South Australian Shark Cartilage Pty Ltd v Rushby Pty Ltd

[1998] APO 35

official notice

decision of a delegate of the commissioner of patents

Patent:          No. 680385 in the name of SOUTH AUSTRALIAN SHARK CARTILAGE PTY LTD

Title:          METHOD OF CLEANING CARTILAGE FROM MARINE ANIMALS

Action:          Application for an extension of time to serve evidence in support of an opposition by RUSHBY PTY LTD and objection thereto by SOUTH AUSTRALIAN SHARK CARTILAGE PTY LTD

Decision:          Issued            .

Abstract

The application is not justified by the reasons provided. The public interests and the opponent’s interest favour the grant of an extension to ensure the application can be dealt with on its merits. The opponent stated that all their evidence will be ready to file in 4 weeks from the date of the hearing.

Therefore in order to avoid any undue protraction of the proceedings application for extension of time granted until 1 July 1998.

patents act 1990

decision of a delegate of the commissioner of patents

Re:Patent Application 680385 by South Australian Shark Cartilage Pty Ltd, an application for an extension of time to serve evidence in support of an opposition by Rushby Pty Ltd and objection thereto by South Australian Shark Cartilage Pty Ltd.

background

Patent application number 680385 was filed on 19 February 1996 by South Australian Shark Cartilage Pty Ltd (hereinafter referred to as SA Shark Cartilage).  The application was advertised accepted on 24 July 1997.  A notice of opposition to the grant of a patent was filed by Rushby Pty Ltd  (hereinafter referred to as Rushby) on 24 October 1997, and a statement of grounds and particulars was served on 23 January 1998.

Evidence in support was due to be completed by 23 April 1998. Part of Rushby's evidence in support, in the form of a statutory declaration by Donald Morrison with exhibits DM1 - DM 10, was served on 22 April 1998.

Also on 22 April 1998, Rushby filed an application for an extension of time of three months from 23 April 1998 to 23 July 1998 to serve evidence in support.  SA Shark Cartilage objected to the extension on 7 May 1998.

The application for extension of time was heard in Canberra on 3 June 1998.  SA Shark Cartilage was represented by Ms Doreen Perrin, patent attorney of Collison and Co, Adelaide.  Rushby was represented by Dr Paul Wyk, patent attorney of A. P. T., Adelaide.

THE APPLICATION FOR EXTENSION OF TIME

The application, which was filed on 23 April 1998 did not include any reason for the need for further time to serve evidence in support. In response to a request to provide reasons the opponent supplied the following reasons on 7 May 1998:

“Evidence supporting the claims of prior use by Mr. Morrison has been collected and a number of declarants that can corroborate Mr. Morrison’s evidence have been interviewed. Further time is required to collate this information and prepare declarations for those individuals. Mr Andresen has been interviewed and indicated his prior use and a number of declarants who can support this evidence are being interviewed and their evidence is being collated and assessed for suitability. Further, a number of individuals are said to have used the method of the opposed application before the priority date and declarations supporting this particular have been and are currently being prepared. Additionally, information from a number of individuals who are involved in the shark fishing industry has been collected and declarations have been and are being prepared and finalised, which declarations are needed to establish the common general knowledge in the industry at the relevant time.  A further declaration setting out some of the scientific background to the habitat and biology of sea lice is also being prepared.

A considerable amount of time has been spent interviewing individuals of pertinence to this opposition however not enough time has been available to fully collate the material to hand.”

SUBMISSIONS

Ms Perrin stated that the Commissioner, before allowing an extension of time should be satisfied that the person seeking an extension has made out a proper case justifying the extension. She made the following points in relation to whether the opponent had made out a proper case justifying an extension of time:

• The application had been accepted on 24 July 1997 which meant the opponent would, if the extension were granted, have in effect 12 months in which to file evidence in support and this is excessive. It would unreasonably protract the proceedings and thus not be in the public interest.
  
  

• No reasons were submitted with the original application for extensions of time. The reasons submitted on 7 May 1998 in response to the Commissioners request were submitted out of time and the Hearing Officer should take no account of them.
  
  

• If the reasons submitted on 7 May 1998 are considered, they do not give a great deal of information about why the extension of time is required and simply state that a number of people are being interviewed and do not make out a proper case for justifying an extension of time.
  
  

• As the opposition is based on allegations of prior use (no documents being relied on for the purposes of novelty or inventive step), the applicant would only know the full case to be answered when the evidence was filed. That is they would not know what case they have to answer because the opponent had not stated what people they were relying on to corroborate the evidence of the parties specifically listed in the statement of grounds and particulars. The opponent is on a fishing expedition to search for people able to support the allegations of prior use and there are no people other than the evidence already supplied.
  
  

• The reasons of 7 May 1998 relate to material that was not mentioned in the statement of grounds and particulars either directly or by clear implication. There is no reference to the biology of sea lice and yet extra time is being sought to file evidence on this point.

In response Dr Wyk stated the approach taken should be as set out in the Office decision in Nippon Steel Corporation and BHP Steel (JLA) Patent No. 675388 issued 13 May 1998.  In particular that regulation 5.10 confers a broad discretion which cannot be reduced to an imperative compliance with particular requirements. He made the following points:

• The opponent’s case centres on prior use by Mr Morrison, prior use by Mr Andresen, common general knowledge and Section 40 problems and evidence is sought on each of these issues.
  
  

• This is a serious opposition and because it relies on prior use the only evidence is in the form of declarations. There would be no documents for the Commissioner to consider in a bar-to-sealing action and so the case would be completely shut out if the extension is not granted.
  
  

• The state of the evidence is:

1. A declaration by Mr Morrison on his prior use of the method of the invention has been filed and served. However as there is no paper evidence on sales, the opponent is seeking corroborating evidence.  They are currently reviewing the declaration of a collaborator of Mr Morrison’s which agrees with details of the method used by Mr Morrison.  A declaration by Mr King Chang indicating that he purchased dried shark cartilage from Mr Morrison before the priority date has been or is about to be signed and they are awaiting its return from Port Lincoln.  These 2 declarations will be ready to file within a week of the hearing date.

2. Mr Andresen has withdrawn from making a declaration.  A number of individuals who agree that Mr Andresen had cleaned shark cartilage in this way have been interviewed. A draft declaration for an individual who had a commercial relationship with Mr Andresen and was able to furnish some evidence was being reviewed and this could be provided within 2 weeks.

3. Three declarations by commercial fisherman on the common use of immersing specimens in the sea to clean them were at hand and could be filed immediately.

4. There are deficiencies in the specification firstly at page 2 lines 26 -29 where the promise of the invention is that it provides a “hygienic” method of cleaning and at claims 1, 9, 5 and 6 where the range of size of openings in the containers is indeterminate because there are a range of creatures that might be called sea lice in a great range of sizes. Therefore they are seeking an expert in the biology of sea lice to provide evidence on these points. The opponent is finalising a draft declaration from a marine biologist in Queensland which should be available in 3 weeks.

Reasons for the delay in filing this material were provided as follows:

• The attorney received instructions from the client only days prior to filing opposition and up until the statement of grounds and particulars was filed on 23  January 1998 they were ensuring that there was a reasonable case to answer.

• At the same time they tracked down commercial fishermen and had declarations prepared indicating the common general knowledge. They were not able at that time to identify an appropriate scientific witness. They tried by contacting museums, institutes, internet listings and patent literature.

• Also at this time the declaration by Mr Morrison was finalised although it was not received back in the office until 3 April 1998.

• A number of individuals were also interviewed at this time in relation to the prior use but no direct evidence was able to be obtained.

• The declaration by Mr Morrison’s collaborator was delayed because of a bereavement experienced by the collaborator.

• From January 1998 to April 1998 the opponent had been trying to attract the attention of the applicant in order to come to some commercial arrangement although no direct approach had been made. While indirect approaches were being made they were not actively searching for material.

• Steps taken since 23 April 1998 are listed above under state of the evidence.

DECISION

The law on extensions of time under Regulation 5.10

The time for serving evidence in support of an opposition is three months from the date of serving the statement of grounds and particulars under regulation 5.8.  This time may be extended under regulation 5.10:

(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).

Regulation 5.10(5) provides:

(5)       The Commissioner must not ... grant an application under subregulation (2)          ... unless the Commissioner:
           ...
(c)       ...

(i)gives the parties a reasonable opportunity to make representations concerning the application...; and

(ii)is reasonably satisfied that ... an extension of time or the serving of further evidence is appropriate in all the circumstances.

A thorough consideration and summary of the law, as it stands, on the extension of time provisions was given by Burchett J in Ferocem Pty Ltd v Commissioner of Patents (1994) 28 IPR 243 and more recently by Sackville J in A Goninan & Co Ltd v Commissioner of Patents (1997) 38 IPR 213.  It is clear from these decisions that regulation 5.10 confers a broad discretion, which cannot be reduced to an imperative compliance with particular requirements.  This would not concur with the relevant regulation.  On the contrary it is necessary to give proper, genuine and realistic consideration to all relevant aspects of the case.  Relevant aspects include:

(a)The provision of an explanation or justification for the delay in completing the evidence in support

The reasons why the evidence was not served in time are a relevant consideration, but a satisfactory explanation is not a mandatory requirement.

(b)The public interest

The public interest in determining a serious opposition on its merits is a relevant consideration.  There is also the efficient and orderly administration of matters before the Patents Office to consider.

(c)The interests of the parties involved in the opposition

Disadvantages to either the applicant or opponent are relevant considerations.

If I am to be reasonably satisfied that an extension of time is appropriate in all the circumstances, then I must take into account all matters relating to the above aspects when deciding the issue.

Application of the law to the facts

(a)       The provision of an explanation or justification for the delay;

Ms Perrin argued that the application should be justified by the reasons given at the time of its filing.  She submitted that any explanation or evidence filed subsequent to the filing of the application should be ignored by me in determining whether or not the extension is justified.

I do not agree that I should only consider the material which was provided at the time of the application when deciding whether or not the application is justified.  Any subsequent material which provides an explanation for the delay is a relevant consideration that I should take into account. Hence in addition to the reasons supplied on 7 May 1998 I will also consider the further explanations provided at the hearing. In this regard I refer to the Office decision in Nippon Steel Corporation and BHP Steel (JLA) Patent No. 675388 issued 28 February 1998.

Some demonstration on behalf of the opponent of their diligence in progressing the opposition proceedings in the form of serving partial evidence and an indication of their progress in a consistent approach to obtaining evidence would contribute to providing an explanation or justification of the delay. In this case the opponents have served partial evidence in support in the form of Mr Morrison’s declaration. They have also set out clearly what remains to be done and have predicted that all evidence would be ready to file within four weeks of the hearing date, well ahead of the date to which they have sought extension.

Dr Wyk also stated that the declarations of three commercial fishermen relevant to the state of the common general knowledge were prepared and at hand ready to file. He further stated that these declarations were prepared during January 1998. It is not clear why they were not filed before the expiry of the original period for serving evidence in support.

Ms Perrin argued that the delay caused by seeking an expert in the biology of sea lice was not warranted by the nature of the invention and was not mentioned in the statement of grounds and particulars either directly or by clear implication. Dr Wyk referred to two section 40 problems particularised in the statement relating to whether the claims achieved the promise of the invention as an “hygienic” method and in relation to the size of sea lice. I find that these issues have been particularised and it is appropriate for the opponent to seek evidence from an independent expert on these issues.

The opponent has set out the steps taken to collect the evidence and provided some reasons why they have been delayed. While some of these reasons relating to the difficulty in finding an appropriate expert witness, the personal bereavement experienced by one of the declarants and the difficulties associated with the withdrawal of one of their principal witnesses would seem to justify the extension of time, I find that the major reason for the delay appears to be because they did not seek any evidence during the period from filing the statement of grounds and particulars on 23 January 1998 to filing the extension of time on 22 April 1998. The opponent states that they did not seek evidence at this time as they were making indirect approaches to attract the attention of the applicant in a commercial arrangement. I agree with Ms Perrin that it would be unfair to the applicant to grant an extension of time because the opponent made no direct approach to the applicant and as a result did not come to a commercial arrangement.

On balance, while the opponent has acted with due diligence since the date of filing of the application for extension of time, I believe that they have not adequately justified the delay in completing service of the evidence in support during the original period in which it was due.

(b)      The public interest

On the issue of the public interest I am guided by the reasons of Burchett J in the Ferocem case and reiterated by Sackville J in Goninan (supra).  In short, the public interests are not all ranged on the same side.  On the one hand are the expeditious disposal of matters in the Patent Office, and questions of costs, of efficiency, and of insistence of standards being maintained.  On the other hand are the words of Kitto J in Kaiser Aluminium & Chemical v The Reynolds Metal Company (1969) 120 CLR 136 at 143, viz a serious opposition should be dealt with on its merits rather than be shut out as a consequence of a failure in procedure.

In relation to the expeditious disposal of matters before the Patent Office, the opponent has filed partial evidence in support and have indicated that they can complete filing of all their evidence in support within 4 weeks from the hearing date. This would lead to some protraction of the proceedings but would not have an unreasonable effect on the proceedings. I further note that this is the first extension of time sought by the opponents and that they have acted expeditiously since filing the request for extension of time to shorten the period which they initially requested. I do not believe that it will lead to a serious erosion of standards. Therefore I do not consider that the resulting protraction in proceedings is so clearly against the public interest that it would require a refusal of the request for extension of time.

In relation to the requirement that a serious opposition be dealt with on its merits, the declaration by Mr Morrison already served demonstrates prima facie that there is a serious opposition in train.  I reject Ms Perrin’s allegation that the opponent is on a fishing expedition to search for people able to support the allegations of prior use. The opponent has already supplied one declaration with supporting exhibits on prior use and has indicated what other declarations are to be filed and the nature of their contents. This additional evidence would appear to corroborate the already served evidence relating to Mr Morrison’s declaration and additionally to provide evidence on the other grounds particularised in the statement of grounds and particulars. That is the grounds relating to prior use by Mr Andresen, common general knowledge and Section 40 problems.

It is in the public interest for the opposition to be dealt with on its merits. I agree with Dr Wyk that this is a serious opposition and because it relies on prior use the only evidence is in the form of declarations. The case would be significantly limited particularly in relation to the additional grounds mentioned above if the extension is not granted.

On balance it seems to me that the public interest is best served by extending the time.  In so doing the likelihood of a correct conclusion to a serious opposition will be enhanced.

(c)       The interests of the parties involved in the opposition

As only part of the opponent’s evidence in support has been served they would be seriously compromised in presenting their case on this evidence alone. Hence the interests of the opponent  would be best served by granting the extension of time to allow them to present their case in full.

The interests of the applicant could be disadvantaged by a protraction of the proceedings if the extension is allowed. I believe however that the such a protraction would not have the same undue effect on the applicant as the effect on the opponent if it were denied the opportunity to fully state its case.

CONCLUSION

I have found that the opponent has not provided an adequate justification of the delay.  I have found that the public interests and the opponent’s interest favour the grant of an extension of time to ensure the application can be dealt with on its merits, and that there is no significant disadvantage to the applicant.  On the other hand the opponent has stated that all their evidence will be ready to file in four weeks from the date of the hearing. Therefore in order to avoid any undue protraction of the proceedings I allow an extension of time until 1 July 1998 for the opponent to file its evidence in support.

COSTS

The power of the Commissioner to award costs is based on section 210 and regulation 22.8.  The power to award costs is discretionary, so I must take into account all relevant considerations.  The opponent has succeeded in its application, despite the fact that it did not make out a proper justification for an extension of time. They have however indicated that they can complete service of evidence in a shorter time frame than originally requested and the extension of time has been granted only until 1 July 1998, minimising the delay caused to the proceedings.

I make no award of costs.

J Lawler
Delegate of the Commissioner of Patents

Patent attorneys for the applicant:     Collison and Co, Adelaide

Patent attorneys for the opponent:     A. P. T., Adelaide