Viskase Corporation v W.R.Grace & Co. Conn
[1994] APO 41
•15 July 1994
official notice
decision of a delegate of the commissioner of patents
Application : No. 606573 in the name of VISKASE CORPORATION
Title: Irradiated multilayer film for primal meat packing
Action: Extension of time under Regulation 56 of the Patents Act 1952
Decision: Issued .
Abstract: Extension of time for serving evidence in answer where the grounds of opposition included alleged prior claims not allowed. A short extension of time to allow the service of evidence that has already been prepared was allowed.
patents act 1990
decision of a delegate of the commissioner of patents
Re:Patent Application No. 606573 by VISKASE CORPORATION and opposition thereto by W.R.GRACE & CO. - CONN under the Patents Act 1952 and an objection to an application for an extension of time to lodge evidence under Regulation 56.
background
The Office advertised acceptance of application number 606573 by Viskase Corporation (Viskase) on 14 February 1991. W.R. Grace & Co. - Conn (Grace) lodged a notice of opposition to the grant of the patent on 14 May 1991.
Viskase has applied for and received unopposed extensions of time for service of evidence in answer from 14 December 1992 to 14 March 1994.
On 31 March 1994 Grace chose to oppose a further application for an extension of time to serve evidence in answer from 14 March 1994 until 14 June 1994 and the matter was heard on 10 June 1994.
Viskase was represented by Tom Barnes and Richard Baddeley of Watermark Patent & Trademark Attorneys, patent attorneys of Perth Western Australia. Grace was represented by Elizabeth Eadie of Davies Collison Cave, Melbourne, Victoria. Both appeared by telephone.
REASONS FOR THE EXTENSION OF TIME
The reasons for the extension of time were given in the application dated 11 March 1994 as follows:
"The applicant's amendments to the claims dated 16th March were advertised allowed on 16th December 1993 and third parties have until 16 March 1994 to oppose the amendments to the claims. In this regard, correspondence from the opponent indicates that such Opposition is possible and, therefore, the final form of the claims of the present application is not yet settled.
On 2nd March 1994, the Applicant proposed further substantive amendments to the claims of the present Application No 606573 with the aim of settling the current Opposition or clarifying the issues in the Opposition. It is necessary to process these amendments to finality before preparation of Evidence in Answer can be completed because the final form of the claims of Application No. 606573 is highly pertinent to the nature and preparation of Evidence in Answer.
Further, review of the Evidence in Support indicates that the Opponent is basing prior claiming objections on Application Nos. 46002/89 and 56844/86 respectively, both of which are presently under Opposition. These Oppositions have advanced to the Evidence in Reply stage but have not yet been finalised. The Opponent to present Application no. 606573 is also the Opponent to Application No. 46002/89 and has yet to file Evidence in Reply. Therefore, it may be a considerable period before Opposition to Application No. 46002/89 and hence the final form of the claims is resolved.
It is both difficult and inappropriate to finalise Evidence in Answer while the final form of the claims of the two opposed applications relied upon for prior claiming objections remains to be settled. Further time is therefore required for settlement of these Oppositions to determine the final form of the claims thereof, enable consideration thereof and finalise Evidence in Answer."
SUBMISSIONS
In summary, the major submissions by Viskase are as follows.
.Resolution of an allegation of a prior claiming is very much dependent on the final form of the wording of both the alleged prior claims and the claims of the application being opposed. Therefore preparation of the case to be answered is unable to be completed until the wording of all relevant claims has been finalised. An inevitable result of having to serve evidence in answer before the wording of the claims is resolved will be to deny the applicant a reasonable opportunity to answer the opposition and deprivation of the applicant's right to the benefit of any doubt surrounding the opposition as set out in Microcell's Application AOJP (10.10.59) 1982. It is noted that if the present application is not granted there is no formal mechanism to enable the applicant to lodge evidence in rebuttal of the prior claiming allegation.
.The present opponent is not presented with such a dilemma. It may serve evidence in reply and/or further evidence having already had the advantage of filing its preliminary evidence at the evidence in support stage. It is unlikely that the opponent would want to file evidence in reply until the alleged prior claiming applications have progressed to sealing or have been refused, lapsed or been withdrawn.
.Section 48.101 of the 1952 Examiners Manual recognises that prosecution of applications where prior claiming is alleged will be substantially delayed or protracted. Furthermore, the Patents Act 1952 provides a mechanism to prevent injustice from occurring to the applicant in cases where a prior claiming objection is raised by the examiner. Section 54(4) of the Patents Act 1952 relevantly provides for the acceptance of an application to be deferred, where prior claiming objection is raised, until 3 month after the alleged prior claiming application has been sealed, refused, lapses or has been withdrawn. Deferral applies not only to the prior claiming objection but to any other objection the examiner may have raised in his/her report. The applicant seek a similar deferment or adjournment in the present case and is prepared to agree to a direction analogous to section 54(4) of the 1952 Act. The applicant also referred to the "hearings manual" paragraph 9.3.2 which deals with directions under regulation 5.10(1) of the Patents Act 1990.
.The second set of amendments filed by the applicant is yet to be processed and provides another proper basis for the extension of time sought. The applicant has proposed substantial restriction of the scope of the claims and also seeks a direction that evidence in answer is to be filed after the second set of amendments is allowed. The amendments are not trivial as they have substantially restricted the materials to be used in the polymeric film. The applicant can see real problems with putting in evidence before the amendments have been resolved as the evidence could be quite inaccurate. An application for further evidence could protract the proceedings further.
.The applicant referred to the decision in Ferocemv Commissioner of Patents (1994) AIPC 91-057 and Kent-Moore Corporation v Environmental Products Amalgamated Pty Ltd (1992) AIPC 90-915.
.The applicant has substantial evidence on hand at the present time which only requires the expert to have another look at the claims after the amendments have been allowed.
In summary, the major submissions by Grace are as follows.
.The opponent referred to the decision of the hearing officer in Genetics Institute Inc. v Johnson & Johnson 27 IPR 277 where the hearing officer dealt with a request for deferral of evidence and an application for an extension of time where there were alleged prior claims.
.It was submitted by the applicant that there is no recourse once the evidence has been put in but this is not the case. It was pointed out in Genetics v Johnson & Johnson (supra) that further submissions can be made after the hearing which may put the parties to a bit more effort but is not a reason to delay proceedings.
.The onus is on the applicant to show why they cannot lodge the evidence. They state in the final paragraph of the reasons given in the application that it is "difficult and inappropriate". Difficulty is inappropriate in the opponent's submission and the case law shows that it is appropriate to finalise the evidence in answer. The applicant has not given any reasons why they couldn't finalise the evidence in answer given the pending prior claims. The public policy in this case is to not unduly delay the opposition process. We are 8 years into the patent term, there are 4 prior claiming applications and if the evidence was to wait until the very earliest one of these progressed to sealing and each lot of evidence did not commence until each prior claiming application had progressed to sealing the patent term for the present application would have expired before those cases were resolved.
.The part of Patent Office examiner's manual referred to by the applicant is only relevant during examination of the application and does not apply to the opposition proceedings.
.Two references are made in the application for extension of time to requests to amend the opposed specification. The applicant refers to the hearings manual chapter on directions for filing evidence in answer while the claims are being amended (paragraph 9.3.2). The Commissioner can "stop the clock" provided the amendments are not trivial. The second set of amendments are trivial and do not substantively alter the claims.
.The applicant has not explained in their extension application how the wording of the claims is highly pertinent to the nature of the preparation of evidence in answer and why it is not possible to serve evidence in answer given the amendments to the claims. It is the opponent's submission that the applicant could serve evidence on the basis of the amended and unamended claims if they were worried about whether the amendments would finally be allowed. The amendments are entirely within the control of the applicant and the second set of amendments are not substantive and do not change the nature of the evidence which ought to be produced.
.If such extensions are given in these cases it will allow defacto extensions of time for inconsequential amendments for an indefinite period. The first set of amendments took approximately one year to process from the date of filing the request to the date of allowance and presumably the applicant is free to go on amending and drawing out these proceedings for years.
.The applicant has had ample time to prepare their case independent of the amendments (18 months up until the last extension application). There are options available to the applicant to enable proceedings to progress. If the nature of the evidence is so changed after the allowance of the claims the applicant could apply to adduce further evidence. It is common in opposition proceedings for the claims to be amended right up until the day of the hearing and the case will be heard on the basis that the claims will be amended.
.Costs should be awarded against the applicant in this matter. The opponent did warn the applicant that they would object to requests for further extensions of time.
DECISION
The law which has been applied under the 1952 Act to this class of extensions 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.
Under the Patents Act 1952 the grounds of opposition relating to prior claiming are as follows:
(1)(c).that the invention, so far as claimed in any claim, is the subject of:
(i)a claim of the complete specification of another application for a standard patent lodged in Australia; or
(ii)the claim of a petty patent specification of an application for a Petty Patent lodged in Australia,
being a claim the priority date of which is earlier than the priority date of the first mentioned claim.
(1)(d).That the invention, so far as claimed in any claim, is the subject of a claim of earlier priority date contained in the complete specification or petty patent specification of a patent.
My reading of subsections 59(1)(c) and (d) is that the grounds of prior claiming apply in respect of both patent applications and patents. Therefore, it seems to me that as an opposition on the above grounds can be based on both applications and patents, there is no basis for a deferment until after an application is sealed, refused, lapsed or withdrawn, that is, until an application becomes a patent or is no longer relevant as a prior claim. If the need for a deferment of opposition proceedings similar to that of section 54(4) was envisaged by Parliament then provision would have been made in the legislation (see for example comments in Anaesthetic Supplies Pty Limited v Rescare Limited Federal Court of Australia, 5 May 1994, unreported).
Consequently, subsections 59(1)(c) and (d) refer, in my view, to the claims of both the prior claiming specifications (either applications or patents) and the opposed specification as they are at the time evidence is prepared. If this was not the case then there is the undesirable possibility of delaying the opposition proceedings until after a patent term has expired, particularly where a chain of divisional applications with similar claims form the basis of evidence.
In Genetic Systems inc. v Johnson & Johnson 27 IPR 277, a decision under provisions of the Patents Act 1990, the hearing officer reviewed the issue of deferring evidence on the basis of prior claims and found there was no justification to issue a direction in these circumstances. In this case an extension of time was allowed on the basis of other justification. I cannot issue a Direction to defer evidence, in this case, as the Patents Act 1952 does not provide for the Commissioner to issue Directions in the manner of regulation 5.10(1) of the 1990 Act.
In the present case justification for the extension of time is based largely on the need to wait for the prior claiming applications to be sealed and for the section 104 (1990 Act) application to amend to be allowed. Viskase says that they need to know the final wording of the alleged prior claims and the amended claims of the present opposed application so that they know the case they have to defend, and the evidence they have to prepare. Otherwise they will be disadvantaged.
Viskase, at the hearing, said that evidence had already been prepared but declarations were as yet unsigned. They also said that the current set of amendments were directed to reducing the range of materials to be selected from in preparing the polymeric film, therefore limiting the scope of the claims.
Section 102(2) of the 1990 Act does not allow claims to be amended after acceptance if the amended claims would not in substance fall within the scope of the claims of the specification before amendment. This applies to the claims of the alleged prior claiming applications and to those of the opposed application. The case to be answered can only diminish in these circumstances, not expand. Therefore, the evidence already prepared should adequately cover the remaining alternatives claimed. I cannot foresee any need for further evidence in this case.
I think the justification of Viskase's extension of time turns on whether or not a delay based on waiting for the alleged prior claiming applications to be either sealed, refused, lapse or be withdrawn is warranted. For the reasons given above, I believe they have no justification for such a delay so that my consideration of other matters such as undue delay is unnecessary in the circumstances.
Consequently, I see no justification for delaying the service of evidence further. Therefore I will not allow the application for an extension of time to serve evidence in answer.
Public interest
In commenting on the public interest, the hearing officer in Genetic Systems v Johnson & Johnson (supra) referred to the comments of Sheppard J in E.I. Du Pont De Nemours & Co. v Commissioner of Patents and others (1987) 12 IPR 536 at 537
"Courts have an overriding obligation to see to it that those using their facilities are proceeding in a way best calculated to bring litigation to an end at the earliest possible moment, so long as the primary goal of achieving justice is not lost sight of"; and
the comments of Moffitt J in Calvert v Stoliznow (1980) 2 NSWLR 749
"Although the general scheme of Court rules is that litigation will be conducted according to the adversary system, Courts have been concerned lest the justice administered by them be tarnished by delay, whether due to its own processes or the conduct or lack of it by members of the legal profession. ... In this Court in relation to both Appeals and other proceedings the policies adopted, at least in recent years, are directed to the Court concerning itself with the prompt disposal of such Appeals and proceedings."
I can not accept that there is any justification to delay proceedings until the alleged prior claims are sealed. Although amendments are proposed to the claims of the presently opposed application there will be no disadvantage to the applicant to have evidence in answer completed before these amendments are allowed. It is clear that for opposition proceedings to not be unduly delayed by this matter it is in the public interest and probably also those of the opponent.
CONCLUSION
I have decided that the extension of time sought is not justified given the reasons advanced for it. However, it is clear from Ferocemv Commissioner of Patents (supra) that in the present circumstances, I should grant a short extension of time to allow the service of any evidence that has already been prepared. I allow the applicant 10 days from the date of this decision to serve evidence in answer.
COSTS
Normally in actions of this nature costs follow the event. I have found that the application for an extension of time to serve evidence in support is not justified and I see no reason to vary this practice. consequently, I award costs against Viskase Corporation.
R J Sawyer
Delegate of the Commissioner of Patents
Patent attorneys for the applicant : Watermark, Perth
Patent attorneys for the opponent : Davies Collison Cave, Melbourne
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