The Wellcome Foundation Limited v. Peptide Technology Limited

[1990] APO 10

In the Matter of the Patents Act 1952

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In the Matter of Application No. 564783 for a Patent by THE WELLCOME FOUNDATION LIMITED

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In the Matter of Opposition thereto by PEPTIDE TECHNOLOGY LIMITED

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In the Matter of an Application for Extension of Time within which to Serve Evidence‑in‑Reply.

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS:
Background
         Patent application 564783 was advertised accepted in the Official Journal on 27 August 1987.  A notice of opposition to the grant of a patent on the application was lodged by Peptide Technology Limited (PEPTIDE) on 11 February 1988 within an extended period of time granted by the Commissioner under sub‑section 59(1).  PEPTIDE completed service of its evidence‑in‑support, which included a declaration accompanied by 81 exhibits, on 11 November 1988.  The Wellcome Foundation Limited (WELLCOME) completed service of its evidence‑in‑answer, which included a declaration accompanied by 38 exhibits, on 9 August 1989.
         WELLCOME did not object to PEPTIDE's first application to extend the time to serve evidence‑in‑reply which the Commissioner subsequently allowed.  But WELLCOME did object to the next

application which requested an extension until 9 May 1990.  Consequently the matter was set down for hearing in Canberra on 16 March 1990.  Mr C. Marsh, patent attorney of F.B. Rice & Co, appeared for PEPTIDE and Mr C.M. Bentley, assisted by Dr V. Santer, both patent attorneys of Griffith Hack & Co, appeared for WELLCOME.
Application for Extension of Time
         The circumstances and grounds given in the application for extension of time are as follows:

"Extensive draft declaration have been prepared and are being reviewed by the proposed declarants.  Further time is required to allow the declarations to be finalised and lodged."

Submissions
         Mr Marsh's submissions in support of the application for extension of time can be summarised as follows:

1.In an earlier decision concerning the preparation of evidence‑in‑answer in the present opposition the hearing officer stated that given the technology involved and the voluminous quantity of evidence he was in no doubt that the opposition is of some complexity and not without difficulties (The Wellcome Foundation Ltd v Peptide Technology Ltd 14 IPR 567 at page 569). Mr Marsh said this statement was also relevant to the preparation of the evidence‑in‑reply.

2.WELLCOME requested amendment of the claims under section 77 and this amendment dramatically changed the claims.  Consequently the evidence‑in‑support and the evidence‑ in‑answer had to be reviewed in the light of this amendment before the evidence‑in‑reply was prepared.

3.In order to answer some of the statements contained in the evidence‑in‑answer it has been necessary to obtain declarations from experts who have not previously made declarations during the present opposition proceedings.

4.The present situation differs from the situation in the Baxter Travenol v Cutter decision (Baxter Travenol Laboratories v Cutter Laboratories Inc. 9 IPR 36) because some of the declarations forming part of the evidence‑in‑reply are ready to be served. But at least two declarations, which merely have to be signed by the declarants, cannot be served until the declarants are available to sign them.

5.The reasons in the application for an extension of time adequately explain why PEPTIDE requires more time to serve its evidence‑in‑reply.

In answer Mr Bentley made the following points:

1.The request to amend application No. 564783 under section 77 has the effect of narrowing the scope of the claims.  Therefore the proposed amendment should have made the preparation of the evidence‑in‑reply less complicated because the amendment simplifies the claims.

2.The preparation of the evidence‑in‑reply should require less time than the preparation of the evidence‑in‑ support because the purpose of this evidence is to reply to issues raised in the evidence‑in‑answer.  PEPTIDE's experts should have been familiar with the situation because they were involved in the preparation of the evidence‑in‑support.  Thus PEPTIDE may require more time because some of the evidence may not be properly in reply.

3.The reasons in the application for extension of time do not justify an extension of the time.  The explanation provided at the hearing may justify an extension of the time.  In this case PEPTIDE should be allowed a shorter time than three months to serve the evidence because Mr Marsh admitted that some of the declarations are ready to be served.

The Decision
The law regarding this class of extension has been comprehensively reviewed by the Federal Court in Vangedal‑Nielsen v Smith and Gelphen Nominees (1980) 33 ALR 144 and in Lyons v. Registrar of Trade Marks 1 IPR 416; in addition there are many Office decisions dealing with such extensions, quite a few of which are published in the Butterworth Industrial Property Reports (IPR) and in the CCH publication, Australian Industrial & Intellectual Property (AIPC). This law can be stated simply as follows:

(i)The Commissioner, before allowing the extension, must be satisfied that the person seeking the extension has made out a proper case justifying the extension;

(ii)The Commissioner must consider not only the private interests of applicants for patents, and opponents, but also the public interest, by ensuring that invalid patents are not granted, and that proceedings are not unreasonably protracted.

I do not agree with Mr Bentley that the task of preparing the evidence‑in‑reply is necessarily simplified by a section 77 request which narrows the scope of the proposed claims.  For example the claims of narrower scope may have a different priority date to the unamended claims.  Thus documents which were excluded from the evidence‑in‑support because they were published after the priority date of the claims may have to be reconsidered because they are now published before the priority date of the amended claims.  Therefore the proposed narrowing of the scope of the claims may make the claims technically simpler whilst making the task of preparing evidence‑in‑
reply more complicated.
         The request to amend the specification was lodged on 10 May 1989, that is, after PEPTIDE had served its evidence‑in‑support but before WELLCOME served its evidence‑in‑answer.  WELLCOME referred to the request to amend in an application to extend the time to serve evidence‑in‑answer dated 11 May 1989.  This application also stated that the effect of the amendment was to restrict the scope of the main claims to pituitary hormones.  The attorney representing PEPTIDE in a letter to the Office dated 29 May 1989 argued that two large sections of the evidence‑in‑support were specifically directed to pituitary hormones.  The particulars of the request to amend the specification were advertised in the Official Journal dated 22 March 1990.  Thus PEPTIDE was aware that the specification of application No. 564783 may be amended before it started to prepare its evidence‑in‑ reply.  WELLCOME may have kept PEPTIDE informed of the changes proposed to the specification during examination of the request.  But PEPTIDE did not know if the amendments would be allowed at the date the present application for an extension of time was lodged.  It seems to me there is no need for PEPTIDE's attorneys to consider the amended specification until the section 77 request is allowed.  In fact neither the present application for extension of time nor the earlier application referred to the section 77 request.  Therefore I consider that the request to amend the specification of application No. 564783 under section 77 is not a circumstance which is relevant to my consideration of the present application for an extension of time.
         I agree with the hearing officer in the earlier decision (The Wellcome Foundation Ltd v Peptide Technology Ltd loc. cit.) that the opposition proceedings are of some complexity and not without difficulties; particularly as the evidence‑in‑answer also includes a large number of scientific papers.  Thus in my view the analysis of the present evidence‑in‑answer will require more time than the analysis of the evidence‑in‑answer in a simpler case.  Mr Bentley conceded that these opposition proceedings were complex and required a lot of work but, in his opinion, the preparation of the evidence‑in‑reply in the present opposition proceedings should require less time than that required for the preparation of the evidence‑in‑support.  He said PEPTIDE should be able to quickly obtain declarations from its experts because these experts are familiar with the subject matter from the declarations they made in support of the opposition.  Thus Mr Bentley suggested that some of PEPTIDE's evidence might not be properly in reply.
         Mr Marsh said, and I agree with him, that there was no evidence to support Mr Bentley's suggestion that PEPTIDE required more time to prepare evidence which was not properly in reply to WELLCOME's evidence.  Mr Marsh submitted that the nature of WELLCOME's evidence‑in‑answer meant that PEPTIDE had to obtain declarations from people who did not provide evidence in support of the opposition.  He said that he had requested declarations from the publishers of two overseas scientific journals which are published in Australia.  Mr Marsh said that the authors of several scientific papers, which formed part of the evidence‑in‑answer, had also made declarations.  I note that the first application for an extension of time to serve evidence‑in‑reply includes the preparation of declarations from new declarants because it states as follows:

"A number of other possible declarations (sic) have been approached and are presently putting their views in writing to enable suitable declarations to be prepared for their signature."

According to the present application for extension of time extensive draft declarations have been prepared and are being reviewed by the proposed declarants.  But further time is required to complete preparation of the declarations.  Mr Marsh said that he had difficulty getting the publishers of the overseas journals to co‑operate with PEPTIDE and provide declarations.  Moreover he had been unable to obtain signatures on two of the declarations because he had been unable to contact the declarants, presumably because they were on holiday.  Mr Marsh also said that PEPTIDE was now approaching librarians to prove the publication date in Australia of material referred to in the evidence‑in‑reply.  He said that after the hearing he was going to the National Library of Australia for this purpose.  In Mr Marsh's opinion it was reasonable to leave preparation of the declarations proving publication of citations in Australia until it was clear which citations were being relied on in the main declarations.  I agree with this opinion of Mr Marsh.
         I do not agree with Mr Bentley that in the present situation the evidence‑in‑reply could be prepared more quickly than the evidence‑in‑support because PEPTIDE has found it necessary to approach new declarants to reply to the evidence‑in‑answer.  These new declarants have become involved in what, Mr Bentley concedes to be, a complex opposition.  Those declarants who were involved in the preparation of the evidence‑in‑support have to consider the large number of scientific papers exhibited in the evidence‑in‑answer.  Consequently I can understand why the preparation of the evidence‑in‑reply would not be an easy or quick task.  I think it is apparent from a comparison of the reasons given in the two applications for extension of time that PEPTIDE is pursuing this task.  Moreover there is no evidence before me that PEPTIDE has not diligently pursued this task.  In fact Mr Marsh has pointed to examples of why more time is required to perform this task.  I also note that PEPTIDE intends to serve all the evidence‑in‑reply within the period sought in the present application if that is possible.  In conclusion I am satisfied that PEPTIDE has good reasons why it needs more time to finalise and serve its evidence‑in‑reply.
Turning to the interests of the parties I note the opinion of Jenkinson, J (Kimberly‑Clark Ltd v Commissioner of Patents 13 IPR 551 at page 563) that very substantial weight ought not be accorded the circumstance that opposition proceedings may delay the grant of a patent. I also note that PEPTIDE considers that granting a patent on application No. 564783 will interfere with its research and development activities which includes a program supported by an Australian Government Research Grant. In my view it is more in the public interest to delay the present opposition proceedings to allow PEPTIDE to serve its evidence‑in‑reply than it is for the Commissioner to consider whether to grant a patent on application No. 564783 without the benefit of this evidence.
Mr Bentley suggested that if I allowed an extension of the time the period should be less than the three months requested in the application for extension of time. He said this suggestion was reasonable because Mr Marsh had conceded that some of the declarations had been signed before the date of the hearing. I think Mr Bentley's suggestion would have merit if it was clear to me that PEPTIDE could serve its evidence‑in‑reply in less than three months (Vanitone Pty Ltd v Formica Technology Inc 1990 AIPC 90‑651). But as Mr Marsh pointed out at the hearing, in the case of two of the declarations, he is not certain when the declarants will be available to sign the declarations. Therefore, it seems to me that allowing PEPTIDE an extension of less than three months may result in a further application for an extension of time. Mr Bentley also said that PEPTIDE should not be allowed further extensions of time. Mr Marsh argued that it was inappropriate to prevent PEPTIDE seeking further extensions of time because it was impossible to forsee the reasons on which these applications may be based. I agree with Mr Marsh although I note that a hearing officer may suggest that the reasons used in an application for an extension of time may not be suitable for a later application (e.g. Commonwealth Scientific and Industrial Research Organisation v Western Mining Corp Ltd 13 IPR 424 at page 432).
         Therefore I allow PEPTIDE an extension of time until 9 May 1990 in which to serve its evidence‑in‑reply.
Costs
         Mr Marsh submitted that PEPTIDE was entitled to an award of costs because the reasons given in the application for an extension of time justified the extension.  He said that if I extended the time but found the reasons in the application did not justify an extension I should make no award of costs.  Mr Bentley submitted that WELLCOME was entitled to an award of costs because the reasons given in the application did not justify an extension of the time.  He said that the further explanation provided by Mr Marsh at the hearing may justify an extension but he said these matters should have been included in the reasons given in the application.  In particular Mr Bentley said that WELLCOME did not know from the application that it had been difficult to reply to its evidence‑in‑
answer.
         My decision to allow an extension of time relies on the circumstance that this is a complex opposition, a point which was conceded by Mr Bentley.  Circumstances which I also consider relevant are referred to in the first application for extension of time, namely the extensive evidence‑in‑answer and the approach to a number of other possible declarants.  In my view WELLCOME should have taken account of these circumstances in its consideration of the reasons given in the present application.  But some of the circumstances which I consider relevant were specifically referred to for the first time at the hearing.  At least one of these circumstances, namely, the preparation of declarations proving publication later than the main declarations, goes beyond the reasons given in the present application.  Therefore I agree with Mr Bentley to the extent that PEPTIDE could have provided a fuller explanation of the circumstances for the extension of time in the present application.  But it seems to me that WELLCOME may have objected to the extension of time irrespective of the reasons given in the application because it concluded that PEPTIDE could prepare the evidence‑in‑reply more quickly than the evidence‑in‑support.  I also note that Mr Bentley did not admit that WELLCOME may not have objected to the application if it had provided a fuller explanation of the circumstances.  Consequently I think that in this situation I should make no award of costs.

(M. KENDALL)