The Boots Company Plc v Hamilton Laboratories Pty Ltd

[1992] APO 74

official notice

decision of a delegate of the commissioner of patents

Application        :    No. 614998 in the name of THE BOOTS COMPANY PLC

Title             :    SUNSCREEN COMPOSITIONS

Action:    Opposition to the grant of a patent by HAMILTON LABORATORIES PTY LTD;  request to amend the statement of grounds and particulars;  request for directions for filing evidence in answer

Decision:    Issued            .  Amendment refused;  directions for serving evidence in answer given.

patents act 1990

decision of a delegate of the commissioner of patents

Re:Patent Application No. 614998 by THE BOOTS COMPANY PLC, opposition by HAMILTON LABORATORIES PTY LTD, and a request to amend the statement of grounds and particulars

background

Application number 614998 by The Boots Company PLC ('Boots') was advertised accepted on 19 September 1991.  On 19 December 1991, Hamilton Laboratories Pty Ltd ('Hamilton') filed a notice of opposition to the grant of a patent.  The statement of grounds and particulars was served on 20 January 1992 and filed on 21 January 1992.

On 26 March 1992 Hamilton requested leave to amend the statement of grounds and particulars.  The request was incomplete, and the full documentation was filed on 7 April 1992.  Boots made written representations concerning the amendment, and the Delegate of the Commissioner allowed the amendment on 7 August 1992.

On 31 August 1992 Hamilton again requested leave to amend the statement of grounds and particulars.  Boots objected to the amendment, and indicated that it wished to be heard in the matter.

A hearing was conducted by telephone on 10 November 1992.  Boots was represented by Mr John Slattery (patent attorney of Davies Collison Cave, Melbourne);  Hamilton was represented by Ms Catherine Hustwick (patent attorney of R K Maddern & Associates, Adelaide).

the statement of grounds and particulars

The amendment of the statement of grounds and particulars that Hamilton is seeking involves the replacement of the existing statement by a new statement.  The effect of the amendment is to insert several pieces of new text.  In order to appreciate the nature of the changes, I will quote the relevant portions of the statement as proposed to be amended, with the new material shown underlined.

"2.  That the invention, so far as claimed in any claim, is obvious and does not involve any inventive step when compared with the prior art base as it existed before the priority date of the claim.

For example, we refer to the following documents and instances of sale/use of the same or similar technology:  ...

(vii)The invention, as claimed in at least claims 1 and 8 to 13, lacks novelty and/or is obvious in the light of the disclosure on the enclosed extracts from ICI Atlas Chemie ("Atlas Manual for the Cosmetic and Pharmaceutical Industries"), and formulations produced, sold and/or quantitatively analysed in Australia by ICI Australia Operations Pty Ltd, Colgate-Palmolive Pty Ltd or Unique Laboratories.  ...  the suppliers sold the raw material (microfine titanium dioxide) to formulators (such as ICI or Colgate-Palmolive Pty Ltd) in the first place.

(viii) The invention, as claimed in at least claims 1, 2, 5, 8 and 9 lacks novelty and/or is obvious in the light of the disclosure in Japanese Kokai Tokyyo Koho JP 62-145011 [87-145011], 29th June 1987, Application No. 85/284,578, 18th December 1985.

(ix)The invention, as claimed in at least claims 1 to 5, lacks novelty and/or is obvious in the light of the disclosure in Japanese Patent Specification Tokugan Sho 56-144779 (Pola Chemical Industries Ltd.)

(x)The invention, as claimed in at least claims 1, 5 and 7, lacks novelty and/or is obvious in the light of the disclosure in U.S. Patent No. 4699779 (Palinczar).

(xi)The invention, as claimed in at least claims 1 to 3, lacks novelty and/or is obvious in the light of the disclosure in Canadian Patent No 962142 (Canadian Titanium Pigments Limited).

(xii)The invention, as claimed in at least claims 1 and 5 to 10, lacks novelty and/or is obvious in the light of the disclosure in German Patent No 2533497 (Henselwerk GmbH).

(xiii) The invention, as claimed in at least claim 1, lacks novelty and/or is obvious in the light of the disclosure in Japanese Kokai Tokkyo Koho JP 60-188308 (Kanebo Co., Ltd.), and its abstract in Chemical Abstracts 104:56193y.

(xiv)The invention, as claimed in at least claims 1 to 3, 8 to 10 and 12 lacks novelty and/or is obvious in the light of the disclosure in Japanese Kokai Tokkyo Koho JP 61-194013 (Takashima et al), and its abstract in Chemical Abstracts 106:23099k.

(xv)The invention, as claimed in at least claims 1 to 3, lacks novelty and/or is obvious in the light of the disclosure in European Patent Specification No. 261560.

(xvi)The invention, as claimed in at least claims 1 to 5, 8 and 9, lacks novelty and/or is obvious in the light of the disclosure in Japanese Patent Specification No. 58-062106 (Shiseido Co., Ltd.).

(xvii) The invention, as claimed in at least claims 1 to 3, 5 and 8 to 10, lacks novelty and/or is obvious in the light of the disclosure in Japanese Patent Specification No. 49-000450 (Pola Chemical Industries).

(xviii)The invention, as claimed in at least claims 1 to 3 and 5, lacks novelty and/or is obvious in the light of the disclosure in Japanese Patent Specification No. 58-43912 (Shiseido Co., Ltd).

(xix)The invention, as claimed in at least claims 1 to 3, 5 and 8 to 12, lacks novelty and/or is obvious in the light of the disclosure in Japanese Patent Specification No. 61-197511 (Sunstar Kabushiki Kaisha and Teikoku Kako Co., Ltd.).

(xx)The invention, as claimed in at least claims 1 to 3, 6 and 7, lacks novelty and/or is obvious in the light of the disclosure in Japanese Patent Specification No. 61-78715 (Shiseido KK).

(xxi)The invention, as claimed in at least claims 1 and 8 to 10, lacks novelty and/or is obvious in the light of the disclosure in U.S. Patent No. 4422952 (Koulbanis et al).

2A.  We refer to the following document as evidence that it was well-known, by the priority date of Patent Application No. 614998, that water-in-oil emulsions were more effective as sunscreens than oil-in-water emulsions:
The Merck EusolexR manual entitled "UV Filters for Cosmetics" (in particular, pages 30 and 31).

2B.  We refer to the following documents as evidence that water-in-oil emulsions were well known in the field of cosmetic science, by the priority date of Patent Application No. 614998:
"Emulsions and Emulsion Technology", Part II, edited by Kenneth J. Lissant (Marcel Dekker Inc., New York, 1974) - see, in particular, pages 701-729, 732-753 and 912-915.

...

4.  That the complete specification does not comply with the requirements of Section 40(2) or (3) of the Act, with respect to at least the following matters:

...

(e)The amounts of various components specified on page 1A lines 21-25 and page 3 lines 10-13, and in claim 1, are not clear.  Are the amounts of components a) (i.e. 0.5 to 30% microfine titanium dioxide) and c) (i.e. 1 to 15% emulsifier) also included within component b) (oil phase) or d) (aqueous phase), as appropriate?  Alternatively are the amounts of components a) and c) calculated as completely separate ingredients?  This can make a significant difference in determining the amount of oil phase and/or aqueous phase present."

submissions

Ms Hustwick's submissions on behalf of Hamilton can be summarised as follows:

1.  There is uncertainty regarding the meaning of regulation 5.9 because of the inconsistency between regulations 5.9(1) and 5.9(2):  regulation 5.9(1)(c) says that the Commissioner "must" amend the particulars, whereas regulation 5.9(2) specifies that in certain circumstances the Commissioner "must not" allow an amendment.  This matter was not addressed in the decision in Diamond Scientific Company v CSL Limited (1992) AIPC 90-927.

2.  There is no requirement for the statement of grounds and particulars to include all the material facts.  This submission had several bases:

.  the conclusion in Mobay Corporation v The Dow Chemical Company (1992) AIPC 90-895 that the particulars must state all material facts is not justified;

.  the time limits imposed by the regulations are very onerous, and make it impractical to complete the particulars within the time allowed; and

.  the availability of amendment provisions in regulation 5.9 implies that the addition of further particulars was intended to be a part of the procedure.

3.  The public interest is strongly in favour of allowing an amendment which would place relevant information before the hearing if a serious opposition has been foreshadowed. 

4.  The opponent has been diligent, and had amended the statement as soon as it became aware that it was necessary to do so.

5.  The present situation can be distinguished from the situation in Diamond Scientific v CSL, supra because the changes that are sought are much less than in that case, and do not substantially change the case to be answered.

Mr Slattery's submissions on behalf of Boots can be summarised as follows:

1.  The time period of one month for filing the statement of grounds and particulars is very short, but is the period that is required by the regulations.

2.  Regulation 5.4 requires an opponent to file "the" particulars relating to each ground, not merely "some" particulars.

3.  The amendment would be unduly prejudicial to the applicant because it adds to the case to be answered, and was not proposed until seven months after the statement was filed.

Subsequent to the hearing, Ms Hustwick filed a declaration setting out the following additional facts:

1.  "It was my belief at that time (20 January 1992) that the purpose of the Statement of Grounds and Particulars was to provide exemplary particulars in support of the grounds of opposition, and that it was unnecessary to provide particulars of all evidence which would eventually be lodged."

2.  Ms Hustwick became aware of the materials that are proposed to be inserted by the amendment on the following dates:  17 January 1992, 11 May 1992, 15 May 1992, 27 May 1992, 2 June 1992, and 9 June 1992.

3.  All evidence in support was served on 19 June 1992, and 19 August 1992.

4.  On 13 August 1992 Ms Hustwick received a letter from the Assistant Commissioner that made her aware of the need to amend the statement of grounds and particulars.  The request to amend was lodged on 31 August 1992.

Mr Slattery filed a written submission in response to the declaration on 8 December 1992.  The relevant part of this submission is:

"it is clear that many of the proposed amendments relate to particulars which were known to the Opponent and/or its attorneys well before the August 31, 1992, the date on which the request to amend the Statement of Grounds and Particulars was lodged.  We also note that whilst Clause 14 identifies various dates upon which certain references came to the attention of the Opponent's Attorneys, this Clause does not address the circumstances in which those references came to attention.  We would submit that the circumstances are highly relevant, particularly in the light of the decision of The Commissioner of Patents in Diamond Scientific Company vs. CSL Limited"

decision

Request to amend the statement of grounds and particulars

The submissions made by Ms Hustwick called into question the correctness of two recent Patent Office decisions relevant to this case.  I will examine these submissions before dealing with the merits of this case.

1.  Mobay v Dow

The conclusion in Mobay v Dow, supra that "the particulars must state all material facts necessary for the ground of opposition" was challenged on the basis that it did not follow from the analysis.

The analysis in Mobay started from the assumption that the Patent Office should base its practice for dealing with statements of grounds and particulars on the rules of pleading.  Ms Hustwick did not disagree with this assumption.  However, the statement of particulars is a part of the statutory system of patent oppositions.  This means that if rigid application of the rules of pleading would lead to conflict or absurdity in the light of the rest of the system, the rules of pleading should be applied in a more flexible way.

One of the numerous cases on pleadings is National Starch Co v Robert Harper and Co Pty Ltd [1906] VLR 8, in which Hodges J at p 12 said "A defendant is entitled to know every material fact upon which the plaintiff relies" [emphasis added].  Consequently the conclusion in Mobay v Dow, supra that the particulars must state all material facts is entirely consistent with the established rules of pleading.  Further, this is a sensible general rule, which is consistent with the intention behind the statement of grounds and particulars, as explained in Kent-Moore Corporation v Environmental Products Amalgamated Pty Ltd (1992) AIPC 90-915:

"The "statement of grounds and particulars" is perhaps the key procedure introduced to expedite the determination of oppositions.  The statement sets out the basis of the opposition, and it follows that the opponent's evidence is circumscribed by that statement."

2.  Diamond Scientific v CSL

I was invited to reconsider the Diamond Scientific decision, supra, on the basis that the hearing officer in that case did not consider what was described as the inconsistency between regulations 5.9(1) and 5.9(2):  regulation 5.9(1) is an unqualified statement that the Commissioner "must" amend the particulars, whereas regulation 5.9(2) specifies that in certain circumstances the Commissioner "must not" allow an amendment. 

I consider that to read subregulation (1) in isolation is an improper compartmentalising of the subregulations.  When regulation 5.9 is read as a whole it is perfectly clear that subregulation (1) is subject to subregulation (2).  The hearing officer in the Diamond Scientific decision correctly read subregulation (1) in the light of subregulation (2) and concluded that "subregulation (2) makes clear that an amendment of the statement is subject to some fetters".

Consequently, I see no reason to question the conclusion reached in the Diamond Scientific decision.

3.  The amendment sought by Hamilton

The new Patents Regulations have changed the procedures that apply to oppositions to the grant of a patent.  For instance, the timeframe laid down in the Regulations imposes a responsibility of diligence upon parties coming before the Commissioner.  Additionally, a statement of grounds and particulars must be provided at an early point in the opposition, but this statement is capable of amendment in limited circumstances.

The test for the allowability of amendments laid down in the Diamond Scientific decision, supra, requires me to address two questions:

i)  is the amendment detrimental or disadvantageous to a person (for instance by changing the case to be answered); and
ii) do the circumstances surrounding the amendment cause the degree of that detriment or disadvantage to be unwarranted, excessive, improper, inappropriate, or unjustified (for instance, due to unnecessary delay in seeking the amendment).

The question of detriment focuses attention on the amendment which is sought.  The amendment introduces changes which can be identified as falling into six categories:

a)addition of the items "sold and/or quantitatively analysed";

b)addition of two companies to the one already stated as forming a disclosure by production;

c)  addition of "Pty Ltd" to the name of a company;

d)addition of 14 documents relevant to novelty and/or obviousness;

e)addition of reference to two elements of common general knowledge, and evidence of this; and

f)addition of a particular that the specification and claim 1 are not clear.

The amendment involves addition of new material to the particulars.  However, this does not automatically mean that the amendment is prejudicial to the applicant.  For instance, extra particulars that arise incidental to the preparation of the case may not be prejudicial to the applicant (Diamond Scientific decision, supra).  However, as Mr Slattery pointed out, there is no evidence to establish how the new material came to the opponent's attention.

Ms Hustwick suggested that the amendment is allowable because the original statement of grounds and particulars contained statements such as "For example, we refer to the following documents" and "with respect to at least the following" which indicate that the case to be answered is greater than has been specifically particularised.  This issue was discussed in the Kent-Moore decision, supra, where the Assistant Commissioner said:

"Statements in the statement of grounds and particulars to the effect that the opponent is still conducting searches, and will let the parties know about the results at some later time, do not in my view provide the opponent with any per se right to either amend the statement, or seek an extension of time to serve evidence in support."

The same is true in the situation where a statement of grounds and particulars contains an ambit claim directed to unidentified material facts.  Such statements do not provide an automatic basis for amending the particulars to include additional particulars.  The question to be addressed is whether the amendment changes the case to be answered.  If a material fact was originally inadequately particularised, an amendment which merely clarifies what is already present does not change the case to be answered.  However, if a material fact was not originally present, then an amendment to introduce that fact is changing the case to be answered, and is prima facie prejudicial to the applicant.

An analogy can be drawn with further and better particulars (see Mobay v Dow, supra).  If the material inserted by the amendment could have been the subject of a direction for further and better particulars, then the amendment is probably allowable.  If a direction for further and better particulars could not have been given, then the amendment is probably not be allowable.

It is appropriate in the present case for me to say a word about amendments which would cause the particulars to become inadequate for their purpose.  This situation would arise if an inadequately particularised fact was inserted into the statement of grounds and particulars.  Such an amendment not only changes the case to be answered, it does not properly reveal the new case to be answered.  I believe this would be unduly prejudicial to the applicant.

Applying these principles to the present case, I am led to the following conclusions.

The change in category a) adds "sold and/or quantitatively analysed", but does not identify any particular sale or analysis.  The amendment would cause the particulars to become inadequate for their purpose, and is thus unduly prejudicial to the applicant. 

The changes in categories b), d) and f) add particulars where there were originally ambit claims.  Consequently, the amendments introduce new particulars, rather than better particulars, and so would substantially change the case to be answered.  I note that in an analogous situation where prior publication was alleged based on "at least" certain identified documents, I refused to direct further and better particulars because "at least" did not provide even inadequate particulars (Mobay v Dow, supra).

A further point about category d) is that the documents are raised as particulars for the statutory grounds of "lacks novelty and/or is obvious".  It is uncertain which documents are the basis of the allegation of lack of novelty, and which are the basis of the allegation of obviousness.  Therefore, this change would introduce an inadequacy into the statement, so is unduly prejudicial.

The change in category c) merely better particularises the name of the company, so does not change the case to be answered.  There is no prejudice associated with this change.

The change in category e) is the addition of clauses 2A and 2B.  These clauses are structured and numbered in the same way as grounds of opposition, but do not state a statutory ground of opposition.  Consequently, they appear to be extra particulars of ground 2 .  Common general knowledge was not previously mentioned in the particulars of ground 2, so this change is the introduction of new particulars.  Once again, this would substantially change the case to be answered.

The question of the timeliness of the amendment was addressed in the declaration by Ms Hustwick.  From this information I can see that the extra material was conveyed to Ms Hustwick on a number of dates ranging from 17 January to 9 June 1992.  I do not know when the opponent became aware of the material, but it must have been before Ms Hustwick was informed.  This represents a delay of at least between three and seven months in seeking the amendment.  The explanation of the delay is that Ms Hustwick misunderstood the requirements of particulars, but once she was aware of the requirements she acted promptly to request an amendment.  The issue here is not whether a misunderstanding of the law is a relevant consideration, but rather whether the course of action actually undertaken was reasonable in the circumstances.

It may be that the changes introduced by the 1990 Patents Act created some uncertainty amongst the users of the patent system.  The Patent Office was conscious of this, and issued a number of Hearings Practice Notes (which were also reproduced in the Butterworths loose-leaf publication Intellectual Property in Australia by Lahore et al), of which No 2, dated August 1991, dealt with the statement of grounds and particulars.  This practice note stated inter alia "although a statement of particulars may bring in all the facts necessary to establish a ground of opposition, it will be defective if it is of such generality that it is insufficient to properly inform the applicant of the case it has to meet."  In the light of this information, which was available to the opponent, I do not believe that the course of action that it took was reasonable.  Consequently, the delay was excessive.

I believe that the applicant has discharged the onus of demonstrating undue prejudice.

The Diamond Scientific decision also discusses the situation where the onus of proof may be presumed to have been satisfied.  The present case falls into this category because:

.  the applicant has objected to the amendment;

.the amendment may reasonably be said to prejudice the applicant as it adds new particulars; and

.the seven month time period, and the addition of 14 new citations, provide a reasonable inference that the prejudice is undue.

This raises the presumption that the applicant will be unduly prejudiced by the amendment, and shifts the onus to the opponent.  I am not satisfied that the opponent has been able to discharge the onus of demonstrating that its activities have not been such as to have unduly prejudiced the applicant.  Consequently, the amendment is not allowable.

Both of these lines of analysis lead to the conclusion that the amendment is not allowable.

4.  The public interest

It was suggested that allowance of the amendment is in the public interest, and on this basis should be allowed.  The public interest is not discussed in the Diamond Scientific decision, supra.  However, public interest considerations have long been a part of the law relating to procedural aspects of patent oppositions.  The cases relating to the public interest have recently been reviewed in the Kent-Moore decision, supra.  The Assistant Commissioner concluded:

"In my view, the relevance of the Kaiser Aluminium decision to requests for an extension of time to file evidence is that the Commissioner's considerations are not be circumscribed by the material referred to in the request for the extension of time; rather, before refusing to grant an extension of time, the Commissioner must consider all relevant material put before him [and of course hear the parties - regulation 5.10(5)(c)(i)].

I do not consider that Kaiser Aluminium (supra) is authority for the proposition that an extension of time should be granted essentially on the basis that there is a `serious' opposition, and that consequentially the existence (or otherwise) of justification for that extension is somehow subsidiary or even irrelevant."

I believe that the public interest requirements are the same in cases of requests to amend the statement of grounds and particulars.  That is, the Commissioner ought to consider all relevant material put before him or her before deciding whether or not to allow an amendment.  It is not sufficient for an opponent to demonstrate that a serious opposition is in train, and to seek to rely on that factor alone as determinative of the issue.

I conclude that in the present case I have taken account of all relevant material placed before me, so the public interest has been satisfied.

5.  Consequences

The opponent completed service of evidence in support on 19 August 1992.  It appears that some of this evidence relates to the particulars as proposed to be amended.  Since I have refused to allow this amendment, some of that evidence relates to matters not forming part of the opposition.  This evidence will not be available to be argued at the hearing of the opposition.  However, it may be considered by the Commissioner in any bar‑to‑sealing action.

Directions for the filing of evidence in answer

I have been asked to give a direction that the time for filing evidence in answer should be extended so as to run from the date of this decision.  Both parties agreed that this direction should be given.  However, I do not believe that this agreement alone is sufficient reason for me to give the direction.

The Commissioner has a discretionary power under regulation 5.10(1)(a) to give "directions that seem appropriate in order to facilitate the smooth operation of the system" (Mobay v Dow, supra), provided that they are not inconsistent with the Act or Regulations.  In the situation where the opponent is seeking to amend the statement of grounds and particulars, the case to be answered by the applicant is not certain until the allowability of the amendment has been determined.  It is clearly unreasonable to expect an applicant to complete filing their evidence in answer until they are sure of the case that they are answering.  It seems to me that in such a situation it would normally be appropriate to extend the time for serving evidence in answer so that the applicant has a full 3 months to respond to the evidence in support.  A direction to this effect is not inconsistent with the Act or Regulations.

I shall give the direction requested.

conclusion

The amendment, other than the change in category c), would be unduly prejudicial to the applicant.  I refuse to allow the amendment.

I direct that the time for serving evidence in answer shall run from the date of this decision.

costs

In actions before the Commissioner costs normally follow the event.  I see no reason for departing from this in the present case.  I award costs against Hamilton.

(S.D.BARKER)
Delegate of the Commissioner of Patents

Patent attorneys for the applicant  :  Davies Collison Cave, Melbourne

Patent attorneys for the opponent   :  R K Maddern & Associates, Adelaide