Nufarm Australia Limited v Corteva Agriscience LLC
[2023] APO 40
•30 June 2023
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Nufarm Australia Limited v Corteva Agriscience LLC [2023] APO 40
Patent Application: 2019253885
Title:Compounds derived from herbicidal carboxylic acids and tetraalkylammonium or (arylalkyl) trialkylammonium hydroxides
Patent Applicant: Corteva Agriscience LLC
Opponent:Nufarm Australia Limited
Delegate:Felix White
Decision Date: 30 June 2023
Hearing Date: 9 February 2023, by videoconference
Catchwords: PATENTS – herbicidal compositions for reducing vapour drift – opposition under s59 – estoppel – resolution of ambiguity of the term “choline” – claims 1, 2, 5, 8, 9, 10 and 11 lack novelty and inventive step – costs awarded – submissions sought on appropriateness of providing applicant with opportunity to amend
Representation: Counsel for the applicant: Craig Smith SC
Patent attorneys for the applicants: Dr Karen Bentley and Dr Julie Murison of FPA Patent Attorneys
Counsel for the opponent: Benjamin Fitzpatrick
Patent attorneys for the opponent: Virginia Beniac-Brooks and Ruth Clarkson of Arcadia Intellectual Property
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2019253885
Title:Compounds derived from herbicidal carboxylic acids and tetraalkylammonium or (arylalkyl) trialkylammonium hydroxides
Patent Applicant: Corteva Agriscience LLC
Date of Decision: 30 June 2023
DECISION
Claims 1, 2, 5, 8, 9, 10 and 11 lack novelty and inventive step in view of D2. I award costs according to Schedule 8 against the Applicant. In view of the circumstances of the related cases in the patent family, I invite the parties to file submissions within one month from the date of this decision as to whether it is appropriate to provide the Applicant with an opportunity to amend the specification to overcome this finding.
REASONS FOR DECISION
Background
The present dispute, relating to an opposition under s59 of the Patents Act 1990 (“The Act”) forms part of a long-running set of disputes relating to a family of patent applications for low vapour drift herbicides.
The instant application (Australian patent application 2019253885) was filed on 25 October 2019 in the name of Dow Agrosciences LLC. A change of name to Corteva Agriscience LLC (hereinafter “the Applicant”) was received on 20 November 2021. This application represents the seventh of eight patent applications in the same patent family. The “family history” is set out below and shown graphically in Figure 1.
All members of the family claim priority to US provisional application 60/903,417, filed on 26 February 2007.
Australian patent application 2008218657 (“the original application”), which is the Australian national phase entry of PCT/US2008/002488, was accepted in 2013, and was subsequently opposed (by Nufarm Australia Limited – also the opponent of the present application, hereinafter “the Opponent”); amended shortly before the opposition was due to be heard; those amendments were in due course opposed; shortly before the opposition to the amendments was due to be heard the original application was withdrawn, on 7 March 2016.
While the above oppositions were on foot, two divisional applications had been filed, examined, and accepted: 2013203406 (accepted on 12 January 2015) and 2015200368 (accepted on 21 March 2016). I note that the claims of the ‘406 case, (“the second application”), are directed to herbicidal compositions with a narrower scope of herbicides than the presently opposed claims. In particular they do not claim 2,4-D[1] as the herbicide. The ‘368 case, (“the third application”), is directed to methods of using the compounds of the second application “… to reduce or prevent injury to non-target plants or crops nearby…”
[1] 2,4-Dichlorophenoxyacetic acid
Two further divisional applications were filed from the third application. These were 2016202508 (“the fourth application”) and 2016203677 (“the fifth application”). Once accepted, these were both opposed and those oppositions were resolved in a single decision (Nufarm Australia Limited v Dow AgroSciences, LLC [2020] APO 10 - “the first decision”). The opposition to the fourth application was unsuccessful and the opposition to the fifth application was partially successful (for reasons not related to the grounds pressed in the present opposition) and was resolved by amendment.
I note that the claims of the fourth (‘508) application were characterised by a step of isolating a product produced by reacting 2,4-D and a quaternary ammonium hydroxide, and the claims of the fifth (‘677) application were characterised by a method of applying a composition (that was defined in similar words to the presently opposed claims) to a locus of weed plants but not to a neighbouring crop.
While the opposition that led to the first decision was still on foot, a further divisional application (2017261483, “the sixth application”) was filed, examined, and opposed. A decision upholding the grounds of lack of novelty and lack of inventive step in view of JP 51-106728 (cited as “D2” in all proceedings including this one) was issued on 6 July 2022 as Nufarm Australia Limited v Corteva Agriscience [2022] APO 46 (“the second decision”). Subsequent to the second decision, the sixth (‘483) application was amended; that amendment itself was opposed, and then set aside in view of a second amendment which is currently (as of June 2023) being advertised for opposition.
The subject matter of the sixth application was, as noted by the Delegate in the second decision at 41, near identical to that of the fourth (‘508) application except that the step of isolating the reaction product had been removed.
The instant, seventh, application was filed as a further divisional application and was examined, accepted, and duly opposed after the issuance of the first decision but before the issuance of the second decision.
A further, eighth, application has been filed as a divisional from the present application and is still under examination.
Figure 1 – Patent family tree
Grounds of opposition and evidence
The Opponent’s Statement of Grounds and Particulars (“SG&P”) was filed on 22 September 2021, and included a gamut of grounds for opposition, covering essentially every heading available under sections 18 and 40 as well as lack of entitlement to priority. The SG&P also adduced 62 (sixty two) prior art documents in support of the opposition. Pursuant to a request by the applicant for dismissal of the opposition, the Commissioner directed on 23 December 2021 that four grounds be dismissed.
At the oral hearing, the only grounds pressed by the Opponent were lack of novelty and lack of inventive step in light of D2. Furthermore, at the hearing the Opponent indicated they would not press the ground of inventive step against dependent claims 3, 4, 6 and 7.[2] Only claims 1, 2, 5, 8, 9, 10 and 11 are therefore in dispute.
[2] Waiving the argument set out in the Opponent’s written submissions (“OS”) at [119]
The parties relied upon evidence as set out in the table below.
| Evidence | Declarant | Date of Declaration | Reference | Exhibits |
| In support | Phillip Maxwell Hay | 10 November 2021 | Hay #1 | PMH-1 to PMH-12 |
| In answer | Terry R. Wright | 11 February 2022 | Wright | TRW-1 to RTW-15 |
| Norman R. Pearson | 9 February 2022 | Pearson | NRP-1 to NRP-6 | |
| Sebastian Wendeborn | 11 February 2022 | Wendeborn | SW-1 to SW-3 | |
| Mei Li | 11 February 2022 | Li | ML-1 to ML-6 | |
| David G. Ouse | 11 February 2022 | Ouse | DGO-1 to DGO-7 | |
| In reply | Phillip Maxwell Hay | 14 April 2022 | Hay #2 | PMH-13 to PMH-16 |
At the oral hearing, I put it to the parties that there appeared to be considerable overlap between the declarants in the present opposition and those in the previous two decisions. The Opponent confirmed that the Wendeborn declaration was new evidence, as are the parts of Hay #2 which discuss the Wendeborn declaration.
The Opposed Specification
As a divisional application, the opposed specification is in substance identical to that of all its forebears except in the matter of the claims. The substance of the description of the opposed specification relates to reducing the volatility of carboxylic acid herbicides by reacting them with quaternary ammonium hydroxides. The contents of the description, as indeed the principles of construction and the nature of the skilled addressee has been discussed in detail in the first and second decision. I do not think there is anything helpful to add to that discussion in this decision.
As is perhaps evident from the large number of divisional applications in this family, there are clearly a number of different inventions disclosed in the specification. It is therefore most helpful to approach this opposition by looking at the invention particularly claimed in this case.
The Opposed Specification concludes with 11 claims, of which claims 1, 2, 5 and 8-11 are under contention. Claims 1 and 9 are independent and are reproduced below. The full claim set is found in an annex to this decision.
1. A herbicidal compound comprising the reaction product of a herbicidal carboxylic acid and a (tetraalkyl) ammonium hydroxide,
wherein the herbicidal carboxylic acid is 4-CA, 2,4-D, 3,4-DA, MCPA, 4-CPB, 2,4-DB, 3,4-DB and MCPB; cloprop, 4-CPP, dichlroprop, 3.4-DP, fenoprop, mecoprop, mecoprop-P, chlorazifop, triclopyr, aminopyralid, clopyralid, fluroxypyr, picloram, cyhalofop, fluazifop, haloxyfop, clodinafop, clofop, dichlofop, fenoxaprop, isoxapyrifop, metamifop, propaquizafop, quizalofop, trifop, dicamba, glufosinate or glyphosate; and
wherein the (tetraalkyl)ammonium hydroxide is a compound of the formula
wherein when R1, R2 and R3 are methyl, R4 is not methyl.
9. A herbicidal compound comprising the reaction product of choline hydroxide and 2,4-D.
Dependent claims 2, 5 and 8 provide further definition of the R groups: in claim 5 R1-3 are all methyl, but relevantly for the present opposition all these definitions encompass the structure of choline.[3] Dependent claims 10 and 11 are directed respectively to a composition of the above compounds with an agriculturally acceptable carrier, and a method of controlling undesirable vegetation by applying the above compounds to the undesirable vegetation or soil.
[3] The description at p.2 lines 25-30 defines “alkyl” as inter alia including hydroxyalkyl.
Construction
I will proceed to construe the claims in the usual way: with a generous measure of common sense, in view of the specification as a whole, taking into account common general knowledge and the perspective of the skilled worker in the art but bearing in mind that the task of construction is ultimately one for the delegate and not for any expert.[4]
[4] Per Middleton J in Eli Lilly and Company Limited v Apotex Pty Ltd [2013] FCA 214 at 139, and Bennett J in H Lundbeck A/S v Alphapharm Pty Ltd [2009] FCAFC 70 at 118–120
It is apparent that claim 1 is directed to a class of compounds which are reaction products of a herbicidal carboxylic acid and a quaternary ammonium hydroxide. The term “herbicidal” in the preamble I take to mean that the reaction product must have herbicidal[5] activity. This trivially excludes water which would be one of the reaction products of those reagents.[6] Hence I take the herbicidal compound to be a quaternary ammonium salt of one of the listed carboxylic acids. The only limitation on the ammonium moiety is that tetramethylammonium is excluded. For the carboxylic acid moiety, a list of names of known herbicidal compounds[7] is given; for the purposes of this opposition it is relevant that the list includes 2,4-dichlorophenoxyacetic acid (2,4-D).
[5] Defined in the specification at p. 4 lines 13-14 as something that “kills, controls or otherwise adversely modifies the growth of plants.”
[6] Although boiling water is quite an effective herbicide!
[7] Cf p. 3 lines 5-20 of the specification
Claim 9 is as claim 1 except that the reagents are specified as 2,4-D and choline hydroxide.
Both parties’ written submissions took the phrase “reaction product of” to be a product-by-process limitation;[8] that is they understood the claim to be directed to only compounds actually produced by reacting the respective carboxylic acid with an appropriate quaternary ammonium hydroxide. Under this construction a compound prepared via an intermediate e.g. a quaternary ammonium chloride, would not fall within the scope of the claims.
[8] Applicant’s written submissions (“AS”) at 18, OS at 30-32
At the hearing, and in a follow up letter to the parties, I put forward the view that the term “reaction product” did not necessarily involve any process step, and that a construction of the claim being a quaternary ammonium salt per se would in fact be more consistent with the first decision at 71-74.
In supplementary submissions, the Opponent endorsed this view (as prefigured in their submissions at 31). The Applicant disputed this, but indicated that should this consideration be key to the present decision, they would seek leave to amend the claims to explicitly introduce a product-by-process requirement.
In view of this, to streamline the procedure I will proceed on the basis that the claim is limited to only compounds actually produced by reacting the respective carboxylic acid with an appropriate quaternary ammonium hydroxide. As can be seen from my findings below, the Applicant’s suggested amendment would not resolve this issue.
Estoppel
Given the presence of the preceding first and second decision, the parties both made submissions on estoppel.
The Applicant’s written submissions on estoppel were only to the effect that the Commissioner and their delegates are not bound by earlier decisions, that cases should be determined based on the evidence tendered pursuant to regulations 5.7-5.9 and 5.23, and that it is jurisdictional error to treat previous decisions as findings of fact.[9]
[9] AS at 6-9
The Opponent concurred that the Commissioner is not bound by estoppel arising from previous decisions, but submitted that “The Delegate should start with the findings of fact made in the previous decisions, and then ask whether there is any evidence that contradicts those findings of fact. Where there is contradictory evidence, the Delegate will need to decide how much weight to give to each.” This quotation is taken from SNF (Australia) Pty Ltd v Ciba Specialty Chemicals Water Treatments Limited [2016] APO 8 (“SNF”) at 52. This approach is often cited when dealing with considerations of estoppel before the Commissioner.[10] I do note that in SNF the delegate was dealing with findings of fact from a court whereas in the present case, the prior decisions are from delegates of the Commissioner.
[10] For example, cited with approval in Crown Melbourne Limited [2023] APO 3 at 9
At the oral hearing, the Applicant criticised certain aspects of the reasoning in SNF and its applicability to the present case: they submitted that in SNF there was no substantial disagreement with the parties on the issue of estoppel; that the weight given in SNF to decisions of the AAT were not appropriate given that the AAT has the power to inform itself[11] whereas the evidence available to the Commissioner is regulated. The Applicant also noted the well established principle that construction is a question of law and is not a finding of fact.
[11] SNF at 50, AAT Act 1975 at 33(1)(c)
My understanding is that all the evidence tendered in the first and second decisions has also been tendered here, so prima facie there is no reason for me not to start from the point of the two previous decisions. I can however appreciate that application of patent law involves three steps: findings of fact, findings of law, and application of the law to the facts. While the first of these is the sort of thing that SNF suggests the Delegate should start with, the latter two are not. Even concepts such as establishing what a document discloses to the skilled reader requires interpretation of facts (the text of a document) through the legal construct of the “person skilled in the art”.
So I do not consider statements such as “The clear and unmistakable directions of D2 are to use choline hydroxide in the practical embodiment and react it with 2,4-D.”[12] or even “Whether or not that counter ion would be hydroxide in D2 is ambiguous based on what is disclosed in the translation”[13] as being findings of fact in the sense referred to SNF.
[12] Second decision at 102
[13] Second decision at 90
To sum up, my understanding is there no estoppel before the Commissioner, which as an administrative tribunal is not part of the court system and not part of jurisprudence as such. While it is no doubt desirable for there to be consistency between decisions, it is inevitable that there will be occasional inconsistencies in decisions delivered by different delegates. For example, a delegate of the Commissioner had previously decided to accept this application. Be that as it may, I will make my decision in this case on the evidence available to me.
Standard of Proof
This Application was filed post the “Raising the Bar” amendments to the Act. The standard of proof that applies in the present case is the balance of probabilities. Under subsection 60(3A) of the Act, if I am satisfied, on the balance of probabilities, that a ground of opposition to the grant of a patent exists, I may refuse the application.
Novelty
It is well established that the test for novelty is a reverse infringement[14] test: does the prior art information disclose something that would fall within the scope of the claim? It is also well established that the prior art must provide a “clear and unmistakeable direction”[15] to do or make something falling within the scope of the claim. If a direction could be carried out in multiple ways and not all of them would fall within the scope of the claim, it is not novelty destroying.
[14] Meyers Taylor Pty Ltd v Vicarr Industries Ltd (1977) CLR 228 at page 235; 13 ALR 605 at page 611
[15] General Tire & Rubber Co v Firestone Tyre & Rubber Co Ltd (1972) RPC 457 at pages 485-486.
Although estoppel is not a binding issue here, the Applicant made extensive submissions on the following passages in the Second Decision, which stated that, despite ambiguity in the translation, D2 provided a clear and unmistakeable direction to react choline and 2,4-D:
In the Opposition on the parent [i.e. the First Decision] the delegate discussed choline, the issue being that choline on its own is a cation and so it must have a counter ion of some kind. Whether or not that counter ion would be hydroxide in D2 is ambiguous based on what is disclosed in the translation. The delegate in the Opposition to the parent acknowledged this ambiguity, however, did not need to decide the matter as D2 lacked the isolation step present in the claims of the parent.[16]
…
Given that the molar ratios by weight suggest the choline hydroxide is used in D2, the fact that the choline hydroxide is basic and can deprotonate the acid group on 2,4-D to form the phenoxy acid salt of choline, which is “inferred” in D2, I am of the view that choline hydroxide is used in the practical embodiments of D2. The clear and unmistakable directions of D2 are to use choline hydroxide in the practical embodiment and react it with 2,4-D.[17]
[16] Second Decision at 90
[17] Second Decision at 102
The Applicant pointed to several recent restatements of the principles of anticipation and reverse infringement to support the proposition that any ambiguity in the reading of a citation is fatal for a novelty case:
It is not sufficient to demonstrate that a prior publication is capable of being carried out in a manner which would equally infringe or not infringe the particular claim. In such a case there would not be the relevant anticipation. To elaborate, if the prior art is a document and there is ambiguity in the sense that the disclosure can be read in two or more ways, such that one way would, if carried out, infringe, and one or more other ways would not, then there has been no anticipation. Anticipation must not merely be a possibility or even a likely consequence of performing the invention disclosed by the prior art, but it must necessarily be entailed in or an inevitable result of carrying out the disclosure.[18]
…
As to a description of a means of obtaining the claimed product, his Lordship said at [23] that it was not sufficient if infringement were a possible or even a likely consequence of performing the invention disclosed by the prior disclosure. It must be necessarily entailed. It is not sufficient even if it may be obvious to perform the prior disclosure in a way that would lead to the subsequently claimed invention. Again, his Lordship, emphasised that the prior disclosure must be construed as it would have been understood by the skilled person.[19]
[18] Meat & Livestock Australia Ltd v Cargill, Inc (2018) 129 IPR 278 [520]
[19] H Lundbeck A/S v Alphapharm Pty Ltd. (2009) 177 FCR 151 at [185] per Bennett J, referencing Hoffman LJ in SmithKline Beecham plc’s (Paroxetine Methanesulfonate) Patent [2006] RPC 323
I am not convinced by the epistemological proposition that any ambiguity in how a disclosure would have been read by the skilled person is fatal for novelty; were this to be true, anticipation would be almost impossible to prove given the ambiguities inherent in all language.[20] What is important, as per the last line of the latter quote above, is appreciating how the hypothetical skilled worker would have read the disclosure, which as a task of applying the law to the facts is one for the delegate to enjoy. [21]
[20] At the risk of being trite, words in the last clause with multiple possible meanings include true, anticipation, prove, given, in, and language. I would hope that the skilled reader would not have interpreted it as “were this to be straight, waiting would be almost impossible to rise handed the ambiguities inherent trendy all tongue”.
[21] “commonly the only question may be whether the publication describes with sufficient clarity the claimed invention” - Bristol‑Myers Squibb Co v F H Faulding & Co Ltd [2000] FCA 316 at 67
It further seems to me that neither of the above passages are much more than a general restatement of the well-established General Tire principles which I summarised above. Where there is reference to situations where a prior art direction could be carried out in more than one way, I take this to refer to situations where the prior art direction was incomplete rather than one which is merely alleged to be susceptible to multiple readings.
This idea of incompleteness of prior art disclosures, where a disclosure is not anticipatory only if the skilled worker has to add additional information in order to produce an infringement, is consistent with the foundational precedent of Hill v Evans:
What is the nature and extent of the information thus acquired which is necessary to disprove the novelty of the subsequent patent? There is not, I think, any other general answer that can be given to this question than this :- that the information as to the alleged invention given by the prior publication must, for the purposes of practical utility, be equal to that given by the subsequent patent. The invention must be shewn to have been before made known. Whatever, therefore, is essential to the invention must be read out of the prior publication. If specific details are necessary for the practical working and real utility of the alleged invention, they must be found substantially in the prior publication.[22]
[22] (1892) 1A IPR 1 at p. 7
Therefore, I think that there is a distinction to be drawn between alleged ambiguity of disclosure (which is to be resolved through the eyes of the “wishing and willing”[23] reader) and that of incompleteness of disclosure. The present situation, in my view, falls squarely into the former category.
[23] A quality of the hypothetical skilled reader – see Robertshaw Controls Company v G.S.A. Industries Limited [1990] APO 44 and The Regents of the University of California v the Dow Chemical Company [2001] APO 15
Disclosure of D2
The disclosure of D2 (JP 51-106728) has already been discussed at length in the first and second decisions. Suffice it to say that the key question as to novelty is whether this passage (Practical Embodiment (1)) provides a clear and unmistakeable direction of mixing 2,4-D and choline hydroxide.[24]
(D2, original, column 10 – all references to D2 and its translations are from exhibit PMH-9)
[24] The evidence suggests that the word “choline” can be used, depending on context, to mean either choline cation or choline base. I will use the terms “choline hydroxide” and “choline base” interchangeably.
This was translated by Asia Technical Translations Pty Ltd and confirmed by Kyoko Ueno of JAICI[25] as follows[26]
[25] para 18 of PMH-9
[26] p. 6 lh column of the translation
DCP refers to 2,4-Dichlorophenol i.e. 2,4-D.
While the experts’ readings of prior art disclosures is often of assistance to the delegate in assessing how the disclosure would have been understood by the skilled person, the opposite appears to be the case here.
Although I have the benefit of no less than six different scientists opining on how they would interpret the word “choline” in D2, and in Practical Embodiment (1) in particular, this mass of evidence seems to contain irredeemable contradictions: Mr Wright considers that he will never agree with Mr Hay on what the authors of D2 meant by choline;[27] Mr Hay notes that Mr Wright has not agreed with himself over time,[28] and Prof. Wendeborn, while initially confident that he could identify the counter ion for choline cation based on the context of a publication[29] was unable to do so in D2[30] apparently because of the reference to sodium and potassium salts of the herbicidal acids in Practical Embodiments 6 and 7 (although not made explicit, it seems that Prof. Wendeborn was concerned that the reaction product of sodium MCP with choline base would be highly basic.)
[27] Wright at 60
[28] Hay #2 at 14
[29] Wendeborn at 33
[30] Wendeborn at 40
However it is not the case that the mere existence of a controversy between experts must mean that ambiguity prevents the finding of a clear and unmistakable direction. The question is how to construe the prior disclosure as understood by the hypothetical skilled worker, which is a test of applying the law to weighted evidence and which is one that falls to the delegate. As will be seen by reasoning below, I have been able to do this.
The Applicant provided a detailed textual analysis of D2 which purports to show that the term “choline” is used in a number of different ways in D2, but never, in the Applicant’s submission, to mean choline hydroxide.
In this regard, the Applicant pointed to the reference to choline being widely present in living things at p. 3 6th paragraph, to be a reference to the choline cation. I agree that this is the only sensible reading of that particular usage of the word choline, although there is no requirement (nor does the Applicant suggest there is) that the skilled reader treat every usage of a word in a document to mean exactly the same thing,
The Applicant also pointed to two passages which discuss “choline salts” - p.3 4th paragraph and p. 3 last paragraph. The Applicant argues that all experts agree that choline hydroxide is a choline salt, and therefore “choline” in this context can only refer to the cation.
However, the phrase at p. 3 4th paragraph “The cholines of the present invention are choline or choline salts” appears to me to be more consistent with the reading of choline meaning choline base, since the salts listed in the same paragraph are written as the “salts of choline with” corresponding acids (notably, acids rather than anions). This is consistent with the meaning of “salt” as “the reaction product of an acid and a base”. Additionally, the idea that choline cation could be a choline “of the present invention” seems an absurd reading because it does not exist as an isolated reagent.
The Applicant’s preferred reading of “choline” as the choline cation is also at odds with the Applicant’s reading of the herbicidal carboxylic acids as the acid rather than the anion.
The following final factors contribute to my finding on the balance of probabilities that the “wishing and willing” skilled reader would understand the term in Practical Embodiment (1) as choline base:
The molar ratios of not only Practical Embodiment (1) but all the Practical Embodiments are 1:1 when is taken to be choline base.[31]
The fact that the organic acids in the Practical Embodiments are written as either free acids (e.g. DCP) or explicitly as metal salts strongly weighs towards choline referring to the free base – to come to any other conclusion would require an assumption that the drafters of D2 were omitting information about the base component while providing corresponding information for the acid component. Furthermore (despite Prof. Wendeborn’s concerns as to the pH of the final product) I note that the stoichiometry of Practical Embodiments 6 and 7 changed the amount of choline to account for the different molar mass of the metal salt and maintain a 1:1 molar ratio.
[31] Hay #1 at 151
Conclusion on novelty and inventive step
I have found that the skilled worker would have read Practical Embodiment (1) of D2 as disclosing mixing choline hydroxide with 2,4-D. It follows that claims 1, 2, 5 and 8-11 lack novelty.
Having found that all opposed claims lack novelty, consideration of the ground of inventive step seems redundant. However for the same reasons set out by the delegate in the second decision at [144]-[146] it follows that claims 1, 2, 5, and 8-11 lack inventive step.
Costs
Costs typically follow the event. However in the present case the parties made a number of submissions as to why costs should be varied.
The Opponent referred to the complexity of the patent family and the Applicant’s filing behaviour, in particular the Applicant’s decision to withdraw the original application before opposition proceedings had concluded[32] and the Applicant’s failure to remove 2,4-D from the scope of the claims once the second decision had issued. At the oral hearing the Opponent clarified that due to the latter point they sought indemnity costs from the date of issue of the second decision (6 July 2022).
[32] A similar situation to Super Internet Site System Pty Ltd v Sensis Pty Ltd [2006] APO 27 in which a variation of costs above scale was awarded.
The Applicant submitted that the Commissioner has no power to award indemnity costs. I am not convinced by this submission a priori, as the Commissioner has varied costs upwards[33] in recognition of the particular circumstances of the case.
[33] As well as Super Internet cited supra, see also Amgen, Inc. v Genentech, Inc [2016] APO 15 where an award of 50% of total costs was made
Nevertheless I am not convinced that a case for award of indemnity costs has been made out.
The Super Internet and Amgen cases referenced herein involved an award of costs above scale where an opposed application was withdrawn. I am not aware of corresponding situations where costs above scale were awarded for an opposition that was contested and partially successful. However I recently considered a claim for indemnity costs in Vahid Vakiloroaya v HVPS Holdings (Pty) Limited [2022] APO 10. In that case, the request for indemnity followed a so-called “Calderbank” offer, which has been assessed by the courts according to the factors of: Whether the offer was a genuine compromise; whether it was unreasonable to refuse the offer in the circumstances; and in particular whether the offer puts with sufficient particularity the reason why the other party’s case must fail.
I understand this to be a useful framework for assessing whether indemnity costs could be awarded. In the present case, there is no evidence that any offer was even made, let alone an offer of compromise, nor any reasoning provided as to why the opposition would be successful. The Opponent’s case seems to rest on the Applicant coming to this conclusion independently at the conclusion of the second decision. However, I am satisfied that the Applicant at least had reason to believe that they could be successful in this case as I was not estopped by the second decision (and indeed, the disposition of the corresponding sixth (‘483) application has not yet been concluded).
With regard to the presence of previous decisions and in particular the withdrawal of the first application (2008219657), a cost award above scale had already been made in that case by (yet another) delegate on 26 September 2017. It therefore does not seem appropriate to reventilate the issues of that particular case.
The Applicant made two points for variation of costs in their favour: the first being that the Opponent filed an excess of grounds, particulars and evidence that in the main were not relied on, with the implication that the Applicant was put to undue effort in preparing to respond to that material, and submitted that this would be looked on dimly by a court; the second being that the Opponent’s summary of submissions was not filed in time, and this could constitute grounds for waiving costs even if this was just due to “oversight” as per precedent in Mars, Incorporated v Société Des Produits Nestlé S.A. [2014] APO 44 and WorleyParsons Services Pty Limited v Hatch Pty Ltd [2014] APO 72.
With regard to the effusion of the Opponent’s filings, although this could appear vexatious when seen in isolation, given the history between the parties and the number of previous proceedings in this patent family, it does not seem unreasonable for the Opponent to put all possible grounds and evidence on file, particularly because the Commissioner can only make decisions on the evidence tendered (as pointed out elsewhere by the Applicant). Furthermore, it is not uncommon for an Opponent to file as many grounds as possible for fear that some may be struck out, as already has happened in this case prior to hearing. It was always clear which issue was the most important and I do not consider there was any obfuscation of the main issue. I would also note that both parties have participated in these disputes with apparent equal enthusiasm, and both appear to have used all procedural options at their disposal.
On the second point, I note that the hearing notice sent by this office set out the deadline for submissions as being by 26 January 2023, and the Opponent’s submission were duly filed by midday on that date. So the genesis of any oversight may have been from this Office rather than the Opponent - indeed neither party appeared to contest this at the time.
Taking all of the above into consideration, I will not vary costs.
Costs according to Schedule 8 are awarded against the Applicant.
Opportunity to amend
Pursuant to s60(3A) and (3B), the Commissioner may refuse an application that has been successfully opposed, but only after giving the applicant a reasonable opportunity to amend the specification, if appropriate. Conventionally, the standard used by the Commissioner for assessing appropriateness is whether there is a reasonable opportunity of overcoming the grounds of opposition by amendment, and this is clearly the case here. However, that is not necessarily the only criterion.
In Global Blue SA v Visa USA Inc. [2018] APO 86 the delegate declined to offer an opportunity to amend an application. The circumstances in that case were that no claims were considered both novel and inventive, the application was in a state of lapse, and multiple divisional applications had been filed to allow the applicant to obtain further rights. The standard considered by the delegate was the public interest to avoid uncertainty.[34]
[34] At 74
The present case is already the applicant’s seventh “bite of the cherry” in the current patent family. With a further divisional application still pending, there is no prospect of the Applicant losing the opportunity to prosecute further rights, and there is some, albeit small, prospect of reducing uncertainty to the public by drawing the present proceedings to a close at this point. I note that the parent ‘483 application is still in the process of amendment under s104 almost one year after the issuance of the decision in its opposition, with no indication or prospect yet as to how that case will be resolved.
In light of the circumstances of the present case, I invite submissions within one month of the date of this decision on whether it is appropriate to provide the applicant with an opportunity to amend.
Felix White
Delegate of the Commissioner of Patents
Appendix – Accepted claims
A herbicidal compound comprising the reaction product of a herbicidal carboxylic acid and a (tetraalkyl) ammonium hydroxide,
wherein the herbicidal carboxylic acid is 4-CA, 2,4-D, 3,4-DA, MCPA, 4-CPB, 2,4-DB, 3,4-DB and MCPB; cloprop, 4-CPP, dichlroprop, 3.4-DP, fenoprop, mecoprop, mecoprop-P, chlorazifop, triclopyr, aminopyralid, clopyralid, fluroxypyr, picloram, cyhalofop, fluazifop, haloxyfop, clodinafop, clofop, dichlofop, fenoxaprop, isoxapyrifop, metamifop, propaquizafop, quizalofop, trifop, dicamba, glufosinate or glyphosate; and
wherein the (tetraalkyl)ammonium hydroxide is a compound of the formula
wherein when R1, R2 and R3 are methyl, R4 is not methyl.
The herbicidal compound according to claim 1 wherein R1, R2 and R3 independently represents (C1-C16) alkyl or any two of R1, R2 and R3 represent -(CH2)n where n is an integer from 3-5 and R4 represents ((C1-C16) alkyl or arylalkyl).
The herbicidal compound of Claim 2 in which the herbicidal carboxylic acid is triclopyr or dicamba.
The herbicidal compound of Claim 2 or 3 in which R1, R2, R3 and R4 are the same.
The herbicidal compound of any one of Claims 2 to 4 in which R1, R2 and R3 are CH3 and R4 is (C2-C16) alkyl or arylalkyl.
The herbicidal compound of Claim 5 in which R4 is benzyl or hexadecyl.
The herbicidal compound of Claim 4 in which R1, R2, R3 and R4 are all ethyl, propyl, or butyl.
The herbicidal compound of any one of Claims 1 to 3 in which the (tetraalkyl)ammonium hydroxide is a compound of the formula
wherein R1, R2 and R3 independently represents (C1-C16) alkyl or any two of R1, R2 and R3 may join to form a ring represented by -(CH2)n- where n is an integer from 3-5 and R4 represents ((C2-C4) alkyl or arylalkyl).
A herbicidal compound comprising the reaction product of choline hydroxide and 2,4-D.
A herbicidal composition comprising an herbicidally effective amount of a compound, as claimed in any one of Claims 1 to 9, or mixtures thereof, in admixture with an agriculturally acceptable adjuvant or carrier.
A method of controlling undesirable vegetation which comprises contacting the vegetation or the locus thereof with, or applying to the soil to prevent the emergence of vegetation, an herbicidally effective amount of the herbicidal compound of any one of claims 1 to 9.
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