Schering-Plough Animal Health Limited v Crompton Corporation

OFFICIAL NOTICE
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No. 747527 in the name of Schering-Plough Animal Health Limited

Title: Aqueous insecticidal pour-on formulation

Action: Request to extend the time for serving evidence in support of an opposition by Crompton Corporation

Decision: Issued .
Abstract

Extension granted.
The evidence is likely to be highly significant, but is not particularised. The likelihood of amendment to the particulars being allowed considered.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No. 747527 by Schering-Plough Animal Health Limited, and a request to extend the time for serving evidence in support of an opposition by Crompton Corporation.

BACKGROUND

Patent application number 747527 in the name of Schering-Plough Animal Health Limited (hereafter referred to as Schering) was advertised accepted on 16 May 2002. A notice of opposition was filed by Crompton Corporation (hereafter referred to as Crompton) on 16 August 2002. A statement of grounds and particulars was served on 13 November 2002. The time for serving evidence in support was extended twice, and is now due to be completed by 13 August 2003. A further request to extend this time to 13 November 2003 had been made, and Schering objected to the extension. No evidence in support has yet been filed.
The request for extension of time was heard in Canberra on 30 September 2003. Both parties appeared by telephone. Schering was represented by Stephen Sharp, patent attorney of Griffith Hack. Crompton was represented by Catherine Hustwick, patent attorney of Madderns.
DECISION
The law on extensions of time
The time for serving evidence in support of an opposition is 3 months from the date of serving the statement of grounds and particulars (regulation 5.8). This time can be extended under regulation 5.10(2):
(2)       The Commissioner may:
(a)       on the application of a party in the approved form; and
(b)       on such reasonable terms (if any) as the Commissioner specifies:
extend the time within which the party may take a step prescribed in this Chapter, not being a step that is taken under regulation 5.3 or paragraph 5.4(1)(a).
This provision must be read in conjunction with regulation 5.10(5):
(5)       The Commissioner must not give a direction under subregulation (1) or grant an application under subregulation (2) or (4) unless the Commissioner:
(a)if he or she proposes to grant an application by a party - is reasonably satisfied that the other party has been notified of the application; and
(b)if he or she proposes to act on his own motion - ensures that the parties are notified of the proposed action; and
(c)       in either case:
(i)gives the parties a reasonable opportunity to make representations concerning the application or proposed action; and
(ii)is reasonably satisfied that a direction, and extension of time or the serving of evidence is appropriate in all the circumstances.
Consequently, it is a prerequisite to any decision that the Commissioner must ensure that the other party has been notified, and that both parties have had the opportunity to make representations. In the present case the other party has been notified, and the parties have been given the opportunity to make representations.
An extension can only be granted if the Commissioner is reasonably satisfied that it is appropriate. In exercising this discretion I am guided by the decisions of Burchett J in Ferocem Pty Ltd v Commissioner of Patents (1994) AIPC 91-057; 28 IPR 243, Sackville J in A Goninan & Co Ltd v Commissioner of Patents (1997) AIPC 91-330; 38 IPR 213 and Goldberg J in National Starch & Chemical Co v Commissioner of Patents (2001) AIPC 91-697, 50 IPR 398. The general principles that flow from these decisions are:
a)The power is discretionary:    Regulation 5.10 confers a broad discretion, which cannot be reduced to imperative compliance with particular requirements. It is necessary to give genuine and proper consideration to all relevant considerations. (Ferocem at AIPC 38,208; IPR 247-8, Goninan at AIPC 39,434; IPR 220)
b)Explanation of delay: The reasons why the evidence was not served earlier are a relevant consideration, but a satisfactory explanation is not a mandatory requirement. (Ferocem at AIPC 38,207-8; IPR 247)
c)The public interest:     The public interest in determining a serious opposition on its merits is a relevant consideration. (Goninan at AIPC 39,435-6; IPR 222)
*         In order to do this, it is necessary for the Commissioner to form a view as to the nature of the evidence that it is sought to adduce, and the significance of that evidence for the opposition proceedings. (Goninan at AIPC 39,438; IPR 225-6)
*         The significance of the evidence is assessed having regard to any relevant material available, not just the evidence itself. (National Starch at [33])
*         The public interest is not protected merely because some evidence has already been served. (Goninan at AIPC 39,438; IPR 225)
d)The interests of the party seeking the exercise of discretion: The interests of the party seeking the exercise of discretion are a relevant consideration. (Ferocem at AIPC 38,208; IPR 247)
e)The interests of other parties: It is relevant to consider the disadvantage to the other party of delays in determining the opposition, and the effect of delays on the efficient and orderly administration of the Patents Office. (Ferocem at AIPC 38,208; IPR 247, Goninan at AIPC 39,436; IPR 222)
Explanation of the delay
The first and second extensions were based on preparing evidence of prior use in Australia. The present extension of time is not based on prior use (that ground is apparently not being pursued any longer). The present extension is accompanied by a statutory declaration by Richard Stuart Catt (a patent attorney with Madderns), which states:
"our client requires further time in which to review and prepare their evidence in this matter, as it appears that they may be relying primarily on prior publication"
[paragraph 5]
At the hearing Ms Hustwick explained that Crompton was originally intending to rely on prior use of a product called Dimilin in order to anticipate the invention. This is consistent with the statement of grounds and particulars. However, Crompton has now found that Dimilin was not sold in Australia before the priority date, so this line is no longer being pursued. Instead, Crompton now intends to rely on publications that disclose the Dimilin product. These documents are apparently already available to Ms Hustwick, but further time is needed to obtain declarations from relevant experts in relation to these documents.
Mr Sharp pointed out that these reasons are not related to the opposition, as the particulars refer to the use of Dimilin rather than documents that disclose Dimilin. Does this mean that the explanation provided is irrelevant? In Kent-Moore Corp v Environmental Products Amalgamated Pty Ltd (1992) 25 IPR 233 at 241 the Assistant Commissioner of Patents discussed some of the factors that need to be considered in an extension of time case. The first factor was whether the reasons were based on "matters not referred to (either directly or by clear implication) in the statement of grounds and particulars". In the present case, the particulars clearly assert that the product Dimilin anticipates the invention as claimed. Crompton intends establishing this assertion by documents rather than prior use, but this does not change the essential case asserted by the statement. I am satisfied that an explanation has been provided that is relevant (by clear implication) to the particulars as they presently stand.
Nature and significance of the evidence
The public interest in determining a serious opposition on its merits requires me to form a view on the nature and significance of the evidence that the opponent will serve. The nature of the evidence is now very clear - documents disclosing the product Dimilin. The significance of this evidence lies in the fact that Dimilin is asserted to be an anticipation of claim 1. If this assertion can be made good, then this would clearly be highly significant evidence. The difficulty lies in the fact that these documents are not particularised, so are not formally within the scope of the opposition. This raises the question of whether the failure of the particulars to mention these documents is fatal to the extension of time.
It is necessary to give proper consideration to all relevant factors, and not reduce the exercise of the discretion afforded by the Act to an arbitrary rule. It is reasonable to conclude that if a document is not part of the opposition, then its significance is reduced. However, if the particulars were to be amended, then the documents would become part of the opposition. Mr Sharp encouraged me to deal only with the particulars as they stand, and not to speculate on amendments that may never be allowed. It seems to me that the significance of the evidence necessarily relates to whether it is likely to become part of the opposition. While it is not appropriate for me to rule on the allowability of an amendment that has not even been proposed, it is necessary for me to form a view in order to decide the significance of the evidence. I believe this consistent with the Goninan and National Starch decisions.
The particulars already refer to the Dimilin product, and state that it anticipates claim 1 (at least). Reference to documents that establish the composition of Dimilin would probably not change the nature of the case asserted by Crompton. It seems likely that Crompton would be able to amend the particulars to include explicit reference to the new documents. I conclude that the evidence that is likely to be filed is of high significance for the opposition.
The interests of Crompton
The interests of Crompton clearly favour the allowance of further time so that all relevant evidence can be considered at the opposition. Indeed, the total absence of evidence to date means that there will be no case to answer on several grounds if the extension is not given. The interests of Crompton lie heavily in favour of an extension of time.
The interests of Schering and the Patent Office
The interests of Schering favour the opposition being resolved expeditiously. Consequently, their interests lie against allowing an extension of time.
The effect of the delay on the efficient and orderly administration of the Patent Office lies against allowing the extension, but this is not a significant consideration.
The balance of considerations
I have been given an adequate explanation for the delay, and the nature of the evidence that will be served suggests it would be of high significance. The interests of Crompton and Schering appear to be opposed, and largely offsetting. The interests of the Patent Office are a minor consideration. I am satisfied that a case for an extension of time has been made out.
Conclusion
I allow an extension of time until 13 November 2003 in order for Crompton to serve evidence in support. I note that Ms Hustwick stated that she expected evidence to be finalised by this date. I expect that Crompton will ensure that no further extensions of time are necessary.
Costs
Crompton has been successful in their request for an extension of time. However, the critical information (that the case would rely on publication of Dimilin rather than use of Dimilin) was only provided at the hearing. I consider that it is appropriate to make no award of costs in the present case.
Dr S.D.Barker
Delegate of the Commissioner of Patents
Patent attorneys for the applicant : Griffith Hack, Sydney
Patent attorneys for the opponent : Madderns, Adelaide

[2003] APO 45

14 October 2003