The Wellcome Foundation Limited v. Peptide Technology Limited

[1989] APO 7

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‑Answer.

DECISION OF AN ACTING ASSISTANT 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 pursuant to sub‑section 59(1).  PEPTIDE served part of its evidence‑in‑support (comprising a declaration accompanied by 81 Exhibits) on 10 May 1988 and completed service of its evidence on 11 November 1988 at which time it served a further 11 declarations.  Evidence‑in‑answer was due by 11 February 1989 pursuant to regulation 56.
        On 10 February 1989, THE WELLCOME FOUNDATION LIMITED (WELLCOME) sought an extension of time until 11 May 1989 in which to service its evidence‑in‑answer.  The opponent notified the

Commissioner that it objected to the extension being granted, and the matter was set down for hearing.  The hearing was held in Sydney on 7 March 1989.  Mr. John Terry, patent attorney of Griffith Hack & Co., appeared for WELLCOME, and Mr. Crispin Marsh, patent attorney of F.B. Rice & Co., appeared for PEPTIDE.
Application for Extension of Time
        The circumstances and grounds given in the application for extension of time are as follows:

"The opponent's Evidence‑in‑Support comprised a leading Declaration of 56 pages by Dr. Ferguson, which was accompanied by 81 references.  Eleven Declarations were also provided to establish dates for publication in Australia.  Very considerable time was required in order for the applicant to consider the Declaration in detail, to peruse all of the references cited therein, and to assess their significance.

A copy of Dr. Ferguson's Declaration was provided to the applicant shortly after lodgement of the Notice of Opposition.  However, this copy was not accompanied by the cited references.  These only became available to the applicant's attorneys when the first part of the Evidence‑in‑Support was formally served on 10 May 1988.

Since the opponent is relying largely upon an allegation of obviousness, it is necessary to identify appropriate Australian experts in the art in order to ascertain the state of common general knowledge at the priority date.  The opponent is closely affiliated with the Commonwealth Scientific and Industrial Research Organisation, so it is necessary to ensure that expert consultants are independent of both the opponent and CSIRO.

An offer of settlement was made by the applicant during December 1988, and was refused on 23 December 1988.  Negotiations between the parties are continuing.

Further time is required within which to complete our study of the evidence, to identify experts in the art in Australia, for these experts to consider the Evidence‑

in‑Support and references, and to prepare Declarations to form the applicant's Evidence‑in‑Answer in a form suitable for service."

Submissions
        Mr. Terry's submissions in support of the extension of time can be summarized as follows:

1.The evidence in support was voluminous and a proper assessment of that material necessarily required a cataloguing of the entire material followed by an identification of particular material requiring answering evidence.

2.As the opponent's evidence had relevance to the opposition ground of obviousness, the applicant needed to locate suitable available experts in the field (biotechnology) with a view to providing answering evidence to such ground of attack.  The applicant was pursuing the engagement of such experts.

3.It was somewhat unrealistic, given the field of technology of the opposed application and the vast amount of opponent's evidence, to expect the applicant to have served answering evidence in the three months so far available.

4.Responsibility for the case within the firm of patent attorneys prosecuting the applicant's case had recently changed (due to resignation of the previous attorney involved), and this fact coupled with the fact that the applicant company is based overseas and the fact that the Christmas vacation period fell within the initial 3 month period were all matters contributing to the insufficiency of the time so far available.

In answer, Mr. Marsh made the following points:

1.The applicant formally received the major component of the evidence in support in May 1988 when it was served (although allegedly it had been provided with a copy some time earlier).  Thus the applicant has had at least some 9 months to consider the case against its application and plan its answering evidence.

2.Whilst conceding that expert evidence was needed to counter the obviousness ground of opposition, the extension application gave no indication of what efforts had been made to obtain and engage experts as distinct from merely identifying experts.  In any event, Mr. Marsh submitted that there were a sufficient number of institutions in Australia from which experts could be sought.  He rejected the bland statement in the extension application that an expert from CSIRO could not be sought as he understood that the affiliation link given as the reason for this was not factually correct.

3.It was not true that a settlement offer had been "refused" by the opponent.  In any event, exploring possible settlement terms did not constitute a valid ground for delaying efforts for assembling evidence, nor did it constitute a proper basis for gaining an extension of time for evidence stages.

4.Rearrangement of responsibilities for the case within the applicant's attorneys firm ought not constitute a basis for an extension of time.

5.The application for extension of time provided insufficient explanation of what steps the applicant had taken in the period so far available for serving its evidence and hence why the time was insufficient.

Decision
        As Mr. Marsh correctly pointed out at the hearing, the Commissioner must, before granting an extension of time, be satisfied that the party seeking the extension has provided sufficient justification.  Furthermore, the interests of the respective parties and the public interest need also to be considered.
        In this case I agree to some extent with Mr. Marsh's comments that the extension application provides insufficient background explanation for requiring more time; and on some points such as the question of engaging experts, Mr. Terry's submissions at the hearing failed to clearly establish what is the present position.  On the other hand, given the technology involved and the voluminous quantity of evidence put before the applicant, I am in no doubt that the opposition action is of some complexity and not without difficulties, factors freely conceded by Mr. Marsh.  From Mr. Terry's submission at the hearing I gained the impression that WELLCOME had been considering the opponent's evidence served in May 1988 from at least that date even though evidence of publication of many, if not all, of the exhibits was not provided until November 1988, at which time it became clear that the opponent's evidence had been completed.
        In the circumstances of this case, given the technology involved, the quantity of evidence lodged by the opponent and the time so far available to the applicant to serve answering evidence, I consider there is clear justification for granting the extension sought.  Mr. Marsh conceded as much at the hearing.  Furthermore having considered the various interests in this matter, both the applicant's interest and the public interest would be well served if the evidence stages were allowed to proceed, any disadvantage to the opponent occasioned by granting the present extension appearing to be minimal.
Conclusion
        I have decided that the extension of time is justified.  Accordingly I grant an extension of time until 11 May 1989 in which evidence in answer may be served.
        I refer now to the question of costs, both parties having sought an award in their favour.  This action concerns a first extension of time sought by the applicant in an opposition matter, and I have decided that the extension of time is justified.  The opponent chose to object to the extension being granted presumably because, given Mr. Marsh's comments at the hearing, it felt the application gave insufficient explanation of surrounding circumstances, and in any event the applicant had already had some 9 months to consider opponent's evidence.  Whilst a major part of the opponent's evidence was served on the applicant in May 1988, the fact of the matter is that service of evidence‑in‑support was not completed until 11 November 1988, at which date the provisions of regulation 56 concerning evidence‑in‑answer became effective.  In line with my earlier comments agreeing to some extent with Mr. Marsh's view that the application lacked full explanation, I think that the opponent may have had some basis for thinking that the extension had not been justified.  However, given Mr. Marsh's concessions at the hearing, the opponent was obviously aware of the difficulties the applicant could encounter in attending to its evidence, yet still chose to object.  Consequently, the circumstances of the present case are such that the costs should follow the event.  I therefore award costs against PEPTIDE.

(J.L. ROVETA)

Patent attorneys for the applicant: Griffith Hack & Co., Sydney