Novozymes A/S v Danisco A/S
[2011] APO 105
•22 December 2011
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Novozymes A/S v Danisco A/S [2011] APO 105
Patent Application: 2005221890
Title:Protein
Patent Applicant: Danisco A/S
Opponent: Novozymes A/S
Delegate: Nicole Howard
Decision Date: 22 December 2011
Submissions Received: 16 November 2011, 23 November 2011 and 24 November 2011
Catchwords: PATENTS – Reg 5.10 extension – evidence in support – extension granted – costs awarded against applicant
Representation: Patent applicant: Brendan Peachey, Patent Attorney of Wrays, Perth
Opponent:Rebekah Gay, Patent Attorney of Shelston IP
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2005221890
Title:Protein
Patent Applicant: Danisco A/S
Date of Decision: 22 December 2011
DECISION
Extension of time to serve evidence in support granted until 20 January 2012. Costs awarded against the applicant, Danisco A/S.
REASONS FOR DECISION
BACKGROUND
1.Patent application 2005221890 in the name of Danisco A/S (hereafter Danisco) was filed on 10 March 2005. The application was advertised accepted on 22 July 2010. Novozymes A/S (hereafter referred to as Novozymes) filed a notice of opposition under Section 59 of the Patents Act 1990 on 20 October 2010 and a Statement of Grounds and Particulars (hereafter SGP) on 20 January 2011. Following a request from Danisco, on 2 March 2011, the Commissioner directed Novozymes to file further and better particulars with respect to novelty and inventive step to identify disclosures considered relevant by Novozymes in the twelve documents cited against the Patent Application. This was done on 11 May 2011.
2.The application relates to fungal lipolytic enzymes and to polynucleotides encoding them. The lipolytic enzymes are used in the preparation of improved food products including bakery products.
3.Two extensions of time to file evidence in support (EIS) under Regulation 5.10(2) of the Patents Regulations 1991 have been allowed to date. On 20 October 2011 a request for a third extension until 20 January 2012 was filed. Danisco have objected to this request.
4.Submissions were received from both Danisco and Novozymes on 16 November 2011. Responding submissions were received from Danisco on 24 November 2011 and from Novozymes on 23 November 2011. Novozymes have provided two Statutory Declarations by Rebekah Gay in support of their request for extension [Gay No. 1 and Gay No. 2].
The application for extension of time
The first two extensions
- Novozymes originally delayed service of evidence in support because of difficulties in locating suitable expert witnesses and obtaining their evidence, taking additional time to prepare additional particulars in the SGP and delays caused by the European Summer holidays.
- At the end of these extensions no evidence had been filed.
The present extension
- Novozymes asserts that three expert witnesses have been engaged and they have been progressing with their evidence. They submit progress has been slower than anticipated because of;
· Initial difficulty in locating suitable expert declarants
· The need to respond to the Applicant’s request for further and better particulars
· The unavailability of the declarant Professor Nicolas for almost two months
· The interruptions caused by the declarant Professor Deeth’s ill mother
· The extent of evidence being prepared
- Novozymes explain that three expert witnesses have been engaged and that significant progress has been made in preparation of their evidence in support. The following evidence has now been adduced:
· Statutory Declaration by Professor Hilton Deeth dated 8 November 2011 together with Annexures HCD-1 to HCD-9
· Statutory Declaration by Rebekah Frances Gay dated 15 November 2011 together with Annexures RFG-1 to RFG-14
· Statutory Declaration by Professor Jacques Nicolas dated 30 November 2011 together with Annexures JN-1 to JN-16
- Novozymes have also indicated that they reasonably expect to complete their evidence in support within the current extension if allowed. They submit the remaining evidence to be adduced is as follows
· A further and final declaration from Professor Deeth commenting on the prior art and the Opposed Application. This evidence will address the issues of novelty, inventive step, utility and clarity
· A declaration from Henrik Ostdal, an employee of Novozymes providing an analysis of technical data contained in the application in relation to the grounds of utility, fair basis and clarity.
The Gay declarations attest that;
· Professor Deeth has begun working on his final Declaration
· Mr Ostdal’s declaration is close to being finalised and the amount of further work required is not substantial.
The law on extensions of time
10.The time for serving evidence can be extended under regulation 5.10(2):
(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).
- This provision must be read in conjunction with 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 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, and extension of time or the serving of evidence is appropriate in all the circumstances.
12.An extension can only be granted if the Commissioner is reasonably satisfied that it is appropriate. In exercising this discretion I am guided by the decisions of Burchett J in Ferocem Pty Ltd v Commissioner of Patents (1994) AIPC 91-057; 28 IPR 243, Sackville J in A Goninan & Co Ltd v Commissioner of Patents (1997) AIPC 91-330; 38 IPR 213 and Goldberg J in National Starch & Chemical Co v Commissioner of Patents (2001) AIPC 91-697, 50 IPR 398. These decisions establish that:
a) The power is discretionary: Regulation 5.10 confers a broad discretion, which cannot be reduced to imperative compliance with particular requirements. It is necessary to give genuine and proper consideration to all relevant considerations. (Ferocem at AIPC 38,208; IPR 247-8, Goninan at AIPC 39,434; IPR 220)
b) Explanation of delay: The reasons why the evidence was not served earlier are a relevant consideration, but a satisfactory explanation is not a mandatory requirement. (Ferocem at AIPC 38,207-8; IPR 247)
c) The public interest: The public interest in determining a serious opposition on its merits is a relevant consideration. (Goninan at AIPC 39,435-6; IPR 222)
·In order to do this, it is necessary for the Commissioner to form a view as to the nature of the evidence that it is sought to adduce, and the significance of that evidence for the opposition proceedings. (Goninan at AIPC 39,438; IPR 225-6)
·The significance of the evidence is assessed having regard to any relevant material available, not just the evidence itself. (National Starch at [33])
·The public interest is not protected merely because some evidence has already been served. (Goninan at AIPC 39,438; IPR 225)
d) The interests of the party seeking the exercise of discretion: The interests of the party seeking the exercise of discretion are a relevant consideration. (Ferocem at AIPC 38,208; IPR 247)
e) The interests of other parties: It is relevant to consider the disadvantage to the other party of delays in determining the opposition, and the effect of delays on the efficient and orderly administration of the Patents Office. (Ferocem at AIPC 38,208; IPR 247, Goninan at AIPC 39,436; IPR 222)
Explanation of the delay
13.There have been several factors in the present delay. The reason for Novozymes’ original delay, and the reasons for the first extension related to difficulties in locating and engaging one or more suitable expert witnesses and amending the SGP. After the first extension their chief witness was engaged.
14.Further preparation of evidence was delayed for several reasons. The first would appear to reside in a ‘knock-on’ effect from the initial delay in locating Professor Deeth and Professor Nicolas. Novozymes submit that the ‘key reason for this is that many of the people with suitable qualifications and expertise to provide expert evidence work in industry, rather than academia. These people are difficult to locate, as their professional details are not published on publicly available websites. … Most of the people working in industry were unwilling or unable (because of company policies) to become involved in a dispute between two other companies.’ I think that while it may seem counter-intuitive that the opponent would not be able to easily identify an expert witness in its own field, it must be remembered that it is preferable to find somebody who is completely independent from the parties of the opposition, and that this may take considerable time. Ms Gay has now clearly outlined the steps she has taken in searching for a witness. Notwithstanding this reason being the subject of the first two extensions, I am satisfied it is reasonable to conclude that this still has at least some bearing on the present delay.
15.The third extension further refers to the evidence of Mr Ostdal as being delayed. Mr Ostdal is an employee of the opponent. Ms Gay attests that during discussions with Professor Deeth she formed the view that it would be useful for Mr Ostdal to provide additional evidence. While I appreciate that Ms Gay made this decision well into the preparation of evidence, it seems to me that it would have been a relatively simple matter to locate him in the first place and consequently I will accord little weight to this reason in my decision.
16.Novozymes argue that the time taken to amend the SGP has contributed to the present delay. Again, one may argue that this did cause a ‘knock-on’ effect from the initial extension. However, as submitted by Danisco, I see no reason that the evidence in support could not have been progressed concurrently with the extra work on the SGP. The onus to appropriately resource the prosecution of an opposition lies with the Opponent. Indeed the amendments to the SGP were completed quite some time ago on the 11 May 2011. I do not believe it reasonable to conclude that this has contributed to the present delay. Novozymes also submit the extent of the evidence being prepared is significant and has contributed to the delay. I note that there are 12 citations and 17 matters asserted to be common general knowledge in the opposition. I do not consider this amount of evidence to be out of the ordinary and again do not believe it reasonable to conclude that this has contributed to the present delay.
17.The remaining explanations Novozymes have provided in support of their request for extension relate to disruptions caused by the illness of Professor Deeth’s mother and the unavailability of Professor Nicolas for two months. The illness of a declarant’s family member is outside the control of the Opponent and clearly may extend the time required to prepare evidence, in particular given the primacy of Professor Deeth’s evidence. Similarly, the late notification of Professor Nicolas taking two months leave is not a matter directly under the control of the Opponent and has compounded the delay. (I note that this is in stark contrast to the prosecuting patent attorney taking two weeks annual leave which I do not consider to be a reasonable justification for any delay as it is common and expected practice for practitioners to delegate work to others.)
18.Danisco’s objection centres around Novozymes not providing a sufficiently detailed explanation in their application for the extension. In particular, that a “full and frank” disclosure of the circumstances surrounding the delay was not provided. I agree that the initial amount of detail provided by Novozymes was relatively brief. However given the details now provided I am satisfied that on the whole, a full and frank explanation for the delay has been provided. The location of suitable experts and unexpected disruptions caused by illness and leave of experts are the contributing factors and the delay is reasonable. Even if I am incorrect on this point, there is no requirement under Regulation 5.10 for a “full and frank” disclosure. “Full and frank disclosure” is the test used for applications for extensions of time made under s 223 of the Act. The discretion to grant extensions under Regulation 5.10 is a broad one, and while a satisfactory explanation is one relevant consideration, it is not a mandatory requirement.
The interests of the parties
19.Without the extension Novozymes will not have served any evidence. As a consequence, if no extension is granted then Novozymes would effectively be shut out from arguing their case. If a shortened extension of two months is granted, Novozymes will not have served any expert declarations relating to the prior art documents, utility and clarity, and would be severely hindered in their prosecution of the opposition. Novozymes interests clearly favour the extension being granted. Danisco have an interest in the opposition being determined quickly. The allowance of the present extension will add (in total) 9 months to the evidentiary process, a period not uncommon in proceedings such as these.
The public interest
20.The public interest in determining a serious opposition on its merits is assessed by considering the nature and significance of the evidence that will be served (Goninan at AIPC 39,438; IPR 225-6). Two statutory declarations from expert witnesses have now been completed. The evidence expected to be filed in the near future relates to the issues of novelty, inventive step, clarity and utility. This evidence is particularly significant in that without it, there would be no or little evidence pertaining to these grounds. I am satisfied that a serious opposition is in train and the public interest favours the grant of an extension of time.
The balance of considerations
21.Novozymes have on the whole provided a reasonable explanation for the delay. The public interest and the interests of Novozymes favour granting the extension because the evidence now adduced appears to be highly relevant to the opposition. Indeed, the opposition is unlikely to be considered on its merits without it. Danisco’s interests are against the extension. Novozymes have filed two declarations since the request for extension and attest that the remainder will be served within the time frame requested. On balance it is appropriate to grant the extension.
22.I grant the extension of time for serving evidence in support until 20 January 2012.
Costs
23.Costs normally follow the event. On this occasion, I see no reason to depart from this approach. I award costs against the applicant Danisco according to Schedule 8 of the Patents Regulations 1991.
Nicole Howard
Delegate of the Commissioner of Patents
0
0
0