Novogen Research Pty Ltd v Indena Spa

[2000] APO 7

OFFICIAL NOTICE

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Application  :          No. 683838 in the name of Novogen Research Pty Ltd

Title:          Health supplements containing phyto-oestrogens, analogues or metabolites thereof.

Action:          Application for extension of time by Novogen Research Pty Ltd to serve evidence-in-answer and objection thereto by Indena S.p.A.

Decision:          Issued            .

Abstract

The applicant has not provided a sufficient explanation for an extension of time in which to serve its evidence-in-answer. The public interest in determining a serious opposition on its merits and the applicant's interest would be served by allowing the extension of time in order to validate the serving of the partial evidence-in-answer and to allow the serving of the proposed further declaration. While any undue delay in the proceedings would not be in either the public interest or the opponent's interest, there is likely to be a delay in any case to allow all the oppositions on file to be heard concurrently.

The extension of time from 24 November 1999 to 24 December is allowed.

As the period requested for the extension of time has since expired and no further requests have been made for extension of time to serve evidence-in-answer, the period for serving evidence-in-answer is now completed. The time for serving evidence-in-reply will start from the date of this decision. 

The extension of time to serve evidence-in-answer was allowed despite the fact that the applicant did not justify the extension of time in which to serve its evidence-in-answer. Costs awarded against the applicant Novogen Research Pty Ltd.

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Patent Application No. 683838 by Novogen Research Pty Ltd and opposition thereto by Indena S.p.A. and an objection to an application for an extension of time in which to serve evidence-in-answer.

BACKGROUND

Patent Application number 683838 was filed on 19 May 1993 by Graham Edmund KELLY, who is also the inventor. The application was advertised accepted on 27 November 1997. The application was subsequently assigned to Novogen Research Pty Ltd (hereinafter referred to as Novogen).  Indena S.p.A. (hereinafter referred to as Indena) filed a notice of opposition to the grant of a patent on 26 February 1998, and a statement of grounds and particulars was served on 26 May 1998. An amendment to the statement of grounds and particulars was allowed on 9 December 1998.

The evidence in support of the opposition was due to be served on 26 August 1998.  Indena was allowed several extensions of time to serve evidence in support.  Indena completed the service of its evidence in support on 24 November 1998.

The evidence-in-answer was due to be served on 24 February 1999. Novogen has sought and received extensions of time from 24 February 1999 to 24 November 1999. On 24 November 1999, Novogen filed a further application for an extension of time of one month to 24 December 1999 in which to serve the evidence-in-answer. Indena objected to the grant of an extension of time on 9 December 1999.

The matter was set down for a hearing in Canberra on 17 December 1999.  Both parties appeared by telephone at the hearing.

Novogen has served partial evidence-in-answer on 26 November 1999 in the form of a declaration by Dr Graham Kelly. Novogen has not requested any further extension of time.

THE APPLICATION FOR EXTENSION OF TIME

The application provides the following reasons for the need for further time in which to serve evidence-in-answer:

“In our application for extension of time dated 25 October 1999 we stated that, within the term expiring on that date, significant progress had been made in the preparation of our Evidence-in Answer. The principal declaration being filed on behalf of Applicants, by the Inventor, Dr Graham Kelly, has since been checked by Dr Kelly and approved. It awaits only the signature of Dr Kelly, who has been unavailable in recent days, and updated details of his curriculum vitae which is to constitute an exhibit to the declaration.  …

In addition to the above, there has also been a last minute significant development in that we have at last succeeded in establishing contact with Dr Stephen Barnes, a well known researcher skilled in the art of the invention. Dr Barnes has agreed to present a declaration on our behalf. The significance of this development is that Dr Barnes is the co-author of several articles which have been cited against the present application in the several opposition actions directed against the application. The support of Dr Barnes is thus of the utmost importance. The supplementary declaration, to which reference was made in the application for extension of time dated 25 October 1999, is being set aside in favour of the declaration of Dr Barnes.  …

In seeking one further month we positively say that this will be the last extension requested.”

SUBMISSIONS

The submissions by Novogen expanded on the reasons set out in their application for an extension of time.  The current opposition is one of four oppositions which Novogen is responding to. The opponent’s evidence in support of the current opposition alone comprises 7 declarations amounting to 89 pages and 51 exhibits. The applicant claims this is an exceptional case with a "mammoth" amount of review. They stated that the declaration of Dr Kelly had been finalised and served only 3 days after the request for extension. With respect to the declaration of Dr Barnes they stated that they had contacted him frequently but that until November 1999 he had been unable to help due to his other commitments.

Indena objected to the extension in the following terms

1.   The applicant has not discharged its onus of justifying the need for an extension of time. The application for an extension of time does not provide adequate reasons to explain why the evidence could not have been served by 24 November 1999, and has provided no information to suggest that the evidence could not have been served earlier due to unforseen delays or difficulties.

2.   The service of the supplementary declaration by Dr Stephen Barnes, as opposed to the declaration of any other person skilled in the art, is unlikely to have a significant impact on the consideration of the opposition on its merits, and therefore, it is not in the public interest to further delay the service of the evidence-in-answer merely because the applicant has decided to change experts.

3.   The applicant has twice been advised of the opponent's concerns about the delay in serving the evidence-in-answer (in the letters dated 6 September 1999 and 4 November 1999 from Griffith Hack).

4.   Any disadvantage which would accrue to the applicant by refusing the extension of time in whole, or in part, would result from the applicant's own delay in preparing the evidence-in-answer in a timely manner.

5.   Despite the applicant's and its attorney's assertions, there is no certainty that this will be the final extension of time sought by the applicant.

DECISION

The law on granting an extension of time to serve evidence

The power to grant an extension of time to serve evidence is discretionary.  Regulation 5.10(2) of the Patents Regulations provides that:

"(2) The Commissioner may:

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

(b) on such reasonable terms (if any) as the Commissioner specifies; extend the time within which the party may take a step prescribed in this Chapter, not being a step that is taken under regulation 5.3 or paragraph 5.4(1)(a)."

Time for service of evidence falls under regulation 5.8 and thus regulation 5.10(2) is applicable in the present case.

The conditions under which the Commissioner is to exercise this discretion are set out in Regulation 5.10(5):

"(5) The Commissioner must not……….grant an application under sub-regulation (2) unless the Commissioner:

(ii) is reasonably satisfied that…..an extension of time is appropriate in all the circumstances."

Regulation 5.10(5) also includes as prerequisites to any decision that the Commissioner must ensure that the other party has been notified, and that both parties have had an opportunity to make representations.  These matters are not in question in this action.

The law on extension of time provisions, and more specifically the law on regulation 5.10 of the Patents Regulations 1991, has been considered and summarised by Burchett J in Ferocem Pty Ltdv Commissioner of Patents (1994) 28 IPR 243 and more recently by Sackville J in A Goninan &Co Ltd v Commissioner Of Patents (1997) 38 IPR 213, both of which were referred to by Indena and Novogen. In both of these decisions it was stated that regulation 5.10 confers a broad discretion, which cannot be reduced to an imperative compliance with particular requirements.  On the contrary it is necessary to give proper, genuine and realistic consideration to all relevant aspects of the case. Relevant aspects include:

(a) Reasons provided on why an extension of time to serve evidence-in-answer is needed

Relevant reasons include explanations on any delays in serving evidence to date. The reasons why the evidence was not served in time are a relevant consideration, but a satisfactory explanation is not a mandatory requirement.

(b) The public interest

The public interests are not all ranged on the same side.  On the one hand are the expeditious disposal of matters in the Patent Office, and questions of costs, efficiency, and of insistence of standards maintained. On the other, the public interest in determining a serious opposition on its merits is a relevant consideration.

(c) The interests of the parties involved in the opposition

Disadvantages to either the applicant or the opponent are relevant considerations.

Reasons provided on why an extension of time to serve evidence-in-answer is needed

The reasons why an extension is sought in relation to Dr Kelly's declaration do not seem to me to be well justified. In their previous request for an extension of time the applicant stated that the principal declaration by Dr Kelly had been prepared and was currently being reviewed. A further short extension of one month up until the 24 November 1999 was required to finalise and serve this evidence. The applicant has not provided any reasons why this could not have been completed within the previous extension of time.

The reasons for the delays given at the hearing (the large amount of material to review) may well have justified the earlier extensions of time. However the request for extension dated 24 October stated that the evidence was nearing completion. Thus it would appear that these reasons were no longer relevant to the current extension of time sought.

With regard to the declaration of Dr Barnes, the applicant asserts that Dr Barnes had been contacted frequently but he had not been in a position to help until November 1999. However no details of these contacts have been given.  In their application for extension of time, the applicant also referred to a supplementary declaration (which was referred to in an earlier extension of time) being set aside in favour of the declaration of Dr Barnes.  No further information on the reasons why this supplementary declaration was not adequate and should be put aside in favour of the Dr Barnes declaration or on the content of Dr Barnes declaration have been given. While it appears that adequate reasons why the evidence was not served in time have not been given, I note that a satisfactory explanation is not a mandatory requirement.

The public interest

Sackville J recently considered the significance of public interest in cases where there has been a lapse in procedure at p222 in A Goninan & Co Ltd v Commissioner of Patents (supra)

"The Commissioner must take into account the public interest in determining a serious opposition on its merits.  The Commissioner must give consideration to that aspect of the public interest even where the party has failed to comply with the procedural requirements specified in the regulations.  However as Burchett J made clear in Ferocem, the public interest must be weighed with and against other considerations.  It is not the only factor considered."

The applicant has served partial evidence in the form of a declaration by Dr Kelly, the inventor of the current application. Without considering in detail the substance of this declaration, it does appear to address the evidence-in-support and it appears on the face of it, that it would be likely to have a significant impact on the outcome of the opposition.

In relation to the declaration by Dr Barnes that is proposed to be served, the applicant asserts that Dr Barnes' evidence is central to the case. They state that he is a well-known researcher skilled in the art of the invention as well as co-author of two of the documents cited. They further submitted that his evidence is relevant to refuting the Regtop declaration, which they state is one of the key declarations in the evidence in support. The Regtop declaration refers to Dr Barnes' articles and places much weight on them. Hence, the applicant asserts that Dr Barnes' declaration goes to the heart of merit of the opposition.

The opponent submitted that the supplementary declaration by Dr Stephen Barnes, as opposed to the declaration of any other person skilled in the art, is unlikely to have a significant impact on the consideration of the opposition on its merits, and therefore, it is not in the public interest to further delay the service of the evidence-in-answer merely because the applicant has decided to change experts.


Dr Barnes is co-author of only 2 of the 33 citations particularised in the statement of grounds and particulars. As Dr Barnes' work has been cited he is clearly working in a relevant field. While the significance of his evidence over that of any other worker in the field may be argued, it appears that his evidence, as a worker in the field and as a person who's work has been cited will be likely to be relevant. I must further consider whether this evidence is likely to have a significant impact on the outcome of the substantive opposition. As the substance of Dr Barnes' declaration is unknown it is not possible for me to make a judgement on this. However Dr Barnes' evidence may be considered to be independent in so far as the only other declaration in evidence-in-answer is from the inventor whose declaration may not be considered independent. Therefore I think that it is possible that Dr Barnes' evidence would be likely to have a significant impact on the outcome of the opposition.

I have further to consider the effect of delay in serving the evidence-in-answer on the public interest. There are three other oppositions to this application none of which have concluded the evidence-in-answer stages. If the extension were not allowed then the substantive opposition on this case would still be likely to be delayed to allow the oppositions to be heard at the one time. This allows for the efficient administration of the oppositions and ensures a consistent and just outcome of the oppositions. It would not be in the best interest of any party if an application were to be deemed "valid" and "invalid" in different proceedings. It would not be appropriate to allow an extension of time merely because the other proceedings have not been concluded. The other proceedings may be withdrawn at any point allowing the current proceeding to be heard forthwith, if the evidence stages have concluded. Alternately allowing extensions on one proceeding simply because the other proceedings have not concluded could lead to each of the proceedings being extended and an undue prolongation of the proceedings.  

In this case, I believe that the public interest in determining a serious opposition on its merits and the likelihood that a delay will not unduly protract the proceedings due to the presence of the other oppositions, weigh in favour of allowing the extension.

The interests of the parties involved in the opposition

The applicant’s interests are in having the extension allowed so that their evidence-in-answer will be considered at the substantive hearing.  The opponent’s interests are generally the opposite. While the opponent's interests are in having the matter concluded promptly, in this case there are three other opposition proceedings. As stated above, it is likely that all four oppositions will be heard concurrently. Therefore while the other opposition proceedings are not concluded it is likely this case will be delayed also.

The opponent further submitted that any disadvantage which would accrue to the applicant by refusing the extension of time in whole, or in part, would result from the applicant's own delay in preparing the evidence-in-answer in a timely manner.

While I have some sympathy for this point of view, I have also to consider the degree of prejudice to Novogen and to the public interest if the applicant is shut out altogether. Hence in this case the applicant's interest in being allowed an extension of time to serve evidence-in-answer, outweighs the opponent's interest in having the matter concluded promptly.

CONCLUSION

Taking all of the above circumstances into account, I find that the applicant has not provided a sufficient explanation for an extension of time in which to serve its evidence-in-answer. The public interest in determining a serious opposition on its merits and the applicant's interest would be served by allowing the extension of time in order to validate the serving of the partial evidence-in-answer and to allow the serving of the Barnes' declaration. While any undue delay in the proceedings would not be in either the public interest or the opponent's interest, there is likely to be a delay in any case to allow all the oppositions on file to be heard concurrently. On balance, I allow the extension of time from 24 November 1999 to 24 December 1999.

The period requested for the extension of time has since expired and the declaration by Dr Barnes has not been served. Also no further requests have been made for extension of time to serve this declaration. As the period for serving evidence-in-answer is now completed, the time for serving evidence-in-reply will start from the date of this decision. 

COSTS

The power to award costs is based on section 210 and regulation 22.8. The power to award costs is discretionary, so I must take into account all relevant considerations.

The applicant submitted that costs should follow the event. The opponents submitted that even if an extension of time was granted, costs should not be awarded to the applicant since the explanation of the delay which has been provided by the applicant does not justify the extension of time. 

I have allowed an extension of time to serve evidence-in-answer despite the fact that the applicant did not justify the extension of time in which to serve its evidence-in-answer.  In these circumstances, I award costs against the applicant Novogen.

Jodi Lawler
Delegate of the Commissioner of Patents

Patent attorneys for the applicant  :  Davies Collison Cave, Sydney

Patent attorneys for the opponent   : Griffith Hack, Sydney