Wm Wrigley Jr Company v Cadbury Schweppes Pty Ltd - [2007] APO 16

ABSTRACTS OF DECISIONS
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No. 772873 in the name of WM. WRIGLEY JR. COMPANY

Title: Comestible coating process using hydrogenated isomaltulose mixture

Action: Requests by WM. WRIGLEY JR. COMPANY for an Official direction under Regulation 5.10(1) and an Extension of time under Regulation 5.10(2) to file evidence in answer and objection thereto by CADBURY SCHWEPPES PTY LTD

Decision: Issued 27 April 2007.
Abstract

The applicant sought a three month extension of time, “…within which to explore settlement possibilities in relation to this opposition proceeding.” They also requested a direction from the Commissioner that, “… in the event the proposed amendments are allowed by the Commissioner then the applicant should be afforded the opportunity to lodge further evidence to address the amended claims.”
Found that the applicant has not provided evidence supporting its request for extension which shows settlement negotiations are in train or that both parties are agreed that settlement negotiations are currently underway. The interests of the opponent as weighed up against those of the applicant were found to be fairly equal. The interests of the Patent Office were not considered to be of major significance. There was no advantage to the public in delaying the opposition proceedings as there was no indication that either party has been disadvantaged in filing evidence to support its case for the opposition proceedings. The public interest would be best served by expeditious disposal of this matter.
The granting of an extension of time to the applicant until 28 May 2007 to explore settlement possibilities was found not to be justified in the circumstances. However the applicant was granted a short “Ferocem” type extension of 7 days from the date of this decision to file any evidence they may have at hand.
Found that the nature and significance of the evidence, likely to be filed, regarding the proposed amendments (determined to be non-trivial in nature) did not carry a significant weight in view of the nature of the amended independent claims. The issuing of a direction would not serve the public interest as it would lead to delays in the settlement of the substantive opposition. In fact, in accordance with regulation 5.10(4), it is open to the applicant to file further evidence at any stage of the opposition.
The interests of the opposing parties were fairly well balanced. The applicant stands to gain from issue of such a direction in terms of defending its application whereas the opponent faces another extra step on the path to a final determination of the opposition. The interests of the Patent Office were not found to be of major significance in this matter. Found, given all the circumstances that the nature of the proposed amendments was such that they did not support the issuing of a direction.
The request for a direction was refused.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No. 772873 by WM. WRIGLEY JR. COMPANY and requests by WM. WRIGLEY JR. COMPANY for an official direction under Regulation 5.10(1) and an extension of time under Regulation 5.10(2) to file evidence in answer and objections thereto by CADBURY SCHWEPPES PTY LTD

BACKGROUND

Patent application 772873 for an invention titled "Comestible coating process using hydrogenated isomaltulose mixture" was filed on 30 May 2000 in the name of Wm Wrigley Jr. Company (Wrigley). The application was advertised accepted on 13 May 2004. On 9 August 2004, Cadbury Schweppes Pty Ltd (Cadbury) filed a notice of opposition. A Statement of Grounds and Particulars followed on 9 November 2004 and evidence in support was completed on 30 August 2005. Wrigley requested, and was granted, three extensions up to 28 August 2006 to serve evidence in answer. Part evidence in answer in the form of two statutory declarations was served on 29 March 2006 and 28 April 2006 respectively
On 28 August 2006, Wrigley requested its fourth extension of time to 28 November 2006, and Cadbury objected to this extension. A hearing was held and a decision issued on 13 October 2006 (Cadbury Schweppes Pty Ltd v Wm Wrigley Jr. Company [2006] APO 35) allowing the extension. That decision found that Wrigley had provided less than satisfactory explanations for the delay, but that previous delays were more likely to be caused by poor case management rather than a deliberate attempt to delay proceedings. The decision also stated that the balance of the parties’ interest and the public interest supported an extension. The decision also indicated that:
“this balance is likely to change if there are further delays in the preparation of evidence.”
Furthermore, the decision concluded with this warning:
I allow the requested extension of time until 28 November 2006 for the applicant to engage a suitable third expert and prepare a draft declaration within the extended period. The applicant is however on notice that the Commissioner is unlikely to be sympathetic to any further extensions of time unless they can establish that substantial progress has been made in the preparation of its evidence in answer from the third witness and that this evidence will address all of the substantive issues raised in the evidence in support.
On 28 November 2006 Wrigley filed a request to amend the specification under Section 104. This request was accompanied by a request for an official direction by the Commissioner under regulation 5.10(1) to extend the time limit for service of evidence-in-answer to one month after the final allowance or rejection of the voluntary amendment request (such directions having issued on other cases in the past).
On the same day Wrigley also filed a request for an extension of time under regulation 5.10(2) to 28 February 2007 to file evidence-in-answer. The explanation accompanying the request for extension was as follows:
The applicant has reviewed the Evidence-in-Support in view of comments from the experts used in relation to this opposition proceeding and has lodged a voluntary amendment to the specification. In particular, the applicant has substantially amended the claims in order to more clearly define the invention in view of the issues raised by the opponent in these opposition proceedings. The applicant also believes that the voluntary amendment addresses all the issues raised by the opponent in these opposition proceedings.
Further time is required for the Australian Patent Office to review and examine our voluntary amendment request in accordance with the Patents Act and Regulations and for the opponent to provide comments thereon.
Further time is also required for us to prepare and lodge our Evidence-in-Answer upon completion of the review and examination procedure by the Australian Patent Office and in the event that the opponent wishes to maintain their opposition to the application in view of the amendments to the specification
On 4 December 2006, the Commissioner wrote to both parties indicating that, unless objected to, she intended to issue the direction as requested by Wrigley. On 8 December 2006 Cadbury wrote to the Commissioner objecting to the request for an official direction and the request for a further extension of time for reasons in the letter. Cadbury also requested that the Commissioner issue a notice to produce documents containing “comments from the experts used in relation to this opposition proceeding” and documents that established whether “substantial progress has been made in the preparation of … evidence”. On 19 December 2006 the Commissioner wrote to both parties indicating that the objections to the official direction and the extension of time would be heard together. The Commissioner also stated that she did not intend to issue the notice to produce documents as requested by Cadbury.
The request for an official direction and an extension of time to file evidence-in-answer and the objections thereto was heard in Canberra and a decision issued on 19 February 2007 (Cadbury Schweppes Pty Ltd v Wm Wrigley Jr. Company [2007] APO 8) allowing the extension and refusing the request to issue a direction.
The application for extension of time and directions from the Commissioner
On 28 February 2007 Wrigley sought a three month extension of time, “…within which to explore settlement possibilities in relation to this opposition proceeding.” They also requested that, ”We…seek a direction from the Commissioner that in the event the proposed amendments are allowed by the Commissioner then the applicant should be afforded the opportunity to lodge further evidence to address the amended claims.” Cadbury objected to both the extension of time application and request for directions.
The matter was heard in Canberra on Wednesday 4 April 2007. Wrigley appeared by telephone represented by Mr Andrew Lee and Dr John McCann, patent attorneys of Spruson and Ferguson. Cadbury appeared by videoconference represented by Mr Jonathan Kelp, solicitor of Mallesons Stephen Jaques.
Submissions by Parties
I shall refer to submissions from the parties, wherever relevant in my decision.
DECISION
The law on extensions of time and directions
This case relates to a request for a direction by the Commissioner that, in the event proposed amendments to the opposed specification are allowed by the Commissioner, the applicant should be given an opportunity to lodge further evidence to address the amended claims under Regulation 5.10 (1) and to an extension of time to file Evidence-in-Answer under Regulation 5.10 (2). These regulations state:
(1)The Commissioner may, on his or her own motion or on the application of a party:
a.give a direction that is not inconsistent with the Act or these regulations for the conduct of proceedings to which this Chapter applies; or
b.determine that a period prescribed in this Chapter (except in regulation 5.3 or 5.3AA, paragraph 5.4 (a), subparagraph 5.8 (1) (a) (i) or regulation 5.9A) is to be extended by such further period as the Commissioner reasonably allows.
(2)The Commissioner may 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 5.3AA, paragraph 5.4 (a), subparagraph 5.8 (1) (a) (i) or regulation 5.9A):
a.on the application of a party in the approved form; and
b.on such reasonable terms (if any) as the Commissioner specifies; and
c.after the party has served a copy of the application on the other party.
These provisions must be read in conjunction with subregulation 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 or her 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.
Consequently, it is a prerequisite to any decision that the Commissioner must ensure that the other party has been notified, and that both parties have had the opportunity to make representations. In the present case the other party has been notified, and the parties have been given the opportunity to make representations.
A direction can be given or an extension only be granted if the Commissioner is reasonably satisfied that it is appropriate in all the circumstances. In exercising this discretion I am guided by the decisions of Burchett J in Ferocem Pty Ltd v Commissioner of Patents (1994) AIPC 91-057; 28 IPR 243, Sackville J in A Goninan & Co Ltd v Commissioner of Patents (1997) AIPC 91-330; 38 IPR 213 and Goldberg J in National Starch & Chemical Co v Commissioner of Patents (2001) AIPC 91-697, 50 IPR 398. These decisions set out the following general principles:
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 earlier 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 significance of the evidence is assessed having regard to any relevant material available, not just the evidence itself. (National Starch at [33])
*         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 the exercise of discretion: The interests of the party seeking the exercise of discretion 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)
I shall first consider the request for extension of time followed by the request for directions.
Consideration of Request for Extension of Time
Basis for the request for extension of time
I have focussed on the following key submissions made by Wrigley:
· The extension of time sought in this case is for the purpose of facilitating a settlement in these opposition proceedings.
· It is in the interest of all parties to settle matters wherever possible so as to avoid unnecessary costs, time and resources in pursuing opposition proceedings. In particular, the Delegate should also bear in mind the public interests relating to costs, efficiency and expeditious disposal of opposition proceedings (see Ferocem) which …is also clearly served by the opposition being settled.
Cadbury responded as follows:
·The Applicant’s current extension of time application not only fails to disclose a proper reason for requiring further time to prepare its evidence in answer, but in fact relies upon an incorrect and misleading assertion regarding the existence of settlement negotiations. Neither the Commissioner nor the applicant can be in any doubt that there are no settlement negotiations taking place between the parties in relation to this opposition.
·The Applicant has now filed a statutory declaration from an expert witness, Gary C Roelofs, which addresses the common general knowledge and responds to the Applicant’s (sic) evidence in support. This is the only evidence for which the Delegate granted an extension of time until 28 February 2007 in the previous extension of time decision on 19 February 2007. The Applicant has therefore exhausted the basis upon which the Delegate granted the previous extension of time.
Wrigley seeks a three month extension of time to explore settlement possibilities in relation to the opposition. They referred to three Office decisions where extensions of time were granted which related to negotiations between the parties. Having reviewed those decisions I found that the extensions were sought for delaying the filing of evidence in support/evidence in answer rather than solely for the purpose of exploring settlement possibilities. Wrigley has previously filed evidence in answer and has not indicated in any manner that they are currently seeking to file any further evidence in answer. Having looked at the copies of the correspondence between the parties regarding the negotiations as alleged by Wrigley, all I find is an exploratory letter from Wrigley to Cadbury seeking a discussion on settlement opportunities. The response from Cadbury clearly indicates that they have not received any firm settlement proposals to consider and consequently they consider that there are no settlement discussions between the parties.
Wrigley had referred to an Office decision where reference was made to the Australian Patent Office Manual of Practice and Procedure, volume 3, paragraph 8.5.3 and indicated that the relevant portion was part of the current Manual, volume 3 at paragraph 3.8.5.8, which reads:
Where it is clear that both parties are involved in negotiations, the Commissioner may be reasonably satisfied that the extension is "appropriate in all the circumstances" provided that:
·if the extension is for more than 1 month, the application for the extension includes something from the other party to confirm that negotiations are occurring
·where negotiations have been occurring for more than 6 months, the Commissioner will expect to be provided with details of why negotiations have not yet been concluded and an indication of when agreement is likely. The Commissioner will not grant indefinite extensions of time to conclude negotiations.
I am of the view that, to date, the correspondence relating to settlement/negotiations between the parties does not indicate the existence of settlement negotiations as no proposals have been put on the table to negotiate. What the correspondence indicates is merely exploratory feelers to determine if the other side is amenable to commencing a settlement negotiation. Thus there is no indication that serious negotiations are in train or that both parties are seriously seeking to settle the opposition. The relevant situation specified in the Manual above requires the opponent to confirm that negotiations are occurring. This is not the case and the evidence before me does not support this. I do not find that mere exploration of settlement possibilities on its own clearly justifies delaying settlement of the opposition (see also American National Can Company v Cryovac, Inc. [2006] APO 34, para 26, “…Mere speculation of a settlement is not sufficient reasoning for the grant of an extension). Thus the reasons provided for an extension do not support the granting of an extension of time. However this is not a mandatory requirement and I must give genuine and proper consideration to all relevant matters.
The public interest
I have summarised Wrigley’s submissions on this matter as follows:
·The potential benefits of a settlement far outweigh any argument that the opposition proceedings will be protracted. Indeed if a negotiated settlement can be reached then the present opposition proceedings will be expeditiously disposed of, and there will be clear commercial benefits to the applicant, the opponent as well as the public.
·In particular, the Delegate should also bear in mind the public interests relating to costs, efficiency and expeditious disposal of opposition proceedings (see Ferocem) which …is also clearly served by the opposition being settled.
·Based on the teaching of Footwear Pty Ltd v Strongfoot Pty Ltd, the negotiations between the parties have not become untenable and there is a real prospect that settlement between the parties may occur.

The opponent’s submissions focussed on the following:
·Having now had over 19 months to prepare its evidence in answer, the Applicant has avoided any adverse determination of its patent application for over 7½ years of the potential term of the patent. In so doing, the Applicant has enjoyed a significant commercial deterrent to its competitors, arguably even a de facto monopoly. This state of affairs, when viewed in light of the Applicant’s lack of diligence in preparing its evidence in answer, is clearly against the public interest, and the Commissioner ought to exercise her discretion against its continuation.
·Given the absence of any explanation regarding further evidence the Applicant proposes to prepare, and indeed whether it plans to prepare any further evidence at all, there can (be) no argument that the Applicant will be shut out of preparing evidence which will assist the proper resolution of this opposition.
Nature and significance of the evidence
It is in the public interest not to grant a patent which may be invalid. Therefore, the proceeding should be determined on its merits. The nature and significance of the evidence filed in this opposition so far indicates there is a serious defence to the opposition on foot. Wrigley has not indicated if there is any residual evidence in answer that is pending. No indication has been given of any major matters in Cadbury’s evidence in support which have been left unaddressed by the evidence in answer filed to date. The evidence in answer filed so far consists of three statutory declarations including submissions on the common general knowledge in the art. Thus, I have no evidence before me to show that Wrigley has been prevented in any way from filing sufficient evidence to support its patent application against the matters raised by Cadbury. I consider therefore that there is no advantage to the public in delaying the opposition proceedings as there is no indication that either party has been disadvantaged in supporting its case for the opposition proceedings.
Expeditious disposal
Wrigley is of the view that if a negotiated settlement can be reached then the present opposition proceedings will be expeditiously disposed of, and there will be clear commercial benefits to them, Cadbury, as well as the public. Cadbury on the other hand indicates the disadvantage to the public interest arising from the delayed determination of the opposition and the significant commercial advantage enjoyed by Wrigley through the non-determination of the opposition to its patent application. I do not find that there is any sound reason which favours further delay in the proceedings. Settlement negotiations, if they are close to agreement or have proceeded where they are close to finalisation would be a factor to consider. However as there is no indication that negotiations have even commenced on a sound basis I do not find any firm reasons which justify delaying the opposition procedures. I consider that the public interest would be best served by expeditious disposal of this matter which would require that the extension of time not be granted.
Interests of the Applicant
There is no indication that the extension sought is linked in any way to the filing of further evidence. Also no submissions/evidence has been provided to show that the evidence in answer filed to date is in some way inadequate or insufficient to deal with matters raised by Cadbury. The private interests of Wrigley, as it submits, will best be served if it is able to arrive at a settlement prior to a determination of the opposition. Thus the grant of an extension of time to explore settlement possibilities clearly favours Wrigley’s interests.
Interests of the Opponent
Cadbury has served evidence in support of its opposition and is facing the uncertainty of the applicant’s lack of clear indication that it has completed serving evidence in answer. Wrigley’s patent application has not yet faced a full scrutiny of an opposition hearing. Consequently, Cadbury and other relevant parties are uncertain of areas they may proceed to make new inventions without knowing the extent of the actual monopoly of the applicant’s current invention. The interests of Cadbury are thus best served if this opposition can be dealt with expeditiously. This will be facilitated by a refusal of the extension sought.
Interests of the Patent Office
The effect of a delay arising from the extension sought on the efficient and orderly administration of the Patent Office lies against allowing the extension, but this is not a significant consideration.
Is the Extension of Time appropriate in all the circumstances?
I shall now consider the various factors and how they impact on a final decision in this matter. I had found that the reasons cited for seeking an extension of time did not justify the grant for an extension. In particular I found that there is no indication that serious negotiations are in train or that both parties are seriously seeking to settle the opposition. Thus Wrigley has not provided evidence supporting its request for extension which shows settlement negotiations are in train or that both parties are agreed that settlement negotiations are currently underway.
In the matter of the private interests of the parties, the opponent’s interests are best served by the grant of an extension, whereas the applicant’s interests are best served by a refusal of the extension.
The consideration of the nature of the evidence that is currently on file and lack of indication of the filing of any further evidence by Wrigley, points towards the refusal of the extension of time as favouring the public interest.
Given the circumstances surrounding the filing of evidence in answer, I did not find that a satisfactory explanation had been provided by Wrigley supporting the request for the extension of time. I find that the interests of the applicant as weighed up against those of Cadbury are fairly equal. The interests of the Patent Office are not of major significance. There is no advantage to the public in delaying the opposition proceedings as there is no indication that either party has been disadvantaged in filing evidence to support its case for the opposition proceedings. The public interest would be best served by expeditious disposal of this matter which would require that the extension of time not be granted. After due consideration of all relevant matters as set out above, I find that the granting of an extension of time to the applicant until 28 May 2007 to explore settlement possibilities is not justified in the circumstances. Being mindful of the teachings of Ferocem (supra) I do not wish to shut out the applicant entirely from filing any evidence they may have at hand. Consequently I grant Wrigley 7 days from the date of this decision to file any evidence they may have at hand.
Consideration of the Request for a Direction
A direction can be given or an extension only be granted if the Commissioner is reasonably satisfied that it is appropriate in all the circumstances. I have set out above (see The law on extensions of time and directions) the relevant guiding principles as set out in various Court decisions. Further the delegate when considering the previous request for a direction in (Cadbury Schweppes Pty Ltd v Wm Wrigley Jr. Company [2007] APO 8) set out the principles gleaned from various Court and office decisions dealing with extensions of time and directions in instances where amendments to the specification during opposition were involved. I find that they are relevant in this case and have listed them below:
“In Stena Rederi Aktiebolag v Danyard A/S (1996) 34 IPR 111 the delegate found that an extension of time should only be granted if the amendments are non-trivial and stated that it was inappropriate for the applicant to be allowed to unnecessarily protract opposition proceedings by filing trivial amendments.
In Exxon Chemical Patents Inc v Lubrizol Corporation (1998) 41 IPR 126 the delegate did not issue a direction under regulation 5.10(1) despite the amendments being judged non-trivial due to what he considered to be an excessive delay in filing the request to amend. Also, as there was only one non-trivial amendment, the delegate expressed some doubt as to whether this would affect the evidence.
In Genetics Institute v Kirin Amgen Inc 44 IPR 257 the Federal Court noted that proceedings before the Commissioner should be conducted in an efficient and expeditious manner.
In University of Georgia Research Foundation Inc v BioChem Pharma [2001] FCA 688 Tamberlin J found it was preferable to stay the appeal pending the determination of amendments and that the patent applicant would be put to unnecessary time and expense in preparing what may well prove to be irrelevant evidence if they were required to file evidence in answer without being certain of the final form of the amendments.
In Affymax Technologies N.V. v Diversa Corporation [2001] APO 52, the delegate reviewed the above cases, and concluded that there were a number of factors to consider when determining whether an extension of time under regulation 5.10 is appropriate where there were pending amendments, viz:
(i)the nature of the amendments;
(ii)whether there were any undue delays in proposing (or processing) the amendments; and
(iii)the interests of the parties”
Basis for the request for the direction
The submissions raised by Wrigley are summarised below;
·The applicant should be afforded an opportunity to lodge further evidence in relation to the amended claims which were the subject of the request to amend lodged on 28 November 2006. The amendments have been examined by the Commissioner (without any objections lodged by Cadbury) and leave has been granted by the Commissioner to publish the amendments for opposition purposes.
·As discussed in the previous hearing on 1 February 2007, the proposed amendments lodged on 28 November 2006 sought to replace claims 1 to 24 with new claims 1 to 60 and also proposes amendments to various pages in the description of the specification.
·Claims 1 to 60 comprises three independent claims which are significantly narrower in scope than the previous claims, namely claims 1, 17, and 44. Thus, it is clear that the nature of the amendments is that they will have a significant effect on the nature and scope of evidence to be served in the sense that the issues of dispute will be narrowed and simplified. Thus Wrigley believes that it is in the interests of the parties to address these claims upon allowance.
·A direction under regulation 5.10(1) should be granted since if Wrigley is not allowed to submit evidence concerning the amended claims then this may affect the final form of patent rights allowed in these opposition proceedings. Wrigley concedes that Cadbury may also wish to propose evidence as to the amended claims (if allowed) and is amenable to a direction that both parties be allowed to adduce further evidence in the event that the amendments are formally allowed, which may occur in the next few months.
The opponent’s submissions on this matter are summarised below:
·Although it is unclear whether it is a formal request, the Opponent objects to the Applicant’s statement in its letter to the Commissioner.
·Relevantly in the Fifth Extension of Time Decision the Delegate did not accept the Applicant’s submissions that it should be granted additional time to file expert evidence in relation to the novelty of the amended claims, or statements from a person employed by Wrigley on the advantages that flow from the invention.
·The Delegate accepted the desirability of the Applicant filing evidence in relation to the common general knowledge but qualified it with statements relating to the issues of common general knowledge and whether the evidence Wrigley sought to adduce would alter depending on the allowance/non-allowance of the amendments.
·Accordingly, the Delegate refused to issue a direction deferring the final date for filing its evidence in answer until the acceptability of the Applicant’s proposed amendments is determined.
·In light of the Applicant’s “lack of diligence” to date (see the findings of the Delegate in the Fifth Extension of Time Decision at [66]), the only possible interpretation of the request is that it is an attempt to subvert the Delegate’s Fifth Extension of Time Decision, and again demonstrates the Applicant’s unwillingness to prosecute its patent application in good faith and in a timely manner.
·Accordingly the Commissioner should not entertain the Applicant’s request for a direction allowing it to lodge further evidence if, at a later (unknown) date, the proposed amendments are allowed. The direction has already been requested once and rejected.
I will now consider the nature of the amendments and their impact on the evidence to be served relating to issues of dispute.
Nature of the Amendments
The Delegate in Cadbury Schweppes Pty Ltd v Wm Wrigley Jr. Company [2007] APO 8 made a detailed consideration of the proposed amendments (particularly new claims 1, 17 and 44). The Delegate, in light of the relevant teachings of the courts and the office, determined:
“It seems clear to me that the amendments result in a narrowing of the scope of accepted claims 1, 13 and 19 (new claims 17, 1 and 44). In the Stena Rederi decision (supra) and Exxon Chemical Patents Inc v Lubrizol Corporation, (supra), the delegates held that amendments that introduce even basic limitations into the main form of the claimed invention were non-trivial. This view was also supported by the decision of the delegate in ExxonMobile Chemical Patents Inc v The Associated Octel Company Limited [2002] APO 34.
In Solstice Neurosciences, Inc v Allegan, Inc [2006] APO 2 the delegate found that the amendments were trivial because they were in the nature of clarifying statements or there would be little, if any, difference between the claims. However, this is not the case here. While Cadbury believes that the amendments do not resolve the opposition, the changes to the independent claims at least involve the addition of new features, not just a mere rearrangement of existing features. The type of powder material in the methods used has been limited to a specific example, and additional steps have been added to other methods. I do not think that the person skilled in the art would have read the accepted claims as including the new features. Doing so would have involved an improper importation of a gloss from the description. I am willing to accept that the proposed amendment to the claims of the present application is also a non-trivial amendment in the Stena Rederi (supra) sense.” (my emphasis).
I have assessed the amended claims that the applicant focussed on in their submissions and I agree with the Delegate’s finding that the currently proposed amendments are non-trivial. In view of the amendments being non-trivial I have to consider if a Direction is required for the purpose of filing evidence relating to the amendments.
Regarding the issue of, “whether there were any undue delays in proposing (or processing) the amendments” the Delegate in Cadbury v Wrigley [2007] APO 8 had considered this matter in depth (see paragraphs 25 to 34). I have reviewed the findings of the Delegate and there is no new evidence before me that would show me that circumstances have changed to alter that finding. Hence I concur with the Delegate’s finding that, “While it is always difficult to draw the line between undue delay and due diligence, a delay of 15 months is excessive. In my opinion Wrigley has not been diligent in proposing the amendments.”
I note that at present the proposed amendments have been accepted by the Office and have been advertised for the purpose of allowing interested parties to file notice(s) of opposition to the amendments. Thus currently the status of the amendments has not yet been finally resolved. They may or may not be opposed. In view of the fact that there are only two possible results after opposition, allowance or non-allowance of the amendments I have to determine if either of these results will impact on the evidence which the applicant seeks to file. The delegate in Cadbury v Wrigley [2007] APO 8 had considered this issue and Wrigley’s submissions at the time indicated that:
“…the evidence in answer still to be served would be:
(a)statements from the independent expert on the common general knowledge in the art. (served on 28 February 2007)
(b)evidence from a person from Wrigley on the advantages that follow from the invention.
(c)expert evidence on the ground of novelty comparing the new claims (if allowed) and the citations of the evidence in support.
(d)an explanation of the new terms added to the claims.”
Since item (a) is no longer relevant (as the statement has now been filed), I shall refer to the findings of the delegate regarding items (b) to (d). The delegate stated:
“I do not accept that expert evidence commenting on the novelty of the claims (see (b) above) is likely to be of any great help. Submissions pointing out the differences between the claims and the citations can be made at the substantive hearing. No expert is needed to highlight the differences. Furthermore, the need for statements from a person employed by Wrigley on the advantages that follow from the invention (see (c) above) also seem to be superfluous. I suggested to Wrigley at the hearing that such advantages would be found in the specification. I questioned the need to reiterate these advantages. Wrigley indicated that they thought it would be better to have confirmation of these advantages from an expert. I do not see how mere repetition would be of any great significance.
Furthermore, while the inclusion of new terms into amended claims may require some explanation by an expert and, hence, require a delay until the amendments are allowed; this is not the case here. While the amendments proposed by Wrigley add terms and/or method steps into the independent claims those terms and steps are not “new”. They all appeared in the claims as accepted. The features of hydrogenated isomaltulose that is enriched in GPS compared to GPM and the step of applying a second (finishing) coating are found in the accepted claims.”
I concur with the delegate’s finding regarding the matters relating to evidence as per items (b) to (d). Thus Wrigley is seeking a direction to file evidence which in light of the above findings would seem not be of any major significance in view of the nature and content of the amendments filed.
Expeditious Disposal
The public interest requires that oppositions should be dealt with expeditiously. Wrigley seeks a direction to file evidence at some future stage where currently the status of the amendments has not yet been finally resolved. Wrigley submits:
“…it is clear that the nature of the amendments is that they will have a significant effect on the nature and scope of evidence to be served in the sense that the issues of dispute will be narrowed and simplified. Thus Wrigley believes that it is in the interests of the parties to address these claims upon allowance.”
In such matters, factors such as the nature of the amendments being proposed and the assumption that the evidence would change depending on the final form of the claims, have been assessed prior to issuing directions. The Commissioner has issued similar directions previously where it was clear the final form of the claims had a significant impact on the evidence. As I had found that based on the proposed amendments the evidence likely to be filed would not be of any great significance I fail to see how the issuing of a direction would lead to an expeditious disposal of the opposition.

Wrigley also contended that:
“A direction under regulation 5.10(1) should be granted since if Wrigley is not allowed to submit evidence concerning the amended claims then this may affect the final form of patent rights allowed in these opposition proceedings.”
I do not see how the refusal to issue a direction prevents the applicant from submitting evidence concerning the amended claims. The applicant may file further evidence during the opposition process in accordance with regulation 5.10(4) which provides:
"(4) The Commissioner may:
(a) on the application of a party; and
(b) on such reasonable terms (if any) as the Commissioner specifies;
permit the party to serve further evidence on the other party. "
This regulation is subject to the requirements of regulation 5.10(5) (supra). Thus it is open to Wrigley to file further evidence if it so chooses without the need for a direction from the Commissioner. The separate request for a direction when the status of the amendments is not yet resolved is not conducive to the expeditious disposal of the substantive opposition matter.
The Interests of the Parties
Quite clearly Wrigley’s interests are served by an issue of the direction as they perceive that the final form of patent rights could be affected by the evidence they seek to submit on the amended claims.
Cadbury sees no benefit in the issue of a direction as it perceives the action as delaying the final settlement of the opposition. I agree that the opponent’s interests are not served by issuing of the direction sought.
The effect of a possible delay arising from issuing the direction sought on the efficient and orderly administration of the Patent Office lies against allowing the direction, but this is not a significant consideration.
Is the Issuing of a Direction appropriate in all the circumstances?
I shall now weigh up the various factors and how they impact on the final decision in this matter. I had determined that the nature and significance of the evidence likely to be filed regarding the proposed amendments (determined to be non-trivial in nature) did not carry a significant weight in view of the nature of the amended independent claims. I had also found that Wrigley had not been diligent in proposing the amendments. Based on this determination I fail to see how the issuing of a direction would lead to an expeditious disposal of the opposition. The issuing of a direction would not serve the public interest as it would lead to delays in the settlement of the substantive opposition. In fact, in accordance with regulation 5.10(4), it is open to Wrigley to file further evidence at any stage of the opposition. All they would need to do is file evidence addressing the proposed amendments as the evidence addressing the current claims is currently on file. If they had made use of this regulation it would have allowed for dealing with further evidence while not hindering progress of the substantive opposition. I see the issuing of such a direction in this case as being inconsistent with the efficient and timely administration of opposition matters required of the Patent Office as Wrigley already has the right to file further evidence under the auspices of regulation 5.10(4).
The interests of the opposing parties are fairly well balanced. Wrigley stands to gain from issue of such a direction in terms of defending its application whereas Cadbury faces another extra step on the path to a final determination of the opposition. As I had indicated the interests of the Office are not of major significance in this matter.
Given all the circumstances I have found that the nature of the proposed amendments is such that they do not support the issuing of a direction stating:-
“that in the event the proposed amendments are allowed by the Commissioner then the applicant should be afforded the opportunity to lodge further evidence to address the amended claims”.
The public interest clearly favours expeditious disposal of matters before the office and a determination of the opposition on its merits. There is no significant factor raised by Wrigley which indicates that non-issue of the direction sought will either prevent or seriously compromise the determination of a serious opposition on its merits. The right of Wrigley to file further evidence, which is what they seek under the direction, can be separately accessed under regulation 5.10(4) without the Commissioner’s direction. Issuing such a direction is not consistent with the efficient and timely administration of opposition matters required of the Patent Office. I refuse to issue the direction sought by the applicant.
CONCLUSION
In the matter of the request for an extension of time ‘within which to explore settlement possibilities in relation to this opposition proceeding’, I find that the granting of an extension of time to the opponent until 28 May 2007 to explore settlement possibilities is not justified in the circumstances. Being mindful of the teachings of Ferocem (supra), I do not wish to shut out the applicant entirely from filing any evidence they may have at hand. Consequently I grant Wrigley 7 days from the date of this decision to file any evidence they may have at hand.
In the matter of seeking a direction from the Commissioner, “that in the event the proposed amendments are allowed by the Commissioner then the applicant should be afforded the opportunity to lodge further evidence to address the amended claims”, I refuse to issue the direction sought.
COSTS
The power to award costs, which is based on section 210 and regulation 22.8, is discretionary and consequently I must take all relevant considerations into account.
Wrigley’s key submissions were:
·Costs should be awarded to Wrigley. Wrigley has initiated settlement discussions with a view to reaching a suitable commercial settlement. This is of potential benefit to all parties and an attempt to reach settlement should not be discouraged by awarding costs against a party seeking settlement.
·If the Delegate does not award costs to Wrigley, it is submitted that no award of costs should be made.
Cadbury submitted that the applicant ought to pay the Opponent’s costs in this matter.
I did not find any significant factors which justified the extension of time sought to explore settlement possibilities. The issuing of a direction was not found to be justified both on the basis of the nature of the proposed amendments as well as on public interest considerations. I had noted that the action the applicant sought to execute under the direction sought was available to it under regulation 5.10(4).
Hence, after due consideration of all the relevant circumstances, I award costs in favour of the opponent Cadbury Schweppes Pty Ltd and against the applicant Wm Wrigley Jr. Company.
Jacob Elijah
Delegate of the Commissioner of Patents
27 April 2007
Patent attorneys for the applicant : Spruson & Ferguson, Sydney
Patent attorneys for the opponent : Mallesons Stephen Jaques, Melbourne