Syngenta Biotechnology Inc v Commonwealth Scientific and Industrial Research Organisation - [2005] APO 17

OFFICIAL NOTICE
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No. 760041 in the name of Commonwealth Scientific and Industrial Research Organisation

Title: Methods and Means for Obtaining Modified Phenotypes

Action: Application by Syngenta Biotechnology Inc for an extension of time under Regulation 5.10(2) to serve evidence in support, and objection thereto by Commonwealth Scientific and Industrial Research Organisation

Decision: Issued 08 April 2005.
Abstract

Syngenta argued that there have been difficulties in obtaining evidence from suitable independent experts, and that there was a need for consistency in that evidence. The opponent appears to have been influenced more by issues of administrative convenience than by the actual progress of the evidentiary stages, and it was considered that a satisfactory reason for the delay in the preparation of evidence in support had not been provided.
However, it was found that the evidence to be served is likely to have an important influence on the outcome of the case. The interests of the opponent and the public both weigh heavily towards the grant of the extension, and the extension is appropriate in all the circumstances.
The extension of time to serve evidence in support under regulation 5.10(2) was granted.
Costs awarded against the opponent.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No. 760041 in the name of Commonwealth Scientific and Industrial Research Organisation and an application under Regulation 5.10(2) for an extension of time to serve evidence in support of an opposition, by Syngenta Biotechnology Inc.

BACKGROUND

Patent application 760041 in the name of Commonwealth Scientific and Industrial Research Organisation (CSIRO) was filed on 7 April 1999 and advertised accepted on 8 May 2003. A notice of opposition to the grant of the patent was filed by Syngenta Biotechnology, Inc (Syngenta) on 8 August 2003. A statement of ground and particulars was served on 7 November 2003.
Syngenta applied for four extensions of time in which to serve evidence in support, and these were granted without objection. CSIRO has objected to the latest request to extend the time for service of evidence in support to 7 May 2005.
The matter was heard in Canberra on 23 March 2005. Ms Marita Gill and Mr David Tadgell, patent attorneys of Phillips Ormonde & Fitzpatrick, Melbourne, represented Syngenta. Dr Bill Pickering, patent attorney of Blake Dawson Waldron, Melbourne, represented CSIRO. Both parties appeared by telephone. Dr Robert De Feyter, Intellectual Property Manager of the CSIRO division of Plant Industry, also listened to the proceedings.
THE APPLICATION FOR AN EXTENSION OF TIME
The circumstances in which, and the grounds upon which the application for extension of time was made are given as follows:
“The Opponent is actively pursuing the preparation of its Evidence in Support of the Opposition.
The third meeting has been held with the primary expert. After time overseas at conferences and a lengthy Christmas holiday, she has returned and is preparing definitive comments for collation into her draft Declaration.
The second expert has now provided extensive comments. A draft Declaration in his name has been prepared, and has been sent to him for review.
Further time is needed for the Declarations to be finalised for filing as the Evidence-in-Support.”
SUBMISSIONS
Both parties provided written submissions prior to the hearing, and I will refer to these where appropriate in the body of my decision. At the hearing, CSIRO argued that the application for an extension of time does not fully explain the reasons why an extension was needed, and Syngenta’s submissions focussed on providing the missing explanation.
DECISION
The law on extensions of time
The requirements for granting an extension of time to serve evidence in support are set out in regulation 5.10(2) which states:
(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 … grant an application under subregulation (2) ... unless the Commissioner:
           ...
(c)       ...
(i)        gives the parties a reasonable opportunity to make representations   concerning the application or proposed action; and
(ii)is reasonably satisfied that a direction, an extension of time or the serving of further evidence is appropriate in all the circumstances.
The Federal Court has considered the requirements of regulation 5.10 in Ferocem Pty Limited v. Commissioner of Patents (1994) 28 IPR 243, A Goninan and Co Ltd v Commissioner of Patents and Another (1997) 38 IPR 213, and National Starch & Chemical Company v Commissioner of Patents (2001) 50 IPR 398. The principles arising from these decisions have been set out and followed in numerous patent office decisions relating to regulation 5.10, and may be summarised as follows:
(a)The broad discretion afforded by Regulation 5.10 cannot be reduced to insistence on imperative compliance with particular requirements;
(b)The exercise of this discretionary power requires proper, genuine and realistic consideration of all the relevant aspects that pertain to the application;
(c)The provision of a satisfactory explanation of the delay is a relevant consideration, but is not mandatory;
(d)The public interest in determining a serious opposition on its merits is a relevant consideration and must be balanced with the requirement that matters before the patent office should be dealt with in an efficient, orderly manner and not be unduly prolonged;
(e)The interests of the opponent, the applicant and any other parties are a relevant consideration.
In summary, it is clear from these decisions that the Commissioner, having given both parties the opportunity to make representations, may grant an extension only if reasonably satisfied that it is appropriate in all of the circumstances.
Explanation of the delay
The opposition relates to the field of “gene silencing”, and in particular post-transcriptional gene silencing by RNA interference. RNA interference may be considered a relatively new field of study, and the history of the preparation of evidence in support suggest that there have been difficulties in obtaining evidence from suitable independent experts on behalf of Syngenta.
A first expert, Dr Elizabeth Algar, was engaged prior to the submission of the first request for an extension of time on 6 February 2004. I understand from the opponent that Dr Algar holds the position of Senior Research Fellow at a University, and is also the head of the Molecular Oncology Laboratory at the Royal Children’s Hospital, Melbourne. Ms Gill submitted that Dr Algar has “substantial commitments outside her work as an expert witness on this matter”. It appears that a recent house move, attendance at conferences, and an illness have prevented Dr Algar from working as wished on the opposition.
I accept that the inability of the opponent to obtain evidence from an ill or absent witness would be deleterious to the progress of their case. I note that the delegate in British-American Tobacco Company Limited v Philip Morris Limited [2000] APO 32 (27 April 2000) reached a similar conclusion when presented with a similar set of circumstances.
However, I do not wish to suggest that Syngenta have acted in the most diligent manner possible. On this point, the applicant drew my attention to paragraph 11 of the opponent’s written submissions, which suggests that Dr Algar’s evidence was “reasonably developed” as of June 2004. It was submitted by Dr Pickering that to not have finalised the evidence in the eight months since June 2004 “really doesn’t suggest…it’s being moved forward with any degree of diligence”. I share the applicant’s concern, as eighteen months have passed since the filing of the notice of opposition and as of the date of the hearing no evidence had yet been served.
The second expert witness, Dr Ratcliff, is located in the United Kingdom. Ms Gill explained that “after preliminary meetings with Dr Algar, Syngenta decided to appoint an international expert as well - [and] a large factor in this was the fact that the expert we had in mind was someone particularly authoritative in the field”. Paragraph 19 of the opponent’s written submissions states that:
“Dr Ratcliff was initially an employee of Syngenta Limited, but was retrenched in mid-2004 following the re-organisation of the company’s biotechnology research units. His retrenchment was in fact announced the day he was scheduled to meet with the opponent’s attorney, David Tadgell (on 24 June 2004) and the opponent’s UK attorney. Consequently, he did not attend this meeting.”
It appears that contact was not re-established with Dr Ratcliff until early November 2004, and I can appreciate the difficult circumstances that may have contributed to the opponent’s inability to obtain evidence from Dr Ratcliff since his retrenchment. Ms Gill elaborated at the hearing that Dr Ratcliff had commenced a new job at the end of January 2005, and has been on a residential course for his new employer. Clearly, the commencement of a new job requires a certain level of commitment and effort, and these are factors which may limit the time that Dr Ratcliff can devote to the preparation of evidence.

In my view this has resulted in Syngenta encountering real difficulties over the past 3 months that necessitate the need for an extension of time. In the context of the current extension, this appears to be a reasonable explanation for the delay. Nevertheless, I believe it fails to explain the opponent’s progress before that time. I would like to remind the opponent that there remains an expectation that they will prepare their evidence in a timely manner and allocate sufficient resources to ensure that this is done.
As a further explanation for the delay, the opponent observed that several closely related opposition and re-examination matters required the attention of their two expert witnesses. Particular mention was made of CSIRO’s opposition to Syngenta Limited’s application 747872, and the corresponding European application EP 983370, which is subject to nine oppositions. Ms Gill submitted that:
“…because there is this web of proceedings in related applications between the same parties, it means that there is a call on resources of the various parties in different matters at once, and also there is a need for consistency across the board in these matters which can also add more time and effort.”
and:
“There is the need for consistency, particularly for our client in light of the EU opposition”
In response, Dr Pickering argued that this clearly shows that “…the Australian opposition has been shunted to the bottom of the pile in terms of importance to the opponent” and questioned the “borderline relevance of other opposition procedures and re-examinations”.
Whilst the need to prepare evidence for other opposition proceedings is a factor that the Commissioner ought to take into account, those proceedings are independent and do not automatically justify delays in separate actions brought before the Commissioner. To some extent, I share the applicant’s view that part of the delay in serving evidence in support has resulted from Syngenta’s decision to focus on the further refinement of their evidence. It would seem that the opponent’s desire for consistency and their decision to gather evidence in an administratively convenient manner has prevailed over any concern regarding the actual progress of the evidentiary stages. As Dr Pickering observed, one should be pursuing the service of evidence in a timely manner, and not be proceeding on the basis that evidence for all related oppositions should be prepared and served together. In my view the approach adopted by Syngenta in this matter has been less than ideal and is to be discouraged.
On balance, I do not believe a satisfactory explanation for the delay has been provided. In this instance, notwithstanding that certain difficulties have arisen, I would expect eighteen months to be sufficient time in which to serve evidence. Given the period of time that has elapsed since serving the notice of opposition, I can only agree with the applicant’s view that the opponent has been less than diligent.
The public interest
The public interest has two components. The first requires that a serious opposition should be dealt with on its merits rather than shut out because of a failure in procedure. The second factor requires that proceedings before the Commissioner should be conducted in an efficient and expeditious manner.
Opponents, and particularly their statements of grounds and particulars and evidence in support, are an important source for reducing the risk of granting invalid patents. In the present case, Syngenta has served a statement of grounds and particulars outlining five grounds for the opposition. These include utility, that the invention is not patentable, not novel, does not involve an inventive step and does not comply with section 40 of the Patents Act. The particulars are both numerous and detailed, and there are over 130 documents cited as prior art.
In my opinion the statement of grounds and particulars suggests that a serious opposition is in train. It is also apparent that expert evidence would be required to establish the state of the art and the relevant common general knowledge for the grounds of novelty and inventive step. Consequently, I consider that the filing of evidence in support would clearly be of significance for a proper determination of the opposition.
My conclusion on this point is supported by the decisions in Acres Gaming, Inc and IGT (Australia) Pty Limited v Aristocrat Technologies Australia Pty Ltd [2003] APO 19 and Boral Resources (NSW) Pty Limited v BST Holdings Pty Limited [2003] APO 46. For these reasons refusal of the extension would not be in the public interest.
The orderly progress of opposition proceedings is also an important factor relevant to the public interest. Dr Pickering submitted that the opponent’s progress to date “had been very, very poor”, and did not comply with the principles discussed in Genetics Institute Inc v Kirin-Amgen Inc, 44 IPR 257. The views of the full bench of the Federal Court of Australia in paragraph 19 are particularly apposite:
“As the parties in the present case accepted, the purpose of pre-grant opposition proceedings is to provide a swift and economical means of settling disputes that would otherwise need to be dealt with by the courts in more expensive and time consuming post-grant litigation; that is, to decrease the occasion for costly revocation proceedings by ensuring that bad patents do not proceed to grant. This purpose is reflected in the explanation by the Minister for Science for the Federal Government’s policy decision to retain pre-grant opposition proceedings in Australia, despite the recommendation of the 1984 Industrial Property Advisory Committee Report Patents, Innovation and Competition in Australia (IPAC report) that they be abolished (recommendation 29): (1986) 56 No 47 Official Journal of Patents, Trade Marks and Designs 1475.”
I agree that proceedings should not be unnecessarily protracted. The opponent has previously had four extensions of time, and I am mindful that, if granted, a fifth extension would cause a further delay of three months before the substantive hearing. Though no evidence has yet been filed from Dr Algar or Dr Ratcliff, Ms Gill assured me that “preparations are significantly advanced” and that “all efforts will be made to finalise the evidence by 7 May 2005”.
Overall, I consider the public interest in providing Syngenta with an opportunity to serve relevant evidence that would allow a more just determination of the opposition outweighs any delay in the opposition proceedings.
Interests of the Parties
The interests of the opponent clearly lie in obtaining the extension. Given that to date no evidence at all has been served, I believe it would be exceedingly difficult for Syngenta to effectively argue its case without any evidence to support their grounds of opposition.
At the hearing, Mr Pickering argued that there was no guarantee that the opponent, even with this extension, could complete the service of evidence in support. They had not displayed due diligence so far, and any extension, if granted, would unnecessarily protract the proceedings. I accept that CSIRO could be disadvantaged by a further protraction of proceedings if I were to grant the extension now sought. Nevertheless, there is nothing before me to suggest that such a protraction would have the same undue effect on CSIRO as the effect on Syngenta if they were denied the opportunity to fully state their case.
Dr Pickering also submitted that if an extension were to be granted, strict limits should be set to ensure timely completion of evidence in support. The applicant’s concerns are well-founded, and I advise the opponent that further extensions are unlikely to be granted without adequate supporting reasons.
On balance, I think the interests of the opponent in having the opportunity to present relevant evidence that would allow the opposition to be decided on its merits outweighs the interests of the applicant in these circumstances. Though I am mindful of the applicant’s submission that I should give due consideration to the undue delay of the opposition proceedings, this is just one consideration and is not in my opinion the overriding one in the present case.
CONCLUSION
I do not believe that the opponent has been sufficiently diligent or provided adequate reasons to justify the extension. However, the Ferocem case shows that while the reasons for requiring the extension are a relevant consideration in reaching a decision, a satisfactory explanation is not a mandatory requirement.
On the understanding that evidence in support is now well underway and almost certain to be completed within the period requested by the opponent, the interests of the opponent and the public both weigh heavily towards the grant of the extension, and I also consider that the evidence to be served is likely to have an important influence on the outcome of the case.
Accordingly, I grant the applicant Syngenta an extension of time from 7 February 2005 to 7 May 2005.
COSTS
Both parties submitted that costs should be awarded in their favour. The power of the Commissioner to award costs is discretionary, so I must take into account all relevant considerations.
In the present case, Syngenta has succeeded in obtaining an extension of time under regulation 5.10(2), even though they have not provided a satisfactory explanation for the delay and have been less diligent than they might have been in completing their evidence in support. In these circumstances, I consider it appropriate to award costs against the opponent.
R. W. J. Finzi
Delegate of the Commissioner of Patents
08 April 2005
Patent attorneys for the applicant: Phillips Ormonde & Fitzpatrick, Melbourne
Patent attorneys for the opponent: Blake Dawson Waldron, Melbourne