Mlning Technologies Inc v the Broken Hill Proprietary Company Limited

[1995] APO 23

official notice

decision of a delegate of the commissioner of patents

Application        :    No. 644257 in the name of MINING TECHNOLOGIES, INC.

Title:    LAUNCH VEHICLE FOR CONTINUOUS MINING APPARATUS

Action:    Opposition to grant by THE BROKEN HILL PROPRIETARY COMPANY LIMITED. Request to amend the statement of grounds and particulars.

Decision:    Issued            .

Abstract:    Request refused. Issue of undue prejudice considered. Extra particulars arose incidental to the preparation of the case. Unnecessary delay in seeking a relevant amendment. Amendment would add inadequate particulars to the statement.

patents act 1990

decision of a delegate of the commissioner of patents

Re:Patent Application No.644257 by MINING TECHNOLOGIES, INC., Opposition by THE BROKEN HILL PROPRIETARY COMPANY LIMITED, and a request to amend the statement of grounds and particulars

background

Patent application number 644257 by Mining Technologies, Inc., (MTI) was advertised accepted on 2 December 1993. On 2 March 1994 a notice of opposition to the grant of a patent was lodged by The Broken Hill Proprietary Company Limited (BHP). The statement of grounds and particulars was served on 1 June 1994.

Evidence in support was due to be served by 1 September 1994. Two extensions of time extended this time till 8 November 1994. Part of the evidence in support was served on 21 September 1994 and the rest was served on 8 November 1994.

On 6 December 1994 the opponent requested an amendment to the statement of grounds and particulars. The applicant objected to this request.

A hearing was held in Canberra on 31 January 1995. The applicant was represented by Mr. Tony Smeeton of Davies Collison Cave, Sydney. The opponent was represented by Mr. Greg Munt of Griffith Hack & Co., Melbourne.

AMENDMENTS TO THE STATEMENT OF GROUNDS AND PARTICULARS

In support of its request to amend the statement of grounds and particulars the opponent stated that:

"The reason for requesting the amendment....is that in the course of preparing evidence-in-support of the opposition, we became aware of a significant amount of information relating to the activities of the opponent in the field of the opposed patent application extending over a considerable period of time before the earliest possible priority date of the opposed application. The information is relevant to the grounds of opposition that the alleged invention claimed in the opposed patent application does not comply with Sections 18(1)(a) or 18(1)(b).

The evidence-in-support of the First Amended Statement of Grounds and Particulars has been served on the applicant under cover of letters dated 21 September and 2 November 1994. In a letter dated 20 October 1994, the Applicant was advised that the Opponent would be amending the Statement of Grounds and Particulars as is now being effected."

To help determine the nature and extent of the changes being sought by the opponent I have summarised below the original statement, and the proposed amended statement. I note that Ground 3 (in the original statement of grounds and particulars) raises Section 40 issues and remains unchanged in the proposed amended statement, hence I shall not make any further reference to Ground 3 in my decision.

Summary of the original statement of grounds and particulars

Ground 1 states

"The invention is not a patentable invention because it does not comply with Section 18(1)(a) of the Patents Act 1990."

The relevant particulars state

"The invention as claimed is not a manner of manufacture within the meaning of Section 6 of the Statute of Monopolies because the specification thereof does not disclose an inventive idea or step, having regard to the disclosure of the specification thereof, to the specifications referred to under Ground 2 hereof, and to a paper entitled "A Highwall Mining System for Open Cut Coal Mines in Australia" by G.A. Marshall, H. Bartosiewicz, and A.W. Dickerson delivered at the Second International Conference on Mining Machinery, Brisbane, 9-11 May 1988."

Ground 2 states

"The invention is not a patentable invention because it does not comply with Section 18(1)(b) of the Patents Act 1990."

The relevant particulars state

"The invention as claimed in each and every claim of the specification of the complete application is not a patentable invention pursuant to Section 18(1)(b)(i) of the Patents Act 1990 in that the alleged invention was not novel when compared to the prior art base as it existed before the priority date of any claim."

The particulars then cite 7 U.S.Patent specifications, and then assert that these specifications became available to the public in Australia before the earliest relevant priority date. No particulars have been provided in respect of inventive step and neither is any specific mention made of the ground of lack of inventive step.

Summary of the proposed amended statement of grounds and particulars

In the following summary I shall refer to specifications and documents listed in the original statement as "old" documents, and to specifications and documents not listed in the original statement as "new" documents.

Ground 1 states

"The invention is not a patentable invention because it does not comply with Section 18(1)(a) of the Patents Act 1990."

The relevant particulars state

"The invention as claimed is not a manner of manufacture within the meaning of Section 6 of the Statute of Monopolies because the specification thereof does not disclose an inventive idea or step, having regard to the disclosure of the specification thereof, to the specifications and documents referred to under Ground 2 hereof, and to [a paper entitled "A Highwall Mining System for Open Cut Coal Mines in Australia" by G.A. Marshall, H. Bartosiewicz, and A.W. Dickerson delivered at the Second International Conference on Mining Machinery, Brisbane, 9-11 May 1988] the common general knowledge in Australia before the priority date of any claim of the specification of the complete application referred to under Ground 2 hereof."

Ground 2 states

"The invention is not a patentable invention because it does not comply with Section 18(1)(b) of the Patents Act 1990."

The relevant particulars under the heading of Section 18(1)(b)(i), state

"The invention as claimed in each and every claim of the specification of the complete application is not a patentable invention pursuant to Section 18(1)(b)(i) of the Patents Act 1990 in that the alleged invention was not novel when compared to the prior art base as it existed before the priority date of any claim."

The particulars relating to novelty identify 7 U.S. patents (old documents), and documents (8 in total of which 7 are new and one is old, the old one being a paper identified only in original Ground 1). An assertion is then made that all these documents were available to the public in Australia before the earliest relevant priority date.

The relevant particulars under the heading of Section 18(1)(b)(ii), state

"The invention as claimed in each and every claim of the specification of the complete application is not a patentable invention pursuant to Section 18(1)(b)(ii) of the Patents Act 1990 in that the alleged invention did not involve an inventive step when compared to the prior art base as it existed before the priority date of any claim."

The particulars relating to inventive step identify 7 U.S. patents (old documents) and documents (11 in all of which 10 are new and one is old. Of the 10 new documents 7 are the same as those mentioned under novelty above. The old document is a paper identified only in original Ground 1. The particulars also identify the evidence of a Mr. Marshall and a Mr. Abela in their respective Statutory Declarations (new). The particulars also state that the identified patents and documents are considered as being included within the common general knowledge as it existed in the patent area before the priority date of any claim (new).

SUBMISSIONS

Mr.Smeeton representing the applicant, Mining Technologies, Inc., set out the background for his submissions by referring to the dates of the relevant steps of the opposition procedure. He began with the filing of the notice of opposition and ended with the filing of the application to amend the statement of grounds and particulars. Further he stated that the first time the applicant was made aware of the opponent's intention to amend the said statement was by a letter dated 20 October 1994 from the opponent. He then made the following submissions:

Section 18(1)(b) of the Patents Act 1990 provides two grounds of Opposition; (1) that an invention is not novel (Section 18(1)(b)(i)) and (2) that an invention does not involve an inventive step (Section 18(1)(b)(ii)). Each ground is distinct.

In the original statement of grounds and particulars, the ground of Section 18(1)(b) was referred to generally and reference to the ground of lack of novelty (Section 18(1)(b)(i)) was incorporated in the particulars. No reference was made to the ground of lack of inventive step and no particulars were provided in support of such a ground. Accordingly, it is submitted that the ground of lack of inventive step was neither included nor inferred as being relied upon in the original statement and that the amendment incorporates Section 18(1)(b)(ii) as a new ground in the case to be answered by the applicant. As such, the provisions of Regulation 5.9(1)(a) apply.

Regulation 5.9(1)(a) provides that the Commissioner may amend the grounds of Opposition set out in the statement of grounds and particulars if he reasonably believes that the amendment corrects an error or omission by the Opponent. In this regard we refer to Biosys v Ecogen Australia Pty Limited (1993) AIPC ¶91-001 wherein it is stated that the term "error or omission has been considered many times in decisions concerning Section 223 and it would be inappropriate to give a different meaning to the term when used in Regulation 5.9(1)(a)" and "the matter of whether or not there has been an error or omission should be assessed by having regard to the actions and intentions of the opponent on or before the date of filing the statement of grounds and particulars".

No evidence has been put forward as to an error or omission occurring before the statement of grounds and particulars was filed and, as such, the amendment should not be allowed.

In the amended statement of grounds and particulars, ground 3 is identical to the original but the particulars of ground 2 are divided into part A (Section 18(1)(b)(i)) and part B (Section 18(1)(b)(ii)). Ground 2, part A references 7 specifications (old) and identifies 8 additional (new) documents. Ground 2, part B references 7 specifications (old), the evidence of the Marshall and Abela Statutory Declarations in general (new), and identifies, in particular, documents from the Declarations (new). All of the additional documents appear to be present in the Marshall Declaration as annexures G.A.M.-3, 4, 5, 6, 8, 9, 11, 12, 19, 20, and 21. Ground 1 in the amended statement makes reference to all of the specifications, documents and common general knowledge referred to in ground 2.

None of the particulars for amended grounds 1 and 2 contain information that should be included in a statement of grounds and particulars such as suggested in E I DuPont de Nemours & Company v. DowElanco (1994) AIPC ¶91-067. For example, the particulars do not contain information

(a) for documents, the relevance of the reference to the ground, together with page and line references to the reader to the specific part of the document that is to be relied on.

(b) for common general knowledge, a brief description of the alleged common general knowledge and identification of the person skilled in the art including brief details of any material facts needed to establish a prima facie case.

Also, each of grounds 1 and 2 reference more than 10 documents, yet no statement has been provided to briefly and generally identify what information in each of these documents is relied upon in relation to the particular ground of opposition. (re Imperial Chemical Industries PLC v. Irenco Inc and others 1993 26 IPR 154). In light of the above the particulars are inadequate.

Further, an unreported case "The Boots Company PLC v. Hamilton Laboratories Pty Limited" (Patent Office decision, 21 December 1992, Patent application no. 614998) provides authority for an amendment to a statement of grounds and particulars not to be allowed if the amendment would cause the particulars to become inadequate for their purpose. (See also E I DuPont de Nemours Company v DowElanco (supra))

If, however, the Opponent were to consider lodging an amendment containing further and better particulars to attend to the above inadequacies it would still remain our contention that the amendment not be allowed under Regulation 5.9(2)(e).

Regulation 5.9(2)(e) provides that an amendment to a statement of grounds and particulars must not be allowed if the Commissioner reasonably believes that a person will be unduly prejudiced by the amendment. Guidance as to what constitutes "undue prejudice" can be found in the decision of Diamond Scientific Company v. CSL (1992) AIPC ¶90-927.

In the present case, the amendment introduces a new ground and more than doubles the number of particulars for grounds 1 and 2. Consequently the case to be answered by the applicant has been substantially changed. In addition the particulars of the amended statement are inadequate and the case to answer has not clearly been defined. All these factors, combined with more than 6 months delay between filing the original statement and the request to amend the statement clearly shows that the applicant would be unduly prejudiced if the amendment was allowed.

The amendment of the statement of grounds and particulars not be allowed under both Regulation 5.9(1)(a) and 5.9(2)(e).

Further, since no material facts or particulars relating to the ground of lack of inventive step have been provided, we respectfully request that the Commissioner direct that this ground be made unavailable to the opponent to argue at an Opposition Hearing, in accordance with the findings of E I DuPont De Nemours and Company v DowElenco(supra)

Mr. Munt, representing the opponent, The Broken Hill Proprietary Company Limited, made the following submissions:

The submissions of the attorney for the applicant focussed on dismissal of the opposition rather than discussing the allowability of amendments to the statement of grounds and particulars.

The document lodged at the Patent Office on 6 December 1994 was a request to amend the particulars of the statement of grounds and particulars and was not an amendment of both the grounds of opposition and the related particulars. It could be that Section 59(b) of the Patents Act 1990 referred to two separate grounds of opposition, i.e. non-compliance with paragraphs 18(1)(a) and 18(1)(b). However Section 59(b) does not refer to paragraphs 18(1)(b)(i) and 18(1)(b)(ii) separately and these are therefore clearly included in paragraph 18(1)(b). The original statement of grounds and particulars referred to paragraph 18(1)(b) as a ground, which included novelty and inventive step, but the particulars covered only novelty. If the applicant was unhappy with this they could have applied for a dismissal of the opposition under Regulation 5.5. It is unacceptable to do this now. The principles set out in Fujisawa Pharmaceutical Co., Ltd v. Banyu Pharmaceutical Co., Ltd. (an unreported decision) clearly spells out the position of the Patent Office with respect to dismissal of opposition. These principles should be applied to the arguments of the applicants attorney.

The attorney of the applicant also referred to undue prejudice, i.e. the application to amend (filed on 6 December 1994) was filed too late (i.e. after unreasonable delay). That delay falls under what Kitto J. in Kaiser Aluminium & Chemical Corporation v. Reynolds Metal Company (1969) 120 CLR 136, said, is a lamentable procedural delay which should not adversely impinge on the ability or the right of the opponent to put before the Patent Office significant evidence concerning the grant of a patent on a patent application.

The opponent has mounted a serious opposition in the statement of ground and particulars filed 1 June 1994 which has identified grounds and listed particulars relating to each ground. The 7 prior art documents listed in the original statement are U.S. Patents which are well known to the applicant. The original statement thus established a serious opposition.

Preparation of the evidence in support was delayed by negotiations with the applicant to settle the opposition. Once the opponent started on the evidence in support it became aware of evidence that is more extensive than that foreshadowed in the particulars of the original statement.

It should be a matter of fundamental policy for the patent office that, if relevant evidence is located prior to the date of the hearing but after the date of lodging the statement of grounds and particulars, and there is a reasonable opportunity to present evidence to the applicant, and for the applicant to respond to that evidence, and there is no evidence or suggestion that the opponent had attempted to obtain an unfair advantage by delaying presentation of evidence, then that evidence ought to be considered in the opposition. This is consistent with the policy established in the Kaiser Aluminium case (supra). This was also referred to in Ferrocem Pty Ltd v. Commissioner of Patents 28 IPR 243 where Burchett J. discussed the balancing exercise. Public interest to be dealt with on its merits.

This is also consistent with the Court Policy dealing with pleadings, i.e. the statement of grounds and particulars to be amended to be consistent with the evidence rather than evidence being shut out (or being constrained by the pleadings) to be consistent with the statement of grounds and particulars. In support of this argument attention is drawn to the following:

(i)A chapter entitled "Order 13 - Pleadings" in a text entitled "Civil Procedure Victoria" by Neil J Williams published by Butterworths.

(ii) Chapter 8 entitled "Amendment" of a text entitled "Australian Civil Procedure" by Bernard C Cairns published by The Law Book Company Limited.

The court has a wide power to allow the party to amend its pleadings at any stage to raise new facts. Dispute is not limited by pleadings but governed by the evidence. Case must be decided on issues on the record and if other issues arise they must be placed on record by amendment of pleadings. This is what the opponent has done.

The request to amend the particulars of the statement of grounds and particulars is made under Regulation 5.9(1)(c). It is clear from a number of Patent Office decisions that an amendment under Regulation 5.9(1)(c) is not allowable, if under Regulation 5.9(1)(e), the Commissioner reasonably believes that a person will be unduly prejudiced by the amendment. The Diamond Scientific Co case (supra) provides guidance regarding undue prejudice. Undue prejudice occurs if (a) the amendment to the statement of grounds and particulars is detrimental/disadvantageous to the applicant, and (b) the circumstances of the amendment caused the degree of disadvantage and/or detriment to be unwarranted, excessive , improper, inappropriate, or unjustified.

Amendment of the statement of grounds and particulars is not detrimental/disadvantageous to the applicant because it merely makes the statement consistent with the evidence filed. That evidence places considerable doubt on the validity of the broader claims of the patent application which would be available for consideration by a court in relevant proceedings. This allows the applicant to consider the evidence on its merits, i.e. give it an idea of the allowable scope of its claims. Therefore there is no disadvantage/detriment in helping the applicant to become aware of issues relevant to validity. The onus is on the applicant to show that it has been prejudiced. There is nothing from the applicant to show how they have been disadvantaged or unduly prejudiced.

If the amendment is found to be disadvantageous/detrimental we say it is not undue in nature and that the applicant has not been unduly prejudiced. If in light of the amended statement of grounds and particulars and related evidence the patent could be seen to be manifestly bad then this could hardly amount to undue prejudice. The disadvantage is neither unwarranted nor inappropriate given the importance of public interest considerations. This is precisely the case in the present instance where the amended particulars and the Marshall and Abela declarations place in serious doubt the validity of the claims.

In order to show that there is no undue prejudice, reference is made to the relevant events between lodgement of the original statement of grounds and particulars and the amended statement.

In the period during and after lodging of the original statement, continuing negotiations between the applicant and the opponent had the effect of delaying the commencement of preparation of the evidence for a period of two months. The original statement was filed on 1 June 1994 and on the same day the applicant received a draft of the amended claims as a basis for settlement of the opposition. At 9 June 1994 the opponent was optimistic that the opposition would be settled. After two separate inquiries, in early July and late July/early August, directed to the applicant's attorney we were told that no instructions had been received to amend the claims.

On 5 August 1994 in discussions with the opponent's representatives it was agreed to proceed with the preparation and service of the evidence in support. Regular meetings were scheduled to be held with Mr. Gordon Marshall of BHP Research on 17,24 August and 5,12 September 1994. Scheduling of the first meeting was delayed to that date as I was overseas for the period 8-10 August. Mr. Marshall was selected as a declarant as he is the project leader of a project of BHP Coal Research to develop high wall mining which is the same subject matter as that of the opposed application.

At the meeting of 17 August I asked Mr. Marshall to write background information on the highwall mining project as I wanted to establish his credibility in the field of the invention. On 24 August Mr. Marshall presented two things which made clear that the high wall mining project was a long standing project of BHP Research and that they had extensive knowledge in this technology. Thus I became aware of research and other publications relevant to novelty and other considerations, and also that the knowledge of BHP Research should be seen as the common general knowledge in Australia as at the priority date of the opposed application.

Therefore at 20 September 1994 it was clear that there was evidence supporting new particulars for novelty and common general knowledge considerations. Having located this evidence it could not be set aside. Opponent did not set out to prejudice the applicant or otherwise obtain an unfair advantage by not including details of additional particulars now proposed to be added in the original statement. The new information was not available at the time of preparing the original statement and only came out during the process of interviewing the declarants. Therefore if it is a mistake it is the attorney's mistake and the opponent should not be penalised for it.

The evidence of Mr. Marshall was served on 21 September 1994, i.e., 4 weeks after the meeting of 17 August and 6 weeks after negotiations had failed. Further evidence was obtained from Mr. Abela (working for a company independent of BHP) and served on 8 November 1994 thus completing the evidence in support. By the evidence filed on 21 September 1994 the applicant became aware that extensive evidence had been raised which foreshadowed changes to the original statement. On 20 October 1994 a letter which gave formal notice of changes to be made to the original statement was sent to the applicant. Subsequently the request to amend the original statement was filed on 6 December 1994. Note that my overseas travel for the period 23 October to 3 November 1994 delayed preparation of the request to amend. We therefore believe that there has been no undue prejudice.

Issue of undue prejudice should not be considered in absolute terms but rather in relative terms. Correct inquiry should be has the applicant been unduly prejudiced by late introduction of particulars as opposed to their existence in the original statement.

The following changes have been made to the statement of grounds and particulars:

Ground 1:- amendment was sought to the particulars to include the common general knowledge in Australia before the priority date of any claim, the common general knowledge being identified in ground 2.

Ground 2:- Section 18(1)(b) encompasses novelty and obviousness. We have as a matter of procedural nicety divided it into two parts (a) and (b).

Under 18(1)(b)(i) we have identified particulars on novelty and restated in items 1 to 7 prior art documents well known to the applicant. Various documents have then been listed as being included in the prior art base. These documents have come through Mr. Abela, Mr. Marshall and BHP Research, having also been included as evidence in Mr. Marshall's declaration. The applicant may object to the number of documents as being excessive but they are free to request further and better particulars.

Under 18(1)(b)(ii), lack of inventive step, the particulars identified are similar to those identified under 18(1)(b)(i), thus bringing the statement of grounds and particulars in line with the evidence.

This concludes the opponents submissions.

The applicant made the following submissions in reply:

The case that the applicant had to answer had changed as the new ground of inventive step had been added in the new statement.

The Kaiser Aluminium case (supra) referred to an extension of time (Section 223) and did not relate to the statement of grounds and particulars.

The statement that the patent documents listed under lack of novelty are well known is an issue of evidence and does not relate to the statement of grounds and particulars.

The Patent Office is a tribunal and therefore, the master of its own procedure, provided the rules of natural justice apply (per Lord Denning MR in T.A. Miller Ltd v Minister for Housing and Local Government [1968] 1 WLR 992 at 995). Function of the Patent Office is to have the oppositions expedited in an efficient manner and the courts are available to either party after the opposition has been determined.

The opponent said that the failure to settle the opposition by negotiation was solely the responsibility of the applicant. Matters other than the amendment of the claims were also involved. The opponent did not agree to matters concerning filing of further patent applications. The opponent was also responsible for the breakdown of negotiations.

Regarding the allowability of the additional particulars, which the opponent says arose incidental to the preparation of the case, the principles set out in "Abundant Lawn Grass Industries Pty Ltd v Crancove Pty Ltd (1993) AIPC ¶90-973" should be applied. These particulars will lead to a protraction of the case. They were not included by amendment at the earliest reasonable opportunity. The amendments were made quite late, and have substantially changed the case the applicant had to answer.

Mr. Marshall's evidence had been filed in September 1994 yet the amendment was only made in December 1994. Why was it not done at the earliest opportunity. Why was it necessary to wait to complete the evidence before filing the amendment.

The new documents referred to in the new particulars are voluminous, and they are different types of documents other than just mere patent publications. This has significantly changed the case that the applicant has to answer.

DECISION

Relevant Law

The allowability of the amendments to the Statement of Grounds and Particulars of Opposition is determined by sub-regulations 5.9(1) and (2) of the Patents Regulations 1991. The decision of the Patent Office in Diamond Scientific Co v CSL Ltd (supra) sets out the following guidelines.

1. It is the responsibility of the opponent to explicitly specify in the Statement of Grounds and Particulars those documents on which it relies in the opposition.

2. Any amendment that changes the case that the applicant has to answer is potentially prejudicial to the applicant.

3. An amendment of particulars will unduly prejudice a person if:

i.the amendment is detrimental or disadvantageous to the person; and

ii.the circumstances surrounding the amendment cause the degree of that detriment or disadvantage to be unwarranted, excessive, improper, inappropriate or unjustified.

4. Where an opponent actively pursues further particulars in the opposition after having filed its Statement, the applicant will be unduly prejudiced by any resultant change to the case it has to answer if the Statement is amended.

5. Extra particulars that arise incidental to the preparation of the case which:

i.do not result in any protraction of the preparation of the case; and

ii.are included by way of amendment of the Statement of Grounds and Particulars at the earliest reasonable opportunity; and

iii.do not substantially change the case the applicant has to answer in the opposition; and/or

an amendment that merely clarifies a particular that was already present, or corrects an obvious mistake; will not prima facie give rise to the applicant being unduly prejudiced by the relevant amendments.

6. Where:

i.the applicant objects to an amendment; and

ii.the amendment of the statement can be reasonably be said to prejudice the applicant (such as by the addition of extra particulars); and

iii.the circumstances are such that there is a reasonable inference that the prejudice is undue-such as by the time at which the amendment is sought, or the nature or extent of the amendment sought;

there is a reasonable basis for the commissioner to prima facie conclude that the applicant will be unduly prejudiced by the amendment. In this event, for the commissioner to allow the amendment the opponent has an onus of demonstration that its activities have not been such as to have unduly prejudiced the applicant.

The opponent had submitted that the principles outlined in the Kaiser Aluminium case, and the procedures of pleadings and amendments followed in the courts should apply.

The relevance of the rules of pleadings to the statement of grounds and particulars was discussed in Mobay Corporation v The Dow Chemical Company 24 IPR 379. There are, however, different statutory requirements for amending pleadings and the statement of grounds and particulars. As stated previously the allowability of the amendments to the statement of grounds and particulars of opposition is determined by sub-regulations 5.9(1) and (2) of the Patents Regulations 1991, and I am bound to apply these regulations to consider the allowability of the proposed amendments.

The background applicable to the statement of grounds and particulars and the purpose it serves has been set out in detail in Kent-Moore Corp v Environmental Products Amalgamated Pty Ltd (1992) AIPC ¶90-915.

The relevance of public interest to regulation 5.9 has been addressed in SDS Digger Tools Pty Ltd v Pasdonnay Pty Ltd (an unpublished Patent Office decision, 1 February 1995, patent application no. 638571) where the delegate concluded

"However, regulation 5.9 is not a broad discretion. I can only refuse an amendment if I am satisfied of a single fact (i.e. the undue prejudice of a person), and to take into account matters not relevant to determining that fact would be improper. I cannot see that the public interest is a consideration over and above the issue of undue prejudice. This seems to me to be the unavoidable meaning of the words of regulation 5.9."

I am in agreement with the above statement by the delegate and shall therefore consider the allowability of the amendment based on the issue of undue prejudice to a person.

Amendments to the Statement of Grounds and Particulars

There is a dispute between the parties that the proposed amendments of the statement have been directed solely to the particulars. The applicant submits that the grounds of the original statement have been amended to include the ground of inventive step, whereas the opponent submits that only the particulars have been amended and that the ground of inventive step was present in the original statement.

The original statement clearly identified section 18(1)(b) as a ground but provided particulars only in respect of section 18(1)(b)(i). The issue I have to consider is whether the ground of section 18(1)(b) incorporates the grounds of novelty and inventive step. In Fujisawa Pharmaceutical Co. Ltd v Banyu Pharmaceutical Co. Ltd (supra) the delegate concluded that

"..the..words of s.59(b) do not per se set out a ground of opposition. Rather, they are a short-hand way of bringing into s.59 the criteria expressed in s 18(1)(a), 18(1)(b)(i), and 18(1)(b)(ii), as individual grounds of opposition."

Based on the above I note that section 18(1)(b) has not been treated as a separate ground of opposition, but brings in the separate grounds of opposition of section 18(1)(b)(i) (novelty) and section 18(1)(b)(ii) (inventive step). I consider therefore that section 18(1)(b) clearly included the separate grounds of novelty and inventive step in the original statement of grounds and particulars.

I therefore conclude that the proposed amendments are directed solely to inclusion of new particulars.

The proposed amendments have resulted in the following:

1. New particulars in respect of the ground of inventive step, which particulars list 7 patent documents (listed under particulars for novelty previously) and 11 other documents, of which, 2 are drawings and 1 document was previously listed under the particulars for manner of manufacture. The particulars also state that it considers all the documents listed therein as being included within the common general knowledge as it existed in the patent area before the priority date of any claim.

2. Additional particulars for ground 1 (manner of manufacture) which identify 10 new documents of which two are drawings, and also, the common general knowledge in Australia before the priority date of any claim of the specification of the complete application referred to under Ground 2 hereof (i.e. the documents identified in item 1 above).

3. Additional particulars for ground 2 (novelty) which identify 8 new documents, of which two are drawings and 1 document was previously listed under the particulars for ground 1(manner of manufacture).

I shall now consider the allowability of the amendment to include new particulars. I shall apply the principles set out in the Diamond Scientific case as mentioned above.

Prejudice

I shall now consider if the amendments to the particulars are prejudicial to the applicant. I shall apply the test referred to at item 2 under my heading Relevant Law. The amendments have resulted in new particulars under the ground of inventive step and additional particulars (listing new documents) under the grounds of manner of manufacture and novelty. These amendments, which require due consideration (i.e. in addition to the consideration of the original statement of grounds and particulars) for the filing of evidence-in-answer, have changed the case that the applicant has to answer. I therefore consider that these amendments are prejudicial in nature.

Undue Prejudice

I now have to determine if these amendments have unduly prejudiced the applicant.

The opponent submitted that due to the incidental nature of the particulars there was no undue prejudice to the applicant as a result of the amendment.

To determine this matter I shall apply the test at Item 5 under the heading Relevant Law.

First, I shall need to determine if the extra particulars arose incidental to the preparation of the case.

The amendments have their origin in the preparation of evidence in support by the opponent. In order to determine if the amendments arose incidental to the preparation of the case I shall refer to the guidance provided in the Diamond Scientific Co v CSL Ltd case (supra), where the delegate stated

"In my view, where an opponent actively pursues further particulars in the opposition after having filed its statement, the applicant will be unduly prejudiced by any resultant change to the case it has to answer if the statement is amended.

This is not to say, however, that all amendments to particulars will give rise to undue prejudice. Amendments to particulars may properly arise incidental to the preparation of the case - as distinct from efforts by the opponent to find a "better" basis for its opposition."

The submissions of the opponent's attorney indicate that the declarant Mr. Marshall was approached to provide background information in the art of the applicant's invention. Mr. Marshall provided a large number of documents that allegedly constituted the state of the relevant art in Australia before the earliest priority date of the applicant's claims. There is nothing to indicate that Mr. Marshall made a special search for these documents. I therefore conclude that the resulting amendments did arise incidental to the preparation of the case.

I shall now determine if these amendments i.e., in respect of the particulars, are not unduly prejudicial.

The first sub-test which I have to address is:

would the inclusion of the new documents in the particulars result in any protraction of the preparation of the case?

New documents have been cited against the grounds of manner of manufacture (10 documents), novelty (7 documents), and inventive step (10 documents). In ground 1, reference has been made to the common general knowledge in Australia before the priority date of the applicant's claims, but that common general knowledge has not been identified. The opponent also contends that these documents form part of the common general knowledge in the relevant art in Australia. These documents are not ordinary patent documents. Some of them are reports which run to about 100 pages. Further I agree with the applicant's attorney that the amended particulars do not satisfy the criteria for particulars set out in E I DuPont de Nemours & Company v. DowElanco (supra). For example, the particulars do not contain information

(a) for documents, the relevance of the reference to the ground, together with page and line references to the reader to the specific part of the document that is to be relied on.

(b) for common general knowledge, a brief description of the alleged common general knowledge and identification of the person skilled in the art including brief details of any material facts needed to establish a prima facie case.

Also, each of grounds 1 and 2 reference more than 10 documents, yet no statement has been provided to briefly and generally identify what information in each of these documents is relied upon in relation to the particular ground of opposition. (re Imperial Chemical Industries PLC v. Irenco Inc and others (supra). In light of the above I conclude that the particulars are inadequate. Consequently I conclude that the amended particulars would lead to a protraction of the preparation of the case, as the applicant may need to (as they have clearly indicated) call for further and better particulars. As well they may have to look for declarants to study and comment on the new documents. Clearly this places an undue burden on the applicant and would be unduly prejudicial in nature.

The second sub-test which I have to address is:

was the amendment proposing the inclusion of new documents in the particulars proposed at the earliest reasonable opportunity?

The opponent's attorney became aware of the new material as early as 24 August 1994. All this new documentation was served as part of the evidence in support on 21 September 1994. On 20 October 1994 a letter which gave formal notice of changes to be made to the original statement was sent to the applicant. The request to amend the original statement of grounds and particulars was filed on 6 December 1994.

The opponents were fully aware of the new documentation prior to 21 September 1994. It took them another two and a half months to file the amended statement on 6 December 1994. In this period the opponent's attorney was overseas for a period of 11 days. I note that the opponent sent out a letter on 20 October 1994 which gave formal notice of changes to be made to the original statement, yet it took more than a month after the attorney's overseas visit to file the amended statement. Clearly the opponent did not exercise due diligence to amend the statement to include new particulars as soon as they became aware of the new documents.  I do not consider, in light of the above facts, that the amendments were made at the earliest reasonable opportunity.

The third sub-test which I have to address is:

Would the amendment including the new documents substantially change the case the applicant has to answer in the opposition?

Against each of the grounds of manner of manufacture, novelty, and inventive step at least 7 new documents have been included as well as reference to the common general knowledge in Australia. These documents are not patent documents and some of them are about 100 pages in length. Also no specific details regarding the common general knowledge have been provided. I consider therefore that the case that the applicant has to answer has changed substantially as a result of the amendments.

In light of the results of the three sub-tests, even though I found that the new particulars arose incidental to the preparation of the case, I disagree with the opponent that the amendments are not unduly prejudicial to the applicant.

In order to determine if there has been undue prejudice in this instance, I shall apply the test at item 6 under the heading Relevant Law.

Regarding part i. of item 6 I note that the applicant has objected to the amendment.

Considering part ii. I had previously concluded that the amendment of the statement would be prejudicial to the applicant.

Part iii. refers to circumstances which lead to a reasonable inference of undue prejudice, accordingly, I will consider the following factors which arose in decisions issued by the Commissioner.

1. delay in seeking a relevant amendment (Diamond Scientific v CSL, supra);

ii.the amendment would cause the particulars to become inadequate for their purpose (Boots v Hamilton, supra); or

iii.the opponent was actively seeking further particulars for its opposition (Diamond Scientific v CSL, supra).

I shall now consider the delay in seeking amendment of the original statement. In the Diamond Scientific decision the delegate stated

"It follows, generally speaking, that if there is any unnecessary delay in seeking amendment of the statement to include extra particulars, the applicant (at least) will be unduly prejudiced if the amendment is allowed."

The original statement was filed on 1 June 1994 and the amendment was filed on 6 December 1994, a delay of 6 months. The reasons given for the delay were that during and after lodging the original statement, negotiations were in progress between the applicant and the opponent. Also due to a lack of response from the applicant negotiations were finally terminated in early August, after which preparation of the evidence in support began. The applicant submitted that they were not solely responsible for the breakdown in negotiations and that the opponent did not agree to their terms.

It is not clear as to why the declarant Mr. Marshall was first contacted only after the breakdown of negotiations. Mr Marshall was stated to be the man skilled in the relevant art in Australia and an employee of BHP Coal Research, yet there is no indication that he was consulted prior to the preparation of the original statement of grounds and particulars. Further, once Mr. Marshall was contacted and the opponent became aware of new documents it took the opponent three and a half months to formally propose amendments. I note that the opponent first filed the evidence in support, (containing all the new documentation which gave rise to the new amendments), yet waited two and a half months to formally propose amendments to the original statement. Clearly the opponent has not exercised due diligence in the preparation of its opposition in relation to the statement of grounds and particulars. I consider that there was an unnecessary delay in seeking amendments.

I had concluded, previously, that the amendments have caused the particulars to become inadequate for their purpose. I had earlier found that the extra particulars arose incidental to the preparation of the case, and as a result I find that the opponent was not actively seeking further particulars for its opposition.

Balance of Factors

In support of the issue of lack of undue prejudice I had found that the new particulars arose incidental to the preparation of the case and that the opponent was not actively seeking further particulars for its opposition.

Against this I found that there was an unnecessary delay in seeking amendments. The opponent filed its notice of opposition on 2 March 1994 and the amended statement of grounds and particulars on 6 December 1994. It required a period of nine months to include information in possession of BHP Coal Research (a part of BHP). This information was identified by Mr. Marshall as early as 24 August 1994, yet it took a further three and a half months to bring this information into the statement of grounds and particulars.

I also found that the amendment would make the particulars inadequate for their purpose. This would cause the applicant to be subject to the inconvenience of having to seek further and better particulars. The amendments have also substantially changed the case that the applicant has to answer, as the new particulars have introduced several new documents (some of which run to about 100 pages).

On consideration of the unnecessary delay in seeking amendments, the inadequate nature of the particulars, and the substantial change to the case to be answered, I find that the applicant will be unduly prejudiced by the amendments. Therefore, I refuse to allow them.

Filing of Evidence-in-answer

At the start of the hearing the applicant's attorney requested that an extension of time to file the evidence in answer be granted in view of the hearing being held just prior to the expiry date of 8 February 1995. The opponent's attorney submitted that while the applicant's position in this matter was reasonable, their view would very much depend on the length of time it took for the office to issue a decision. They considered that if the office issued a decision after three months and then granted an extension of three months to file the evidence-in-answer, they would view it as a very generous extension. I said that I would address the issue of extension of time in my decision.

I note that the applicant had to suffer some uncertainty regarding the case that it had to answer, in view of the proposed amendments. I have refused to allow the amendments. I consider a period of three months from the date of issue of this decision as being adequate to file the evidence-in-answer.

CONCLUSION

The amendments to add new particulars in respect of the grounds of manner of manufacture, novelty and inventive step, are not allowable. I therefore refuse to allow the amendments. This results in a statement of grounds and particulars which includes the ground of inventive step but no supporting particulars. The applicant did not apply for a dismissal of the opposition under Regulation 5.5 within the specified time limits. As a result a deficient statement of grounds and particulars will stand unaltered. However this does not prevent the opposition from proceeding to a hearing.

I direct that the deadline to serve evidence-in-answer expire three months from the date of issue of this decision.

COSTS

The Commissioner may award costs based on section 210 and regulation 22.8. Neither party made any submissions regarding costs. I have found for the applicant, MTI in this matter. In accordance with the general principle of costs going with the event, I award costs against the opponent, THE BROKEN HILL PROPRIETARY COMPANY LIMITED.

J.P.ELIJAH
Delegate of the Commissioner of Patents

Patent attorneys for the applicant  :  Davies Collison Cave, Sydney

Patent attorneys for the opponent   :  Griffith Hack & Co, Melbourne