Peptide Technology Limited v Pitman-moore Australia Limited

[1993] APO 50

official notice

decision of a delegate of the commissioner of patents

Application        :  No. 630591 in the name of PEPTIDE TECHNOLOGY LIMITED

Title             :  GROWTH HORMONE RELATED PEPTIDE

Action:  Opposition by PITMAN-MOORE AUSTRALIA LIMITED and an application by PEPTIDE TECHNOLOGY LIMITED for dismissal of the opposition.

Decision:  Issued            .  Particulars found inadequate in part.  Opponent directed to provide further and better particulars.

patents act 1990

decision of a delegate of the commissioner of patents

Re:Patent Application No. 630591 by PEPTIDE TECHNOLOGY LIMITED, opposition thereto by PITMAN-MOORE AUSTRALIA LIMITED and an application under regulation 5.5(1) by PEPTIDE TECHNOLOGY LIMITED for dismissal of the opposition.

background

Application 630591 was filed by Peptide Technology Limited (Peptide) on 6 July 1988 under the provisions of the Patent Cooperation Treaty as PCT/GB88/00528.  That application was published under the PCT as WO 89/00166, and in Australia was allocated the application number of 19672/88.  The application entered the national phase of processing on 1 February 1990 and was advertised accepted on 5 November 1992.  On 5 February 1993, the opponent (Pitman-Moore) filed a notice of opposition.

The Statement of Grounds and Particulars was served on 9 March 1993.  The Commissioner's delegate allowed an extension of time from 5 March 1993 to 9 March 1993 within which to file the Statement.

On 22 March 1993, Peptide filed an application for dismissal of the opposition.  The matter was set down for hearing in Canberra on 20 May 1993.

At the hearing, Peptide was represented by M/s S. Goddard of counsel, assisted by Dr. W. Pickering, patent attorney of F. B. Rice & Co. of Sydney.  Pitman-Moore was represented by Mr. B. Hess of counsel, assisted by Dr. V. Santer, patent attorney of Griffith Hack & Co. of Melbourne.

THE STATEMENT OF GROUNDS AND PARTICULARS

The Statement of Grounds of Opposition lists grounds a) to i). However the relevant grounds are as follows:

"a)The invention, so far as claimed in any claim, was obtained from the opponent, or from a person whom the opponent is the legal representative, assignee, agent or attorney;

b)The invention was not communicated to the applicant by the actual inventor or his legal representative or assignee;"

The Statement of Particulars provides four paragraphs of explanation in relation to ground a) above.  I believe that the first part of the first paragraph is the most relevant.  It is as follows:

"The invention disclosed in Australian Patent Application No. 630591 was obtained from the present opponent's British sister company, Pitman-Moore Limited.  The named inventor Dr Roger Aston joined The Wellcome Foundation Limited as a Scientist II grade S2 on 5 October 1981.  Coopers Animal Health Limited was set up in 1984 as a jointly-owned subsidiary of The Wellcome Foundation Limited and ICI plc.  Dr. Aston joined Coopers Animal Health Limited as a Senior Scientist in approximately July 1985 on the same terms and conditions under which he was employed at Wellcome.  He was employed at Coopers Animal Health Limited until 25 March 1987.  Coopers Animal Health Limited subsequently became Pitman-Moore Limited...."

The rest of the first paragraph and the remaining three paragraphs in relation to ground a) provide details of why Pitman-Moore believes that presently claimed invention was obtained from Coopers Animal Health Limited.

In relation to ground b), the Statement of Particulars states:

"....Dr Aston was a member of a research team, and the invention was not communicated to the applicant by any of the other members of the research team, or their legal representatives or assignees."

REQUEST FOR DISMISSAL

The reasons provided for making the request for dismissal are as follows:

"The particulars of Grounds (a) and (b) are defective in that there is no connection between the Opponent, Pitman-Moore Australia Limited, and Dr Aston, such that the Opposition on the ground of obtaining could be made out."

SUBMISSIONS

Ms Goddard's submissions at the hearing on behalf of the applicant can be summarised as follows:

1. The terms of section 59(1)(a) of the 1952 Act make it clear that the invention must have been obtained from the opponent or from someone of whom the opponent is the legal representative, assignee, agent or attorney, rather than from someone who is merely a bystander or interested party.

1. The particulars state that the invention was obtained from the opponent's sister company, Pitman Moore Ltd., not from the opponent itself.

1. There is no assertion in the statement of particulars that the opponent is any of the other parties mentioned in section 59(1)(a) i.e. the legal representative, assignee, agent or attorney of the person from whom the invention was allegedly obtained.

1. In the 1952 and 1990 Patents Acts, a "legal representative" is usually defined only in respect of dead persons.  Therefore the opponent cannot call itself the legal representative of the person from whom the invention was allegedly obtained.

1. The term "assignee" is used for a person who has acquired rights in a patent by an assignment.  Therefore the opponent is not the assignee of the person from whom the invention was allegedly obtained.

1. Section 34(1) of the Patents Act 1952, giving who may apply for a patent, uses similar wording to that used in section 59(1)(a). Therefore it would appear that the words agent or attorney in section 59(1)(a) should be used with the meaning as in section 34(1)(g). Even if the opponent could be called an agent in some sense, because it is a sister company of Pitman Moore Ltd., it is not an agent within the meaning of section 59(1)(a) with rights to control the intellectual property rights of Pitman Moore Ltd.

1. There is no assertion in the statement of particulars that the opponent is an agent or attorney of the person from whom the invention was allegedly obtained.  The particulars merely state that the opponent is a sister company of Pitman Moore Ltd.  Therefore the statement needs to assert the actual legal relationship between the opponent and Pitman Moore Ltd.

1. Obtaining is not available to the opponent as it is not any of the persons listed in section 59(1)(a).

1. There are no facts in the statement of particulars that the members of the team of scientists who allegedly made the invention are under contract of service, nor how Coopers Animal Health became Pitman Moore Ltd.

10.The first words of section 59(1)(b) of the 1952 Act are "in the case of an invention communicated from abroad".  These words have been left out of the statement of grounds making ground b) much broader.  In addition there are no assertions in the particulars that any of the inventors of the present invention are resident abroad.

11.Dr Aston is one of the inventors of the present invention.  It is not possible for an inventor, or the assignee of the inventor, to obtain an invention from someone else when the information was first generated by that inventor.  Therefore obtaining cannot be used in the present case.  In L Church Holdings (Australia) Pty Ltd v Marine Propulsion Ltd (1991) 21 IPR 358 it is shown that it is illogical to argue obtaining in these circumstances.

12.It is accepted from cases such as General Steel Industries Inc. v Commissioner for Railways (1964) 112 CLR 125 and L'air Liquide v The Commonwealth Industrial Gases Limited (1992) 24 IPR 77 that a notice of opposition will be dismissed where it is obviously untenable and cannot possibly succeed. In the present case there is no evidence at all in support of the grounds of section 59(1)(a) and (b), and therefore the opposition on these grounds cannot possibly succeed.

13.It is clear from L'air Liquide v The Commonwealth Industrial Gases Limited (supra) and Norwood Industries Pty Ltd v Macbird Floraprint Pty Ltd (1992) 24 IPR 368 that part only of a notice of opposition may be dismissed. In the present case the applicant is not seeking to dismiss grounds (c) through (i), only grounds (a) and (b).

14.It was decided in Re MXM (1992) AIPC 90-926 that a notice of opposition cannot be amended, no matter how serious the opposition. In the present case any amendment to the statement of particulars which might involve appointment of agency would be a matter of substance and could not be allowed.

15.Even if the application for dismissal is not granted, because of submissions made at the hearing, the applicants are entitled to costs.

Mr Hess' submissions at the hearing on behalf of the opponent can be summarised as follows:

1. The opponent does not claim that the invention was obtained from itself, rather it claims that the invention was obtained from its sister company Pitman Moore Ltd.

1. The opponent does not claim that it is the legal representative of Pitman Moore Ltd.

1. The opponent is the agent of Pitman Moore Ltd.  The text "Bowstead on Agency" 15th Edition, Sweet and Maxwell, 1985, chapter 2, states that:

"The relationship of principal and agent may be constituted by agreement, whether contractual or not, between principal and agent which may be express or implied from the conduct or situation of the parties, or alternatively retrospectively by subsequent ratification by the principal of acts done on his behalf."

Halsbury "Laws of England" 4th Edition, reissue volume, 1990, at paragraph 19, gives a similar definition of agent.

1. The provisions of obtaining, as summarized in EPM Concrete v Space Cell Systems (1979) 49 AOJP 2018 and Massey v Noack 11 IPR 632, are:

.what the invention is;

.who's invention it was;

. whether the claim includes within its ambit the invention allegedly obtained; and

.whether the applicant actually obtained the invention from the opponent or from a person of whom the opponent is the legal representative, assignee, agent or attorney.

The opponent submits that the statement of particulars sets out each of these provisions and therefore includes all of the material needed to make out a claim of obtaining.

5.The relationship between Pitman Moore International Incorporated, Pitman Moore Australia Ltd., Pitman Moore Ltd. and Coopers Animal Health Ltd. are all matters of public record and therefore do not need to be put in the statement of particulars.

1. With respect to section 59(1)(b) the opponent submits that the application itself relies on the provisions of part XVI of the Patents Act 1952 dealing with International arrangements and is an application under section 141 of the Act. The application is based on a filing in the UK. Therefore within the broad terms in section 59(1)(b) it is clearly an invention communicated from abroad.

1. The question that remains is whether or not the invention was not communicated to the applicant by the actual inventor, his legal representative or assignee.  Dr Aston was a member of a research team, and the invention was not communicated to the applicant by any other member of the research team or their legal representatives or assignees.

1. There is more than sufficient material in the statement of particulars to support each of the grounds of opposition set out in paragraphs 59(1)(a) and (b), and the applicant cannot be taken by surprise.

1. General Steel Industries Inc. v Commissioner for Railways (supra) and Patent Office practice note 5 state that an opposition will be dismissed only if it is so obviously untenable that it cannot possibly succeed.  On the basis of the particulars as set out there is more than reasonable argument for the opponent to be able to put its case.

10.If it is found that the opposition will be dismissed in part, the opponent seeks leave to file and serve an amended statement of particulars.  Alternatively if certain aspects of the particulars are not clear, the hearing officer can direct that the opponent file further and better particulars of the matters complained of.

11.Costs follow the event and if the application for dismissal is itself dismissed the opponent should have the costs.

EVIDENCE

At the hearing, the opponent provided me with a statutory declaration by Dr. Vivien Bedford Santer.  The applicant did not object to this evidence being filed.

The declaration exhibits an affidavit by Thomas L. Farquer who states he is the Secretary of Pitman-Moore International, Inc. and that Pitman-Moore Australia Limited and Pitman-Moore Limited, a United Kingdom company, are affiliated companies, both owned indirectly by Pitman-Moore International Inc.

DECISION

Dismissal of an opposition is covered by the provisions of regulation 5.5 of the Patents Regulations 1991 which reads as follows:

"Dismissal of opposition

5.5 (1) An applicant may:

(a) within 1 month of being served with a copy of

a statement by an opponent under subregulation

5.4(1) ("filing of statement"); or

(b) if the complete specification in relation to

an opposed application is re-examined under

subsection 97(1) of the Act ("re-examination of

complete specifications") - within 1 month from

the day when  the re-examination is completed

under regulation 9.5 ("completion of

re-examination);

request the Commissioner in the approved form to

dismiss the opposition.

(2) As soon as practicable after a request is

made, the Commissioner must inform the opponent

of the request having been made.

(3) The Commissioner may dismiss the opposition whether or not the applicant has requested the dismissal of the opposition."

The reasons for dismissing an opposition are similar to the reasons for summary dismissal which are described in General Steel Industries Inc v Commissioner for Railways (supra) which was referred to by both parties.  The relevant passage is:

"..It is sufficient for me to say that these cases uniformly adhere to the view that the plaintiff ought not to be denied access to the customary tribunal which deals with actions of the kind he brings, unless his cause of action - if that be the ground on which the court is invited  .. to exercise its powers of summary dismissal - is clearly demonstrated. The test to be applied has been variously expressed; "so obviously untenable that it cannot possibly succeed"; "manifestly groundless"; "so manifestly faulty that it does not admit of argument"; "discloses a case which the court is satisfied cannot succeed"; "under no possibility can there be a good cause of action"; "be manifest that to allow them (the pleadings) to stand would involve useless expense".

At times the test has been put as high as saying that the case must be so plain and obvious that the court can say at once that the statement of claim, even if proved, cannot succeed; or "so manifest on the view of the pleadings, merely reading through them, that this is a case that does not admit of reasonable argument"; "so to speak apparent at a glance".  Thus the exercise of the Commissioner's discretion to dismiss an opposition is likely to be an infrequent occurrence.  And an opposition will be dismissed only if the Commissioner is satisfied the opposition cannot possibly succeed.

An opposition may be unsubstantiated even if it requires argument to establish the opposition should be dismissed.  For example the General Steel Industries case (supra) states as follows:

"...in my view great care must be exercised to ensure that under the guise of achieving expeditious finality a plaintiff is not improperly deprived of his opportunity for the trial of his case by the appointed tribunal. On the other hand, I do not think that the exercise of the jurisdiction should be reserved for those cases where argument is unnecessary to evoke the futility of the plaintiff's claim. Argument, perhaps even of an extensive kind, may be necessary to demonstrate that the case of the plaintiff is so clearly untenable that it cannot possibly succeed."

Argument in support of dismissal of the opposition should not argue the substantive issues of the opposition; it must establish the opposition cannot possibly succeed without going into the details of the opposition. 

In the present case, the applicant's main argument in relation to ground a) is that the invention has not been obtained from the opponent or any of the other parties listed in section 59(1)(a) of the 1952 act which states:

"that the invention, so far as claimed in any claim, was obtained from the opponent, or from a person of whom the opponent is the legal representative, assignee, agent or attorney;".

Since Mr. Hess indicated at the hearing that the opponent was relying on the fact that it was the agent of its sister UK company from which the invention has been allegedly obtained, I do not need to consider the other parties listed in section 59(1)(a).

Both parties submitted various definitions of what an agent is in the context of section 59(1)(a).   In considering the submissions, I do not think that if two companies are sister companies then this implies in any way that one company is an agent for the other (or legal representative, assignee or attorney for that matter) without any explicit reference to the type of relationship that exists between the two companies.  Apart from this, I do not believe that I have to decide one way or the other as to the meaning of "agent" in section 59(1)(a).

The relationship between the opponent and the UK company is indicated as being that of sister companies in the particulars.  However the relationship in the sense required by section 59(1)(a) has not been specifically referred to in the particulars.  Certainly there is no indication that the opponent is the agent of the UK company.

I believe that I must decide whether or not the opposition should be dismissed solely on the facts provided in the particulars and subsequent arguments provided by both parties in relation to those facts.  I should not take into account any material facts which come to light after the particulars have been filed.  This is because the purpose of the Statement of Particulars is to set out all the material facts relied on to support each ground of opposition to give the applicant fair notice of the case to be met.  Any material facts which are not included in the particulars cannot be relied on by the opponent.

Mr. Hess referred me to the four provisions for obtaining in paragraph 4 of the summary of his submissions.  At the very least, I would expect that the material facts in relation to the first two and the last of these four provisions should be provided in the Statement of Particulars.  The opponent has not provided these facts in the particulars in relation to the fourth provision.  In the present case, the opponent being an agent of the UK company is a material fact which should be included in the particulars in relation to the allegation of obtaining.  This is particularly so in the ground of obtaining because the relationship between the opponent and the person from whom the invention was obtained is explicitly referred to in section 59(1)(a).

I do not agree with Mr. Hess' submissions as set out paragraph 5.  Even if there is some public record of the relationship between the opponent and the UK company, that does not dissolve the onus that the opponent has to provide all the material facts in the particulars.  It is not up to the applicant to chase down facts so as to establish what case the opponent is mounting.  The purpose of the particulars is to inform the applicant of the facts of the case the applicant has to answer.

I do not think that the statutory declaration of Dr. Santer and the affidavit exhibited thereto add any further weight to the opponent's case.  While they might be of assistance as part of evidence to establish that the opponent is an agent of the UK company, as I have indicated, I must only consider the facts referred to in the particulars.
Therefore, I agree with paragraphs 7 and 8 of the summary of M/s Goddard's submissions.  As the particulars are presently worded, I do not believe that the opposition could possibly succeed on the ground of obtaining as the opponent has not set out all the material facts required by section 59(1)(a).  The fundamental fact of what relationship the opponent has with the person from whom the invention has been allegedly obtained has not been included in the particulars.

I will now briefly deal with two other points raised by M/s Goddard.

Firstly, in paragraph 9 of the summary of M/s Goddard's submissions, she submits that there are no facts provided that the team of scientists are under contract of service.  While the wording of the particulars in this respect could be argued to be somewhat unclear, I do not believe that this is something which is "so manifestly faulty that it does not admit of argument".

Secondly, in paragraph 11 of the summary of M/s Goddard's submissions, she refers me to L Church Holdings (Australia) Pty Ltd v Marine Propulsion Ltd (supra) and submits that this case shows that it is not possible for an inventor to obtain the invention from someone else when the information was first generated by that inventor.  I do not want to decide matters which are more properly dealt with during the substantive opposition.  However to the extent that I have to decide whether or not the ground is "so obviously untenable that it cannot possibly succeed", I note that the particulars in the present case refer to a team of inventors whereas in the above decision there is a sole inventor.  I believe that there is sufficient difference to enable me to say that the ground is not one which is "so obviously untenable that it cannot possibly succeed".

In relation to ground b), while I appreciate that part of the wording from section 59(1)(b) is missing from the Statement of Grounds, I do not believe that this is sufficient reason for dismissing the opposition.  I particularly note Mr. Hess' comments in paragraph 6 of the summary of his submissions above.

Further in relation to ground b), I believe that it is appropriate to apply a purposive construction to the Statement of Grounds and Particulars as was stated in Borden, Inc. v Elkem A/S (1992) AIPC 90-893. I believe that it is clear that the opponent intends to rely on the grounds set out in section 59(1)(b).

I have found that the particulars are inadequate in relation to the ground set out in section 59(1)(a).  I must now look at the consequences which flow from this finding.

The applicant indicated that it was not seeking to dismiss grounds c) to i) only grounds a) and b).  M/s Goddard referred me to L'air Liquide v The Commonwealth Industrial Gases Limited (supra) and Norwood Industries Pty Ltd v Macbird Floraprint Pty Ltd (supra) where it is clear that part only of an opposition can be dismissed by the Commissioner.  Therefore one avenue open to me is that I can dismiss the opposition in so far as it relates to section 59(1)(a) of the 1952 Act.
In paragraph 10 of the Mr. Hess' submissions, he suggests that the delegate of the Commissioner can direct that the opponent file further and better particulars.

In Mobay Corporation v The Dow Chemical Company (1992) AIPC 90-895, to which M/s Goddard referred me, the hearing officer indicated that it was possible for the Commissioner to issue a direction for further and better particulars. In discussing the appropriateness of such a direction, the hearing officer referred to B.C. Cairns in Australian Civil Procedure (1985) at page 116 as follows:

"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."

In the present case therefore I have to determine whether the reference in the particulars to the opponent's sister company without any reference to the opponent being an agent of the sister company is a failure to plead a material fact with sufficient particularity or a failure to plead a material fact at all.

As I have already mentioned, I believe that the fact that the opponent is the agent of the UK sister company is a material fact in the ground of obtaining.   The relationship between the opponent and the person from whom the invention has allegedly been obtained seems to me to be fundamental to any particulars relating to obtaining.  This is apparent from the wording of section 59(1)(a) and from the four provisions for obtaining referred to by Mr. Hess.  Therefore, had the particulars referred to a company with no relation at all to the opponent, then I believe that the material fact of the agency relationship would not have been pleaded at all.

However, I believe that, although the particulars do not mention a specific relationship, there is a certain relationship implied in the fact that the opponent is a sister company to the company from which the invention has allegedly been obtained.  Sister companies have common interests and in the present case have at least in part a common owner.  Such companies can be distinguished from two companies which have no relationship at all with each other.  Therefore, I am of the opinion that the reference only to the UK sister company in the particulars is a failure to plead a material fact with sufficient particularity rather than a failure to plead a material fact at all.

I am also mindful of the comments of Kitto J. in Kaiser Aluminium and Chemical Corporation v Reynolds Metal Company (1969) CLR 136 at page 158:

"In my opinion, however, it is in the public interest that a serious opposition by a person entitled in fact to oppose the grant of a patent should be dealt with on the merits, rather than that it should be shut out in consequence of a failure in procedure, lamentable though the failure may be."

While these comments were made in relation to extension of time matters, it seems to me that it is equally appropriate to the present situation.  Had the agency relationship been included in the particulars, I would have had no hesitation in deciding that the ground of obtaining had some chance of success.

In the circumstances, I believe that it is appropriate for me to direct the opponent to file further and better particulars.

CONCLUSION

I have found that the request for dismissal of the opposition has succeeded in part in that the particulars relating to paragraph 1(a) of section 59 of the 1952 Act are inadequate.

I direct that the opponent file further and better particulars in relation to the ground set out in paragraph 1(a) of section 59 of the 1952 Act to my satisfaction within 30 days of the date of this decision otherwise I will dismiss this particular ground of opposition.

COSTS

The request for dismissal has been successful in part in that I have found that the particulars in relation to ground a) are inadequate.  Therefore I award costs against the opponent.

R. Hallett
Delegate of the Commissioner of Patents

Patent attorneys for the applicant  :  F. B. Rice & Co., Sydney

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