds and particulars does not foreshadow any questioning of the validity of claims to the specific deposited yeast strains.  From the opponent’s own admission in the statement that the only claims which are fairly based are those which relate to the specific deposited strains it is clear that there is no need to obtain samples of the deposited microorganisms.

• The applicable law in relation to extensions of time is Ferocem (supra) which approved the decision in Vangedal-Nielsen v Smith (Commissioner of Patents) (1980) 33 ALR 144, but contrary to Dr Pickering’s assertion that a full and frank disclosure is not required it is submitted that the term “in all circumstances” in the regulations provides full justification to the delegate to require that a full and frank disclosure is made.

• As to the S. 27 notice filed in relation to this application on 16th September 1993, it is agreed that an assumption has been made by the applicant that notice was filed on behalf of Burns Philp.  This is not an unreasonable assumption to make given that it was done by Dr Pickering in his capacity as an attorney with F. B. Rice & Co who clearly presently acts for Burns Philp and it is not unreasonable to think that they did so three years ago.  Seven documents in the notice are also raised in particulars.  It is not unreasonable to assume that the opponent has had application under surveillance since the filing of the notice, which is speculation, but not unreasonable speculation in the circumstances.

• In relation to the difficulties experienced with the opponent’s expert witness.  The opponent has had at least 11 months from the date of advertisement of acceptance to prepare evidence and have already had a defacto extension of time of three months.  The notes in the Office’s Manual of Practice and Procedure clearly indicate that it is not inappropriate when selecting a skilled addressee that one should take into consideration other commitments he/she might have.  A party should demonstrate that the circumstances giving rise to the need for an extension are not normal or are unexpected.  If you engage a Professor from a tertiary institution one could well imagine that he would have commitments to the setting and marking of exam papers, which is part of the contract for most academic staff and that such a delay should be totally expected.  The opponents should have taken this into account for a) the selection of a skilled addressee and b) the time required to complete the work necessary.

• The identification of the Professor Dawes as an expert witness did not take place until late August 1996 and in early September documents were couriered to him.  Late August 1996 is in excess of three months after service of notice of opposition, six months after the advertisement of acceptance and 3 years since the lodgement of S. 27 notice.  There appears to be some kind of delay in appointing the skilled addressee and that delay is unexplained, unnecessary and plainly lax.  Certainly there has been no explanation from the opponents as to why it took so long to identify a skilled addressee.

• There has been an inordinate delay in seeking access to yeast strains described in the specification.  The tests referred to don’t take long and are not hard to perform.  The date of application for the Commissioner’s certification is also relevant in that it is some five months after lodgement of the notice of opposition.  There are two conclusions that can be drawn from this.  Firstly, that at the time of the service of the statement of grounds and particulars it was not foreshadowed that there was any basis for objection to this aspect of the invention otherwise the opponent would at that time have sought access in order to conduct tests.  At that time it would have been thought that any tests conducted in relation to the application using proper scientific process should have had as a positive control the yeast strains identified in the application.  The other conclusion which might be drawn from the delay in applying is that this is an aspect of the opposition which has only recently come to light and is therefore not foreshadowed by the statement of grounds and particulars.  In fact, may even be a speculative aspect of the opposition since it is not clear to the applicant why the yeast strains are required to conduct tests determining whether the information in the application regarding the nature of the tests conducted on the yeast strains is adequate.

• The decision in Kent Moore (supra) sets out that an extension must be sought for reasons which are based on matters referred to either directly or by clear implication in the statement of grounds and particulars.  The statement doesn’t refer either clearly or by implication to the need to conduct tests in relation to the yeast strains deposited in respect of the invention.  There is no reference and no allegation that the deposited strains are not novel, and there are no allegations that claims to the strains are not fairly based or unclear. The deposited strains are not required for testing as controls or otherwise.  The tests are applicable to any microorganism, particularly yeast strains, and are for determining the activity of the strains rather than for preparing them.

• It is also inexplicable that given that the applicant has opposed the extension of time no evidence has been served in the intervening period.  It is reasonable to assume that it is quiet at academic institutions between December and March and if the opponents are indeed serious in the opposition why is it that no evidence has been or is soon to be served given that there is only three days left before a defacto extension expires.

• EI Dupont de Nemours v Dowelanco (office decision unreported) supports the decision in Kent Moore.  It is incumbent upon a person seeking an extension to provide a full and frank disclosure of the facts which give rise to the need for the extension.  There is no full and frank disclosure of why it took so long to identify Professor Dawes and why the difficulties experienced relating to his evidence are unexpected.

• Citing ABB EPT Construction Pty Ltd v Goninan (office decision unreported) there is nothing in the present application for extension which is supportive of the opponent moving expeditiously to completing their evidence.  The time from the filing of the notice of opposition is more than adequate, given the circumstances, for the opponent to get their case together.

• The decision in Minproc Technology Pty Ltd v CSIRO 35 IPR 48 relates to justification for extension of time where expert evidence is involved. The summary of facts supporting the application for extension must be sufficient for one to determine that there are real difficulties encountered which lead to the need for an extension. The timing set out in the legislation is sufficient for the preparation of evidence in opposition proceedings and the opponents have not shown any difficulties which are out of the ordinary that have lead to the need for an extension.

• A defacto extension of time of the sort granted in the Ferocem decision is not justified in this situation.  It has not been established that there is any evidence available for service nor has any been served.  A defacto extension has already been allowed and it appears likely, from the circumstances, that there will be another extension of time request in the near future.

DECISION

The legislation in relation to the granting of an extension of time to serve evidence in an opposition proceeding is Regulation 5.10.  In particular, the Commissioner must not grant an extension unless he/she is satisfied that the extension is “appropriate in all the circumstances”.

The decision in Ferocem v Commissioner of Patents, which has been referred to by both parties, clearly establishes that Regulation 5.10 provides a perfectly general discretionary power for the Commissioner in the granting of such extensions.  In paragraph 8.5.3 of the Manual of Practice and Procedure there is set down many factors, from decisions in cases such as Kent-Moore, Vangedal-Nielsen, Sandoz v Fugisawa Pharmaceutical Co Ltd (1993) AIPC 90-972, which may be of relevance to the Commissioner in deciding whether an extension is or is not “appropriate in all the circumstances”.

A general discretion of this kind involves a balancing exercise between the interests of the parties directly involved and public interests, including having serious oppositions dealt with on their merits, expeditious disposal of matters as well as questions of costs and efficiency.

While I am required to consider all matters in relation to the extension, I believe it is appropriate fro me to expand upon two of the factors which have been highlighted by the parties from the decision in Kent-Moore.
           1) Is the extension for reasons referred to in the statement of grounds and particulars?

2) Has there been an undue delay in putting evidence together?

Further to point, 2) Has there been a satisfactory explanation of why a delay occurred? (Ferocem)

¨    Evidence of Professor Dawes

I will deal firstly with the issue of the expert witness, Professor Dawes.  The opponents have based their application for extension on the submissions that they chose to engage an independent expert, Professor Ian Dawes, and that due to other commitments he has not been able to complete the review of the relevant documents and provide the evidence required in the allotted time period.  The opponents submit that they require further time for Professor Dawes to review the opposed application and the prior art documents.

The applicants in support of the extension being refused have asserted that the opponents have had ample time to prepare and serve evidence given the period of time since the application was advertised as accepted.  They further assert that the opponents have not shown why the circumstances which give rise to the need for extension are anything but normal or are out of the ordinary.  The opponents when engaging an independent expert who is an academic should have taken into account the normal commitments of such an individual a) in the selection of the individual and b) in estimating the time necessary for that person to complete the work required.  The identification of Professor Dawes did not take place until six months after the advertisement of acceptance.  There has been no explanation what-so-ever from the opponents as to why it took so long to identify a Professor Dawes.

I am inclined to agree with the submissions of the applicant in relation to this issue.  I have similar doubts as to why it took so long for the opponent to identify an addressee in this matter.  The opponents have clearly indicated that they did not engage Professor Dawes until late August and did not provide him with documents for his consideration until 7 September 1996.  The latter date being seven months from the advertisement of acceptance of the application and four months from the filing of the notice of opposition.

In the normal course of events one could reasonably imagine that once a notice of opposition is filed the opponent should planning for the preparation of evidence for the opposition.  Firstly, this allows the opponent to be in an informed position when foreshadowing its case in the statement of grounds and particulars and secondly it allows them to be ready to serve the evidence at a later date.  There appears to have been little, if any, of such activity on the part of the opponent or if there was such activity it has not been highlighted in the submissions of the opponent.  Specifically, the opponents have provided no information to indicate why it took so long for them to identify an addressee save for the general assertion that such experts are limited in number.  For instance, were other experts in existence, were they contacted, were they unable to perform the work required, did they have similar commitments to Professor Dawes, etc?

There is little, if anything, before me to indicate that the opponent has moved expeditiously in engaging an expert witness and providing that person with the appropriate documents in order for them to be have been able to perform the work required within the appropriate time-frame.  The opponents have not discharged the onus upon them to justify the extension sought.  They have not provided a satisfactory explanation as to the delay in engaging Professor Dawes, nor why the delays encountered in the preparation and submission of his evidence are not normal or are out of the ordinary.

I have found that a proper case for the extension in relation to Professor Dawes’ evidence has not been made out.  However, I must consider other factors such as the substantive matters of the opposition being dealt with on their merits as well as the public interest.  It is clear to me that a serious opposition is afoot.  To totally exclude the evidence of Professor Dawes may render the opposition ineffectual due to the absence of expert evidence in relation to the substantive matters.  I am also cognisant of indications of the attorney for the opponent that Professor Dawes’ evidence is likely to be served within one month from the hearing date.

I believe it is appropriate in all the circumstances, and in line with the Ferocem decision, that I grant a short extension, of one week from the date of this decision, in order for the opponent to serve any evidence it may have from Professor Dawes.  This will allow the opponents time to make good their evidence from Professor Dawes and not protract the opposition proceedings to any large extent, given that the service of other evidence is still to be validated.

¨    Evidence dependent upon access to samples of microorganisms

In relation to the second ground of the extension which depends upon the Commissioner’s certification authorising release of samples of microorganisms described in the specification.  The opponents have indicated that they did not request certification authorising release of samples of the microorganisms at an early point in the preparation of evidence as difficulty in obtaining the certification was envisaged.  The opponent’s in-house experts attempted to produce the required evidence in the absence of requesting samples of the microorganisms, but were unable to do so due to difficulties in reproducing tests from the specification and the absence of the samples for positive controls.  During their efforts it became apparent that they could not complete their evidence in the absence of the deposited microorganisms for positive controls and the opponents sought to obtain certification for their release at that time.

The applicant has asserted that the delay in requesting certification has been inordinate and that the extension may relate to a speculative aspect of the opposition. I do not believe that this is the case.  The fact that the opponents attempted to prepare evidence and were unable to do so due to unexpected difficulties discovered in the process of trying to complete the required tests is sufficient for me to consider that an extension is justified for this part of the evidence.  It was not unreasonable for the opponents to have attempted to prepare evidence in the absence of samples of the microorganisms described in the specification. Their assumption that there would be difficulty in obtaining samples of the microorganisms also appears to be valid given the applicant’s clear indication that they will not provide samples of the microorganisms willingly.  The request for certification did come in at a relatively late stage in the opposition proceedings, however, the opponents have shown good reasons as to how this situation arose.  The reasons put forward by the opponents are sufficient for me to conclude that the extension is justified and that there was no undue delay in requesting certification.

The opponents have also sufficiently indicated the connection of this evidence to the case foreshadowed in the statement of grounds and particulars, in that samples are required as positive controls for experiments regarding the validity of the claims and the sufficiency of the description.

I have considered the extension of time to be justified in relation to evidence dependant upon the Commissioner’s certification authorising release of the deposited microorganisms.  However, I am confronted by the notion that to grant the extension would at best provide a platform for the consideration of another extension of time based on similar, if not the same, grounds.  No evidence has been served to this point, nor prima facie, is it possible for it to be served in the absence of the opponent procuring samples of the microorganisms.

I believe to simply grant the three month extension sought by the opponent in relation to this evidence would be ignoring all the circumstances which surround this issue.  Firstly, granting the extension would be of little effect in the overall process of the service of evidence as the acts of preparing and serving this evidence are dependant upon the date of access to the deposited strains, if in fact such access is granted.  Secondly, the actual decision in relation to the certification is still some time away as subsequent to the present hearing, on 13th February, the applicant filed a request for a hearing in relation to the matter of the Request for the Commissioner’s Certification for the release of the samples of the deposited microorganisms.  Thirdly, there is already a second application for an extension filed by opponents, subsequent to the hearing, on 11 February which lists the non-issuance of certification for release of microorganisms as one of the grounds upon which the extension is sought.

At this point, it is also appropriate to deal with the submissions by the opponent at the hearing and the request filed by the opponent after the hearing for a direction in relation to the evidence which is dependent upon issuance of certification.  The formal request filed by the opponent on 11th February specifically proposes that the Commissioner issue a direction that:  “Evidence-in-Support based on experiments involving deposited yeast strains I-1701, I-1072, I-1073, I-1074, I-1075,
I-1076 and I-1202 is to be served within 3 months of the date on which the Opponent receives samples of the deposited strains”.

Considering the points I have outlined above, I think a direction of the sort proposed by the opponent is one which would deal with this issue in the most efficient and equitable manner.  Therefore I propose the following direction:

“Evidence-in-Support of the opposition based on experiments involving deposited yeast strains I-1701, I-1072, I-1073, I-1074, I-1075, I-1076 and I-1202 is to be served within
2 months of the date on which the Opponent receives samples of the deposited strains.”

I believe that 2 months from the opponent obtaining samples of the microorganisms is sufficient for the opponent to prepare and serve it’s evidence, the 3 month period proposed by the opponent being excessive.  Any difficulties in relation to the tests described in the specification will be overcome by the use of the deposited samples as positive controls and the previous experiences of the opponent’s in-house experts in their earlier experiments should also be of value in the speedy preparation of the evidence at a later date.

It is not possible for the Commissioner to issue a direction without first providing the parties an opportunity to make representations.  Neither party, more particularly the applicant, has really had the opportunity to make specific representations in relation to the issuance of a direction of this sort.  To this end, I believe it would be both efficient and appropriate for both parties to make representations on the proposed direction in tandem with any submissions they may have to make in relation to the issuance of the certificates themselves.  The applicants have requested a hearing on the matter of certificates and the Commissioner will have to decide at that point if, and under what conditions, certificates for release are to be issued.  Obviously if certificates are issued it would be appropriate for the Commissioner to finalise the form of the proposed direction, at that time, given the submissions of both parties.  If certificates are not issued for what ever reason, then the matter of the “evidence” will need to be dealt with then, by way of appropriate direction.

SUBsequent extension

On 11th February, the opponent filed a second extension of time application seeking a further three months from 8th February to 8th May in which to serve evidence in support.  This application listed the service of evidence on 11th February from four declarants, namely Cargnelutti, Petit-Young, Natalizio & Attfield, as well as the two issues relating to delay in obtaining declaratory evidence from Professor Dawes as well as the obtaining of samples of the deposited microorganisms as grounds for the application.

I have dealt with the issue of Professor Dawes’ evidence in the present matter by way of granting a short extension of time from the issuance of this decision in which the opponent can serve that evidence.

In relation to the certificates for release I have proposed a direction establishing a time-frame for that evidence contingent upon certification for release and invited the parties to make submissions on the direction in conjunction with the determination of the certification.

I note in passing, that the issue of service of evidence by the four declarants other than Professor Dawes is not mentioned at all in the first application for extension.  The second extension does, however, list as a ground for the extension the service of evidence from declarants other than Professor Dawes, but only seeks an extension from the 8th February 1997, without any indication as to an extension for the period 8th November 1996 to 8th February 1997 for such evidence.  The present decision has no bearing upon this second application for extension so far as this issue is concerned.

SUMMARY

The extension of time for the service of evidence by expert witness Professor Ian Dawes was not justified.  A limited extension, of one week from the issuance of this decision, is granted in which the opponents may serve evidence of Professor Dawes.

The extension of time sought by the opponent for service of evidence dependant upon access to the deposited microorganisms described in the opposed specification has not been granted, although such an extension was justified.  Instead, a direction has been proposed establishing a time-frame for service of this evidence conditional upon the opponent be granted access to the deposits.

COSTS

Normally in actions of this kind, costs follow the event.  The opponent has only been partly successful in their application for the extension, succeeding only in relation to one of the two grounds upon which the application for extension was based.  The applicant has also been successful in relation to one ground of the extension.

In that the applicant and opponent have both been partially successful in the matter I make no award of costs.  Each party is to bear their own costs.

V. J. Portelli
Delegate of the Commissioner of Patents

Patent attorneys for the applicant   : Watermark, Melbourne

Patent attorneys for the opponent   : F. B Rice & Co, Melbourne