Sumitomo Electric Industries Ltd v BICC Plc and Corning Limited

[1995] APO 20

official notice

decision of a delegate of the commissioner of patents

Application        :    No. 617173 in the name of SUMITOMO ELECTRIC INDUSTRIES LTD

Title:    A pressure transporting system for an improved optical fibre

Action:    Opposition to the grant of a patent by BICC PLC and CORNING LIMITED;  request to amend the statement of grounds and particulars

Decision:    Issued            .

Abstract:    Request refused.  Amendment to the statement of grounds and particulars not consequential upon section 104 amendment.

patents act 1990

decision of a delegate of the commissioner of patents

Re:Patent Application No. 617173 by SUMITOMO ELECTRIC INDUSTRIES LTD, opposition by BICC PLC and CORNING LIMITED, and a request to amend the statement of grounds and particulars

background

Application number 617173 by Sumitomo Electric Industries Ltd was advertised accepted on 21 November 1991.  On 21 February 1992 a notice of opposition to the grant of a patent was lodged by BICC Plc and Corning Limited.  The statement of grounds and particulars was served on 23 March 1992 (the 21st being a Saturday).

Evidence in support was completed on 23 October 1992.  Evidence in answer was completed on 12 November 1993.  Evidence in reply was completed on 19 December 1994.

The applicant requested leave to amend the specification under section 104 on 6 July 1993.  The request was subsequently advertised on 24 February 1994, and advertised allowed on 28 July 1994.

During the process of serving evidence, there were three requests to amend the statement of grounds and particulars under regulation 5.9.  The first request (dated 20 October 1992) was refused following a hearing before a Delegate of the Commissioner (the decision of the Delegate dated 3 May 1993 is now reported as Sumitomo Electric Industries Ltd v BICC Plc (1993) 26 IPR 613). The second request (dated 23 July 1993) was allowed without objection from the applicant. The third request (dated 7 December 1994) is the subject of the present decision. The applicant objected to the amendment, and requested to be heard. A hearing was conducted by telephone on 31 January 1995. The applicant was represented by Mr Robert Miller, patent attorney of Spruson & Ferguson, Sydney. The opponents were represented by Ms Karen Yields, patent attorney of Davies Collison Cave, Melbourne.

the statement of grounds and particulars

The request to amend the statement gives the following reasons for the request:

"We wish to amend the Statement of Grounds and Particulars of Opposition pursuant to the amendment that has been allowed to the complete specification.  The proposed amendment clarifies the grounds of opposition following the amendment and also introduces revised claim numbering.

We also wish to introduce a number of additional particulars which were brought to the attention of our Australian attorneys by our independent declarant, Mr. O'Leary, on 29 November 1994.  Mr. O'Leary referred to these additional particulars when commenting on a draft of his declaration which discusses the amended complete specification.  The additional particulars are relevant to the novelty and inventive step of the claims of the specification as amended by the applicant."

On 30 January 1995 a new amended statement was faxed to the Patent Office.  This statement reinstated a ground and particular that was stated to have been left out in error.  The attorney for the applicant did not object to the hearing proceeding on the basis of the substitute amended statement.

The amended particulars involve the deletion of 2 grounds, the deletion of some particulars, and the addition and modification of some particulars.  The applicant only objected to those particulars that would be added as a result of the amendment.  The relevant portions of the particulars containing the material objected to are quoted below, with the new text shown underlined:

"2.That the invention, so far as claimed in any claim, was obvious and did not involve an inventive step, having regard to what was known or used in Australia on or before the priority date of that claim;

Particulars of ground 2 are as follows:  ...

v)The invention was obvious and did not involve an inventive step in the light of the following publications.  ...

x)Pamphlet from Daniel Products Company titled "RM-40 and RM-70 wear reducing concentrates", dated 2M/12/87.

xi)Pamphlet from Grace GmbH titled "Sylobloc 150", dated January 1986.

xii)Pamphlet from Croda Federal Chemicals Ltd titled "Uses of crodamides", "Crodamide 'SR' - Stearamide (Refined)", "Crodamide 'O' - Oleamide", "Crodamides L - Lauramides", "Crodamide 'E' - Erucamide" and "Crodamide H.18 - Ricinoleamide" respectively dated January 1972, July 1971, July 1971, July 1971, July 1971 and January 1972.

xiii)Pamphlet from ICI Speciality Chemicals titled "ATMER", dated November 1987.

xiv)Extract from the text book "Reinforced Thermoplastics" pages 260 to 263 by W.V.Titow published in 1975.

xv)Extract from the text book "The Science and Technology of Polymer Films" pages 452 to 455 edited by O.J.Sweeting and published in 1968.

3.That the invention, so far as claimed in any claim, was, before the priority date of that claim, otherwise not novel in Australia;

Particulars of ground 3 are as follows:-  ...

iv)The invention was not novel in the light of the following publications.  ...

x)Pamphlet from Daniel Products Company titled "RM-40 and RM-70 wear reducing concentrates", dated 2M/12/87.

xi)Pamphlet from Grace GmbH titled "Sylobloc 150", dated January 1986.

xii)Pamphlet from Croda Federal Chemicals Ltd titled "Uses of crodamides", "Crodamide 'SR' - Stearamide (Refined)", "Crodamide 'O' - Oleamide", "Crodamides L - Lauramides", "Crodamide 'E' - Erucamide" and "Crodamide H.18 - Ricinoleamide" respectively dated January 1972, July 1971, July 1971, July 1971, July 1971 and January 1972.

xiii)Pamphlet from ICI Speciality Chemicals titled "ATMER", dated November 1987.

xiv)Extract from the text book "Reinforced Thermoplastics" pages 260 to 263 by W.V.Titow published in 1975.

xv)Extract from the text book "The Science and Technology of Polymer Films" pages 452 to 455 edited by O.J.Sweeting and published in 1968."

submissions

The submissions by the opponent can be summarised as follows:

.as a result of amendment to the specification, claim 1 had been limited in a way that could not have been anticipated.  Consequently it was necessary to review the case as a whole, and alter the case to be argued;

.the prejudice results from the way the applicant has amended the specification;

.it would be unfair if the opponent was limited to the case originally lodged;

.the amendment to the statement of grounds and particulars will not protract the case unless there is a request to adduce further evidence;

.the request to amend was made less than 2 weeks after the new evidence came to hand;

.the evidence in answer was based on the amended claims, so the evidence in reply also needs to address these claims;  and

.decisions of the Commissioner with respect to applications numbered 624994 and 625497 are relevant.

The submissions by the applicant can be summarised as follows:

.the new particulars are prima facie prejudicial, and cause the case to be answered to expand;

.there is no opportunity to file evidence rebutting the new particulars;

.there has been a long delay (reference was made to the decision in Sumitomo v BICC, supra);

.evidence on the new particulars has already been put into evidence, which is not proper;

.the amendment to the specification simplifies the claims, and is a genuine attempt to facilitate the opposition;  and

.if the amendment is not allowable, then the opponent should not be allowed to rely on the material already served as evidence in reply.

decision

The allowability of amendments to the statement of grounds and particulars is determined by regulation 5.9, which states:

"Amendment of statement

5.9  (1)  The Commissioner, on the written request of an opponent and subject to such terms as the Commissioner may specify:

(a)if the Commissioner reasonably believes that an amendment of a statement referred to in subregulation 5.4 (1) ("filing of statement") corrects an error or omission by the opponent or by his or her agent‑may amend the grounds of opposition set out in the statement; or

(b)if the Commissioner reasonably believes that an amendment of the grounds set out in a statement referred to in subregulation 5.4 (1) results from an amendment of a patent request or complete specification‑must amend those grounds; or

(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:

(a)an application for dismissal of opposition is being considered; or

(b)an application for determination of opposition is being considered; or

(c)in the case of opposition under section 59 of the Act ("opposition to grant of standard patent")‑a specification relating to the opposed application is being re-examined; or

(d)he or she does not reasonably believe that the applicant has been notified of the proposed amendment; or

(e)he or she reasonably believes that a person will be unduly prejudiced by the amendment.

(3)  The Commissioner must give the parties an opportunity to make representations concerning the proposed amendment.

(4)  If the Commissioner allows an amendment, he or she must give the applicant a copy of the statement as amended."

The power of the Commissioner to amend the particulars of a statement is not discretionary provided the requirements of subsection (2) have been satisfied (The Boots Company PLC v Hamilton Laboratories Pty Ltd, Patent Office decision, 21 December 1992, patent application number 614998, unreported).

In the present case the amendment relates only to the particulars and not to the grounds.  There is no pending application for dismissal, an application for determination of the opposition is not being considered, there is no re-examination, the applicant has been notified of the proposed amendment and both parties have had an opportunity to make representations.  The only remaining issue that I must consider is whether I reasonably believe that "a person will be unduly prejudiced by the amendment" (regulation 5.9(2)(e)).

The issue of undue prejudice has been considered in many decisions of the Commissioner.  In Diamond Scientific Company v CSL Limited (1992) AIPC 90-927 the Delegate of the Commissioner concluded that undue prejudice will occur if:

i)the amendment is detrimental or disadvantageous to the patent applicant;  and

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

Detriment or disadvantage

The first matter to consider is whether or not detriment or disadvantage would be caused if the amendment were allowed.

It was not accepted by the attorney for the opponent that there was prima facie detriment to the applicant.

It is clear that there is a change in the case to be answered.  I consider that this is enough to establish prima facie detriment.  Other matters are relevant to the second matter - the degree of the detriment.

Degree of detriment

The next matter is the degree of detriment.  It is only if the detriment is unwarranted, excessive, improper, inappropriate or unjustified that the amendment will not be allowed.  To answer this question I must take into account and balance all relevant factors.

The relevant chronology of events can be summarised as follows:

23.02.92Statement of grounds and particulars served

23.10.92Evidence in support completed

6.07.93Request to amend the specification under section 104

12.11.93Applicant advised the Patent Office and the opponent that evidence in answer was complete

9.02.94Patent Office advises that section 104 amendment is allowable

24.02.94Application for amendment advertised in the AOJP

13.07.94Patent Office advises that section 104 amendment has been allowed

7.12.94Request to amend the statement of grounds and particulars

19.12.94Evidence in reply served

a)  Factors relevant to the decision

1. An issue raised by these facts is the delay between the amendment of the specification and requesting amendment to the statement.  Delay is always a relevant consideration in these matters (see Diamond Scientific v CSL, supra).  The exact magnitude of the delay was the subject of disagreement.

In February 1994 the Patent Office advised the opponent that the amendment was allowable, and in July 1994 advised that the amendment had been allowed.  I consider that the relevant period is from the notification of allowance (July 1994).  Before this time, the amendment can be opposed and determined to be not allowable.  It is not a prudent course of action for the opponent to rely on changes to the specification before they have been allowed.

The delay from July 1994 to December 1994 is 5 months.  This period is fairly long, but is less than the 6 months that is permitted between advertisement of acceptance and filing a statement of grounds and particulars.

I also note that the total delay between filing the statement of grounds and particulars and requesting the amendment is almost 34 months.

1. A second issue is that the applicant will have no means to challenge the new particular by serving evidence (as evidence in answer was completed in 1993).  Consequently, if the amendment is allowed, the opponent will have the advantage that part of its case will not be able to be rebutted by evidence.  This would be excessively detrimental to the applicant.

It was suggested that the applicant could overcome this by requesting permission to serve further evidence (under regulation 5.10(4)).  While it is true that this course of action is open, further evidence is not an automatic right.

1. A third issue is whether the new particulars are particulars of the opposition.  When I asked the attorney for the opponent whether the matter was evidence in reply or the case in chief, I was told that it was in reply to matters raised in the evidence in answer.

If the matter relates to evidence in reply, the evidence is admissible for the purpose of rebutting the applicant's case.  However, if particulars of the matter are inserted into the statement, it will become part of the case in chief.  If the matter is not part of the case in chief in the present case, the amendment would serve no purpose and would cause the particulars to become misleading and distract from the real case to be answered (a matter considered relevant in Sumitomo Electric Industries Ltd v BICC Plc (1993) 26 IPR 613).

1. A forth issue is the possibility of further delay.  If the amendment is not allowed the substantive opposition could be set down for a hearing immediately.  If the amendment is allowed there is a possibility that the applicant (or the opponent) will apply for permission to serve further evidence.  This could defer the hearing of the substantive opposition by many months.  The possibility of further delay indicates excessive detriment.

1. It was argued that the need to amend the statement of grounds and particulars only arose as a result of the action of the applicant in amending the specification, and thus the detriment is not excessive.

I was referred to the decisions of a Delegate of the Commissioner in Asahi Kasei Kabushiki Kaisha v W.R. Grace & Co.-Conn., Patent Office decision, 13 December 1994, patent application number 624994, unreported, and Asahi Kasei Kabushiki Kaisha v W.R. Grace & Co.-Conn., Patent Office decision, 3 January 1995, patent application number 625497, unreported.  In both these cases the delegate considered it relevant that the need to amend the statement of grounds and particulars arose as a consequence of an amendment to the specification.

It is clear that if the need to amend the statement of grounds and particulars is a consequence of an amendment to the specification under section 104, then that will be a factor relevant to the question of whether the prejudice is excessive.

Where amended particulars relate to new citations, there is a special consideration.  It is reasonable to assume that an amendment which has been allowed complies with section 102(2)(a), i.e. the claims after amendment fall within the scope of the claims before amendment.  Consequently, any citation against the amended claims would also have been a citation against the original claims.  I thus start from the presumption that any document raised in new particulars is not a citation as a consequence of a section 104 amendment, and the amendment of the statement of grounds and particulars is not a consequence of the section 104 amendment.  It is possible to rebut this presumption (note the result in the Asahi decisions), for instance if the amendment did not comply with section 102.

In the present case there were originally 43 claims, including 5 independent claims.  After amendment there are 9 claims, with only 1 independent claim.  The claims have been significantly simplified.  It appears from a cursory examination that the new claim 1 falls entirely within the total area covered by the previous independent claims.  I am not aware of any circumstances that would rebut the presumption that the amendment of the statement of grounds and particulars is not a consequence of the section 104 amendment.

b)  Balance of factors

The factors relevant to my decision are:

(i)a delay of 5 months since the allowance of the section 104 amendment, and 34 months since the filing of the statement of grounds and particulars;

(ii)the absence of a right for the applicant to serve rebutting evidence;

(iii)evidence in reply is not appropriate in the statement of grounds and particulars;

(iv)there is a possibility of further delay;  and

(v)the amendment is not consequential upon the section 104 amendment.

Factors (ii), (iii) and (iv) indicate excessive detriment.  Factor (v) is relevant to determining which delay in factor (i) is appropriate:  in this case it is the delay of 34 months, which is clearly excessive.  I note that factors (ii) and (iii) are based on different presumptions:  factor (ii) is based on the particular being part of the case in chief, and factor (iii) is based on the particular relating to evidence in reply.  I recognise that both situations are unlikely to apply simultaneously.  However, I do not need to determine which situation actually applies, as there is excessive detriment in either case.  I consider that it has been established that the prejudice is undue, and the amendment should not be allowed.

Request for directions

It was stated that the evidence served in reply relates to the proposed new particulars, and that I should give a direction that this evidence cannot be relied on at the hearing of the substantive opposition.  I do not consider that such a direction is necessary.  If any of the evidence is not properly in reply, it can be disallowed at the substantive opposition stage in the normal way.

conclusion

I am satisfied that the applicant would be unduly prejudiced by the amendment.  I refuse the amendment.

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 (see American National Can Company v W.R. Grace & Co.-Conn (1994) AIPC 91-063).

I have found that the applicant succeeds in its opposition to the request to amend the statement of grounds and particulars.  In the circumstances I award costs against the opponent, BICC Plc and Corning Limited.

S.D.Barker

Delegate of the Commissioner of Patents

Patent attorneys for the applicant  :  Spruson & Ferguson, Sydney

Patent attorneys for the opponent   :  Davies Collison Cave, Melbourne