Minnesota Mining and Manufacturing Company v Glaxo Group Limited

[2000] APO 64

OFFICIAL NOTICE

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Application  :          No. 709052 in the name of Minnesota Mining and Manufacturing Company

Title:          Suspension Aerosol Formulations

Action:          An application by Glaxo Group Limited for an extension of time under Regulation 5.10(2) to serve evidence in support and an objection thereto by Minnesota Mining and Manufacturing Company

Decision:          Issued            .

Abstract

The requested three month extension of time to serve evidence in support was granted.

The opponent has provided a proper case justifying the extension in order to provide evidence in support.  There was a conflict of interest between the patent attorney acting on behalf of the opponent forcing them to secure the services of an alternative attorney.  This caused a delay in retaining the services of experts which are needed to prepare evidence in support.  The opponent satisfactorily justified the reasons for these delays.

The opponent's interests were clearly for the extension to be allowed so that they could properly prepare their case.  Similarly, the public interest resides in ensuring that a substantive opposition be decided on its merits.  There was no evidence provided to suggest the minimal delay caused by the allowance of an extension would be of any great detriment to the applicant.

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Patent Application No.709052 by Minnesota Mining and Manufacturing Company, and under opposition thereto by Glaxo Group Limited under Section 59 of the Patents Act 1990 and an objection to an application for an extension of time in which to serve evidence in support.

BACKGROUND

Patent Application 709052 was filed on 28 January 1997 by Minnesota Mining and Manufacturing Company (3M) as a divisional application of 675633.  The divisional application was published accepted on 19 August 1999 and on 19 November 1999, Glaxo Group Limited (Glaxo) filed a Notice of Opposition.  Glaxo served their Statement of Grounds and Particulars on 18 February 2000 which meant that evidence in support was initially due on 18 May 2000.

An extension of time to file evidence in support until 18 August 2000 was granted without objection.  The opponent then requested a further extension of time to 18 November 2000 and the applicant objected to this extension.

A hearing was held in Canberra on 3 October 2000.  The applicant was represented in person by Mr. Gary Nock, patent attorney of Freehills Carter Smith and Beadle, Sydney and the opponent was represented in person by Mr Adrian Ryan, of Counsel, assisted by Ms. Janelle Borham, patent attorney of Griffith Hack, Melbourne.

THE APPLICATION FOR EXTENSION OF TIME

In their application for an extension of time, the opponent provided the following reasons for the need for further time in which to serve evidence in support:

"Following filing our request for an extension of time dated 16 May 2000, we made inquiries at other patent attorney firms in Australia to locate suitable attorneys to act on our behalf in relation to this opposition. Following personal meetings, written correspondence and telephone conversations with these firms, on 14 June 2000 we instructed Griffith Hack to assume responsibility for this opposition on our behalf.

On 16 June 2000, our new attorneys at Griffith Hack met with our previous attorneys to obtain a brief history of the opposition proceedings to date and to transport the files to their office.

On 23 June 2000, a teleconference was held between us and our new representatives in which we provided some background information concerning this opposition and corresponding actions ongoing in other countries.

Following the teleconference, our Australian representative continued the task of identifying and retaining expert witnesses from whom we plan to obtain Statutory Declarations that will constitute the evidence-in-support of the opposition. One Australian expert was retained in early July 2000. A bundle of documents relevant to the opposition was sent to this expert on 28 July 2000. This expert is currently reviewing these documents.

A second expert was retained on 31 July 2000. A bundle of documents relevant to
the opposition has now been sent to this expert.

Since the teleconference on 23 June 2000, our associates have continued to review the materials in the many files transferred to them from our previous representative to come up-to-date on the subject matter of the opposition. Our associates met with Counsel on 14 July 2000 to discuss the preparation of evidence-in-support of this opposition. One of our Australian representatives also attended a meeting with us in our offices in the United Kingdom in July to discuss this opposition and to progress our arrangements for the preparation of evidence-in-support of the opposition.

Further time is required for our experts to review the documents in this matter, and for us to liaise with the experts and prepare statutory declarations of the experts which will constitute our evidence-in-support."

On 28 September 2000, the opponent supplied two Statutory Declarations in support of their application for an extension of time. The first was by Janelle Suzanne Borham, which provided details regarding progress to date by Griffith Hack in securing the services of experts.  Also attached to that declaration was a copy of a UK court decision regarding the corresponding 3M patent application.  The second statutory declaration was by Andrew John Teuten which provided details concerning the opponents efforts in securing the services of a patent attorney after they had been advised of the conflict of interest by Davies Collison Cave.

DECISION

Subregulation 5.10(2) states:

"The Commissioner may:

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

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

extend the time within which the party may take a step prescribed in this chapter, not being a step that is taken under regulation 5.3 or paragraph 5.4(1)(a)."

Subregulation 5.10(5) qualifies the operation of subregulation 5.10(2) by, inter alia, stipulating that the Commissioner must not grant an extension application under subregulation (2) unless the Commissioner: 

"gives the parties a reasonable opportunity to make representations; and is reasonably satisfied that the extension of time is appropriate in all the circumstances."

The law on extension of time provisions, and specifically the law on Regulation 5.10, has been considered and summarised by Burchett J in Ferocem Pty Ltd v Commissioner of Patents (1994) 28 IPR 243 and more recently by Sackville J in A Goninan & Co Ltd v Commissioner of Patents (1997) 38 IPR 213. Both of these decisions indicate that regulation 5.10 confers a broad discretion, which cannot be reduced to an imperative compliance with particular requirements. On the contrary, it is necessary to give proper, genuine and realistic consideration to all relevant matters of the case.

Relevant matters include:

• Explanation of delay.

• The public interest.

• The interest of the opponent.

• The interest of the applicant.

Explanation of the delay.

The onus rests with the party seeking an extension of time to justify the need for the extension with sufficient details of the circumstances and reasons for needing the extension of time.

In reviewing the reasons for the delay, I note that much of the application for an extension of time focuses on the delay in transferring the opposition proceedings from the original patent attorney to their current patent attorney, and the concomitant delay in securing the services of experts in order to prepare the evidence in support.

Delay in securing the services of an attorney.

At the time the notice of opposition was filed (19 November 1999) and the statement of grounds and particulars was served (18 February 2000), the opponent was represented by Davies Collison Cave (DCC).  The applicant informed DCC of a potential conflict of interest with the opponent on 22 March 2000.  On 6 April 2000, DCC advised the opponent that they were no longer able to act on their behalf.  The opponent secured the services of Griffith Hack (GH) on 14 June 2000 (1 month after the evidence in support was initially due). 

The applicant argued that the period between 6 April 2000 and 14 June 2000, taken in order to secure the services of another attorney, had not been justified by adequate reasons.  They argued that -

"…a reasonable time period in which to locate and retain new Attorneys would have been two to three weeks from the date on which DCC was made aware of its conflict in acting against the Applicant on Glaxo's behalf."

I note that the opponent is a United Kingdom based company, which geographically makes it more time consuming in order to determine the suitability of, brief, and then secure, the services of an attorney to act on their behalf.  I am therefore not convinced that 2-3 weeks is an adequate period to engage a new patent attorney.  In any case, the declaratory evidence supplied by the opponent (Andrew John Teuten) indicates that there were significant problems in securing the services of another patent attorney.  The declaration notes that -

·    on 11 April 2000, the opponent received from Davies Collison Cave (DCC) a list of alternative attorneys.

·    on 19 April 2000, the opponent had a teleconference with DCC to discuss the suggestions in detail.

·    on 3 May 2000, the opponent discussed the case with Paul Kilborn of F B Rice and Co.

·    on 12 May 2000, the opponent provided a briefing pack to Mr. Paul Kilborn.

·    on 24 May 2000 the opponent met Mr Paul Kilborn in the UK.

·    on 1 June 2000 the opponent was advised by F B Rice and Co., that they could not act for the opponent, due to a conflict of interest.

·    on 2 June 2000 the opponent contacted Griffith Hack (GH).

·    on 6 June 2000 the opponent had further discussion with Mr. Tony Ward of GH.

·    in the period 8-14 June 2000, the opponent and GH exchanged several facsimile communications.

·    on 16 June 2000, GH was duly appointed to represent the opponent.

From this chronology of events, I am satisfied that the opponent did make all due effort in securing the services of another patent attorney between 6 April 2000 (when the opponent was notified of the conflict) and 14 June 2000 (when GH was instructed to represent the opponent).  I also note that from 22 March 2000 (when DCC became aware of the possible conflict of interest) up until 14 June 2000, the opponent was not effectively represented by a patent attorney and could not act to compile the evidence in support.  This at least partly explains the lack of progress in the opposition during the previous extension of time.

Delay in securing the services of experts.

The applicant argued (citing Lesaffre et Cie v Burns Philp Research and Development Pty Ltd (1997) AIPC 91-360 and The University of New South Wales et al v National Starch and Chemical Company 2000 APO 36) that experts should have been contacted after the filing of the notice of opposition.  According to the applicant, a change of attorney well after that date should not have affected the preparation of evidence.  I am not convinced that this should be the case.  The expert's role is to prepare evidence based on the statement of grounds and particulars.  It seems to me quite reasonable that the opponent could wait until the statement of grounds and particulars had been finalised before needing to secure the services of experts.  Thus, while I would expect that an opponent would start working on the statement of grounds and particulars once a notice of opposition was filed, they would not necessarily need to engage witnesses at that time.  I accept that there may be exceptions to this when it is known that there are a limited range of potential experts in a particular field, and where it may be expected to take considerable time to secure their services, but this does not appear to be the case here.

The applicant also argued that the opponent had said that they had identified expert witnesses in their previous request for an extension of time.  According to the applicant, this could not explain the five week delay from the time the opponent had retained GH before it actually briefed its first expert witness.  I note however that the opponent had only stated in the previous request that potential expert witnesses had been identified.  The opponent advised at the hearing that experts had not been retained by DCC before the conflict of interest had been identified. 

I accept that there was considerable work for the newly appointed attorneys to first become familiar with the facts of the case, and to then pursue the services of suitable experts.  I also accept that there was still considerable work to be done in securing experts, even though the previous attorney had already identified a list of potential experts.  Despite this, from the declaratory evidence supplied by the opponent, the newly appointed attorneys for the opponent appear to have been working diligently to secure experts and have made significant progress in preparing evidence since their appointment by the opponent.  At the hearing, the opponent also anticipated that they will be able to complete their evidence by 18 November 2000.

In my view, there have clearly been delays in retaining experts caused by the delay in securing the services of a patent attorney.  I am satisfied however, that the cause of the delays have been satisfactorily explained, that they were reasonable in the circumstances, and that the opponent is making all due effort at this stage in overcoming the problems caused by the delays.

The public interest

In considering the public interest, I need to balance the competing factors of ensuring only valid patents are granted against the expeditious disposal of matters in the Patent Office, and questions of costs, efficiency and maintenance of professional standards as addressed by Burchett J in the Ferocem decision (supra).

I am also conscious of the words of Kitto J in Kaiser Aluminium & Chemical v. The Reynolds Metal Company (1969) 120 CLR at 143, viz a serious opposition should be dealt with on its merits rather than be shut out as a consequence of a failure of procedure.

The opponent submitted that the opposition was a serious one and that therefore there is a strong public interest in having it determined on its merits.  In this respect, the opponent referred to the fate of the corresponding 3M patent in the U.K. which had been held to be invalid.

I agree that the opposition is of a serious nature, and as such, the opposition should be dealt with on its merits, rather than the opponent being shut out as a consequence of a failure of procedure.  The case is now being dealt with as expeditiously as possible, and the delays that have accrued, have been satisfactorily explained.  Furthermore, this is only the second extension of time, and the opponent anticipates that the evidence will be complete by 18 November 2000.  This is not an unduly lengthy delay and is reasonable in the circumstances.

As such, the public interest is to allow the extension of time.

The interest of the applicant.

The applicant submitted that the present application, if granted, would expire relatively soon on 12 November 2012 because it is a divisional application from patent 675633.  This means that a considerable period of the potential term of the patent would have expired before a patent could be granted unless there were minimal delays in processing the opposition.  The opponent argued that the fact the application was a divisional was not relevant.  The applicant chose to file a divisional and chose the timing of the application.  Any delays in proceeding to grant was a result of the applicant's actions and not the opponent's.

I agree with the opponent.  The fact that the application is a divisional does not weigh strongly in the applicant's favour, because the applicant chose the timing of the application.  Further, the delays in processing the current opposition are relatively short in the circumstances, and it does not appear to me that the applicant will be seriously disadvantaged by granting the current extension. 

The interest of the opponent.

The applicant noted that the opposition was based mainly on the grounds of lack of novelty.  According to the applicant, novelty can be assessed by comparing the claims to the prior art and the opponent would not necessarily require the services of experts.  The opponent argued that the expert evidence would be needed in this opposition to properly support their case.  The opposition is based on relevant documents which are not published at the priority date of the application, but have an earlier priority date than the application.  There are multiple basic documents filed in foreign countries.  According to the opponent, there is a possibility that priority dates need to be established and that the views of experts may be needed to do this.  The opponent also noted that the UK court in considering the corresponding UK patent relied on expert evidence in coming to their decision.

I do not agree with the applicant's general proposition that expert evidence would not be needed if the main ground of opposition is lack of novelty.  Clearly, a citation has to be assessed in the light of common general knowledge at the relevant time and this may require expert evidence.  In any case, the opponent's arguments regarding assessment of priority date and the court's use of expert evidence in the corresponding UK decision strongly suggest that there is a need for expert evidence for them to properly argue their case.  This means that the opponent would be denied the opportunity of making a fair case if the current extension of time was not granted.  The opponent's interest therefore weighs strongly in favour of granting the extension.

CONCLUSION

The opponent has provided a proper case justifying the extension in order to provide evidence in support.  There was a conflict of interest between the patent attorney acting on behalf of the opponent forcing them to secure the services of an alternative attorney.  This caused a delay in retaining the services of experts which are needed to prepare evidence in support.  The opponent satisfactorily justified the reasons for these delays.

The opponent's interests were clearly for the extension to be allowed so that they could properly prepare their case.  Similarly, the public interest resides in ensuring that a substantive opposition be decided on its merits.  There was no evidence provided to suggest the minimal delay caused by the allowance of an extension would be of any great detriment to the applicant.

For these reasons, I extend the time to serve evidence in support, as requested, to 18 November 2000.

COSTS

Costs normally follow the event.  However, the applicant argued that they should still be awarded costs even if the opponent was successful in this case.  According to the applicant, the opponent only gave scant details in their original request.  Further supporting material (in the form of statutory declarations) was only provided one working day before the hearing which was after preparation for the hearing was complete.

In my view, the original request clearly outlined the problems the opponent was having with regard to securing a new patent attorney and the progress that the current attorneys were making in securing expert witnesses.  While I certainly found the extra details provided in the statutory declarations very helpful, there were sufficient reasons provided in the original request to justify the extension.

Consequently, I award costs against the applicant.

Karen Ayers

Delegate of the Commissioner of Patents

Patent attorneys for the applicant  :  Freehills Carter Smith Beadle, Sydney

Patent attorneys for the opponent   : Griffith Hack, Melbourne