Stevelift Pty Ltd v Formark Pty Ltd

[1994] APO 24

official notice

decision of a delegate of the commissioner of patents

Application       :   No. 629710 in the name of STEVELIFT PTY LTD

Title:   Lifting Apparatus

Action: Opposition under section 59 of the Patents Act 1952 by FORMARK PTY LTD and an objection to the allowance of a request to amend the Statement of Grounds and Particulars under regulation 5.9 (1)

Decision:   Issued            .  Amendment refused. Further document not located incidental to preparation of opponent's case.  The amendment would result in the protraction of the case.  The amendment was not proposed at the earliest opportunity. 

The fact that the applicant was already aware of the further document because it was part of the Particulars of another opposition should be taken into account.  However, the extreme lateness of the filing of the proposed amendment meant that the applicant was unaware of the case it had to answer on the day of the opposition hearing.

patents act 1990

decision of a delegate of the commissioner of patents

Re:Patent Application No. 629710 by STEVELIFT PTY LTD, opposition thereto by FORMARK PTY LTD, and an objection to the allowance of a request to amend the Statement of Grounds and Particulars.

background

Application 629710 was filed by Stevelift Pty Ltd (Stevelift) on 12 October 1990 under the provisions of the Patent Cooperation Treaty as PCT/AU90/00488.  It was advertised accepted on 8 October 1992.  A notice of opposition was filed by Formark Pty Ltd (Formark) on 8 January 1993.

As the application was filed before, but accepted after, the commencement of the Patents Act 1990, Chapter 5 of the Patent Regulations 1991 applies in relation to the opposition proceedings.

Formark served its statement of grounds and particulars on 8 February 1993.

The serving of all evidence was completed on 5 January 1994 and the opposition was set down for hearing on 17 February 1994.  Both parties were advised of this hearing date via a letter from the Patent Office dated 28 January 1994.  In a letter dated 7 February 1994, the Office advised both parties that the opposition hearing would be postponed to 21 February 1994.  Both parties had agreed to this later date by telephone.

On 7 February 1994, Formark filed a request under regulation 5.9(1) to amend the Statement of Grounds and Particulars.  The applicant objected to the allowance of this request.  The matter was heard in Canberra on the same day as the hearing for the substantive opposition - 21 February 1994.

At the hearing, Stevelift was represented by Mr. Greg Turner, patent attorney of Spruson & Ferguson, Sydney, and Formark was represented by Mr. John Forster, patent attorney of Griffith Hack & Co., Sydney, assisted by Mr. Christian Schieber, also from Griffith Hack & Co.

STATEMENT OF GROUNDS AND PARTICULARS

The amendment of the Statement of Grounds and Particulars sought by Formark is the inclusion of a reference to a further patent specification in a list of references in that part of the Particulars supporting the grounds of prior publication and lack of novelty.

Paragraph 1 of the original Particulars includes a list of five references to patent specifications in support of the grounds of prior publication and lack of novelty.  Two of these references are EP-A-287433 and EP-A-327948.  The proposed amendment seeks to add a sixth reference to this list viz. DE 2558466.

SUBMISSIONS

Formark provided written submissions in conjunction with the request to amend.  These submissions indicate that the German specification came to light as a result of a review of the five references listed in Paragraph 1 of the Particulars during preparation of evidence-in-reply.  This review was necessary to assess the significance of these specifications as the applicant had not commented on them in the evidence-in-answer.  It was found that there was a reference to DE 2558466 in the description pages of EP-A-327948.  However the search result associated with this EP specification referred to a prior art document DE‑A‑2558446.  DE 2558466 was also cited in EP-A-287433.  A check of DE‑A‑2558446 revealed that it was not relevant to the technology of the claims in suit but that DE 2558466 was.  The opponent included a copy of this document together with an English language translation as part of the evidence-in-reply.  This part of the evidence-in-reply was served on 6 December 1993.

These written submissions also point out that there will not be any protraction of the case because the applicant was made aware of the importance of this German document immediately it became known to the opponent.  Further the proposed amendment does not substantially change the case that the applicant has to answer because the inclusion of only one further document to further substantiate the ground of prior publication would not require any prolonged professional and technical assessment by the applicant.

At the hearing both parties referred me to Diamond Scientific Company v CSL Limited (1992) AIPC 90-927.

Mr. Turner made a number of points during oral submissions at the hearing which are summarised as follows:

.In deciding whether or not to allow a request to amend the Statement of Grounds and Particulars, the Commissioner should take into account how far the opposition has progressed.  For example, in The Commonwealth of Australia v Australia Sonar Systems Pty Limited, Patent Office decision, 3 May 1993, patent application number 621418, unreported, an amendment to include a further reference to a patent specification in the Particulars was allowed as the period for filing evidence‑in‑answer had not been completed.  The applicant thus had an opportunity to respond to this further material.

.The location of the German document did not arise incidental to the preparation of the opponent's case but occurred because the opponent was actively seeking further particulars.

.The applicant was aware of many documents but it was not up to the applicant to anticipate what documents were going to be part of the case put forward by the opponent.

.Because of the lateness of the request to amend, there is a reasonable basis for the Commissioner to conclude that the applicant will prima facie be unduly prejudiced by the amendment.  Consequently the onus was on the opponent to prove that the applicant would not be unduly prejudiced.

.The onus was on the opponent to explain why a delay occurred between when the document was located and included as part of the evidence-in-reply served on 6 December 1993 and when the request to amend the Particulars was filed on 7 February 1994.  There was no clear evidence of why this delay occurred.

.Only days before the hearing, the opponent had indicated to the applicant that it would be relying on an even further specification not listed in the Particulars at the hearing of the substantive opposition.

.The applicant was unduly prejudiced because it did not know on the day of the hearing of the substantive opposition what case it had to answer.

In addition to the written submissions, Mr. Forster made a number of oral submissions at the hearing which are summarised as follows:

.The applicant would not be unduly prejudiced because it was already aware of DE 2558466.  This specification was referred to in EP 327948 which was cited in the International Search Report associated with the application in suit.  Consequently, there would be no protraction of the opposition proceedings.

.DE 2558466 was not included in the original Particulars because of the misprinted reference referred to in the written submissions.

.The case that the applicant had to answer had not been substantially changed, especially as the applicant had been aware all along of the existence of this document because it had been referred to in EP 327948 which had been included in the Particulars.

.As the applicant had been aware of the significance of this document since the serving of the evidence-in-reply on 6 December 1993, it was at all times open to the applicant to file a request to adduce further evidence in response since that date.

.The reason for the delay between the serving of the relevant part of the evidence-in-reply on 6 December 1993 and the filing of the request to amend the Particulars on 7 February 1994 was merely due to an error or omission on behalf of the opponent.  The need to amend the Particulars had been overlooked.

At the hearing, I asked Mr. Turner for submissions on whether or not, in reaching a decision on this matter, I should take into account the fact that DE 2558466 was part of the original Particulars supporting a ground of lack of novelty in a separate opposition to the application in suit.  Mr. Turner indicated that the statutory declarations provided as evidence in relation to this German document were fatally flawed as he would show during the hearing of this separate opposition (also held on the same day as the present matter was heard).

DECISION

The allowability of the present request to amend the statement of grounds and particulars is determined by regulation 5.9 of the Patent Regulations 1991.  The relevant portions of regulation 5.9 read as follows:

"5.9 (1) The Commissioner, on the written request of an  opponent, and subject to such terms as the  Commissioner may specify:
............  
   (c) must amend particulars relating to a ground          referred to in subregulation 5.4(1).

(2) The Commissioner must not allow an amendment  requested under subregulation (1), if:
............
   (e) he or she reasonably believes that a person will        be unduly prejudiced by the amendment."

In Diamond Scientific Company v CSL Limited (1992) AIPC 90-927, the delegate of the Commissioner held that "undue prejudice" would occur if:

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

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

The delegate noted that undue prejudice would not prima facie arise if extra particulars established incidental to the preparation of an opponent's case satisfied three criteria, that is they:

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

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

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

The delegate also indicated that 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 demonstrating that its activities have not been such as to have unduly prejudiced the applicant.

The delegate also indicated that any amendment that changes the case the applicant has to answer is potentially prejudicial to the applicant.  For example an amendment to replace a particularised document with an equivalent document may involve a change of the case to be answered.

In the present case, the proposed amendment proposes to introduce an additional document into the Particulars relating to the ground of lack of novelty.  This would seem to change or at least add to the case the applicant has to answer.  The first question I need to answer in order to determine whether or not the applicant has been unduly prejudiced is whether or not the location of this document was incidental to the preparation of Formark's case.

It seems to me reasonable for the opponent to reconsider its existing documents at the evidence-in-reply stage when the applicant has not commented on those documents in its evidence‑in-answer.  Such an action could not be said to be actively pursuing further particulars.  However having made such a review of the existing evidence, the question is whether or not the location of additional documents referred to in that existing evidence is incidental to the preparation of the opponent's case.  I am of the opinion that such an activity could only be described as part of an opponent's active seeking of further particulars i.e. it is not incidental to the preparation of the opponent's case but is in fact the preparation of the opponent's case.

However even if I am wrong in this regard I believe that the first and second of the three criteria referred to in Diamond Scientific v CSL (supra) have not been satisfied.
I believe that the proceedings in the present case would be protracted.  It would be a denial of natural justice if I took account of any submissions the opponent made in relation to this additional document at the substantive opposition hearing without giving the applicant sufficient time to prepare a case in rebuttal of this argument.  I do not agree with the opponent's submissions that the inclusion of only one further document would not require any prolonged professional and technical assessment.  It may be that the applicant could choose not to serve further written evidence if this further document was included in the particulars.  However the applicant should be entitled to seek and serve such evidence if it so chooses.  Thus the preparation of the applicant's case would be protracted especially as all the normal evidentiary stages have been completed.

I do not believe that the extra particulars have been included at the earliest reasonable opportunity.  The opponent's arguments on this aspect were very brief.  The reason for the delay of two months between the serving of that part of the evidence-in-reply which included a reference to the additional document on 6 December 1993 and the filing of the proposed amendment on 7 February 1994 was said to be as a consequence of an error or omission on behalf of the opponent.  There is no evidence on file to assist me in determining how the error or omission occurred or who was responsible for the error or omission.  In the absence of any such evidence, I don't believe that the overlooking of the need to amend the Particulars can be anything but unduly prejudicial to the applicant considering the stage to which the opposition had already progressed viz. the completion of serving of the evidence-in-answer.

Therefore, there is a reasonable basis for me to conclude that the applicant will prima facie be unduly prejudiced.  Consequently the onus is on the opponent to demonstrate that the proposed amendment would not unduly prejudice the applicant.  In the present case, especially considering the lateness of the filing of the request to amend, I do not believe that Formark has done so.  The mere reference to an error or omission on behalf of the opponent as reason for the late filing of the request to amend does not discharge this onus.

I do not agree with the opponent's submission that, because the applicant was already aware of the document as it had been referred to in a cited document in the International Search Report associated with the present application, it would not be unduly prejudiced.  I favour Mr. Turner's argument that the applicant is aware of a great number of documents but should not have to guess which other documents will be used at the substantive opposition hearing beside those already referred to in the Particulars.

I also do not agree with the opponent's submission that, because the applicant was made aware of the document at the evidence-in-reply stage, it was always open to the applicant to request to serve further evidence in relation to this further document.  I do not believe that the applicant should be placed in the position of serving further evidence on the off-chance that the opponent will remember to file a request to amend the Particulars.  I think that the applicant would be entitled to think that the reference to the additional document in the evidence-in-reply would in all likelihood be considered inadmissible by the hearing officer because it is evidence which is not strictly in reply.

I place no weight on the submission by Formark that the document was not included in the original Particulars because of the misprint.  I merely note that the opponent was apparently able to overcome the difficulty of the misprint when reviewing its evidence at a later stage.

There remains the question of whether or not I should take into account the fact that there is another opposition to this application in progress and the relevant document has been included as part of the Particulars in relation to the ground of lack of novelty in this other opposition.  Also, evidence has been served in relation to this further document in this other opposition.  If the applicant has had to prepare a case in relation to this document for this other opposition which was heard on the same day as the present opposition, would the applicant be unduly prejudiced by the inclusion of this document in the Particulars of the present opposition?

Mr. Turner's response questioned the probative value of the evidence served in relation to this document in the other opposition.  However I do not think that this is relevant to the present matter.  I don't think that I should have to decide the other opposition before I am able to reach a decision on the present matter.  I do note that as part of its evidence-in-answer in this other opposition, Stevelift has provided a statutory declaration which inter alia rebuts the evidence served by this other opponent in relation to this document.  Consequently Stevelift has already considered the significance of this document in relation to the ground of lack of novelty albeit in a separate opposition.

I believe that I should take all matters into consideration when deciding whether or not the applicant would be unduly prejudiced including the fact that the applicant may be dealing with this document in a separate opposition.  It seems to me that if the applicant has already considered this document and provided evidence in rebuttal in relation to the ground of lack of novelty in the other opposition then an argument could be made out that, in the normal course of events, the applicant would not be unduly prejudiced in the present case.

However, I believe that the over-riding factor in the present matter is the extreme lateness of the request to amend.  I am of the opinion that this lateness is unwarranted and unjustified (Diamond Scientific v CSL supra). I think that this outweighs the fact that the applicant may have dealt with the document in another opposition. One of the main purposes of Chapter 5 of the Patent Regulations 1991 is to ensure that the applicant is aware of what case it has to answer on the filing of the Statement of Grounds and Particulars in the present opposition. In the present matter, the applicant does not know the complete case it has to answer even after all the evidentiary stages have been completed. This is clearly contrary to the intention of Chapter 5. In this respect I agree with Mr. Turner that if the applicant does not know what case it has to answer on the day of the hearing of the substantive opposition, the applicant has to be unduly prejudiced.

Therefore, I refuse to allow the amendment.

COSTS

In line with the convention that costs follow the event, I award costs against the opponent, Formark.

R.W. HALLETT

Delegate of the Commissioner of Patents

Patent attorneys for the applicant  :  Spruson & Ferguson, Sydney

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