Plant Genetic Systems N.V. v Paladin Hybrids Inc

[1993] APO 47

patents act 1990

decision of a delegate of the commissioner of patents

Re:Patent Application Number 621113 in the Name of PLANT GENETIC SYSTEMS N.V., Opposition Thereto by PALADIN HYBRIDS INC, and a Request to Amend the Statement of Grounds and Particulars

background

This decision concerns a proposed amendment to a Statement of Grounds and Particulars.

Plant Genetic Systems N.V. filed application 35371/89 on 27 April 1989.  It claimed priority from GB application 8810120, filed on 28 April 1988.  The application was advertised accepted on 5 March 1992, under acceptance number 621113.  Paladin Hybrids Inc filed a Notice of Opposition on 5 June 1992, and a Statement of Grounds and Particulars of Opposition on 6 July 1992.  (This statement was filed within the one month allowed by regulation 5.4, 5 July 1992 was a Sunday.)  The time for filing evidence-in-support has been extended to 6 April 1993.

On 6 January 1993, the opponent lodged an application under Regulation 5.9 to amend the Statement of Grounds and Particulars of Opposition.  The applicant filed a written submission against the allowance of the proposed amendment on 3 February 1993.  In this submission the applicant indicated that it would rely on the written submission and did not wish to be heard.

STATEMENT OF GROUNDS AND PARTICULARS

So far as is material to the present matter, the Statement of Grounds and Particulars of Opposition recites the ground of opposition of section 59(1)(d) (Patents Act 1952) that

'the invention as claimed in these claims is the subject of claims of earlier priority date contained in the specification of Australian Patent No. 611258, as proposed to be amended 6 July 1992'.

The Statement of Grounds and Particulars, as filed, included twenty-six particulars in support of this ground of opposition. 

1. (i)  the invention as claimed in claim 1 of the opposed application is the subject of claims 1, 4, 8, 10, 11, 19, 20, 22, 23, 24, 25, 26, 33, 37, 42, 43, 46, 51, 57 to 66, and 122, and claims 14, 15, 16, 21, 29, 30, 31, 50 and 121 insofar as they relate back to the aforementioned claims;

   (ii)  the invention as claimed in claim 2 of the opposed application is the subject of claims 1, 4, 11, 20, 59, 60, 61, and 62 and claims 8, 14, 15, 16, 21, 28, 29, 30, 31, and 66 to 76 insofar as they relate back to the preceding claims;

   (iii)  the invention as claimed in claim 4 of the opposed application is the subject of claims 1, 4, 8, 10, 11, 19, 20, 22, 23, 24, 25, 26, 33, 37, 42, 43, 46, 51, 57 to 66 and 122, to 66 (sic) and claims 14, 15, 16, 21, 29, 30, 31, 50 and 121 insofar as they relate back to the aforementioned claims;

   (iv)  the invention as claimed in claim 6 of the opposed application is the subject of claims 1, 4, 11, 20, and 60 to 65, and claim 8, 14, 15, 16, 21, 28, 29, 30, 31, and 66 to 76 insofar as they relate back to the preceding claims;

   (v)  the invention as claimed in claim 9 of the opposed application is the subject of claim 69, and claims 50 and 121 insofar as they relate back to claims 1, 4, 8, 10, 11, 19, 20, 22, 23, 24, 25, 26, and 122;

   (vi)  the invention as claimed in claim 11 of the opposed application is the subject of claims 1, 4, 8, 10, 11, 19, 20, 22, 23, 24, 25, 26, 33, 37, 42, 43, 46, 51, 57 to 66 and 122, and claims 14, 15, 16, 21, 29, 30, 31, 50 and 121 insofar as they relate back to the aforementioned claims;

   (vii)  the invention as claimed in claim 12 of the opposed application is the subject of claim 69, and claims 50 and 121 insofar as they relate back to claims 1, 4, 8, 10, 11, 19, 30 (sic), 22, 23, 24, 25, 26, and 122;

   (viii)  the invention as claimed in claim 13 of the opposed application is the subject of claims 1, 4, 8, 10, 11, 19, 20, 22, 23, 24, 25, 26, 33, 37, 42, 43, 46, 51, 57 to 66, and 122, and claims 14, 15, 16, 21, 29, 30, 31, 50 and 121 insofar as they relate back to the aforementioned claims;

   (ix)  the invention as claimed in claim 14 of the opposed application is the subject of claims 1, 4, 8, 10, 11, 19, 20, 22, 23, 24, 25, 26, 33, 37, 42, 43, 46, 51, 57 to 66, and 122, and claims 14, 15, 16, 21, 29, 30, 31, 50 and 121 insofar as they relate back to the aforementioned claims;

   (x)  the invention as claimed in claim 15 of the opposed application is the subject of claims 1, 4, 11, 20, and 60 to 65, and claim 8, 14, 15, 16, 21, 28, 29, 30, 31, and 66 to 76 insofar as they relate back to the preceding claims;

   (xi)  the invention as claimed in claim 17 of the opposed application is the subject of claims 1, 4, 11, 20, and 60 to 65, and claim 8, 14, 15, 16, 21, 28, 29, 30, 31, and 66 to 76 insofar as they relate back to the preceding claims;

   (xii)  the invention as claimed in claim 18 of the opposed application is the subject of claims 1, 4, 11, 20, and 60 to 65, and claim 8, 14, 15, 16, 21, 28, 29, 30, 31, and 66 to 76 insofar as they relate back to the preceding claims;

   (xiii)  the invention as claimed in claim 20 of the opposed application is the subject of claims 1, 4, 8, 10, 11, 19, 20, 22, 23, 24, 25, 26, 33, 37, 42, 43, 46, 51, 57 to 66, and 122, and claims 14, 15, 16, 21, 29, 30, 31, 50 and 121 insofar as they relate back to the aforementioned claims;

   (xiv)  the invention as claimed in claim 21 of the opposed application is the subject of claims 1, 4, 8, 10, 11, 19, 20, 22, 23, 24, 25, 26, 33, 37, 42, 43, 46, 51, 57 to 66, and 122, and claims 14, 15, 16, 21, 29, 30, 31, 50 and 121 insofar as they relate back to the aforementioned claims.

2. (i)  the invention as claimed in claim 1 of the opposed application is the subject of claims 77, 80, 83, 85, 86, 94, 95, 96, 97, 98, 108, 112, 115, 116, 117, and 118 and claims 89, 90, 91 101, 102, and 103 insofar as they relate back to the aforementioned claims;

   (ii)  the invention as claimed in claim 2 of the opposed application is the subject of claims 77, 80, 86, 95 and 118 and claims 83, 89, 90, 91, 100, 101, 102, 103, 119 and 120 insofar as they relate back to the preceding claims;

   (iii)  the invention as claimed in claim 4 of the opposed application is the subject of claims 77, 80, 83, 85, 86, 94, 95, 96, 97, 98, 108, 112, 115, 116, 117, and 118 and claims 89, 90, 91 101, 102, and 103 insofar as they relate back to the aforementioned claims;

   (iv)  the invention as claimed in claim 6 of the opposed application is the subject of claims 77, 80, 86, 95 and 118 and claims 83, 89, 90, 91, 100, 101, 102, 103, 119 and 120 insofar as they relate back to the preceding claims;

   (v)  the invention as claimed in claim 11 of the opposed application is the subject of claims 77, 80, 83, 85, 86, 94, 95, 96, 97, 98, 108, 112, 115, 116, 117, and 118 and claims 89, 90, 91 101, 102, and 103 insofar as they relate back to the aforementioned claims;

   (vi)  the invention as claimed in claim 13 of the opposed application is the subject of claims 77, 80, 83, 85, 86, 94, 95, 96, 97, 98, 108, 112, 115, 116, 117, and 118 and claims 89, 90, 91 101, 102, and 103 insofar as they relate back to the aforementioned claims;

   (vii)  the invention as claimed in claim 14 of the opposed application is the subject of claims 77, 80, 83, 85, 86, 94, 95, 96, 97, 98, 108, 112, 115, 116, 117, and 118 and claims 89, 90, 91 101, 102, and 103 insofar as they relate back to the aforementioned claims;

   (viii)  the invention as claimed in claim 15 of the opposed application is the subject of claims 77, 80, 86, 95 and 118 and claims 83, 89, 90, 91, 100, 101, 102, 103, 119 and 120 insofar as they relate back to the preceding claims;

   (ix)  the invention as claimed in claim 17 of the opposed application is the subject of claims 77, 80, 86, 95 and 118 and claims 83, 89, 90, 91, 100, 101, 102, 103, 119 and 120 insofar as they relate back to the preceding claims;

   (x)  the invention as claimed in claim 18 of the opposed application is the subject of claims 77, 80, 86, 95 and 118 and claims 83, 89, 90, 91, 100, 101, 102, 103, 119 and 120 insofar as they relate back to the preceding claims;

   (xi)  the invention as claimed in claim 20 of the opposed application is the subject of claims 77, 80, 83, 85, 86, 94, 95, 96, 97, 98, 108, 112, 115, 116, 117, and 118 and claims 89, 90, 91 101, 102, and 103 insofar as they relate back to the aforementioned claims;

   (xii)  the invention as claimed in claim 21 of the opposed application is the subject of claims 77, 80, 83, 85, 86, 94, 95, 96, 97, 98, 108, 112, 115, 116, 117, and 118 and claims 89, 90, 91 101, 102, and 103 insofar as they relate back to the aforementioned claims;

The opponent has requested an amendment under Regulation 5.9 of the Patents Regulations to these Grounds and Particulars. The effect of this amendment would be to include claims 3, 5, 7, 16, and 18 as being the subject of claims of earlier priority date contained in the specification of Australian Patent No. 611258, as proposed to be amended 6 July 1992. The twenty-six particulars are condensed into a singular particular: the invention as claimed in claims 1 to 21 is the subject of at least one of the following claims of Australian Patent No. 611258,

1, 2, 3, 5, 6, 7, 8, 10, 12, 13, at least one notionally rewritten claim 14, at least one notionally rewritten claim 15, at least one notionally rewritten claim 16, 17, at least one notionally rewritten claim 18, 19, 20, 21, 27, at least one notionally rewritten claim 28, at least one notionally rewritten claim 29, at least one notionally rewritten claim 30, at least one notionally rewritten claim 31, 33, 34, 35, at least one notionally rewritten claim 39, 40, 41, 44, 45, 46, 47, 48, 49, at least one notionally rewritten claim 50, 51, 52, 53, 54, 55, 56, 57, 58, at least one notionally rewritten claim 59, 60, 61, 62, at least one notionally rewritten any one of claims 63 to 76, at least one notionally rewritten claim 77, 78, 79, 81, 82, at least one notionally rewritten claim 83, 85, 87, 88, at least one notionally rewritten any one of claims 89 to 91, at least one notionally rewritten claim 93, 94, 95, 99, at least one notionally rewritten any one of claims 100 to 103, 105, 106, 109, 110, 111, 113, 114, 115, 116, at least one notionally rewritten any one of claims 117 to 121, and 123.

SUBMISSIONS FOR THE OPPONENT

The opponent has made no submissions in support of the request to amend the Statement of Grounds and Particulars.

SUBMISSIONS FOR THE APPLICANT

The attorneys for the applicant requested that the Commissioner disallow the proposed amendment on the basis that the applicant will be unduly prejudiced by the amendment.

"In particular, we point out that original paras. 18 and 19 set out particulars supporting the ground of opposition under sub-section 59(1)(d) which were levelled against "claims 1, 2, 4, 6, 8, 9, 10, 11, 12, 13, 14, 15, 17, 19, 20, and 21" of Application No. 621113. In amended para. 18, however, the particulars are stated to relate to "claims 1 to 21" of the opposed application and hence this amended paragraph extends the claims against which the ground of "prior claiming" under sub-section 59(1)(d) is alleged. In addition, amended para. 18 alleges the invention as claimed in that claims 1 to 21 "is the subject of at least the following claims" of Patent No. 611258, without enumerating those claims of the earlier patent which are alleged to constitute a "prior claim". In contrast, original paras. 18 and 19 enumerated particular claims of Patent No. 611258 which were alleged to prior claim particular claims of Application No. 621113. The effect of these amendments is, we submit, to extend the allegation of prior claiming beyond that contained in the original Statement, and it is submitted that such an extension, if allowed, would unduly prejudice the applicant.

Finally we note that in the Statement the ground of opposition under sub-section 59(1)(d) is specifically directed to the particular claims of Application No. 621113 enumerated above. Accordingly, the amended para. 18 is inconsistent with the corresponding ground of opposition on page 1 of the Statement and we submit that the proposed amendment should be disallowed on this basis also."

RELEVANT LAW

The allowability of the present request to amend the Statement of Grounds and Particulars of Opposition is determined by sub-regulations 5.9(1) and (2) of the Patents Regulations 1991.  The Patent Office decision in Diamond Scientific Company v CSL Limited (issued 29 September 1992) explains the requirements as follows.

1.        It is the responsibility of the opponent to explicitly specify in the Statement of Grounds and Particulars those documents on which it relies in the opposition.

2.        Any amendment that changes the case the applicant has to answer is potentially prejudicial to the applicant.

3.        An amendment of particulars will unduly prejudice a person if:

i.the amendment is detrimental or disadvantageous to the person; and

ii.the circumstances surrounding the amendment cause the degree of that detriment or disadvantage to be unwarranted, excessive, improper, inappropriate, or unjustified.

4.        Where an opponent actively pursues further particulars in the opposition after having filed its statement, the applicant will be unduly prejudiced by any resultant change to the case it has to answer if the statement is amended.

5.        Extra particulars that arise incidental to the preparation of the case which:

i.do not result in any protraction of the preparation of the case; and

ii.are included by way of amendment of the statement of grounds and particulars at the earliest reasonable opportunity; and

iii.do not substantially change the case the applicant has to answer in the opposition

will not prima facie give rise to the applicant being unduly prejudiced by the relevant amendments.

6.        Where:

_the applicant objects to an amendment; and

_the amendment of the statement can reasonably be said to prejudice the applicant (such as by the addition of extra particulars); and

_the circumstances are such that there is a reasonable inference that the prejudice is undue - such as by the time at which the amendment is sought, or the nature or extent of the amendment sought;

there is a reasonable basis for the commissioner to prima facie conclude that the applicant will be unduly prejudiced by the amendment.  In this event, for the commissioner to allow the amendment the opponent has an onus of demonstration that its activities have not been such as to have unduly prejudiced the applicant.

DECISION

1. The opponent explicitly specified in the Statement of Grounds and Particulars the document on which it relies in the opposition, i.e., Australian Patent No. 611258.  This document is not changed by the proposed amendment.

1. The case which the applicant has to answer is not substantially changed.  The ground of "prior claiming" is unchanged.  The change is to the specific claims.  The claims are fundamentally the same since they are directed to the same invention.  Therefore, this does not substantially alter the case to be answered.

1. The amendment of the particulars is inherently detrimental or disadvantageous to the applicant.  But the circumstances surrounding the amendment have little effect on the case to be answered and do not introduce new evidence.  From the time of the original statement of grounds and particulars, the applicant was aware of Australian Patent No. 611258 and always had that document including all its claims for consideration.  These circumstances do not cause the degree of detriment or disadvantage to the applicant to be unwarranted, excessive, improper, inappropriate, or unjustified.

1. The opponent has not pursued further particulars.  It has merely re-defined the emphasis and detail of the existing particulars.

1. The re-defining of the particulars in the proposed manner could not be expected to cause undue protraction of the case.

The opponent received the proposed amendment on the same date that it received the last of the evidence-in-support, that is, the date on which the applicant became aware of what evidence it had to prepare a case against anyhow.  The grounds are unchanged and the amendment to the particulars does not substantially alter the case to be answered.  Hence, the time, at which the application for amending the Statement of Grounds and Particulars was made, did not cause any inherent delay.

And, as stated in point 2 above, the amendment does not substantially change the case which the applicant has to answer in the opposition.

So, the applicant is not unduly prejudiced by these amendments.

1. The applicant has objected to the proposed amendment to the Statement of Grounds and Particulars.  But the circumstances are not such that the prejudice is undue.  In these circumstances, the fact that the opponent has not demonstrated that its activities have not been such as to have unduly prejudiced the applicant is irrelevant to the Commissioner allowing the amendment.

Accordingly, I will allow the amendment.

Conclusion

1. I allow the amendment of the statement of grounds and particulars which the opponent requested .

1. The applicant is at liberty to apply for directions that the time for serving evidence in answer be three months from the date of this decision.

J. W. Thomson
Delegate of the Commissioner of Patents

Patent attorneys for the applicant  :  Davies Collison Cave, Melbourne

Patent attorneys for the opponent   :  Spruson & Ferguson, Sydney

OFFICIAL NOTICE

decision of a delegate of the commissioner of patents

Application        :    No. 621113 in the name of PLANT GENETIC SYSTEMS N.V.

Title             :    PLANTS WITH MODIFIED STAMEN CELLS

Action:    Opposition by PALADIN HYBRIDS INC. Request to amend the Statement of Grounds and Particulars.

Decision:    Issued            .  Amendment allowed.