Pfizer Corporation v. Rorer International (Overseas) Inc.

[1987] APO 7

In the Matter of the Patents Act 1952

‑ and ‑

In the Matter of Patent Application 556494 in the Name of PFIZER CORPORATION

‑ and ‑

In the Matter of an Application under Section 59 by RORER INTERNATIONAL (OVERSEAS) INC. for an Extension of Time in which to Lodge Notice of Opposition.

DECISION OF A SUPERVISING EXAMINER OF PATENTS:
         Patent application 556494 was advertised accepted on 6 November 1986.  On 6 February 1987, Edwd. Waters & Sons, patent attorneys for Rorer International (Overseas) Inc. ('Rorer') filed an application for extension of time pursuant to section 59 seeking an extension of time of 3 months in which to lodge Notice of Opposition to application 556494. The grounds for the extension of time given on the application were as follows:

"We have only recently become aware of the acceptance of application 556494 and require further time to study possible prior art and consider the sufficiency of the description before making a decision to oppose."

On 10 February 1987, the patent applicant through its patent attorneys Spruson & Ferguson indicated its objection to the extension application "on the basis of the decision in Vangedal‑Nielsen v. Smith reported at 33 ALR 144". Accordingly, both parties were offered an opportunity to be heard on the matter.

Subsequently, the prospective opponent filed a "Notice of Opposition" on 25 February with a covering letter, and on 2 March 1987 the applicant advised that it did not wish to be heard.   I therefore have to decide whether to allow the application for extension of time based on submissions before me.
         The attorneys for Rorer by letter lodged on 25 February suggested that the Vangedal‑Nielsen case "indicates that where a serious opposition is contemplated, clearly the extension of time should be granted", and as their client had now instructed a notice of opposition to be filed, "the opponent's intention is clearly established in this case".   Following the patent applicant's indication that it did not wish to be heard in the extension objection, the delegate of the Commissioner reviewed the extension application and instructed the Senior Clerk to advise the attorneys for Rorer, inter alia, that:

"Your comments in this letter about the Vangedal‑Nielsen case are not correct: in fact Bowen C.J. made it clear that ‑

"The Commissioner will further have to have in mind, where a serious opposition is foreshadowed, the public interest .... but he will have to require to be satisfied by an applicant for an extension that a proper case has been made out justifying an extension."

That is, where it appears that the foreshadowing of a serious opposition may be a prerequisite for extension, it is essential that a case justifying the extension must be made out."

Accordingly, the letter further advised that in the absence of further explanation adequate grounds for the extension of time had not been presented.
         In response Rorer's attorneys provided further submissions and explanation concerning the extension sought, the submissions drawing attention to aspects of the present situation different to that in the Vangedal‑Nielsen case.  These further submissions and explanation indicate to me that:

1. Rorer has considerable interest in patent application 556494 because of the commercial ramifications on its business if a patent were granted, seeing that Rorer is a competitor in the field of the invention and is the applicant for a patent in respect of chemical compounds similar in nature and purpose to those of the subject application.  Furthermore, Rorer's decision to instruct their attorneys to file a Notice of Opposition subsequent to the extension application being lodged, provides a prima facie indication of the foreshadowing of a serious opposition.

ii)As Rorer is an American corporation based in Delaware, the three months initially allowed by section 59 proved an insufficient time period to consider the accepted application and complete specification and the possible grounds for making a serious opposition.  While it is not specifically stated, it seems that in deciding whether to seriously oppose the application, Rorer needed to gain an understanding of the state of the art in Australia at the relevant date and, given the field of the invention and the location of the prospective opponent, I have little doubt that relevant enquiries took some time.

It is also worth noting that Rorer lodged a Notice of Opposition on 25 February 1987, shortly after seeking the present extension.   Consequently, no significant delay in proceedings will arise if the extension is granted.  I am also mindful of the public interest in ensuring that patents are granted which are prima facie valid, and I am inclined to the view that the public interest would be well served in this case if the prospective opponent was able to finalise its consideration regarding whether to oppose the application. On considering the matters in i) and ii) above I am satisfied that a prima facie case justifying the extension has been made out, and given the public interest aspect mentioned, I have decided that the extension of time sought is justified.  Accordingly, I allow Rorer an extension of time until 25 February, 1987 in which to lodge notice of opposition.  As this allowance validates the Notice of Opposition lodged on 25 February 1987, I direct that the initial period for serving evidence in support expires 3 months from the date of this decision.

(T.R. BRUHN)
   Supervising Examiner of Patents

Patent Attorneys for the patent applicant:  Spruson & Ferguson