Valance William McKenzie v Uwatec Australia Pty Ltd
[1995] APO 10
•16 February 1995
official notice
decision of a delegate of the commissioner of patents
Application : No. 649690 in the name of Valance William McKenzie
Title: Gauge Protection Apparatus
Action: Request for dismissal of opposition under section 59 of the Patents Act 1990 by Uwatec Australia Pty Ltd
Decision: Issued .
Abstract: The opposition in relation to the section 59(b) ground is not dismissed as the statement of grounds and particulars is sufficiently particularised, but it is dismissed in relation to the section 59(c) ground. There may have been a clerical error or omission in the name of the opponent on the Notice of Opposition. The opponent must initiate action to resolve the matter within 21 days from the date of this decision either by making a request to correct the Notice of Opposition or by providing submissions as to why correction of the Notice of Opposition is unnecessary. If the matter is not satisfactorily resolved then I must consider whether to dismiss the opposition and allow the application to proceed to sealing.
patents act 1990
decision of a delegate of the commissioner of patents
Re:Patent Application No. 649690 by VALANCE WILLIAM McKENZIE and an opposition thereto by UWATEC AUSTRALIA PTY LTD and a request for dismissal.
background
Patent Application 649690 was advertised accepted on 2 June 1994.
Uwatec Australia Pty Ltd (Uwatec):
.served a notice of opposition, under section 59 of the Patents Act 1990, on the applicant, Valance William McKenzie (McKenzie) on 29 August 1994; and
.in accordance with regulation 5.4 of the Patents Regulations, served a statement of grounds and particulars on 21 September 1994.
On 20 October 1994, the applicant requested the Commissioner to dismiss the opposition under regulation 5.5 on the grounds that:
"That the opposition defined in the Statement of Grounds and Particulars served 21 September, 1994, cannot succeed in respect of some or all of the grounds relied upon.
That the opposition defined in the Statement of Grounds and Particulars served 21 September, 1994, is unsubstantiated in respect of some or all of the grounds relied upon, the grounds and particulars fail to give the applicant fair notice of the opposition to be met, and further fails to define the issues of the opposition.
That the opposition defined in the opponent's Notice of Opposition, insofar as it pertains to opposition based on the ground that the opponent "manufacture and export gauge protection apparatus similar to those described and claimed in application No 649690 and believe our activities would be affected by the grant of this patent" is not a ground prescribed in the Patents Act 1990.
That the opposition specified in the Statement of Grounds and Particulars served 21 September, 1994 is frivolous and vexatious in respect of some or all of the grounds relied on."
The applicant also filed statutory declarations in support of its request for dismissal by John Kingston Pizzey of Pizzey & Company, patent attorneys and Valance William McKenzie.
The hearing occurred in Canberra on 1 December 1994. The applicant, represented by Pizzey & Company, patent attorneys, Brisbane relied on written submissions. Mr John Walsh of H R Hodgkinson & Co, Sydney appeared for the opponent.
EVIDENCE
The applicant filed Statutory Declarations by John Kingston Pizzey, of Pizzey & Company, Patent Attorneys, with exhibits and by Valance William McKenzie, patent applicant, also with exhibits.
The opponent filed a Statutory Declaration by John William Walsh, patent attorney, of H.R.Hodgkinson & Co with exhibits.
NOTICE OF OPPOSITION AND STATEMENT OF GROUNDS AND PARTICULARS
The text of the Notice of Opposition is as follows:
"We, UWATEC AUSTRALIA PTY LTD an Australian Company incorporated under the laws of the State of New South Wales and located at Level 3, 11-19 Albany Street, St Leonards, New South Wales, 2065, Australia, give notice that we oppose the grant of a patent in respect of application No. 649690 (80040/91) in the name of VALANCE WILLIAM McKenzie.
We manufacture and export qauge protection apparatuses similar to those described and claimed in application 649690 and believe our activities would be affected by the grant of this patent."
The relevant text of the Statement of Grounds and particulars is as follows:
"The grounds of opposition relied on by the opponent are as follows:
SECTION 59(b):
That the invention, so far as claimed in any claim, is not a patentable invention because it does not comply with paragraph 18(1); namely:
When compared with the prior art base as it existed before the priority date of the claims, the invention is;
(i) not novel; and
(ii) does not involve an inventive step.
Section 59(c):
That the specification filed in respect of the complete application does not comply with subsection 40(2) or (3).
PARTICULARS
SECTION 59(b)
(i) The invention, so far as claimed in any claim, was before the priority date of that claim not novel in Australia in light of the art represented by:
French Patent no. 2425701
French Patent no. 2497996
French Patent no. 2153799
U.S. Patent no. 2559480
U.S. Patent no. 3630089
(ii) The invention, so far as claimed in any claim was obvious and did not involve an inventive step, having regard to what what was known or used in Australia before the priority date of that claim in light of the common general knowledge which includes but is not restricted to:
French Patent no. 2425701
French Patent no. 2497996
French Patent no. 2153799
U.S. Patent no. 2559480
U.S. Patent no. 3630089
In respect of this ground, the opponent is conducting further enquiries and reserves the right to amend the Statement of Grounds and Particulars at a later stage.
SECTION 59(c)
The specification does not describe the best method of performing the invention. In respect of this ground the opponent is conducting further enquiries and reserves the right to amend the Statement of Grounds and Particulars at a later stage.
DATED this 19th day of September 1994."
SUBMISSIONS
In summary, McKenzie's submissions are as follows:
. The opposition fails to properly identify the opponent, and in so failing
(i) has not established the opponent as a "person" in terms of section 59, and
(ii) exposes the applicant in respect of recovery of costs.
. The opposition fails to provide adequate particulars in respect of section 18(1)(b) grounds. Where a citation is raised in examination it is clearly available in opposition (Borden Inc v Elkem A/S 24 IPR 146). However, the circumstances of a case may require brief particulars as to relevance beyond identification of the citation (Imperial Chemical Industries v Irenco & Ors 26 IPR 154). In the present case, the opponent's recitation in order of every one of multiple citations previously considered at ISR and examination, in respect of every claim for both section 18(1)(b) grounds, constitutes circumstances requiring brief particulars as to relevance.
. The opponent has failed to particularise its section 18(1)(c) ground of want of inventive step by not clearly indicating to the applicant the common general knowledge to be considered (ICI v Irenco (supra)).
. The opponent has failed to provide any particulars in respect of its ground of opposition under section 40(2), and has merely recited the ground (L'air Liquide v The Commonwealth Industrial Gases Limited (1992) 24 IPR 77, EI DuPont de Nemours and Company v DowElanco (1994) AIPC 91-067)
. The opponent has failed to foreshadow a serious opposition and the opposition may be frivolous and vexatious. The opposition has been filed to prevent or delay grant for purely commercial reasons. The opponent has not provided adequate particulars in respect of any ground of opposition and has copied for convenience particulars already considered by the Commissioner of Patents without further particularisation. Insofar as an opposition may subsist somewhere in the limited particulars provided, the public and the opponent's interests would be adequately served by "bar-to-sealing" action. (KentMoore Corporation v Environmental Products Amalgamated Pty Ltd 25 IPR 233)
In summary, Uwatec's submissions are as follows:
. The opponent is and was at the time of lodgement of its notice of opposition an incorporated company. The company has undergone name changes and will provide documentary material to establish this.
. The lists of specifications that have been included as particulars for the section 59(b) ground do not put undue burden on the applicant in understanding the case it has to answer. The opponent reminds the applicant of the 10 reference rule and that the opponent has only put 5 citations. The examiner cited 12 specifications and the applicant was able to understand the case it had to answer during the examination phase.
. The decided cases to date have established a pattern that an opposition will only be dismissed if there were no particulars provided. There is precedent for statements of particulars citing specification numbers as the only particular. There is nothing special about the circumstances of this case that suggest it should be treated outside the mainstream of decided cases.
. Concerning the issue of costs the opponent submits that in line with usual practice costs should follow the event, but referred to its previous submission regarding the voluntary nature of its request to amend the notice of opposition in relation to the section 40 matters and that this should not have any bearing on costs.
. The request for dismissal should be rejected as the applicant has not discharged its onus under the principles of the General Steel case. The applicant's evidence does not focus on the central issue of the opposition but rather goes to peripheral commercial issues.
. The aim of the opposition process was to ensure the expeditious finality of the opposition process and this would be better served by allowing the opponent access to the proper tribunal to proffer its evidence to cast doubt on the validity of the claimed invention.
. The particulars are in conformity with the guidelines set down in the Mobay decision that sets out the requirements for statements of particulars.
Uwatec decided not to make any submissions in respect the section 40 grounds of opposition, however, asked that its voluntary request to amend the Notice of Opposition to remove this ground be taken into account in determining costs.
Decision
Relevant Law
Dismissal of an opposition is covered by the provisions of regulation 5.5 of the Patents Regulations 1990.
The general principle in considering a request for dismissal is that an opposition should only be dismissed if it is "so obviously untenable that it cannot possibly succeed". (General Steel Industries Inc v Commissioner for Railways (NSW) and Others (1964) 112 CLR 125 at page 129) Furthermore, the decision in L'Air Liquide v The Commonwealth Industrial Gases Ltd (1992) AIPC 90-872 provides authority for a dismissal in part of an opposition.
Is the Opponent a Person in terms of section 59?
McKenzie submitted that Uwatec had not established itself as a person, in terms of section 59 (Patents Act 1990). He said that a search of ASC records established that no corporation of the name Uwatec Australia Pty Ltd exists, however, the records show that a corporation UWATEC AUST. PTY LTD, ACN 052 865 184, exists. McKenzie also submits that "Corporations law also specifies legitimate abbreviations at section 219(4), which includes that a company may comply with section 219(2) by setting out the abbreviation "Aust." instead of the word "Australian" (but not it is noted the reverse substitution)".
Section 219(4) of The Corporations Law does not make provision for "the reverse substitution" nor does it make provisions for the word "Australia". It seems to me that AUST. would commonly be understood to mean AUSTRALIA, in Australia, especially as McKenzie has not found any other company, for example one named UWATEC AUSTRIA PTY LTD, that might cause doubt as to the name of the opponent.
All correspondence on file up to the date of the hearing identifies the opponent as UWATEC AUSTRALIA PTY LTD, but, the correspondence accompanying the statutory declaration from John Richard Walsh filed after the hearing identifies the opponent as UWATEC AUST. PTY LTD.
At the hearing the opponent offered up an uncertified copy of an extract from the companies register relating to the name Uwatec Aust. Pty Ltd. I required the extract to be certified.
In view of Kitto J's comments in Kaiser Aluminium and Chemical Corporation v The Reynolds Metal Company (1969) 120 CLR 136 at p.653:
"In my opinion, however, it is in the public interest that a serious opposition by a person entitled in fact to oppose the grant of a patent should be dealt with on the merits, rather than that it should be shut out in consequence of a failure in procedure, lamentable though the failure may be.",
I allowed Uwatec time to provide certified copies of extracts from the Australian Security Commission's company records and McKenzie time to comment if he wished. McKenzie said that the opponent still had not clearly established its identity because of the difference between AUST. and AUSTRALIA.
It seems to me that the use of the word AUSTRALIA on the Notice of Opposition may be a clerical error or omission. If there is a clerical error or an omission, the opponent should have the opportunity to initiate steps to correct its name within a reasonable time or provide submissions as to why correction is not necessary. There are two options which can be used to correct the clerical error or omission. The first uses the provisions of section 223 to file a new Notice of Opposition, and the second, the new provisions of the patent regulations (regulation 5.3A) to amend the Notice of Opposition.
In order for the matter to be resolved expeditiously, and to avoid allegations of delay, it would seem that, due to the inherent deleys built into processing a request for an extension of time under section 223, regulation 5.3A option is a more appropriate option. If Uwatec chooses to apply under section 223, the resultant delays may be a factor in exercising the Commissioner's descretion.
If the matter is not satisfactorily resolved in the manner described then I must consider whether to dismiss the opposition and allow the application to proceed to sealing.
I have considered the effect of the Acts Interpretation Act 1901 on any accrued rights resulting from legislative change, if the opponent chooses to use the provisions of new Reg. 5.3A. I believe the changes do not have any effect on accrued rights but are of a procedural nature. (see Yrttiaho v Public Curator (Qld) (1971) 125 CLR 228 referred to in Pearce, D. C., 1981, Statutory Interpretation in Australia, pp99-100, Butterworths, Sydney)
Adequate Particulars - Section 59(b)
The applicant has submitted that "The opposition fails to provide adequate particulars in respect of section 18(1)(b) grounds. Where a citation is raised in examination it is clearly available in opposition (Borden Inc v Elkem A/S 24 IPR 146). However, the circumstances of a case may require brief particulars as to relevance beyond identification of the citation (Imperial Chemical Industries v Irenco & Ors 26 IPR 154). In the present case, the opponents recitation in order of every one of multiple citations previously considered at ISR and examination, in respect of every claim for both section 18(1)(b) grounds, constitutes circumstances requiring brief particulars as to relevance".
It seems to me that the basis of this argument is that the opponent has failed to give the applicant fair notice of the opposition in that it fails to clearly provide a statement of issues already considered by the international search report and at the examination stage.
I disagree with the applicant's contention that the opponent has particularised "... every one of multiple citations previously considered at ISR and examination" and note that the examiner's report cited 12 documents whereas the opponent has particularised only 5 documents.
This does not suggest to me that the opponent has simply taken the results of the international search report (ISR) and the examination process for convenience without further consideration. The opponent has selected 5 documents from a possible field of 12.
In I C I v Irenco (supra) the hearing officer in considering whether particulars constituted an unreasonable burden on an applicant said:
"... the listing under a particular ground of opposition of any more than 7 to 10 documents by number only would place an unreasonable burden on the applicant in determining the case against it and further particulars should be provided in relation to each document listed."
In the present circumstances the particulars relating to the section 18(1)(b) grounds are in my view sufficient for the applicant to understand the case it has to defend. I do not find the opposition "so obviously untenable that it cannot possibly succeed" (General Steel Industries Inc v Commissioner for Railways (NSW) (supra).
The applicant also submits that "the opponent has failed to particularise its section 18(1)(b)(ii) ground of want of inventive step by not clearly indicating to the applicant the common general knowledge to be considered and cited ICI v Irenco (supra).
The applicant in referring to the Australian Patent Office Manual of Practice and Procedure (APOMPP), Vol 3, Part 11.2.3 submits:
"... states that for common general knowledge the type of information needed in a statement of grounds and particulars includes a brief description of the alleged common general knowledge and identification of the person skilled in the art (that is, the particular field of technology relevant to the subject matter under consideration) including brief details of any material facts needed to establish a prima facie case. It is clear that the opponent's case in respect of section(1)(b)(ii) has not been so particularised."
This part of the APOMPP Vol 3 provides examples of the type of information needed in a statement of grounds and particulars and refers to the decision in E.I. DuPont de Nemours and Company v DowElanco (1994) (supra) in which the hearing officer discussed the "material facts" necessary for a statement of grounds and particulars to identify the case an applicant needs to defend. This decision deals with a statement of grounds and particulars containing references to over 1000 documents and gave examples of the material facts necessary where the number of particulars of individual grounds in a statement of grounds and particulars exceeded 7 to 10. This is not the case here as the number of particulars for individual grounds does not exceed 5.
Consequently, the particulars are adequate for the section 59(b) grounds.
Adequate particulars - Section 59(c)
At the hearing, before beginning submissions, Uwatec requested that the Notice of Opposition be amended to remove the ground relating to section 59(c) of the Patents Act 1990. I asked whether the opponent's intention was to amend the Statement of Grounds and Particulars under regulation 5.9. Uwatec said this was not what was intended and I ruled that, as the Patents Act 1990 does not make provision for amendment of the Notice of Opposition, they would have to file a new notice of opposition with a properly supported request for an extension of time under section 223 within which to file the new notice. I note that the opponent's request to amend the notice of opposition was made after receiving McKenzie's submissions.
However, the applicant submits that the "opponent has failed to provide any particulars in respect of its ground of opposition under section 40(2), and has merely recited the ground (L'Air Liquide v The Commonwealth Industrial Gases Limited (1992) 24 IPR 77, EI DuPont de Nemours and Company v DowElanco (1994) AIPC 91-067)".
I find that the particulars in relation to section 59(c) are merely a statement of section 40(2) (in part) and do not provide any material facts.
The applicant has legitimate grounds to object to the particulars of section 59(c).
It is open to the Commissioner to dismiss the opposition in relation to this ground (L'Air Liquide (supra)).
Consequently I dismiss the section 59(c) ground of the Statement of Grounds and Particulars. The section 59(b) ground is not dismissed as it has been adequately particularised.
Serious opposition
The applicant also submits that the "opponent has failed to foreshadow a serious opposition and the opposition may be frivolous and vexatious. The opposition has been filed to prevent or delay grant for purely commercial reasons. The opponent has not provided adequate particulars in respect of any ground of opposition and has copied for convenience particulars already considered by the Commissioner of Patents without further particularisation. Insofar as an opposition may subsist somewhere in the limited particulars provided, the public and the opponents interests would be adequately served by "bar-to-sealing" action. (KentMoore Corporation v Environmental Products Amalgamated Pty Ltd 25 IPR 233)"
I have found that the particulars relating to the section 59(b) ground are adequate. Consequently, there is no basis for the allegation that the opposition is not serious.
Further, the reference made on the Notice of Opposition to "manufacture and export gauge protection apparatus similar to those described and claimed in application No 649690 and believe our activities would be affected by the grant of this patent" is consistent with a statement of interest rather than a ground of opposition.
CONCLUSION
I have found that the opposition in relation to the section 59(b) ground is sufficiently particularised for McKenzie to understand the case he has to answer, but, have dismissed the opposition in relation to the section 59(c) ground.
I have also found that the opponent has incorrectly identified itself on the Notice of Opposition and that it may have done so as a result of clerical error or omission. Uwatec must initiate action to resolve the matter within 21 days from the date of this decision either by making a request to correct the Notice of Opposition or by providing submissions as to why correction of the Notice of Opposition is unnecessary. If the matter is not satisfactorily resolved then I must consider whether to dismiss the opposition and allow the application to proceed to sealing.
Costs
I have found the request for dismissal has succeeded in part. It seems to me that the opponent's request to amend the Notice of Opposition to remove the ground relating to section 59(c) has no bearing on costs at the hearing. Uwatec made this request after it had received the applicant's written submissions. Consequently, on the basis of costs usually being awarded according to the event, I award costs against Uwatec.
R J Sawyer
Delegate of the Commissioner of Patents
Patent attorneys for the applicant : Pizzey & Company, Brisbane
Patent attorneys for the opponent : H R Hodgkinson & Co, Sydney
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