The University of New South Wales, Burns Philp & Co Ltd, Burns Philp Research & Development Pty Ltd, Commonwealth Scientific and Industrial Research Organisation, Arnott's Biscuits Ltd, Gist-brocades Australia Pty...
[2000] APO 36
•19 May 2000
OFFICIAL NOTICE
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No. 705095 in the name of The University of New South Wales, Burns Philp & Co Ltd, Burns Philp Research & Development Pty Ltd, Commonwealth Scientific and Industrial Research Organisation, Arnott's Biscuits Ltd, Gist-Brocades Australia Pty Ltd and Goodman Fielder Ingredients Ltd
Title: Enhancement of microbial colonisation of the gastrointestinal tract
Action: Request to extend the time for serving evidence in support of an opposition by National Starch and Chemical Company.
Decision: Issued .
Abstract
The extension of time sought is refused.
(a) An extension of seven days allowed in order to serve evidence immediately to hand.
Ferocem Pty Ltd v Commissioner of Patents (1994) AIPC 91-057; 28 IPR 243 followed.
(b) There has been an inadequate explanation of the delay. Although the patent attorney acted promptly once instructed to engage an expert declarant, there has been no explanation of why the attorney was not instructed at an earlier time.
(c) The nature of the evidence is such that it would be preferable for it to be included in the opposition. However, the significance of the evidence cannot be assessed.
(d) The unexplained delay in instructing the patent attorney leads to a reasonable inference of undue delay.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No. 705095 by The University of New South Wales, Burns Philp & Co Ltd, Burns Philp Research & Development Pty Ltd, Commonwealth Scientific and Industrial Research Organisation, Arnott's Biscuits Ltd, Gist-Brocades Australia Pty Ltd and Goodman Fielder Ingredients Ltd, and a request to extend the time for serving evidence in support of an opposition by National Starch and Chemical Company.
BACKGROUND
Patent application number 705095 in the name of The University of New South Wales, Burns Philp & Co Ltd, Burns Philp Research & Development Pty Ltd, Commonwealth Scientific and Industrial Research Organisation, Arnott's Biscuits Ltd, Gist-Brocades Australia Pty Ltd and Goodman Fielder Ingredients Ltd (hereafter referred to as the patent applicant) was advertised accepted on 13 May 1999. A notice of opposition was filed by National Starch and Chemical Company (hereafter referred to as National Starch) on 13 August 1999. A statement of grounds and particulars was served on 15 November 1999. The statement of grounds and particulars was amended without objection on 21 March 2000.
The time for serving evidence in support was extended once, and is now due to be completed by 15 March 2000. A further request to extend this time to 15 June 2000 had been made, and the extension was objected to by the applicant. Partial evidence in support was filed on 15 March 2000.
The request for extension of time was heard in Canberra on 9 May 2000. The patent applicant was represented by Dr Trevor Davies, patent attorney of F B Rice & Co, Sydney, assisted by Ms Rachel Butler. National Starch was represented by Ms Julie Wilkie, patent attorney of Callinan Lawrie, Melbourne. Ms Wilkie appeared by telephone.
DECISION
The law on extensions of time
The time for serving evidence in support of an opposition is 3 months from the date of serving the statement of grounds and particulars (regulation 5.8). This time can be extended under regulation 5.10(2):
(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 give a direction under subregulation (1) or grant an application under subregulation (2) or (4) unless the Commissioner:
(a)if he or she proposes to grant an application by a party - is reasonably satisfied that the other party has been notified of the application; and
(b)if he or she proposes to act on his own motion - ensures that the parties are notified of the proposed action; and
(c)in either case:
(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.
It is clear that, as a prerequisite to any decision, the Commissioner must ensure that the other party has been notified, and that both parties have had the opportunity to make representations. An extension can then only be granted if the Commissioner is reasonably satisfied that it is appropriate.
The operation of the extension of time provisions was considered by Burchett J in Ferocem Pty Ltd v Commissioner of Patents (1994) AIPC 91-057; 28 IPR 243 and Sackville J in A Goninan & Co Ltd v Commissioner of Patents (1997) AIPC 91-330; 38 IPR 213. From these decisions it is clear that the principles that govern extensions of time to serve evidence are:
a)The power is discretionary: Regulation 5.10 confers a broad discretion, which cannot be reduced to imperative compliance with particular requirements. It is necessary to give genuine and proper consideration to all relevant considerations. (Ferocem at AIPC 38,208; IPR 247-8, Goninan at AIPC 39,434; IPR 220)
b)Explanation of delay: The reasons why the evidence was not served in time are a relevant consideration, but a satisfactory explanation is not a mandatory requirement. (Ferocem at AIPC 38,207-8; IPR 247)
c)The public interest: The public interest in determining a serious opposition on its merits is a relevant consideration. (Goninan at AIPC 39,435-6; IPR 222)
· In order to do this, it is necessary for the Commissioner to form a view as to the nature of the evidence that it is sought to adduce, and the significance of that evidence for the opposition proceedings. (Goninan at AIPC 39,438; IPR 225-6)
· The Commissioner must also consider whether a short extension should be given to permit the filing of any evidence which is immediately available. (Goninan at AIPC 39,438; IPR 225) Logically, this is only relevant if the Commissioner determines that the extension sought is not justified.
· The public interest is not protected merely because some evidence has already been served. (Goninan at AIPC 39,438; IPR 225)
d)The interests of the party seeking an extension: The interests of the party seeking the extension are a relevant consideration. (Ferocem at AIPC 38,208; IPR 247)
e)The interests of other parties: It is relevant to consider the disadvantage to the other party of delays in determining the opposition, and the effect of delays on the efficient and orderly administration of the Patents Office. (Ferocem at AIPC 38,208; IPR 247, Goninan at AIPC 39,436; IPR 222)
In the present case the other party has been notified, and the parties have been given the opportunity to make representations. Consequently the prerequisites to the exercise of the power have been satisfied.
Explanation of the delay
The reasons given by National Starch when making the application for extension of time were:
"Part evidence has been served, however, in view of the Christmas and New Year period it has been difficult to contact a potential witness for the case. We have now contacted and engaged an expert witness who has been given the relevant documents, however, we have not yet received his views on these documents due to his commitments at the commencement of the academic year.
Further we have experienced difficulties identifying libraries that hold the relevant journals to obtain publication dates for the various references. Although a number of libraries have been identified these are unable to provide us with the relevant declarations due to library policy and in one case an obscured date stamp.
In addition to the above the parties are conducting negotiations with a view to settlement of the opposition. Further time is required to prepare the evidence and determine the outcome of the negotiations."
The reasons given by National Starch when requesting the first extension of time were:
"we have written to the Patent Office requesting a stay in proceedings in view of the fact that the parties are negotiating a possible settlement. Further time is required for the Patent Office to process the Application for a stay in proceedings"
The stay in proceedings referred to was a request dated 15 February 2000 for a direction under regulation 5.10(1) for a six month stay in proceedings. On 21 February 2000 an officer of the Patent Office informed the parties that it did not appear that there was a basis for such a direction. This request for a stay seems to have been abandoned.
On 4 May 2000 National Starch filed (by facsimile) a statutory declaration by Ms Wilkie in support of the extension. The declaration states, in part:
"2.The Statement of Grounds and Particulars in relation to the Opposition was served on 15 November 1999. The initial due date for serving copy Evidence-in-Support was 15 February 2000. The period from November 1999 to February 2000 included the Christmas/New Year and the break-up of academic institutions for the Summer holidays. In addition I was on leave from the office of Callinan Lawrie due to overseas travel from 17 December 1999 to 4 January 2000.
3.The day after the Statement of Grounds and Particulars was served Callinan Lawrie wrote to National Starch & Chemical Company (hereinafter referred to as 'the Opponent') seeking instructions, inter alia, as to potential experts to comment on the opposed application, and asking for copies of a number of references which were mentioned in the Statement of Grounds and Particulars and which were needed for preparation of Evidence-in-Support.
4.Callinan Lawrie received a letter from the Opponent dated 23 November 1999 stating that it may be entering negotiations with one of the Patent Applicants.
5.From prior experience Callinan Lawrie has found it particularly difficult to locate experts in Australia willing to act against one of the Applicants, namely Goodman Fielder. In an opposition against an application by the same Applicants covering closely related technology (patent Application No 687253) attempts to locate experts on behalf of the Opponent were declined in all but one case, many of the potential experts saying that they received funding from Goodman Fielder and did not want to compromise any future funding from the same source. The many attempts on the earlier opposition only located one person, Dr Gwyn Jones a university academic, who was willing to act as an expert.
6.On 22 December 1999 Callinan Lawrie received instructions from the Opponent to engage experts on their behalf. When I returned from leave on 4 January 2000 I attempted to contact Dr Jones. Specifically on that day I left a message on Dr Jones' answering machine asking him to contact me.
7.Dr Jones contacted me on 11 January 2000 and indicated that he was unwilling to commit himself to being an expert in this opposition until he had a chance to review the materials because he was concerned about his academic commitments, particularly so close to the commencement of the academic year. On 13 January 2000 I sent Dr Jones a proposed consulting agreement, a copy of the patent specification and copies of those documents mentioned in the Statement of Grounds and Particulars which Callinan Lawrie then had on hand. I again attempted to contact Dr Jones on 20 January 2000. Although I was unable to speak to him I left a message on his answering machine asking him to contact me.
8.i) In addition to contacting Dr Jones I also began investigating libraries which may hold copies of the journal articles mentioned in the Statement of Grounds and Particulars in early January. This involved consulting a related Opposition file where we had obtained proof of publication and identifying three categories of journal articles for the purpose of the present Opposition. These categories were: a) those articles for which we had already obtained proof of publication for the related Opposition, b) those articles which were not the same but were likely to be held by a particular library and c) those articles for which I did not know whether the relevant journals were held by an Australian library.
ii) On 13 January 2000 I wrote to libraries identified as those that may have held copies of journal articles in categories b) and c) above requesting that they confirm whether the relevant article was held by their library and if so provide us with declarations concerning the dates of public availability of the journal articles. Once the relevant libraries were confirmed numerous phone calls were made and e-mails sent in order to obtain the relevant executed declarations. This process is substantially complete. However declarations regarding two (2) journal articles are still required. I have established that neither of these two journals is held by an Australian library. This involved contacting a number of libraries not on my initial list. The Opponent is currently contacting libraries overseas to obtain the relevant declarations regarding publication of the journal articles.
9.Callinan Lawrie was informed in a letter dated 1 February 2000 that the client was negotiating with Goodman Fielder and wished to request a six (6) month stay in proceedings. Callinan Lawrie applied for a stay in proceedings on the 15 February 2000. On the same date Callinan Lawrie also applied for a one (1) month extension of time for the Patent Office to process the application for a stay in proceedings. The request for the stay was not allowed by letter of 21 February 2000 from the Patent Office.
10.On 29 February 2000 I telephoned Dr Jones and left a message on his answering machine. Later that day Dr Jones returned my call. In that telephone conversation he indicated that he would act as an expert. He gave brief oral comments on the documents which had been provided to him.
11.On 21 March 2000 I provided Dr Jones with the remaining documents necessary and received his written views on the case on 22 March 2000. In his comments of 22 March 2000 Dr Jones suggested that we seek the opinion of an additional expert who lives in New Zealand. Dr Jones' views and suggestions were reported to the Opponent for comment on 6 April 2000.
12.On 14 March 2000 part of the copy Evidence-in-Support was served on the applicant. On 15 March 2000 Callinan Lawrie received a letter from the Opponent mentioning negotiations and instructing us to obtain a three (3) month extension of time to serve copy Evidence-in-Support. The Opponent also mentioned that they were engaging an expert at their end to comment on the Opposition. A three (3) month extension of time application was lodged on 15 March 2000."
This declaration provides a much fuller explanation of the delay in serving evidence. Dr Davies pointed to several inadequacies in the declaration, such as the names of the libraries that were contacted are not given. I do not believe that this lessens the frankness of the explanation.
The evidence is significantly silent on one aspect of the delay. Ms Wilkie did not contact Dr Jones until she received instructions from National Starch, (para 6) and once instructed she seems to have acted promptly. I cannot find fault with her actions in this regard. However, there is no explanation why National Starch waited so long to give instructions.
There is a similar silence on why the evidence of the unidentified overseas expert is not available. On balance, I have been provided with a comprehensive explanation of the actions taken by Ms Wilkie, and I consider that there has been no unnecessary delay on her part. The actions taken by National Starch are not explained.
On the issue of the negotiations, Dr Davies stated that he was advised there were no negotiations. However, he stated there were discussions between Goodman Fielder and National Starch. It seems clear that there have been some type of discussions between Goodman Fielder and National Starch, but it is uncertain whether they could be characterised as negotiations for the resolution of the present opposition. The balance of the evidence fails to satisfy me that there were negotiations for the resolution of the opposition.
Overall, there has not been an adequate explanation of the delay.
Nature and significance of the evidence
The grounds of the opposition are:
· manner of manufacture
· novelty
· inventive step
· section 40
The evidence already on file is a declaration by Julie Margaret Wilkie, including exhibits JMW-1 to JMW-32. This declaration introduces into evidence copies of patent specifications and non-patent literature, as well as evidence of publication dates. At the hearing Ms Wilkie indicated that the evidence that is being prepared is of two types. First, there is expert evidence in the form of a declaration by Dr Jones, and a declaration by a further (unidentified) expert. Ms Wilkie stated that the New Zealand based expert referred to in paragraph 11 of her declaration is not being contacted. Second, there would be evidence of the publication dates of documents.
The evidence of Dr Jones is expert evidence in relation to the documents referred to in the statement of grounds and particulars. The evidence of the other expert is probably of the same nature.
It is clear that the evidence of experts in relation to documents is normally of assistance in deciding whether the documents anticipate the claimed invention. Ms Wilkie referred to the case of Kimberly-Clark Worldwide Inc v Carter Holt Harvey Tissue Australia Pty Ltd [1999] APO 83, in which the hearing officer noted:
"An opposition without evidence-in-support is one which, in practical terms, is rendered almost untenable."
I agree with that observation. However, the present case is quite different in that part evidence in support has already been filed. This evidence includes copies of documents referred to in the statement of grounds and particulars and evidence of publication dates. Consequently the opposition would not be rendered untenable if an extension is not allowed.
The nature of the evidence that is still to be served makes it preferable (although not essential) for that evidence to be included. The significance of the evidence cannot be determined as there is no material before me on this point. I conclude that the nature and significance of the evidence interest is neutral in relation to the extension of time.
The interests of National Starch
There is presently no expert evidence on file, and it is clearly in National Starch's interests to have such evidence available. Dr Davies submitted that the present extension should be viewed in the context of the relationship between the parties. National Starch is a competitor of Goodman Fielder, and the two parties are engaged in actions relating to other patent applications both in Australia and overseas. Dr Davies suggested that there could be commercial advantage for National Starch in simply delaying the grant of the present patent application rather than in mounting a serious opposition.
I have no clear evidence that National Starch do not have a genuine belief that the present patent application should not proceed to grant. Consequently I will give no weight to the patent applicant's submission on this point. I accept that the interests of National Starch support allowing the extension of time.
The interests of the patent applicant and the Patent Office
The interests of the patent applicant lie in a speedy resolution of the opposition. Consequently any further extension of time is contrary to the interests of the patent applicant.
The interests of the Patent Office
The effect of the delay on the efficient and orderly administration of the Patent Office lies against allowing the extension.
Other considerations
An issue raised by the patent applicant is whether there had been undue delay in the assembling of the evidence in support, and consequently whether there was a serious opposition in the matter.
This point can be explained by remembering that National Starch were aware of the difficulty in locating suitable witnesses as a result of their earlier experience in a related opposition (paragraph 5). However, in spite of this experience, there was no instruction to engage an expert until 22 December 1999, which is 4 months after filing the notice of opposition and 1 month after serving the statement of grounds and particulars. This seems to be an extraordinary delay given that it was known that it would be difficult to locate an expert.
Dr Davies referred me to Lesaffre et Cie v Burns Philp Research & Development Pty Ltd [1997] APO 5, where the hearing officer stated:
"In the normal course of events one could reasonably imagine that once a notice of opposition is filed the opponent should [be] planning for the preparation of evidence for the opposition. Firstly, this allows the opponent to be in an informed position when foreshadowing its case in the statement of grounds and particulars and secondly it allows them to be ready to serve the evidence at a later date. There appears to have been little, if any, of such activity on the part of the opponent or if there was such activity it has not been highlighted in the submissions of the opponent. Specifically, the opponents have provided no information to indicate why it took so long for them to identify an addressee save for the general assertion that such experts are limited in number. For instance, were other experts in existence, were they contacted, were they unable to perform the work required, did they have similar commitments to Professor Dawes, etc?"
There are strong similarities between the Lesaffre case and the present case. In both cases it was six months from the advertisement of acceptance until the decision to look for an expert, and there has not been explanation of that delay. In the Lesaffre case the hearing officer decided that the extension of time was not justified.
As I noted previously, there was a significant delay by National Starch in instructing Ms Wilkie to engage an expert, and that delay has not been explained. It was also known that it was difficult to locate an expert in a similar opposition between these parties, making the delay all the more surprising. It is a reasonable inference from these facts that there has been an undue delay.
Conclusion
It is necessary to come to a conclusion as to whether an extension is justified, having regard to the considerations raised above.
In favour of allowing the extension are the interests of the National Starch. Against allowing the extension are the lack of a full explanation, the interests of the patent applicant, and the delay by National Starch in preparing the expert evidence. The public interest does not clearly support National Starch's case. The evidence of experts is often of assistance in dealing with questions of anticipation, but it is not invariably necessary to have expert opinion (especially since the change to the prior art base for obviousness under the Patents Act 1990). I also note that the public interest is not protected merely because some evidence has already been served, but the evidence that has been served is the critical evidence - the documents that are alleged to anticipate the invention. The interests of the Patent Office are a minor consideration.
On balance, the extension is supported by the interests of National Starch. All other considerations are either against allowing the extension or neutral on the issue. I am not satisfied that an appropriate case has been made out.
It remains for me to consider whether it is appropriate to allow a short extension of time for National Starch to serve any evidence immediately to hand (as suggested in Ferocem v Commissioner of Patents, supra). At the hearing, Ms Wilkie indicated that there was evidence immediately to hand, so I will allow a short extension so that this evidence can be served. I believe that seven (7) days from the date of this decision should be sufficient.
I refuse the extension of time sought by National Starch. I allow National Starch an extension of seven (7) days from the date of this decision to serve any evidence immediately to hand. The time for serving evidence in answer shall run from the last day of the extension that I have allowed.
Costs
National Starch have not made out an appropriate case for an extension of time. In this situation it is appropriate to award costs against National Starch.
I award costs in accordance with Schedule 8 against National Starch.
Dr S.D.Barker
Delegate of the Commissioner of Patents
Patent attorneys for the applicant : F B Rice & Co, Sydney
Patent attorneys for the opponent : Callinan Lawrie, Melbourne
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