Roussel-Uclaf v Shell Internationale Research Maatschappij B.V. and Ciba Geigy AG

[1987] APO 15

In the Matter of the Patents Act 1952

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In the Matter of Australian Patent Application No. 543379 in the Name of ROUSSEL‑UCLAF

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In the Matter of Opposition thereto by SHELL INTERNATIONALE RESEARCH MAATSCHAPPIJ B.V.

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Opposition thereto by CIBA‑GEIGY AG

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In the Matter of Objections to Applications for Extension of Time in which to Lodge Evidence‑in‑Support.

DECISION OF A SUPERVISING EXAMINER OF PATENTS:
Background
        Patent application No. 543379, entitled "Method of Treating Warm‑Blooded Animals Infested With Parasites", was advertised accepted on 18 April, 1985, and Notices of Opposition were lodged on 18 July, 1985 by Shell Internationale Research Maatschappij B.V. (SHELL) and Ciba‑Geigy AG (GEIGY).
        The opponents have applied for extensions of time in which to serve evidence‑in‑support on five previous occasions without any opposition from the applicant, said extensions being allowed to 18 January, 1987.  On 16 January, 1987 the opponents applied for a sixth extension of time until 18 April, 1987 in which to serve

evidence‑in‑support of the oppositions.  The grounds given in both applications were the same as the grounds which had been given in four out of the five preceding applications from each opponent.  These grounds read as follows:

"Further time is required to prepare the Opponent's Declarations in support of the Opposition."

The applicant (UCLAF) objected to both applications and the matter came to a hearing in Canberra on 28 April, 1987.  Mr. John‑David O'Connor, patent attorney of Spruson & Ferguson assisted by Dr. J.F. McCann, appeared for both SHELL and GEIGY; UCLAF was not represented at the hearing, instead relying on a written submission lodged by its attorney, Callinan & Associates, on 24 April, 1987.
Submissions
        Mr. O'Connor explained that the current state of the proceedings was that both GEIGY and SHELL had lodged and served out of time the publications on which they would rely.  He also stated that the declarations which related to the accession dates of these publications would soon be served and lodged.
Mr. O'Connor then submitted that it would be in the interests of both parties as well as in the public interest if the appeal to the full Federal Court in the Coopers' case (Coopers Animal Health Australia Ltd. v. Western Stock Distributors Ltd. 6 IPR 545) was determined before the present oppositions were finalised. He pointed out that the opponents considered that application No. 543379 and the petty patent, which is the subject of the Coopers' case, were for essentially the same alleged invention. Mr. O'Connor said that the outcome of the appeal may cause GEIGY and SHELL to rely on only a part of the material already lodged and in that case the costs to both parties could be minimised by incurring the relatively short delay involved in the present applications for extension. This submission, he said, had been communicated to UCLAF along with the opponents' desire to defer completion of the preparation of the evidence until after the handing down of the judgement in the Coopers' case.
Mr. O'Connor also submitted that in view of the difficulty associated with an allegation of obviousness since the Minnesota Mining case (Minnesota Mining and Manufacturing Co. and 3M Australia Pty. Ltd. v. Beiersdorf (Aust.) Ltd. 29 ALR 29), substantial assistance would be provided in these opposition proceedings if the matter of obviousness, or otherwise, of the petty patent was settled by the Federal Court. He pointed out that in the case of Bally Manufacturing Corporation v. Gottlieb and Co. ((1984) APOR 16) the hearing officer had said that overseas litigation could, in appropriate circumstances, be a relevant factor in extension of time proceedings whereas in the present situation the Federal Court was more relevant because it was the court to which a party in these proceedings could ultimately appeal.
        Mr. O'Connor said the fact that GEIGY and SHELL had already lodged a substantial amount of material, which had also been served on UCLAF, as well as the fact that the opponents thought that it was feasible to lodge and serve the balance of the evidence‑in‑support by 18 July, 1987 demonstrated that these were serious oppositions.  Consequently he argued it was in the public interest that the present applications for extension of time be allowed.
        The main arguments contained in the written submissions lodged on behalf of UCLAF can be summarised as follows:

1."In the present instances, there has been no explanation of the delay in lodging Evidence‑in‑Support.  There has been no indication, beyond an indication that the search has been conducted and concluded over twelve months ago, that any further work has been carried out.  There is no indication as to when it is anticipated that the Evidence‑in‑Support will be finalized."

2."Certain documents have apparently been lodged with the Patent Office and copies of these documents have been forwarded to the Attorneys for the Patent Applicant.  Copies of letters acknowledging receipt of those documents are enclosed.  The state of those documents affords no indication that the preparation of Evidence‑

in‑Support is by any means advanced or has even been embarked upon.  It appears from a consideration of these documents, alleged to be part of the Evidence‑in‑

Support, that little effort, other than the conducting of a search, apparently based upon a search conducted in another matter not concerning the two parties has been carried out.  The documents speak for themselves and indicate that neither Opponent is conducting its opposition with due diligence.  The documents forwarded to the Attorneys for the Patent Applicant do not enable the Patent Applicant fairly to consider what is the case that is being alleged against the patent application.  The documents consist of no more than a list of alleged prior art and, in one case, copies of declarations which apparently formed part of evidence in a matter not involving the two parties in the present opposition.  Serious questions arise as to the relevance of these copy declarations.  Despite the fact that the rules of evidence may be waived in proceedings before the Commissioner, we submit that this does not mean that documents prepared for one opposition can be lodged as evidence in another opposition where the questions may be quite different.  Furthermore, as far as the Attorneys for the Patent Applicant are aware, that other opposition matter has not been resolved.  In addition, it was advertised in the Official Journal on 1st May, 1986, at p.403, that Shell Internationalle Research Maatschappij B.V. had withdrawn its opposition to the grant of a Patent on Patent Application No. 529,748.  The weight that can be accorded to the evidence in these copy declarations in those other proceedings has not been ascertained.  The weight and relevance of the evidence in these copy declarations in relation to the present proceedings is minimal, and the proposed lodging of those copy declarations is vexatious."

In response to these points Mr. O'Connor submitted that the opponents' conduct of these oppositions proceedings was a direct result of their belief that there are special circumstances which apply to these matters in relation to the Coopers' case.  Mr. O'Connor argued that it did not matter that some of the material lodged by SHELL had originally been filed in other opposition proceedings because that opposition concerned the parent application of the petty patent which was the subject of the Coopers' case.  He asserted that SHELL had withdrawn the earlier opposition for commercial reasons and moreover he stated that the material lodged in the present opposition contained material extra to that filed by SHELL in the earlier proceedings.  Mr. O'Connor also argued that any delay in the present proceedings would be offset by the fact that in the s.59 opposition there would only be relevant evidence before the hearing officer.
Decision
        The law on extension of time in this class of action has been comprehensively reviewed in Vangedal‑Nielsen v. Smith (1980) 33 ALR 144 and in Lyons v. Registrar of Trade Marks 1 IPR 416. It is apparent therefrom that in deciding whether an extension of time should be allowed, the Commissioner

(i)must be satisfied that an applicant who seeks such an extension has made out a proper case justifying the extension, and

(ii)must consider not only the respective interests of applicants and opponents, but also those of the public by ensuring that worthless patents are not granted and that there are no unreasonable delays in the proceedings.

Additionally, it is important ‑ respecting evidence‑in‑support and an opponent's interest ‑ that an opponent should not be deprived of further prosecuting its opposition merely because it has had insufficient time to compile and bring material evidence before the Commissioner.  Nevertheless, it is clear from the above decisions that the applicant for the extension of time carries the onus of proof.
        Turning to the present situation, it seems to me that the appeal to the full Federal Court in the Coopers case may not be the end of the matter because either or both parties may wish to appeal to the High Court.  In that case the delay may be longer than the relatively short delay contemplated by Mr. O'Connor.
        With respect to the present application and the petty patent, which is the subject of the appeal in the Coopers case, I think that there are prima facie differences between the claim of the petty patent and the claims of the present application.
              According to Aickin, J. in the Minnesota Mining case (supra page 58) when there is an objection of obviousness the question is, is the invention itself obvious, not whether a diligent searcher might find pieces from which there might have been selected the elements which make up the patent.  Therefore, it seems to me, that the question in the s.59 oppositions to application No. 543379 and the question in the appeal in the Coopers' case will be related but different because the alleged invention itself is different.  Thus in my opinion the judgement of the full Federal Court in the Coopers' case will have limited relevance to the s.59 oppositions against application No. 543379.
        Mr. O'Connor's argument concerning minimisation of costs would have more force if the petty patent, which is the subject of the appeal in the Coopers' case, formed the essential part of the grounds of opposition of each opponent.  However it is apparent from the material already lodged that each opponent is relying on many publications but it is not evident which of these documents will be considered by the Federal Court in the Coopers' case.
        Accordingly the prospect of useful assistance arising from the appeal in the Coopers' case has to be weighed against the inconvenience, contrary to public interest, of delay whilst the outcome of the appeal is awaited.  In my opinion such further delay is not in the public interest because of the minimal benefit to be gained.  However, it is likely in the normal course of events that if the present extensions of time are allowed, the judgement of the Federal Court in the Coopers' case will be issued before the GEIGY and SHELL oppositions to the present application are decided.
        A circumstance of the present applications, which I cannot ignore, is that both opponents lodged a substantial amount of material before 18 April, 1987 and also served the same material on the attorney representing UCLAF.  According to Mr. O'Connor further declarations will be lodged by the opponents, if the present applications for extension of time are allowed, including declarations made by relevantly skilled expert witnesses.
             Consequently it is not surprising that the documents lodged so far do not enable UCLAF and its attorney to fairly consider what is the total case which is being alleged against the patent application.  However I consider that Dr. McCann's declaration lodged on 10 April, 1987 sets out the opponents' potential case in enough detail for UCLAF to be able to discern the general nature of the attack.
        If I disregard the documents which appear to have been produced by SHELL for an opposition to another patent application there are still a large number of publications which had to be found and considered in each opposition.  Both opponents appear to have made some progress in locating suitable expert witnesses because they think it is feasible to lodge and serve the balance of the evidence‑in‑support by 18 July, 1987.  Therefore I cannot conclude that the opponents have shown a lack of diligence in mounting their oppositions.  Prima facie the publications lodged so far describe similar subject matter to that defined in the claims in application No. 543379.  In that case I cannot agree with UCLAF's submission that the lodging and serving of these documents is vexatious.  Rather it seems to me that both GEIGY and SHELL are in the process of mounting serious oppositions to application No. 543379.  Moreover it seems likely that the evidence‑in‑support of these oppositions will be finalised by 18 July, 1987.
         Therefore, GEIGY and SHELL have, in my opinion, made out a proper case justifying the extensions and I therefore allow the applications for extension of time until 18 April, 1987.
        On 15 April, 1987 both opponents lodged another application for extension of time until 18 July, 1987 in which the grounds read as follows:

"Part of the evidence‑in‑support has been lodged and a copy of that part served on the applicant.  The subject matter of the alleged invention is so closely related to the subject matter of Australian Petty Patent 541 447 which has been declared invalid by the Federal Court, that the applicant believes that its own interests and the public interest would be best served by deferring completion of the evidence‑in‑support until the appeal against the judgement of the Federal Court which declared Petty Patent 541 447 invalid has been determined.  Further time is needed to await the outcome of that appeal, study the judgement of the full Federal Court and prepare further declarations in support of the opposition."

Therefore I allow UCLAF 14 days from the date of this decision to notify this Office if they wish to lodge objections to these applications for extension of time.
Costs
        My decision to allow the extensions of time did not rely on the grounds given in the applications but relied on the fact that the opponents lodged part of the evidence‑in‑support and are likely to complete their evidence by 18 July, 1987.  UCLAF received some of the evidence before it lodged the written submissions.  However it was unaware that the opponents thought it was feasible to lodge and serve the balance of the evidence by 18 July, 1987.  This date was first brought to UCLAF's and my attention at the hearing.  In that case I make no award of costs.

(M. KENDALL)