Mobay Corporation v The Dow Chemical Company
[1992] APO 25
•20 May 1992
official notice
decision of a delegate of the commissioner of patents
Application : No. 610381 in the name of MOBAY CORPORATION
Title: STAIN RESISTANT POLYCARBONATE PANELS
Action: Request under regulation 5.10 of the Patents Regulations 1991 for directions for the conduct of an opposition under section 59(1) of the Patents Act 1952 by THE DOW CHEMICAL COMPANY.
Decision: Issued . Directions sought are not available; a direction for further and better particulars given; the requirements of particulars and directions discussed.
patents act 1990
decision of a delegate of the commissioner of patents
Re:Patent Application No. 610381 by MOBAY CORPORATION, Opposition by THE DOW CHEMICAL COMPANY, and a Request for Directions for the conduct of the Opposition
background
Application No. 610381 by Mobay Corporation ('Mobay') was advertised accepted on 16 May 1991. On 14 August 1991, The Dow Chemical Company ('Dow') lodged a notice of opposition to the grant of a patent. A statement of grounds and particulars was filed, and a copy served on Mobay, on 16 September 1991.
On 11 November 1991, Mobay filed a request for directions under regulation 5.10, and a copy was sent to the patent attorneys for Dow. The directions sought were that parts of the statement of grounds and particulars "be deleted", so as to wholly or partly delete some of the particulars, and to delete some of the grounds. Mobay indicated that it believed that the request should be rejected. The Senior Clerk, Patents, informed the patent attorneys for Mobay by letter dated 5 February 1992 that:
"The delegate of the commissioner is not satisfied that he has power to give those directions, and he does not intend to take any further action at this stage.
If you require a hearing on your application for directions, would you please advise this office within 21 days of the date of this letter."
On 25 February 1992, Mobay notified the Patent Office that it desired a hearing on it's request for directions. The matter was heard in Canberra on 9 April 1992. Mobay was represented by Mr John Slattery and Mr James Siely, patent attorneys of Davies Collison Cave, and Dow was represented by Mr Paul Jones, patent attorney of Phillips Ormonde & Fitzpatrick.
the request
I will quote Dow's statement of particulars in full. The portions of the statement that Mobay seeks to have deleted are shown underlined.
"(ii) The particulars relating to each ground are as follows:
Section 59(1)(c)
The invention, so far as claimed in any claim, is the subject of
(i)a claim of the complete specification of another application for a standard patent lodged in Australia; or
(ii) the claim of a petty patent specification of an application for petty patent lodged in Australia,
being in either case a claim the priority date of which is earlier than the priority date of the first‑mentioned claim.
The investigations relating to the particulars of opposition are incomplete. The opponent reserves the right to amend the statement if and when further information comes to hand. In particular, opponent is investigating whether an Australian application has been lodged corresponding to European Patent Application 320632 to Bayer.
Section 59(1)(d)
The invention, so far as claimed in any claim, is the subject of a claim of earlier priority date contained in the complete specification of a patent. The investigations relating to the particulars of opposition are incomplete. The opponent reserves the right to amend the statement if and when further information comes to hand.
Section 59(1)(e)
The invention, so far as claimed in any claim was published in Australia before the priority date of that claim in at least the following documents:
(a) European Patent Application 110,221 ("Vetter 1")
Vetter 1 discloses a two-part system including a polycarbonate plastics board, with a covering layer of a polycarbonate plastics layer, including a UV stabiliser, in an amount of at least 3%. A number of UV stabilisers are described, and they include benzotriazole or derivatives thereof.
(b) Canadian Patent 1,208,875 ("Vetter 2")
Vetter 2 discloses a coextruded polycarbonate sheet with a UV concentrate layer sandwiched between a protective surface layer and the base layer of the polycarbonate sheet structure.
(c) German Patent Application DE 3617978A1 ("Bayer 1")
Bayer 1 discloses the utilisation of bis-hydroxybenzotriazoles as UV stabilisers with polycarbonates. The specification discloses two embodiments. Firstly, a polycarbonate composition in sheet form which includes branched polycarbonates with bis-hydroxybenzotriazoles in amounts of approximately 0.05 weight percent to 1 weight percent. Secondly, the Bayer 1 specification describes multi-layered plastic panels including a UV absorption layer, which includes bis-hydroxybenzotriazoles and amounts of from 1 weight percent to 15 weight percent in a branched polycarbonate.
The Bayer 1 specification also illustrates the use of bis-hydroxybenzotriazoles as UV stabilisers with linear polycarbonates, for comparative purposes. In the comparative examples, since the polycarbonates are in sheet form, the UV absorbers are present in amounts of 0.3 weight percent. The skilled addressee, when reading this document, would understand that if the UV absorbers were utilised with linear polycarbonates in multi‑layered polymer configuration, then the higher amounts of UV absorber, 1 to 15%, would be used.
While the Bayer 1 specification notes that branched polycarbonates have improved UV resistance using bis-hydroxy benzotriazoles versus the monomeric versions, linear polycarbonate is very clearly taught to be suitably stabilised by the bis-hydroxy benzotriazoles. In other words, the skilled addressee would clearly understand that when making the multi-layer structure out of linear polycarbonate (the most common and available type), the less volatile bis‑hydroxybenzotriazole would clearly be the UV absorber of choice. Bayer 1 shows that it is otherwise at least as effective as the monomeric version in linear PC.
(d) German Patent Application DE 1670951 ("Bayer 2")
Bayer 2, referred to in Bayer 1, discloses that bis‑hydroxybenzotriazoles were known as UV stabilisers and in particular for use with linear polycarbonates.
(e)Japanese Patent Application 62-146951 ("Adeka Argus")
Adeka Argus discloses dimeric benzotriazole as very effective UV absorbers for use in polycarbonates specifically linear polycarbonates and indeed better UV protection than monomeric benzotriazoles. 2,2'-methylene bis‑(4‑(1,1,3,3-tetramethylbutyl‑6‑(benzotriazol)phenol (sic) is shown to provide the least UV stabilisation of polycarbonate.
(f) The investigations relating to the particulars of
opposition are incomplete. The opponent reserves the right to amend the statement if and when further information comes to hand.
Section 59(1)(f)
The invention, so far as claimed in any claim is not a manner of manufacture within the meaning of Section 6 of the Statute of Monopolies being at most a mere new or analogous use of a known contrivance and/or a mere collocation of known integers in the light of
(a) European Patent Application 110,221 ("Vetter 1")
Vetter 1 discloses a two-part system including a polycarbonate plastics board, with a covering layer of a polycarbonate plastics layer, including a UV stabiliser, in an amount of at least 3%. A number of UV stabilisers are described, and they include benzotriazole or derivatives thereof.
(b) Canadian Patent 1,208,875 ("Vetter 2")
Vetter 2 discloses a coextruded polycarbonate sheet with a UV concentrate layer sandwiched between a protective surface layer and the base layer of the polycarbonate sheet structure.
(c) German Patent Application DE 3617978A1 ("Bayer 1")
Bayer 1 discloses the utilisation of bis-hydroxybenzotriazoles as UV stabilisers with polycarbonates. The specification discloses two embodiments. Firstly, a polycarbonate composition in sheet form which includes branched polycarbonates with bis-hydroxybenzotriazoles in amounts of approximately 0.05 weight percent to 1 weight percent. Secondly, the Bayer 1 specification describes multi-layered plastic panels including a UV absorption layer, which includes bis-hydroxybenzotriazoles and amounts of from 1 weight percent to 15 weight percent in a branched polycarbonate.
The Bayer 1 specification also illustrates the use of bis-hydroxybenzotriazoles as UV stabilisers with linear polycarbonates, for comparative purposes. In the comparative examples, since the polycarbonates are in sheet form, the UV absorbers are present in amounts of 0.3 weight percent. The skilled addressee, when reading this document, would understand that if the UV absorbers were utilised with linear polycarbonates in multi‑layered polymer configuration, then the higher amounts of UV absorber, 1 to 15%, would be used.
While the Bayer 1 specification notes that branched polycarbonates have improved UV resistance using bis-hydroxy benzotriazoles versus the monomeric versions, linear polycarbonate is very clearly taught to be suitably stabilised by the bis-hydroxy benzotriazoles. In other words, the skilled addressee would clearly understand that when making the multi-layer structure out of linear polycarbonate (the most common and available type), the less volatile bis‑hydroxybenzotriazole would clearly be the UV absorber of choice. Bayer 1 shows that it is otherwise at least as effective as the monomeric version in linear PC.
(d) German Patent Application DE 1670951 ("Bayer 2")
Bayer 2, referred to in Bayer 1, discloses that bis‑hydroxybenzotriazoles were known as UV stabilisers and in particular for use with linear polycarbonates.
(e)Japanese Patent Application 62-146951 ("Adeka Argus")
Adeka Argus discloses dimeric benzotriazole as very effective UV absorbers for use in polycarbonates specifically linear polycarbonates and indeed better UV protection than monomeric benzotriazoles. 2,2'-methylene bis‑(4‑(1,1,3,3-tetramethylbutyl‑6‑(benzotriazol)phenol (sic) is shown to provide the least UV stabilisation of polycarbonate.
(f)The knowledge, use and sale in Australia prior to the priority date of that claim of polycarbonate sheet including polycarbonate sheet including UV stabiliser coatings.
(g)The knowledge, use and sale in Australia prior to the priority date of that claim of benzotriazoles and derivatives thereof including bis‑benzotriazoles as UV stabilisers.
(h)Other common general knowledge in the polymer field in Australia prior to the priority date of that claim relating to polycarbonates, for example as illustrated in Textbooks including
(i) Billmeyer - Textbook of Polymer Science
(ii) Kirk-Othmer - Encyclopedia of Chemical
Technology(iii) Wiley Interscience - Encyclopedia of
Polymer Science and Chemical Technology(i)The investigations relating to the particulars of opposition are incomplete. The opponent reserves the right to amend the statement if and when further information comes to hand.
Section 59(1)(g)
The invention, so far as claimed in any claim, was obvious and did not involve an inventive step, having regard to what was known or used in Australia on or before the priority date of that claim in the light of
(a)The knowledge, use and sale in Australia prior to the priority date of that claim of polycarbonate sheet including polycarbonate sheet including UV stabiliser coatings.
(b)The knowledge, use and sale in Australia prior to the priority date of that claim of benzotriazoles and derivatives thereof including bis‑benzotriazoles as UV stabilisers.
(c)Other common general knowledge in the polymer field in Australia prior to the priority date of that claim relating to polycarbonates, for example as illustrated in Textbooks including
(i) Billmeyer - Textbook of Polymer Science
(ii) Kirk-Othmer - Encyclopedia of Chemical
Technology(iii) Wiley Interscience - Encyclopedia of
Polymer Science and Chemical Technology(d)The investigations relating to the particulars of opposition are incomplete. The opponent reserves the right to amend the statement if and when further information comes to hand.
Section 59(1)(h)
The invention, so far as claimed in any claim, was before the priority date of that claim, otherwise not novel in Australia in the light of
(a) European Patent Application 110,221 ("Vetter 1")
Vetter 1 discloses a two-part system including a polycarbonate plastics board, with a covering layer of a polycarbonate plastics layer, including a UV stabiliser, in an amount of at least 3%. A number of UV stabilisers are described, and they include benzotriazole or derivatives thereof.
(b) Canadian Patent 1,208,875 ("Vetter 2")
Vetter 2 discloses a coextruded polycarbonate sheet with a UV concentrate layer sandwiched between a protective surface layer and the base layer of the polycarbonate sheet structure.
(c) German Patent Application DE 3617978A1 ("Bayer 1")
Bayer 1 discloses the utilisation of bis-hydroxybenzotriazoles as UV stabilisers with polycarbonates. The specification discloses two embodiments. Firstly, a polycarbonate composition in sheet form which includes branched polycarbonates with bis-hydroxybenzotriazoles in amounts of approximately 0.05 weight percent to 1 weight percent. Secondly, the Bayer 1 specification describes multi-layered plastic panels including a UV absorption layer, which includes bis-hydroxybenzotriazoles and amounts of from 1 weight percent to 15 weight percent in a branched polycarbonate.
The Bayer 1 specification also illustrates the use of bis-hydroxybenzotriazoles as UV stabilisers with linear polycarbonates, for comparative purposes. In the comparative examples, since the polycarbonates are in sheet form, the UV absorbers are present in amounts of 0.3 weight percent. The skilled addressee, when reading this document, would understand that if the UV absorbers were utilised with linear polycarbonates in multi‑layered polymer configuration, then the higher amounts of UV absorber, 1 to 15%, would be used.
While the Bayer 1 specification notes that branched polycarbonates have improved UV resistance using bis-hydroxy benzotriazoles versus the monomeric versions, linear polycarbonate is very clearly taught to be suitably stabilised by the bis-hydroxy benzotriazoles. In other words, the skilled addressee would clearly understand that when making the multi-layer structure out of linear polycarbonate (the most common and available type), the less volatile bis‑hydroxybenzotriazole would clearly be the UV absorber of choice. Bayer 1 shows that it is otherwise at least as effective as the monomeric version in linear PC.
(d) German Patent Application DE 1670951 ("Bayer 2")
Bayer 2, referred to in Bayer 1, discloses that bis‑hydroxybenzotriazoles were known as UV stabilisers and in particular for use with linear polycarbonates.
(e)Japanese Patent Application 62-146951 ("Adeka Argus")
Adeka Argus discloses dimeric benzotriazole as very effective UV absorbers for use in polycarbonates specifically linear polycarbonates and indeed better UV protection than monomeric benzotriazoles. 2,2'-methylene bis‑(4‑(1,1,3,3-tetramethylbutyl‑6‑(benzotriazol)phenol (sic) is shown to provide the least UV stabilisation of polycarbonate.
(f)The knowledge, use and sale in Australia prior to the priority date of that claim of benzotriazoles and derivatives thereof including bis‑benzotriazoles as UV stabilisers.
(g)The knowledge, use and sale in Australia prior to the priority date of that claim of polycarbonate sheet including polycarbonate sheet including UV stabiliser coatings.
(h)Other common general knowledge in the polymer field in Australia prior to the priority date of that claim relating to polycarbonates, for example as illustrated in Textbooks including
(i) Billmeyer - Textbook of Polymer Science
(ii) Kirk-Othmer - Encyclopedia of Chemical
Technology(iii) Wiley Interscience - Encyclopedia of
Polymer Science and Chemical Technology(i)The investigations relating to the particulars of opposition are incomplete. The opponent reserves the right to amend the statement if and when further information comes to hand.
Section 59(1)(i)
The complete specification does not comply with the requirements of Section 40. In particular, the opponent says
(a)the complete specification does not fully describe the invention including the best method of preparing the invention which is known to the applicant.
The complete specification fails to describe how the promise of the invention may be achieved and/or is insufficient to describe how the promise of the invention may be achieved.
(i)The Opponent intends to serve evidence that the improvements in stain resistance and/or melt stability alleged in the opposed specification are not achievable from the description provided.
The stain resistance data shown in the specification does not effectively show any improvement in stain resistance. In the test procedure, the stained plates were tested for the amount of "stain" by a standard haze and transmittance testing procedure, ASTM D1003‑61. Upon review of this test method, it indicates at page 502, column 1, lines 3-5 that the test precision is ±0.1% haze. When the reported test results are converted to the appropriate number of significant figures and viewed as being ±0.1%, it is apparent that the test results do not scientifically prove that any benefit has been obtained. Moreover, the stain resistance data was not actually compared against the most relevant prior art technology, for example Vetter 2 and Bayer 1 discussed above where the surface layer contains higher concentrations of other UV absorbers. For it to be given any significance, the showing of improved stain resistance should be made against structures that were fairly representative of the current state of the art.
(b) The claims are not clear and succinct.
(i)Claim 1 is not clear as to the meaning and scope of the phrase "to which at least one of its surfaces there is bonded an adherent layer ...".
(ii)Claim 5 is not clear as to the meaning and scope of the phrase "said adherent layer comprises a linear polycarbonate layer and a compound ...".
(c)The claims are not fairly based on the matter described in the specification.
All claims are not fairly based on the description as a whole as the promise of the invention is not fulfilled by any claim.
(i)The opponent intends to serve evidence that the improvements in stain resistance and/or melt stability purported in the opposed specification are not achievable from the description provided.
The stain resistance data shown in the specification does not effectively show any improvement in stain resistance. In the test procedure, the stained plates were tested for the amount of "stain" by a standard haze and transmittance testing procedure, ASTM D1003‑61. Upon review of this test method, it indicates at page 502, column 1, lines 3-5 that the test precision is ±0.1% haze. When the reported test results are converted to the appropriate number of significant figures and viewed as being ±0.1%, it is apparent that the test results do not scientifically prove that any benefit has been obtained. Moreover, the stain resistance data was not actually compared against the most relevant prior art technology, for example Vetter 2 and Bayer 1 discussed above where the surface layer contains higher concentrations of other UV absorbers. For it to be given any significance, the showing of improved stain resistance should be made against structures that were fairly representative of the current state of the art."
Mobay also seek consequential deletion of the grounds of sections 59(1)(c) and 59(1)(d) as they would no longer be supported by any particulars.
submissions
The patent attorney for Dow filed written submissions in November 1991. The essence of these submissions was that the directions sought were not for the conduct of proceedings, and that they amounted to a request for dismissal, but outside the time period laid down by regulation 5.5(1). For both reasons, the directions should be denied.
At the hearing, Mr Slattery explained that the directions that Mobay seeks are directions to Dow to amend their statement of grounds and particulars in the specified way. Mr Jones agreed with this interpretation of the request.
Mr Slattery stated that the purpose of the statement of grounds and particulars is to provide a full and proper presentation of the opponent's case at an early stage in the opposition process, and referred me to the submissions made in L'Air Liquide, Societe Anonyme pour l'Etude et l'Exploitation des Procedes Georges Claude v The Commonwealth Industrial Gases Limited (1992) AIPC 90‑872 at pages 38,294 to 38,295.
Mr Slattery then turned to the question of the requirements of the statement of particulars and referred to the Hearings Practice Note No 2 issued by the Patent Office. He stated that the consequences of a deficient statement of particulars, as explained in the L'Air Liquide decision, supra, are that the opponent has no basis to oppose on that ground.
Mr Slattery suggested that regulation 5.10 provides a process for review by the Commissioner, which operates in addition to the review available under regulation 5.5(1). It allows the Commissioner to monitor the progress of an opposition, and give directions for the conduct of proceedings. Mr Slattery then explained why directions to amend were within the power of the Commissioner. Hearings Practice Note 6, which relates to directions, says that directions can be made for "amendment of a statement of grounds and particulars". In addition, rule 1(2) of order 10 of the Federal Court Rules (the order concerned with directions hearings) provides an inclusive list of the subjects on which the court may make directions. This list includes a specific mention of directions for "(ix) amendments". This indicates the very general discretion available to the court, and a similar discretion is open to the Commissioner.
Mr Slattery said that the term "for the conduct of proceedings" which qualifies "directions" in regulation 5.10 means the way that proceedings are pursued, and includes guidance on the course of proceedings. He stated that although the directions sought are to strike out certain unfair particulars, the request does not amount to a request for dismissal out of time. The effect might be the same as a dismissal, but that is immaterial. The request relates to the conduct of proceedings, specifically amendment, and is clearly a request made under regulation 5.10.
In the alternative, Mr Slattery suggested that I have the power to dismiss these grounds under regulation 5.5(3).
Mr Jones submitted that regulation 5.10 does not cover this case. He argued that the request was a de facto dismissal application. There is one month in which to seek dismissal, and that time had expired. It was open to the applicant to seek an extension of time to request a dismissal under regulation 5.5 if there were appropriate grounds.
Mr Jones analysed the Commissioner's power to give the directions sought by posing and answering four questions:
Does the Commissioner have the power to give directions under the Patents Act? Mr Jones said that the answer is yes because regulation 5.10(1)(a) gives the power to give directions "for the conduct of proceedings".
Does the Commissioner have the power to direct the opponent to amend his case? Mr Jones said that the answer to this question is that the Commissioner has the power to direct amendment in the case of complete or partial dismissal, but not otherwise.
Does a direction to an opponent to amend his case amount to a direction that is inconsistent with the Act and regulations? Mr Jones said that such a direction is inconsistent with regulation 5.5, and thus the answer is no.
Can such a direction be said to be for the conduct of proceedings to which this chapter applies? Mr Jones said that the answer to this question is also no. He said that directions hearings are to set procedural matters such as timetables, and to provide for particular proceedings where the provision of such proceedings are not elsewhere specified.
Mr Jones said that deletion of a ground is equivalent to dismissal of a ground, which is covered by regulation 5.5(1). The existence of a specific regulation covering dismissal makes a direction to achieve this end inconsistent with the regulations, and thus prohibited by regulation 5.10.
Mr Jones pointed out that in the Federal Court further and better particulars are available when the particulars provided are inadequate. He suggested that the Commissioner could also direct that further and better particulars be provided under the power of regulation 5.10. Mr Slattery did not disagree with this assertion, but stressed that Mobay was not requesting further and better particulars.
Mr Jones referred me to several authorities to aid in making my decision. I will summarise these authorities:
.Hearings Practice Note 6: a directions hearing could be convened for a contested amendment.
.E I Du Pont de Nemours & Co v Commissioner of Patents 12 IPR 536: the role of directions in the Federal Court is discussed, and stated to be to give the adjudicator control over the work flow.
.Federal Court Rules, order 10 rules 1, 4, and 5: specific rules relating to striking out are outside the general directions power. The structure of the Patents Act also shows a separation of substantive and procedural matters. Substantive matters are excluded to other regulations such as regulation 5.5. Further and better particulars would fall within the power of regulation 5.10.
.The L'Air Liquide decision, supra: dismissal is only available where there are no particulars at all. Dismissal would not have been available under regulation 5.5(1), so it certainly should not be available under regulation 5.10.
.Strix Limited v Otter Controls Limited (1991) FSR 354: the exercise of the power to strike out based on a minute examination of the case is not appropriate. Mr Jones said that to strike out by directions also should not follow from a minute examination of the particulars.
I will now summarise the arguments that were made concerning the merits of the particulars in this case.
Section 59(1)(c): Mr Slattery said that the particulars do not give a full and proper presentation of the opponent's case, but amount to an ambit claim.
Mr Jones said that the particulars are of a preliminary nature. There is an indication that enquiries are proceeding in relation to a European patent application.
Section 59(1)(d): Mr Slattery said that the particulars do not give fair notice, and are not a full and fair presentation of the case to be met. Mr Jones said that the particulars are of a preliminary nature.
Section 59(1)(e): Mr Slattery said that the particulars indicate that there are other documents that the opponent will rely on. This does not provide fair notice, and the particulars should be restricted to the documents of which there has been fair notice. The statement that the investigations are incomplete is an ambit claim, and is inconsistent with a fair presentation of the case to be met
Mr Jones said that "at least" means that there may be further patent documents which are relevant. He stated that the case of the opponent could not be complete one month after lodging a notice of opposition, and this is merely the facts of the matter.
Mr Jones said that the amendment to include further information was encouraged by the scheme of the regulations. For example, regulation 5.9 gives an opponent a right to amend, so long as the applicant is not unduly prejudiced (see regulation 5.9(2)(e)).
Sections 59(1)(f),(g),(h): Mr Slattery said that the particulars relating to knowledge, use and sale do not provide notice of precisely what is being asserted. He suggested that the particulars include the use of polycarbonate sheet per se, and the use of benzotriazoles as herbicides. The reference to other common general knowledge as evidenced by certain books was stated to be a "National Library" assertion, opening up an argument based on any book in the National Library, which does not inform the applicant.
Mr Jones questioned the objection to matters of knowledge, use and sale. He asked whether the opponent should have specified the time and place of sale of each sale. The particulars indicate what matters are alleged to be part of the common general knowledge, and go further and say what are considered to be sources of common general knowledge. This information is necessary to understand how to read the citations.
As a consequence of deletion of all the particulars for the ground of section 59(1)(g), Mr Slattery stated that this ground should also be deleted. Mr Slattery also directed my attention to the relief sought by the opponent, and suggested that it is inappropriate in a statement of grounds and particulars.
decision
This is the first case of a request for directions under the new opposition procedures of the 1991 Patents Regulations. As a consequence, there is no authority as to when and how the Commissioner should exercise the power to issue directions.
The starting point for the analysis of any statutory power must be the words used by Parliament. In this case it is regulation 5.10(1) that is relevant:
"Conduct of proceedings to which this Chapter applies
5.10(1) The Commissioner may, on his or her own motion or on the application of a party:
(a) give a direction that is not inconsistent with the Act or these Regulations for the conduct of proceedings to which this Chapter applies: or
(b) determine that a period prescribed in this Chapter is to be extended by such further period as the Commissioner reasonably allows."
The first point that should be made is that the power is discretionary. Consequently, the Commissioner must be satisfied that the exercise of the power is appropriate in the circumstances.
The next point is the fundamental question of what is the scope of the term "direction"? A direction for the conduct of proceedings is a well understood legal device used by the courts to manage the cases in their lists. I note the comments of Sheppard J in E I Du Pont de Nemours & Co v Commissioner of Patents, supra, at 538:
"Judges have power, until the hearing is concluded, to make, and to continue to make, such directions as seem to them best suited properly and adequately to manage the cases in their lists. ... In complex cases it is usual for courts to hold extensive directions hearings with a view to finding out what the real issues are, what the extent of the evidence will be, what steps may be taken to confine or compress evidence and how long the case will occupy the court's time."
Examples of the directions that courts can make can be seen in order 10, rule 1(2) of the Federal Court Rules. I believe that this is the sense in which the term "direction" is used in the Patents Regulations, but I must be careful in taking guidance from directions that a court can make as the Commissioner is not a court. The range of directions that the Commissioner can give are specifically limited to those that are "not inconsistent with the Act or these Regulations" (regulation 5.10(1)(a)). Consequently, to determine the range of possible directions, it is necessary to understand the framework of the opposition procedures.
1. The Requirement of Particulars
The requirement to file particulars is a new requirement introduced by regulation 5.4(1):
"Filing of statement
5.4(1) An opponent must:
(a)within 1 month of filing the notice of opposition serve on the applicant a copy of a statement that sets out:
(i)the grounds of opposition; and
(ii)the particulars relating to each ground; and
(b)as soon as practicable after the copy of the statement has been served on the applicant, file the statement."
The statement of grounds must identify the statutory grounds, as spelt out in section 59(1) of the Patents Act 1952 or section 59 of the Patents Act 1990, as appropriate. The information required in the particulars of each ground is not explained in the regulation. However, the requirement of grounds and particulars is very similar to the system of pleadings developed for court proceedings. I believe that the Patent Office should base its practice for dealing with statements of grounds and particulars on the rules of pleading. This interpretation is also adopted in the Hearings Practice Note No 2 issued by the Patent Office:
"It should be noted that the statement of grounds and particulars is of similar import to 'pleadings' in the Federal Court and High Court rules".
The rules of pleading are stated in order 11 rule 2 of the Federal Court Rules as:
"2 Subject to these Rules -
(a) a pleading of a party shall contain, and contain only, a statement in a summary form of the material facts on which he relies, but not the evidence by which those facts are to be proved"
From this I deduce that the statement of particulars filed by an opponent must satisfy certain criteria:
(i)the particulars must state all material facts necessary for the ground of opposition;
(ii) the particulars must only state material facts;
(iii) the evidence by which the facts are to be proved must not be included;
(iv) matters of law should not be included; and
(v) the particulars are to be in summary form.
I believe that the body of case law on pleadings which elaborates these points is equally applicable to patent oppositions. I will examine the statement of particulars in the present case, and their alleged deficiencies, in the light of the rules of pleading.
The statement of particulars filed by Dow has already been quoted in full. A general point that needs to be made is that the particulars are not in summary form. For instance, the discussion of the five citations under section 59(1)(e) (which is repeated verbatum under sections 59(1)(f) and 59(1)(h)) seems to go beyond a summary of the material facts, to an arguing of the evidence.
I will now look at the particulars provided in support of each of the grounds of opposition. The particulars relating to sections 59(1)(c) and 59(1)(d) (prior claiming) do not identify any citations. Without a citation, there cannot possibly be a sustainable opposition on the ground of prior claiming, and these grounds are clearly not particularised.
There is a reference to a line of investigation relating to a European patent application. I do not believe that a line of investigation informs the applicant of the case that it has to answer. I also note that the records of the Patent Office indicate that there is no Australian family member of this European application.
The particulars relating to section 59(1)(e) (prior publication) indicate that the ground is based on five expressly listed citations. This provides all the material facts for the ground of prior publication. However, the particulars also state that there may be other citations pertinent to this ground. I consider that the particulars only provide a basis for arguing prior publication with regard to the five documents expressly listed. The other citations are not identified.
The particulars relating to section 59(1)(f) (manner of manufacture) identify that the ground is based on an assertion of "mere new or analogous use of a known contrivance and/or a mere collocation of known integers". The particulars contain references to the five citations listed under the ground of prior publication, as well as knowledge, use and sale and the common general knowledge in Australia. Points (f) and (g) of the particulars seem to identify general areas of knowledge, use and sale, and consequently provide facts that could be relevant to the ground of opposition. Due to the breadth of the areas involved, these particulars might not be adequate for their purpose. However, this point was not sufficiently argued for me to reach the conclusion that they are insufficiently precise. Point (h) refers only to "other common general knowledge in the polymer field". This point does not identify even rudimentary details of a material fact, but rather identifies the evidence that will be used. Point (i) indicates that there may be other, unidentified, material relevant to this ground. It discloses no facts, so does not support the ground. Consequently, points (h) and (i) do not provide particulars.
The particulars do not explain which of the points are relevant to an argument of analogous use, and which points relate to a mere collocation. Without this information, I do not understand this ground of opposition.
The particulars relating to section 59(1)(g) (obviousness) contain the same references to knowledge, use and sale and the common general knowledge as for the ground of manner of manufacture. For the same reasons as presented above, I believe that points (a) and (b) provide particulars, while points (c) and (d) do not.
The particulars relating to section 59(1)(h) (novelty) contain the same references as the ground of manner of manufacture. The same comments apply to the particulars under this ground.
No objection was taken to the particulars relating to section 59(1)(i). The particulars identify material facts in support of the ground, but also contain a detailed arguing of the evidence, which is not appropriate.
In deciding whether the particulars are adequate I have not had regard to whether the facts are likely to establish a successful case. It would be improper to undertake such an analysis.
My conclusion is :
.the grounds of sections 59(1)(c) and 59(1)(d) are not supported by any particulars;
.the ground of section 59(1)(e) is only supported by the five documents specifically cited, which are not given in summary form;
.the ground of section 59(1)(f) is only supported by the documents in points (a) to (e) (which are not given in summary form) and the knowledge, use and sale in points (f) and (g), but not the common general knowledge in point (h). There is no explanation of which points relate to analogous use, and which relate to a collocation of known integers;
.the ground of section 59(1)(g) is supported by the knowledge, use and sale in points (a) and (b), but not by the common general knowledge in point (c);
.the ground of section 59(1)(h) is supported by the documents in points (a) to (e) (which are not given in summary form) and the knowledge, use and sale in points (f) and (g), but not the common general knowledge in point (h); and
.the ground of section 59(1)(i) is supported by points (a) to (c), but the particulars are not in summary form, and are arguing the evidence.
I will make some other observations regarding the statement of grounds and particulars in this case. The statement of grounds ends with the sentence "The opponent reserves the right to contest the claim to the priority date of 22nd April, 1988." This statement is unnecessary, as it merely expresses a right that the opponent unquestionably has. Even if the opponent were to challenge the priority date of the application, this would not be a material fact, as it is merely a fact which may be relevant to an ultimate fact of anticipation. It is unnecessary in a statement of grounds.
The statement of grounds and particulars ends with a statement of the locus of the opponent, and the relief that is sought (refusal to grant the patent, and costs). The statement of locus is relevant, as it is a requirement of an action under section 59(1) of the Patents Act 1952 that an opponent must be "a person interested". The relief sought is not essential to the existence of the claim.
2. Consequences of inadequate particulars
If inadequate particulars are provided, then the applicant will not have received fair notice of the case that it has to answer. There are two clear options available to the applicant in such a case.
(a) Do nothing
If an applicant decides to do nothing, then inadequate particulars would remain uncorrected. This would seem to be contrary to the aim of particulars, and could lead to a situation similar to that under the old Act where particulars were not required. Perhaps the rationalisation of this result lies in asking where does the onus lie for policing the particulars. I believe that this onus lies on the applicant. The applicant has a large interest in the prosecution of the opposition, and has available to it the range of options that I have listed below. If the applicant is not concerned by being presented with inadequate particulars, then it should not look to the Commissioner to defend its case.
I do not believe that this would encourage opponents to provide inadequate particulars, as they would run the risk of an applicant adopting one of the courses of action outlined below, or even that the Commissioner would initiate a dismissal under regulation 5.5(3).
(b) Request dismissal under regulation 5.5(1)
The Regulations make specific provision for dismissal of an opposition (regulation 5.5(1)). This provision has already received consideration in the cases of L'Air Liquide, Societe Anonyme pour l'Etude et l'Exploitation des Procedes Georges Claude v The Commonwealth Industrial Gases Limited, supra, and Elkem A/S v Borden, Inc. (Patent Office decision of 27 April 1992 concerning patent application number 615288). The hearing officers in those cases concluded that dismissal is only available when a ground is obviously unsustainable on the face of the particulars.
The time for requesting dismissal is prescribed by the Regulations as within one month of being served with a copy of the statement of particulars.
These options are clear. However, there are also options in between these two extremes.
(c) Direction to amend in a specified way
A possibility that was argued on behalf of Mobay is that an applicant could request the Commissioner to give a direction to the opponent to amend its particulars in a specified way. This would seem to place the Commissioner in the position of not just regulating the progress of the opposition, but of determining the case that the opponent will argue. This is not the proper role of the Commissioner in an opposition proceeding. The Commissioner is the administrator of the system, with a responsibility for keeping the opposition moving efficiently, and the arbiter in the dispute. If the Commissioner also determines what the wording of the particulars is to be, he or she is moving into the area which is the sole province of the opponent. This would be contrary to the clear intention of the Act. The only time that the Commissioner can intrude into the province of the opponent is if the particulars are totally inadequate, and then he or she can dismiss the opposition.
The same sentiment was expressed by Bowen LJ in Knowles v Roberts (1888) 38 Ch.D. 263 at pages 270-271:
"It seems to me that the rule that the Court is not to dictate to parties how they should frame their case, is one that ought always to be preserved sacred. But that rule is, of course, subject to this modification and limitation, that the parties must not offend against the rules of pleading which have been laid down by the law; and if a party introduces a pleading which is unnecessary, and it tends to prejudice, embarrass, and delay the trial of the action, it then becomes a pleading which is beyond his right."
Consequently, I do not believe that a direction to amend in a specified way is available under the Regulations.
(d) Further and better particulars
An option which is available in court proceedings is to request that the other party provide further and better particulars (see for example order 12, rule 5 of the Federal Court Rules). There is no express provision in the Patents Regulations for further and better particulars. However, further and better particulars are a logical part of a system of particulars, as they provide a simple mechanism to correct deficiencies in particulars. The amendment provision of regulation 5.9 provides a mechanism for inserting improved particulars. This differs from directing that an applicant amend in a specified way because the nature and form of the amendment is up to the applicant. Thus, further and better particulars are entirely consistent with the scheme set up by the Regulations.
A direction for further and better particulars should specify the time within which the opponent is to reply, and impose terms on the opponent in the event of its failing to respond. Suitable terms could be a direction that the opponent will be precluded from arguing in support of those grounds for which particulars were ordered but not delivered. A similar order is available to the courts (see Wilson v Wilson (1952) 69 WN (NSW) 358). This direction is not the same as a dismissal, because the ground remains, and could be supported by subsequently amending the particulars.
The question of when it is appropriate to request further and better particulars rather than dismissal could be resolved in the way suggested by B.C.Cairns in Australian Civil Procedure (1985) at page 116:
"A distinction must be drawn between a failure to plead a material fact with sufficient particularity and a failure to plead a material fact at all. Failure to plead a material fact at all may not be remedied by particulars. But where a material fact is pleaded, but not with sufficient particularity, then it is proper for it to be supplemented by particulars."
(e) Direction to strike out particulars
At the hearing, the possibility of a direction to strike out some of the particulars was raised. I do not believe that this is possible. This direction would amount to the Commissioner giving a self direction to amend the statement of particulars. It is illogical for the Commissioner to direct himself or herself. Alternatively, this direction would place the Commissioner in the position of determining the case that the opponent will argue, which I considered inappropriate under the heading of directions to amend in a specified way. This is not the proper role of the Commissioner in an opposition proceeding.
(f) Other directions
Other directions were not argued at the hearing. As a consequence I make no comment as to whether other directions are available.
I conclude from this analysis that in the case of inadequate particulars, an applicant has four options:
(i)do nothing, and accept the fact that evidence in support may overcome the inadequacies;
(ii) request dismissal under regulation 5.5(1);
(iii) request a direction for further and better particulars under regulation 5.10(1); or
(iv)request some other direction, excluding a direction to amend in a specified way or a direction to strike out some particulars.
The allowability of options (ii), (iii) and (iv) will depend on the facts of the case.
3. What directions can be given
A final question that I must consider is whether the Commissioner can issue a direction which was not specifically sought by either party. I will look at the words of the Regulations for guidance in this matter. I start with the wording of regulation 5.10(1): "The Commissioner may ... give a direction". It is not "the direction", or "the direction requested" that the Commissioner may give. The language seems to leave it open to the Commissioner to decide what direction should be given.
I will also consider the words of regulation 5.10(5):
"(5) The Commissioner must not give a direction under subregulation (1) or grant an application under subregulation (2) or (4) unless the Commissioner:
(a)if he or she proposes to grant an application by a party‑is reasonably satisfied that the other party has been notified of the application; and
(b)if he or she proposes to act on his or her own motion‑ensures that the parties are notified of the proposed action; and
(c) in either case:
(i) gives the parties a reasonable opportunity to make representations concerning the application or proposed action; and
(ii) is reasonably satisfied that a direction, an extension of time or the serving of further evidence is appropriate in all the circumstances."
The parties have the right to be informed of an application or proposed action, and to make representations concerning the application or proposed action, but not the specific directions that the Commissioner proposes to give. If it was intended that the proposed directions had to be stated to the parties, and must be available to be debated by the parties, then the regulation could have said this.
I believe that this is the only workable conclusion. A party who comes to the Commissioner seeking guidance should not have to know in advance the direction that it seeks. The subject on which they seek directions must be clear, but the final direction will be dependant on all the facts as put to the Commissioner. For instance, if a party indicates that it seeks directions as to the time limits and formalities for undertaking some course of action, that would be sufficient. The Commissioner could then give the directions that seem appropriate in order to facilitate the smooth operation of the system. To do otherwise would make the process unduly complicated. However, it would assist the Commissioner if the party was to file a draft of the directions that it believes are appropriate, and if possible gains the agreement of the other party before the directions hearing.
As a consequence, I believe that I can give any direction available under the Act and Regulations, so long as it is on the subject which has been brought before the Commissioner.
4. Application to the facts
I have already stated that I believe that the particulars are inadequate, although I do not agree with all the problems identified by the applicant. I will now apply the law as I have stated it to the facts of this case. The applicant has requested a direction to amend in a specified way, which is not available. Consequently, I cannot give the direction that the applicant has sought. I consider that the subject put before me is the inadequacy of the particulars, and that I can give such directions as are appropriate to resolve this issue.
The directions that I believe are appropriate in relation to each of the grounds of opposition are as follows:
a)Sections 59(1)(c) and 59(1)(d): There is no support for these grounds of opposition. Consequently, the requirements for dismissal laid down in the L'Air Liquide decision, supra, have been satisfied. However, this confronts me with two questions: can I issue an order for dismissal under regulation 5.5(3); and secondly, should I issue such an order? I will only need to refer to my second question, because I believe that I should not dismiss these grounds of opposition. I believe that the onus of seeking dismissal is firmly placed on the applicant, and that the time for seeking dismissal is carefully prescribed. If I was to dismiss these grounds of opposition, then it would be open to any applicant to use a request for directions to present evidence that an opposition should be dismissed, and request dismissal at any time. This would make a mockery of the time limit in regulation 5.5(1). The exercise of the power to dismiss under regulation 5.5(3) is discretionary, and I do not believe that this is an appropriate case for dismissal.
There is a possibility that the opponent will seek to amend its particulars in order to provide support for these grounds of opposition. The absence of any support for these grounds in the statement of particulars as originally filed would be a factor that the Commissioner would have to consider in assessing whether the applicant would be unduly prejudiced by the amendment (regulation 5.9(2)(e)).
I give no direction with regard to these grounds.
b)Section 59(1)(e): Although the particulars are unnecessarily wordy, they do clearly reveal that the ground is based on five documents. No further particulars are required for these documents. The other possible documents are completely unidentified, so a direction for further and better particulars is not appropriate. I have no power to strike out, or direct amendment to, the particulars. Consequently I give no direction with regard to these particulars, and they must stand as they are.
c)Section 59(1)(f): Although the particulars are unnecessarily wordy, they do clearly reveal that the ground is based on five documents and two items of knowledge, use and sale. I have no power to strike out, or direct amendment to, the statements at points (h) or (i) of the particulars, and they must stand as they are.
The particulars do not identify which points relate to analogous use, and which relate to a collocation of known integers. To this extent, the particulars given are inadequate, and do not inform the applicant of the case to answer. Consequently, a direction for further and better particulars as to this aspect of the particulars is apprpriate, and I will give this direction.
I believe that four weeks is an appropriate time for the opponent to respond to this direction. If the opponent chooses not to respond to this direction, then the particulars will be inadequate in spite of an invitation to correct them. In this situation I believe that it would be appropriate to give a direction that the ground is not available for the opponent to argue at the hearing of the opposition.
d)Section 59(1)(g): The evidence of common general knowledge at point (c), and the suggestion of further particulars at point (d), are unnecessary. I have no power to strike out, or direct amendment to, the statements at points (c) or (d), and they must stand as they are.
e)Section 59(1)(h): Although the particulars are unnecessarily wordy, they do clearly reveal that the ground is based on five documents and two items of knowledge, use and sale. I have no power to strike out, or direct amendment to, the statements at points (h) or (i) of the particulars, and they must stand as they are.
f)Section 59(1)(i): Although the particulars are unnecessarily wordy and argue points of evidence, I have no power to strike out, or direct amendment to, these particulars, and they must stand as they are.
g)The statements of locus and relief sought: The statement of relief sought is unnecessary, but does not prejudice or embarrass the fair hearing of the action. I have no power to strike out, or direct amendment to, this information. The statement of locus is a material fact in the opposition.
conclusions
The particulars filed by the opponent do not conform with the requirements for particulars.
I do not have the power to give a direction to the opponent to amend its statement of particulars in the way specified by the applicant. I do not consider that it would be appropriate to give an order for dismissal under regulation 5.5(3) in the present situation.
I direct the opponent to file further and better particulars concerning which points of the particulars of section 59(1)(f) relate to each of the two arms of the ground of opposition within four weeks of the date of this decision. If a satisfactory response is not filed within that time, I will give a direction that the ground of section 59(1)(f) is not available for the opponent to argue at the hearing of the opposition.
I further direct that further and better particulars be provided by amending the statement of particulars, under regulation 5.9, by filing a new statement of grounds and particulars incorporating the amendments, and that a copy be served on the applicant.
A consequence of this decision is that a deficient statement of particulars will be allowed to stand largely unaltered. While this is unfortunate, it does not make the opposition procedures unworkable.
costs
Both parties agreed that costs should follow the event. I have refused to give the directions sought, but I have found that the particulars as filed are inadequate, and I have given a direction to the opponent. As a consequence, I feel that each party should bear its own costs. I make no award of costs.
(S.D.BARKER)
Delegate of the Commissioner of Patents
Patent attorneys for the applicant : Davies Collison Cave, Sydney
Patent attorneys for the opponent : Phillips Ormonde & Fitzpatrick, Melbourne
30
2
0