The Associated Octel Company Limited v Akzo Nobel Nv

[2001] APO 28

OFFICIAL NOTICE

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Application   :          No. 697463 in the name of  THE ASSOCIATED OCTEL COMPANY LIMITED

Title:          Metal cleaning and de-icing compositions

Action:          Request under Regulation 5.5(1), by THE ASSOCIATED OCTEL COMPANY LIMITED, for dismissal of an opposition made under Subsection 104(4) by AKZO NOBEL NV.

Decision:          Issued

Abstract

Opposition dismissed in part. Grounds or alleged grounds dismissed included those outside the scope permitted by sub-regulation 5.3(4) and those for which the particulars provided no material facts.

In relation to other grounds, the level of substantive consideration of the issues sought by the applicant including what may have been plainly apparent to a person skilled in the art was impermissible under the principles of General Steel Industries Inc v Commissioner for Railways(NSW) (1964) 112 CLR 125.

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Patent Application No. 697463, in the name of The Associated Octel Company Limited and a request under sub-regulation 5.5(1), for dismissal of an opposition made under sub-section 104(4) by Akzo Nobel NV.

BACKGROUND

Patent Application No. 697463 in the name of The Associated Octel Company Limited (Octel) was advertised accepted on 8 October 1998.  The application has been opposed by Akzo Nobel NV (Akzo) with evidence in support served on 30 September 1999.

A request to amend the complete specification under Section 104 was received by the Commissioner on 28 February 2000 and in due course leave to amend was granted. Akzo subsequently opposed allowance of the amendments under sub-section 104(4), filing its statement of grounds and particulars on 22 December 2000. On 24 January 2001 Octel applied for dismissal of the section 104 opposition under regulation 5.5 and it is this request that is the subject of the present decision.

The matter was heard in Canberra on 24 April 2001. Octel was represented by Mr Mark O'Donnell, Patent Attorney of F B Rice & Co, Melbourne. Akzo relied on written submissions filed by its patent attorney Mr John McCormack of Griffith Hack, Melbourne.

THE STATEMENT OF GROUNDS AND PARTICULARS

The statement of grounds filed in relation to the opposition is as follows:

"GROUNDS

(i)Section 102

AThat the amendment proposed on 28 February 2000 is not allowable as the specification after amendment would claim matter not in substance disclosed in the specification as filed as prescribed by Section 102(1).

BThe amendment proposed under Section 102 on 28 February 2000 is not allowable after the specification has been accepted because as a result of the amendment the claims of the specification would not in substance fall within the scope of the claims of the specification before amendment, as prescribed by Section 102(2)(a).

CThe amendments proposed are not allowable since the specification would not comply with Sections 40(2)(a) in that the complete specification would not fully describe the invention and does not provide the best method of performing the invention known to the applicant.

DThe amendments proposed are not allowable since the specification would not comply with Section 40(3) in that the complete specification has claims that are not clear and succinct and are not fairly based on the matter described in the specification.

EEach and every claim of the complete specification as amended are entitled to the priority date of 28 February 2000 due to operation of Section 114(1) which provides that a claim of a complete specification claiming matter that was in substance disclosed as a result of amending the specification takes the priority date of the amendment proposed to the specification which in the present circumstances is 28 February 2000.

(ii)Section 40

FThe complete specification does not describe the invention fully and does not describe the best method known to the applicant of performing the invention (Section 40(2)(a)).

GThe claims of the specification as proposed to be amended are not clear and are not fairly based on the matter described in the specification as originally lodged."

The particulars relied on are extensive and I will refer to these as appropriate in my decision together with the relevant submissions made by Mr O'Donnell and Mr McCormack.

DECISION

The principles to be applied in considering a request for dismissal are well established and are similar to the reasons for summary dismissal which are described in General Steel Industries Inc v Commissioner for Railways(NSW) (1964) 112 CLR 125:

"It is sufficient for me to say that these cases uniformly adhere to the view that the plaintiff ought not to be denied access to the customary tribunal which deals with actions of the kind he brings, unless his cause of action - if that be the ground on which the court is invited  .. to exercise its powers of summary dismissal - is clearly demonstrated. The test to be applied has been variously expressed; "so obviously untenable that it cannot possibly succeed"; "manifestly groundless"; "so manifestly faulty that it does not admit of argument"; "discloses a case which the court is satisfied cannot succeed"; "under no possibility can there be a good cause of action"; "be manifest that to allow them (the pleadings) to stand would involve useless expense".

At times the test has been put as high as saying that the case must be so plain and obvious that the court can say at once that the statement of claim, even if proved, cannot succeed; or "so manifest on the view of the pleadings, merely reading through them, that this is a case that does not admit of reasonable argument"; "so to speak apparent at a glance".”

On this basis, an opposition will be dismissed only if it is clear that the opposition could not possibly succeed. This approach has been supported by the Federal Court in Stack v Commissioner of Patents (1999) 43 IPR 663. It is further apparent from L'Air Liquide v CIG Ltd 24 IPR 77 that rather than dismiss the opposition in its entirety I may dismiss an opposition in relation to particular grounds including those which are unsupported by any particulars. In bringing this action, the onus falls on Octel to show that the opposition is clearly untenable.

I note also from L'Air liquide in relation to the present circumstances that an action for dismissal of an opposition is not intended to be a de facto hearing of the opposition.  Barwick CJ in General Steel (supra) warns in this regard that:

"...great care must be exercised to ensure that under the guise of achieving expeditious finality a plaintiff is not improperly deprived of his opportunity for the trial of his case by the appointed tribunal."

He then goes on to add there might be occasions where extensive argument may be necessary to demonstrate that the case of the plaintiff is clearly untenable (see also Ronex Properties Ltd v John Laing Construction Ltd (1983) QB 389 at 408). However, he concludes:

"But once it appears that there is a real question to be determined whether of fact or law and that the rights of the parties depend on it, then it is not competent for the court to dismiss the action as frivolous and vexatious and an abuse of process."

In considering dismissal of an opposition under sub-section 104(4) it is significant that sub-regulation 5.3(4) provides that:

"A person must not oppose the allowance of a proposed amendment of a complete specification, except on the grounds that the amendment is not allowable under section 102 of the Act ("what amendments are not allowable?")"

The relevant parts of section 102, sub-sections (1) and (2) state:

"(1) An amendment of a complete specification is not allowable if, as a result of the amendment, the specification would claim matter not in substance disclosed in the specification as filed.

(2) An amendment of a complete specification is not allowable after the specification has been accepted if, as a result of the amendment:

(a)  a claim of the specification would not in substance fall within the scope of the claims of the specification before amendment; or

(b)  the specification would not comply with sub-section 40 (2) or (3)."

Consequently it follows that if any of the grounds included in the opposition are outside the ambit of section 102 they could not possibly succeed and should be dismissed.

In considering the statement of grounds and particulars my tasks is made somewhat difficult because no attempt has been made to link the particulars with the various grounds and in that grounds C and F and grounds D and G seem to cover the same territory. However given that grounds F and G are under the heading "(ii) Section 40" rather than "(i) Section 102" and assuming redundancy is not intended I can only conclude that they imply a section 40 consideration aside from "as a result of the amendment". As such they are clearly untenable and I dismiss the opposition in relation to these grounds.

Ground E is not a ground of opposition at all but appears to be a request for a direction that the priority date of the claims be a particular date on the finding that they rely on matter not in substance disclosed in the specification as filed. On this point I must say that I do not understand Mr McCormack's submission and it appears to be drawn on an erroneous understanding of the purpose of section 114. If the Commissioner upholds an opposition in relation to section 104 and finds that as a result of the amendments the specification would claim matter not in substance disclosed then the amendments could not be allowed. Consequently there is no conceivable basis for the Commissioner to make the direction sought in any context within the current section 104 opposition and, to the extent that ground E can be in anyway considered a ground of this opposition, it is dismissed.

It is convenient to turn next to ground C which relates to the specification not fully describing the invention or providing the best method of performing the invention known to the applicant. In support of this ground I can only identify particulars 11 and 14 which in my view do not provide any material facts. In particular, while suggesting that "no invention is described in the specification" they do not indicate why or how this arises "as a result of the amendment". An opposition on this basis could not possibly succeed and consequently I dismiss the opposition in so far as it relies on ground C.

It is through the remaining grounds A, B and D that one begins to appreciate the substantive matters of contention between the parties. Primarily the dispute appears to relate to the meaning of the phrase "ethylene diaminedisuccinic acid, wherein the diaminedisuccinic acid is optically active ethylene diaminedisuccinic acid" in the claims as accepted and references in the specification as filed to "EDDS includes optical isomers thereof, such as (S,S)EDDS, and active salts and active derivatives thereof" and "preferably the EDDS is (S,S)EDDS". Claim 1 as sought to be amended is now directed to a process rather than a composition but specifies as the active agent "at least (S,S) ethylene diaminedisuccinic acid or a salt thereof, and is free from (R,S) and (R,R) ethylene diaminedisuccinic acid or a salt thereof". It is sufficient to say that with the introduction of the terms "(S,S) ethylene diaminedisuccinic acid" and "free from (R,S) and (R,R) ethylene diaminedisuccinic acid or a salt thereof" there are in the opponent's view issues that are said to go to the allowability of the amendments under sub-sections 102(1) and 102(2)(a) & (b) and that these extend in similar vein to the amendment of other of the claims and the specification.

Mr O'Donnell submitted in effect that it was clear that the amendments complied with section 102 and in this I should consider what would be plain to a person skilled in the art in relation to these terms and other relevant portions of the specification. However, recourse to what may or not be plain to a person skilled in the art seems to be a strong indication, if it is not otherwise apparent, that there is a real question to be determined and to conclude otherwise would be to fall into the error warned against by Barwick CJ in General Steel (supra). It is possible that the matter may be found ultimately to be one that is very simple to resolve in the context of the substantive hearing by applying appropriate principles of interpretation. Nevertheless, it is a matter that clearly admits to argument and evidence and to consider it further under the guise of summary dismissal would be to improperly pre-empt the opposition process.

I note that there are also other issues raised in the particulars that may reasonably be argued in relation to grounds A, B and D and ultimately I do not find the opposition in this regard is "so manifestly faulty that it does not admit of argument".

CONCLUSION

I have found that the opposition in relation to grounds C, E, F and G could not possibly succeed and is "so manifestly faulty that it does not admit of argument". However the opposition in relation to the remaining grounds, A, B and D stands.

Pursuant to sub-regulation 5.8(1A)(c) the time for service of evidence in support of the opposition commences from the date of this decision.

COSTS

In actions before the Commissioner, costs normally follow the event but here Octel has been only partially successful in its request for dismissal. Akzo have included in its statement grounds that were not only not particularised but that were clearly not appropriate to an opposition under section 104. Given the unusual nature of some aspects of the statement I believe Octel was prudent in pursuing its request for dismissal and in the circumstances I award costs against Akzo.

Philip Spann
Delegate of the Commissioner of Patents

Patent Attorneys for the applicant:  F B Rice & Co, Melbourne
Patent Attorneys for the opponent:  Griffith Hack, Melbourne