Sandoz Ltd v Fujisawa Pharmaceutical Co Ltd

[1993] APO 15

official notice

decision of a delegate of the commissioner of patents

Application        :    No. 619772 in the name of SANDOZ LTD

Title:    Improvements in or relating to organic compounds

Action:    An application under regulation 5.10(2) for an extension of time of three months to serve evidence in support, and an objection thereto by FUJISAWA PHARMACEUTICAL CO LTD

Decision:    Issued            .  Extension of one month granted. Opponent failed to discharge the onus of establishing that the extension was justified, and failed to provide a full and frank disclosure.

patents act 1990

decision of a delegate of the commissioner of patents

Re:Patent Application No. 619772 by SANDOZ LTD, opposition thereto by FUJISAWA PHARMACEUTICAL CO LTD, an application under regulation 5.10(2) for an extension of time to serve evidence in support, and an objection thereto.

background

Application 619772 was filed on 8 November 1988 as application 24902/88. It was advertised as accepted on 6 February 1992, and a notice of opposition was filed by Fujisawa Pharmaceutical Co Ltd (Fujisawa) on 5 May 1992.

The time for serving the statement of grounds and particulars expired on 5 June 1992. A statement was filed in the patent office on that day, but service was not effected until 9 June 1992. On 18 June the applicant requested dismissal of the opposition, on the basis that the statement of grounds and particulars was served out of time and thus of no effect.

On 2 July 1992, the opponent filed a letter explaining that the statement was forwarded by mail to the applicant on 4 June 1992, with a copy sent to the Commissioner the same day, and observed that from the date of service it apparently took 5 days for the mail to be delivered. On 22 July the opponent requested an extension of time of four days to serve the statement of grounds and particulars.

On August 6, the applicant (through a new patent attorney), objected to the extension sought on the basis that it was supported by submission only (not a declaration). On 11 September the applicant withdrew its objection to the extension of time, and its request for dismissal; on 23 September I decided not to dismiss the opposition, and the parties were advised that the time for serving evidence in support would, as per regulation 5.8(1)(1)(iii), be dated from 23 September 1992.

On 5 September 1992, the opponent requested an extension of time for serving evidence, for the period 5 September to 5 December 1992. In my view that request was filed as a precautionary measure to preserve the rights of the opponent, they being uncertain what the effect would be of the dismissal application on the time for serving evidence. I attach no other significance to its filing.

On 22 December 1992, the opponent requested an extension of time of 3 months for serving evidence in support, for a period ending 23 March 1993. On the same day, the opponent served part evidence in support on the applicant. I understand that evidence to essentially comprise copies of the documents particularised in the statement of grounds and particulars, together with a document setting out the grounds of objection, and an unwitnessed affidavit by a potential declarant in the matter.

On 15 January, the applicant filed a notice of objection to the extension of time; I heard the matter in Melbourne on 17 February 1993. The applicant was represented by Mr. D Tadgell, patent attorney of Phillips Ormonde & Fitzpatrick, Melbourne; the opponent was represented by Mr J McCormack, patent attorney of Griffith Hack & Co, Melbourne.

As the application was advertised after the commencement of the Patents Act 1990, the procedures of the opposition are essentially governed by Chapter 5 of the Patents Regulations 1991.

The Request

The reasons specified in the request for an extension of time (with some omissions of no relevance to the present matter) are as follows:

We, the opponent, are in the process of preparing declarations suitable for lodgement as the evidence in support. Searches to locate relevant documents including patent specifications and non-patent literature have been conducted. The results of the searches are available. A potential declarant, Mr. Hachiro Tagami of Japan, has been approached with a view to becoming a possible declarant. Mr Tagami is a world famous dermatologist.... . Mr Tagami has provide some information in the form of an unwitnessed affidavit which is of some assistance in preparing a suitable declaration. However further time is required for Mr. Tagami to fully consider the specification of the patent application being opposed and to further consider the information disclosed in the documents referred to in the Statement of Grounds and Particulars of Opposition with a view to providing a more detailed analysis of the relationship of the prior art documents located in the searches with respect to the invention of the application being opposed and to demonstrate why a patent should not be granted in respect of the patent being opposed. Accordingly further time is required to prepare a more fully detailed and comprehensive Statutory Declaration in accordance with the requirements of the current Patents Act.

A submission concerning an outline of the statement of case ... has been prepared in which the information disclosed in the specification of the patent application being opposed is discussed with particular reference to the disclosures of the documents in the statement of grounds and Particulars. Further time is required to elaborate and develop this submission for inclusion in the declarations forming evidence in support. Accordingly, further time is required by the opponent to formalise the information already in possession of the opponent into a form which is suitable for lodgement as the Evidence in Support of the opposition.

Additionally, part of the Evidence in Support has been served on the applicant and a request to determine the date of publication of a number of foreign patent specifications included in that part of the Evidence in Support which has been served on the applicant has been lodged at the patent office.

During Mr McCormack's submissions at the hearing, I sought elaboration on a number of issues in the request for an extension of time, which I will refer to later. However I note here one of those matters - viz:

-The second sentence of the reasons specified in the request states that "Searches to locate relevant documents including patent specifications and non-patent literature have been conducted." I enquired whether this referred to searching for documents other than those referred to in the statement of Grounds and Particulars. He assured me that it did not, and the attorney for the applicant observed that the documents served to date are the documents referred to in that statement.

Submissions

The submissions of both parties centred on the application of the 'Kent-Moore' decision [Kent-Moore Corporation v Environmental Products Amalgamated Pty Ltd (1992) AIPC 90-915] with Mr McCormack arguing that that decision had not changed the law that applied under the 1990 Act vis-a-vis the 1952 Act, and that the circumstances of the present case meet the criteria set out in that decision. He also argued that the applicant was inconsistent - in that by requesting dismissal of the opposition in allegedly frivolous circumstances, the applicant had delayed the proceedings, so they should not now complain about an extension of time. He also argued that because this is a first extension of time application it should (in effect) be granted more or less as of right.

Mr Tadgel argued that the requirements under the 1990 Act regulations were different to that under the 1952 Act regulations, and that the present case did not satisfy the criteria set out in Kent-Moore (supra). He also argued that the opponent has had ample time to prepare its evidence in support, as it had the 3 1/2 months available when the dismissal request was pending.

Mr McCormack also noted that prior to the hearing the applicant made an offer to withdraw their objection to the extension of time, but they were not prepared to agree to certain proposed terms. Mr Tadgel tendered a copy of the offer (which Mr McCormack agreed was the offer made), and I note that the terms would essentially restrict the opponent to doing the things specified in the request. Mr McCormack submitted that by this offer the applicant had acknowledged that an extension of time was justified; Mr Tadgel submitted that by failing to accept the terms suggested, the opponent was indicating that they needed the extension of time being sought for matters not covered by the statement of grounds and particulars.

Decision

There are two subsidiary issues that need to be dealt with before dealing with the main issue of this action.

-Firstly, I do not believe that the period in which a dismissal action is pending can properly be taken into account when assessing whether the opponent has had adequate time to prepare its evidence in answer. Once dismissal is requested, the whole status of the opposition is indeterminate until the decision in that dismissal action - and in those circumstances it is inappropriate to expect the opponent to continue diligently preparing its evidence in support pending a decision in the dismissal. Indeed this is clearly reflected in the provisions of regulation 5.8((1)(a)(iii), whereby evidence in support is due 3 months after a decision not to dismiss an opposition. If an applicant elects to request dismissal of an opposition, they should not expect the opponent to continue the preparation of their evidence in support while the dismissal action is pending.

-Secondly Mr McCormack suggests, on the basis of (superceded) practice note HPN6 [which includes a statement that "first extensions of time will be given less rigorous consideration by the Commissioner"] that I should readily grant the extension of time sought. However the statement in HPN6 can only be of significance in the context of the Commissioner's consideration of a request for an extension of time as between him and the person making the request (ie in the absence of an objection by the other party to the grant of an extension of time). Where there is a dispute between parties, a 'less rigorous' consideration would clearly be unfair (if not a denial of natural justice) to one or other of the parties - a situation that could not be countenanced by the Commissioner. I also observe that HPN6 was effectively superceded when Chapter 14 of the Hearings Manual was issued in September 1992 - and is thus irrelevant to the present matter.

On the main issues of the extension of time, the decision of Kent-Moore (supra) sets out the requirements for obtaining an extension of time for an opposition proceding under chapter 5 of the Patents Regulations 1991. These requirements are that an extension of time should only be granted if the answer to each of the following questions is negative:

a.is the justification based on matters not referred to (either directly or by clear implication) in that statement of grounds and particulars?

b.is the extension sought to find evidence to support speculative or non-specific particulars?

c.is the extension sought because the opponent requires more time to determine whether a particularised document is relevant? and

d.has there been unreasonable delay in putting the evidence together?

Furthermore, that decision emphasises that the applicant for an extension of time bears the onus of justifying the extension sought, and refers to the relevant law in the following terms:

"This law can be stated simply as follows:

(i)The Commissioner, before allowing the extension, must be satisfied that the person seeking the extension has made out a proper case justifying the extension;

(ii)The Commissioner must consider not only the private interests of applicants for patents, and opponents, but also the public interest, by ensuring that invalid patents are not granted, and that proceedings are not unreasonably protracted.

However, whatever the justification might ultimately be, it seems to me that it is imperative that the person seeking the exercise of the Commissioner's discretion must provide the Commissioner with a full and frank disclosure of the facts which give rise to the need for the extension. That much is apparent from the words of Jenkinson J in Kimberly-Clark v Commissioner of Patents 13 IPR 569, when he was considering an extension of time under s 160 of the Patents Act 1952. At page 583 he says:

"The considerations that were identified by Bowen CJ in Vangedal-Nielsen v Commissioner of Patents (1980) 33 ALR 144 at 150 as relevant to the exercise of the power of extension conferred by s 59(1) will in my opinion be relevant also to the exercise of the power conferred by s 160(2)(a) in relation to the time prescribed by the former subsection for lodging notice of opposition, although the relative weight of each consideration may well be different in the two different discretionary judgements. In order to make out the "proper case ... justifying an extension" to which Bowen  CJ referred in that case, an applicant would in my opinion have to go beyond a disclosure of the processes by which an agent's errors came to be committed, and would have to expose frankly, inter alia, all the conduct, knowledge, beliefs and mental processes of the applicant (or, in the case of corporation aggregate, of the relevant officers and other agents) relevant to an understanding of the way the failure to do the act or take the step occurred, or relevant to an evaluation of the reasonableness of that conduct."

(My emphasis added.)

In my opinion, a person seeking an extension of time to serve evidence in opposition proceedings is bound by the same onus of disclosure. If that onus is not discharged, the Commissioner cannot be satisfied that the extension is appropriate in all the circumstances, and therefore must not grant the extension of time."

Thus it is appropriate for me to consider each of these questions above in turn, in the context of the justification provided by the request and the submissions made by both parties at the hearing.

Is the justification based on matters not referred to (either directly or by clear implication) in that statement?

The applicant suggested that the failure of the opponent to agree to their terms in the proposal for withdrawing their objection can only be explained on the basis that the opponent was intending to do things beyond the statement. Mr McCormack for the opponent stated that they were concerned that their expert might, in the course of preparing his declaration, become aware of a particularly relevant document - and inclusion of that document should not be excluded. I note that the expert has had some considerable involvement to date - to the extent that a draft declaration has been prepared. In these circumstances it could be argued that the expert should have identified all relevant documents within his personal knowledge, but I do not entirely exclude the possibility that this is not the case.

Mr McCormack clarified the meaning of the second sentence of the request - viz that "Searches to locate relevant documents including patent specifications and non-patent literature have been conducted." - as referring to the searches done prior to filing the statement of grounds and particulars, and not to subsequent searches.

In all the circumstances I am reasonably satisfied that the extension sought is not based on matters not referred to in the statement.

Is the extension sought to find evidence to support speculative or non-specific particulars?

From the material before me I am satisfied that the extension sought is not for this purpose.

Is the extension sought because the opponent requires more time to determine whether a particularised document is relevant?

An exhibit to a declaration filed on 22 December 1992 contains a "submission concerning an outline of the statement of case ... in which the information disclosed in the specification of the patent application being opposed is discussed with particular reference to the disclosures of the documents in the statement of grounds and particulars. Further time is required to elaborate and develop this submission for inclusion in the declarations forming evidence in support."

On the one hand this could be construed as suggesting that the opponent is still trying to establish the relevance in the opposition of some or all of the particularised documents in citations. On the other hand, this could be construed as indicating that the opponent is fully aware of the relevance of the particularised documents, and is endeavoring to put the material into a cogent form.

On the basis of the submissions made at the hearing, I incline to the latter view. Thus I am reasonably satisfied that the extension sought is not for the purpose of ascertaining whether particularised documents are relevant.

Has there been unreasonable delay in putting the evidence together?

In my view it is fundamental to the resolution of this question that the person requesting an extension of time reasonably establishes that their conduct does not involve unreasonable delay in putting their evidence together.

I noted above that at the hearing I sought from Mr McCormack some elaboration on a number of points that were raised by the request for an extension of time. Specifically:

-I requested advice as to when Mr Tagami was first contacted in the matter. Mr McCormack pointed to exhibit JDM 29, served on 29 December 1992, which was signed by Mr Tagami on 25 June 1992.

-I requested Mr McCormack to elaborate on the reasons why Mr Tagami had been unable to complete his declaration in the time provided - noting that the statement of reasons merely states that further time is required. Mr McCormack referred to the "well known" problems of translation of material into/from Japanese, and the difficulties of preparing a declaration dealing in detail with the 27 documents cited. He observed that if 3 1/2 days were taken to fully consider each of the 27 particularised documents, 3 months would elapse. He also noted the presence of Christmas (which I here note occured after the end of the period sought to be extended), the Japanese holidays (of which I have no knowledge), and that Mr Tagami was a university professor. Mr McCormack was unable to provide any other information as to the activities or other commitments of Mr Tagami that might reasonably justify his being unable to complete the evidence in time, noting that he (McCormack) was not in Japan. He also did not know when Mr Tagami had become appraised of the 27 documents. Finally, he stated that the 'real reason' why the declaration had not been executed was that it had not been put into the form required by the Patent Office.

-I requested Mr McCormack to provide information as to when the request to determine the date of publication of a number of foreign patent specifications was lodged at the Patent Office, and whether there had been any delays in the Patent Office providing that information. He responded that he thought one was in May 1992, and one possibly on 22 December 1992. He was unable to provide me with anything specific (such as a copy of the letter of request), and did not know whether or not the information requested had been received.

At the hearing I specifically expressed my concern with these matters, and the issue of full and frank disclosure. Indeed (and in the absence of a request initiated by him) I took the unusual (if not unwarranted) step of going so far as to ask Mr McCormack whether he would like time subsequent to the hearing to obtain and file further material in respect of these matters. Although he initially expressed a possibility of raising the matters with his client and providing a response within 10 days, he ultimately declined the offer.

I do not accept that the mere fact that translations are required justifies an extension of time. In my view, where a party requires translations of material they should have arrangements in place for such translations to be done expeditiously - otherwise delays that arise from the translations are undue. Even then, if there is a justification for an extension of time arising from delays in translation it cannot be for longer than the time lost by those delays. In the present case the opponent has referred to the 'well-known' problems of translation into/from Japanese. Unfortunately I do not know what those 'well-known' problems are, but I am prepared to accept that there have been some delays (of the order of one month) caused by the need for translations. In the absence of specific elaboration, I am therefore of the view that an extension of one month is justified - but I do not accept that an extension of 3 months (as sought by the opponent) is justified for that reason.

The opponent also relies upon the fact that they have written to the Patent Office to obtain publication dates of certain documents. Again, the mere fact that a party has sought publication dates from the Office  does not justify an extension of time. In particular:

-assuming the documents for which publication dates are sought are listed in the statement of grounds and particulars, is it reasonable for the party to leave making the request until the end of the period for serving evidence - or does such conduct introduce undue delay ?

-if the documents for which publication dates are sought are NOT listed in the statement of grounds and particulars, the request would be for a purpose beyond the scope of the statement and would not provide justification for an extension of time.

-if a request has been made to the Patent Office, delays in obtaining a response would be justification for an extension of time - but not for a period significantly in excess of such delays.

The opponent has provided no justification for an extension based on this issue over and above the mere fact that they have made a request. I particularly note that the opponent has declined an opportunity to provide further information - such as copies of any relevant correspondence, and anything showing there had been any delays in the Office responding to requests.

Finally, I note that beyond the statement that "further time is required for Mr. Tagami to fully consider ...." no explanation has been given as to why Mr Tagami requires further time, or alternatively why it has taken so long for the declaration to be prepared for Mr Tagami. Furthermore, Mr McCormack has declined an opportunity to provide further information.

As stated above, it is incumbent upon a person seeking the grant of an extension of time to provide a full and frank disclosure of the facts which give rise to the need for the extension. In my view this has not been done, and furthermore the opponent has declined the opportunity to provide further information. I am therefore unable to find, apart for a one-month period associated with translations, that there has not been unreasonable delay.

In the circumstances I conclude that the opponent has not discharged its onus of establishing that the three month extension of time sought is justified. Accordingly I decide that the full extension of time sought is not justified.

Conclusion

On the basis of the material available to me I have found that:

-there is justification for an extension of time of one month; and

-the opponent has otherwise not discharged its onus of establishing that an extension of time is justified, and in particular has not provided a full and frank disclosure of the facts which give rise to the need for the extension of time.

Accordingly I refuse to grant the full period of the extension of time sought, but grant an extension of time of 1 month - to 23 January 1993 - for serving evidence in support.

The applicant is at liberty to request directions that the time for serving evidence in answer is to run from the date of this decision.

COSTS

In actions before the Commissioner, costs usually follow the event, and in this matter, both parties sought an award of costs on that basis. Having regard to my granting only a limited extension of time, I make no award of costs.

D. HERALD

Assistant Commissioner of Patents

Patent attorneys for the applicant  :  Phillips Ormonde & Fitzpatrick, Melbourne

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