The Commonwealth of Australia v Australia Sonar Systems Pty Limited

[1993] APO 30

official notice

decision of a delegate of the commissioner of patents

Application        :    No. 621418 in the name of The

Commonwealth of Australia

Title:    Demountable Hydrophone Cable Connector

Action:    Opposition by Australia Sonar Systems

Pty Limited, and a request to amend the

statement of grounds and particulars

Decision:    Issued            .  Amendment allowed.                   

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Patent Application No. 621418 by THE COMMONWEALTH OF

AUSTRALIA, opposition thereto by AUSTRALIA SONAR SYSTEMS

PTY LIMITED, and a request to amend the statement of

grounds and particulars

BACKGROUND

Application 621418 was filed on 17 November 1989 by Plessey Australia Pty Limited.  The application was advertised accepted on 12 March 1992.  Subsequent to acceptance, the name of the applicant was changed under sec 113 to The Commonwealth of Australia (The C of A).

Australia Sonar Systems Pty Limited (ASS) filed a notice of opposition to the application on 12 June 1992, and a statement of grounds and particulars on 10 July 1992.  ASS served part of its evidence in support of the opposition on 12 October and 9 December 1992, and completed this evidence on 10 December 1992 by serving a declaration by Alan Lloyd Carpenter.

On 23 December 1992 ASS filed a request to amend the statement of grounds and particulars to firstly correct the title of that document to read "Statement of Grounds and Particulars" instead of "Statement of Case" and, secondly, to introduce a new particular.  The C of A objected to the amendment sought by Australia insofar as it related to the introduction of the new particular, and I heard the matter in Sydney on 11 March 1993.  The C of A was not represented at the hearing but instead relied upon written submissions and an accompanying declaration by Mr Paul Wyk, patent attorney with Collison & Co.  ASS was represented by Mr Fraser Old, patent attorney with Spruson & Ferguson.

STATEMENT OF GROUNDS AND PARTICULARS

So far as is material to the present action, the statement of grounds and particulars as filed lists prior publication, obviousness and lack of novelty as grounds of opposition on which Australia relies.  These grounds are supported by reference to a number of United States patent specifications and also various items of non-patent literature.  The effect of the amendment sought would be to introduce an additional particularised document, Australian patent specification 23697/84 by HPM Industries Pty Limited.

SUBMISSIONS AND DECISION

Relevant Law

The allowability of the present request to amend the statement of grounds and particulars is determined by reg 5.9 of the Patent Regulations 1990.  The relevant portions of reg 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 Assistant 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 Assistant Commissioner 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.

Findings of Fact

At the hearing Mr Old filed a declaration to explain how knowledge of the existence of the HPM specification came about.  Mr Old deposes that he is the attorney responsible for the prosecution of the opposition on behalf of ASS.  He then goes on to state:

"3. As I recall, during telephone discussions
 between myself and Dr Allan Carpenter, one of the
 Declarants of the Evidence-In-Support of the
 opposition, relating to the preparation of the
 Evidence-In-Support, the existence of an electric
 power cord coupler sold in Australia by HPM arose.

4. A sample of this device was immediately
 purchased on my instructions from a Sydney BBC
 hardware store and examined.  This device had
 moulded thereon the word "PATENTED".  I
 immediately instructed a patent name search of
 the Australian Patent Office records for patents
 and applications in the name of HPM Industries Pty
 Limited and Patent Application No. 23697/84 was
 consequently discovered.  The search was carried
 out on 25 November 1992 and it was found that this
 application was published before the priority date
 of Patent Application No. 621418.  A copy of the
 patent application was obtained on 26 November
 1992."

This evidence simply serves to expand the explanation given in the request to amend.

As I have previously indicated, Mr Carpenter's declaration completed the evidence in support of the opposition.  According to Mr Old, he became aware of the HPM specification through a chain of causation which started from discussions held with Mr Carpenter during the preparation of that evidence.  Thus it seems to me from the available evidence that Mr Old's pursuit of this chain of events did not, as suggested by Mr Wyk, constitute a deliberate attempt on his part to actively seek a further basis for the opposition subsequent to the filing of the statement of grounds and particulars.  I am therefore prepared to accept that knowledge of the HPM specification arose consequent upon the preparation of Australia's supporting evidence (Diamond Scientific v CSL (supra)).

I must accordingly now consider whether the amendment to include the HPM specification in the statement of grounds and particulars satisfies the three criteria set out in the Diamond Scientific decision.

Regarding the first of these criteria, I agree with Mr Old that the inclusion of the HPM specification will not result in any protraction of the preparation of the case.  The subject specification was served on The C of A as an exhibit to the declaration by Mr Carpenter (the declaration which completed the evidence in support), and thus I see no reason why the details of this specification could not be considered by the C of A at the same time as the details of Mr Carpenter's declaration.

In reaching this conclusion I am mindful of the fact that some 5 months elapsed between the original date of filing of the statement of grounds and particulars, and the date of service of Mr Carpenter's declaration in which reference was first made to the HPM specification.  I also realise that another half-month had passed before The C of A was advised of ASS's proposal to include the HPM specification in the statement by way of amendment.

However there is nothing that indicates to me that ASS became aware of the HPM specification before seeking Mr Carpenter's evidence, or that reliance upon the specification was in any way foreshadowed in the original statement.  Moreover, the available evidence leads me to believe that since becoming aware of the HPM specification, ASS has proceeded with a degree of urgency appropriate to the circumstances.  Accordingly, I do not agree with Mr Wyk that parallels can be drawn between the situation in the Diamond Scientific decision and the present situation such that the period which elapsed from filing the statement to request the amendment could be considered excessive.

Regarding the second criterion, I am satisfied from the available evidence that the amendment was proposed at the earliest reasonable opportunity during the opposition as a whole.  As shown by Mr Old's declaration, ASS located the HPM specification, prepared and filed declaratory evidence from Mr Carpenter in respect of all material referred to in the amended statement of grounds and particulars, and prepared and filed a request to amend the statement, all within a 4-week period.  Although it has not been made clear to me why ASS did not file the request to amend when it filed Mr Carpenter's declaration, it seems reasonable to suppose that the preparation of that declaration was given a higher priority in view of the impending deadline faced by ASS in which to complete its evidence in support.

Regarding the final criterion, Mr Wyk has argued that the inclusion of the HPM specification in the statement would substantially change the case The C of A has to answer in the opposition for the following reasons:

"In the present matter, the case that originally needed
 to be answered comprised three US Patent
 specifications, all of which were said to have all the
 features of the claimed invention, apart from a split
 sleeve connector and several documents including
 Patent specification and technical documents that were
 said to represent common general knowledge, which
 supplied the split sleeve connector......

The case that now has to be answered has altered
 because an additional Patent Specification is
 desired to be relied upon which specification is
 alleged to have all the features of at least the
 broadest claim of the Patent Application now
 opposed except for the sealing means......  This
 then means that the feature of a sealing ring is
 said to be the only missing thing which
 presumably can be supplied by reason of being a
 mere adaptation of the cable to underwater use.

The fact that the Opponent has added the specification
 to its case of itself must clearly indicate that the
 Opponent considers the new specification to be of
 importance.  The volume of material used to support
 the notion that longitudinal split sleeves were known
 or common general knowledge would it seems to me not
 need the extra support of an additional Patent
 specification that was not granted and in any event
 it is clear from the subject matter of that Patent
 specification that the addition cannot even be said
 to support, as further evidence, the line of
 argument adopted by the earlier particulars.  The
 extra specification clearly introduces a new line
 of argument which now has to be countered by the
 Applicant of the opposed Patent without the benefit
 of the reasonable notice, in terms of time, given
 for the other line of argument.

The case that has to be answered has now clearly
 been changed."

However it seems to me that Mr Wyk's submissions merely address the alleged comparative relevance to the opposition of the material which is already particularised and the HPM specification, rather than the basis of the opposition itself, and as a result have no bearing on the present request to amend.  The evidence before me clearly suggests that the HPM specification discloses material which is pertinent to the question of whether the claimed invention is anticipated, a ground of opposition pursued by ASS from the outset.  Thus although the particularisation of the HPM specification may result in a change in the specific facts which The C of A has to answer, it does not appear to me that there would be any substantial change in the case.

Accordingly, I find that the amendment sought by ASS to the statement of grounds and particulars would not unduly prejudice The C of A and should therefore be allowed.

Directions

The issue of directions for the further conduct of the substantive opposition was raised at the hearing.  The Commissioner has a discretionary power under reg 5.10(1) to give "directions that seem appropriate in order to facilitate the smooth operation of the system" (Mobay Corp v The Dow Chemical Company (1992) AIPC 90-895), provided that they are not inconsistent with the Act or Regulations.

In the situation where an opponent is seeking to amend its statement of grounds and particulars, the case to be answered by the applicant may not be certain until the allowability of the amendment has been determined.  However the amendment sought by ASS is of a minor nature and does not substantially change the case The C of A has to answer.  It seems to me that in these circumstances it would be inappropriate to direct that the time for serving evidence in answer is to run from the date of this decision.

CONCLUSION

I allow the amendment to the statement of grounds and particulars and, accordingly, I award costs against The C of A.

O.L.Haggar
Delegate of the Commissioner of Patents

Patent attorneys for the applicant  :  Collison & Co,

Adelaide

Patent attorneys for the opponent   :  Spruson & Ferguson,

Sydney