Zenco (No. 4) Ltd v Institut National De La Recherche Agronomique (Inra)

[2001] APO 21

OFFICIAL NOTICE

DECISION OF A DEPUTY COMMISSIONER OF PATENTS

Application  :          No. 705706 in the name of Zenco (no.4) Ltd

Title:          Cytoplasmic male sterility system producing canola hybrids

Action:          Opposition under Section 59 by Institut National De la Recherche Agronomique (INRA).  Application for an Extension of Time in which to serve Evidence in Support (regulation 5.10(2)).

Decision:          Issued            .

Abstract

The opponent did not establish that a new citation was relevant and therefore failed to explain the delay in serving evidence in support.  However, given that the extension of time was short and the evidence to be served was otherwise highly relevant, the extension of time was granted. The extension was only allowed on the understanding that evidence will be finalised by the current deadline absent unforeseen circumstances.

In addition, even if the opponent were later to establish the relevance of the citation, this does not justify any further extensions.  While there are some efficiency gains in having all the evidence discussed in a single declaration, any advantage in expeditiously dealing with all the evidence in one declaration would be outweighed by lengthy delays in finalising evidence in support.  In that case, the new evidence can be more appropriately and expeditiously dealt with in an application for leave to serve further evidence.

PATENTS ACT 1990

DECISION OF A DEPUTY COMMISSIONER OF PATENTS

Re:Patent Application No. 705706 by Zenco (no.4) Ltd and opposition under Section 59 by Institut National De la Recherche Agronomique (INRA).  Application for an Extension of Time in which to serve Evidence in Support (regulation 5.10(2)).

BACKGROUND

Australian patent application 705706 in the name of Zenco (no.4) Ltd (Zenco) was filed on 3 July 1996 under the provisions of the PCT, claiming priority from basic application GB 9513881.4 filed on 7 July 1995.  The Australian patent application was advertised accepted on 27 July 1999.  Institut National De la Recherche Agronomique (INRA) filed a notice of opposition on 27 August 1999.  This was followed by their statement of grounds and particulars on 29 November 1999.

Evidence in support was initially due on 29 February 2000.  The opponent applied for, and was granted, a series of extensions to serve evidence until 28 April 2001.  On 6 April 2001, the opponent requested a further 1 month extension until 28 May 2001.  The applicant objected to this request and the matter was set for hearing in Canberra on 9 May 2001.

Both parties appeared by phone.  Dr Neil Ireland, patent attorney from Phillips Ormonde and Fitzpatrick, Melbourne represented the applicant.  Mr James Cherry, patent attorney from Freehills, Carter Smith and Beadle, Melbourne represented the opponent.

DECISION

Regulation 5.10(2) of the Patents Regulations 1991 (Cth) enables the Commissioner to extend the time for an action in opposition proceedings. Regulation 5.10(5) requires that for such an extension to be granted the Commissioner must be satisfied that the extension is "appropriate in all the circumstances".

The law relating to these regulations has been thoroughly considered by Burchett J in Ferocem Pty Ltd v Commissioner of Patents (1994) 28 IPR 243 and more recently by Sackville J in A Goninan & Co Ltd v Commissioner of Patents (1997) 38 IPR 213. These decisions make it clear that reg. 5.10 confers a broad discretion that cannot be reduced to imperative compliance with particular requirements. It requires proper, genuine and realistic consideration of all the relevant

aspects that pertain to the application.  These aspects include:

1. The provision of an explanation or justification for the delay in completing the Evidence in Support
   
   

Although noting that this is a relevant consideration, satisfactory explanation is not mandatory.

1. Interests of the parties involved in the opposition and the public interest
   
   Disadvantages to either applicant or opponent are also relevant considerations.
   The public interest in determining a serious opposition on its merits must be balanced with the requirement that matters before the patent office should be dealt with in an efficient, orderly manner and not be unduly prolonged.
   
   

In deciding the issue, I will consider each of these aspects separately.

1. The provision of an explanation or justification for the delay

The onus rests with the party seeking an extension of time to explain or justify the need for the extension with sufficient detail as to why the extension is required [see Dominion Mining Ltd v MIM Holdings Ltd [1997] APO 27 (11 June 1997)].

In the present application, the reasons provided for the extension are:

The opponent’s Australian expert, Gururaj Kadkol, has prepared a draft declaration.  In his review of the prior art he located a relevant prior publication which may have been published as a written document at a conference in England shortly before the claimed priority date.

We are endeavouring to establish the date of publication and if it is before the priority date will seek leave to amend the Statement of Grounds and Particulars to include this publication.

The applicant argued that the opponent had failed to provide a “full and frank disclosure” of the circumstances leading to the need for an extension of time.  According to the applicant, the opponent had not indicated how the document was located and it was possible that the opponent was still actively searching for further citations.  In these circumstances, the applicant argued that it was inappropriate to grant an extension noting comments made by the hearing officer in Kent-Moore Corporation v Environmental Products Amalgamated Pty Ltd (1992) 25 IPR 233:

“There can be no basis for granting an extension of the time for filing evidence in support, for reasons which are based on matters not referred to (either directly or by clear implication) in that statement.  For example, there can be no basis for an extension of time merely so the opponent can locate further anticipatory material not specified in the statement of grounds and particulars.”

The office decision of Kent-Moore pre-dates the Federal Court decisions in both Ferocem Pty Ltd v Commissioner of Patents (supra) and Goninan v Commissioner of Patents (supra).  In fact, Ferocem overturned an office decision which had applied Kent-Moore.  The judge in Ferocem indicated that the exercise of the Commissioner’s discretion under regulation 5.10 is not conditional on the need to make a “full and frank disclosure”.  It appears, therefore, that the strict approach in Kent-Moore has not been supported by the Federal Court.  Certainly, the principle of denying an extension simply because a document was not mentioned in the statement of grounds and particulars is not consistent with the broad test expounded in Goninan that an extension only has to be "appropriate in all the circumstances".

The applicant also referred to comments by Sackville J’s in Goninan:

“…it is necessary to consider the nature of the evidence that the opponent seeks to adduce and the significance of that evidence for the opposition proceedings.  I do not mean to suggest that the evidence has to be scrutinised in the same way as would occur at a hearing on the merits.  But unless the delegate forms a view as to the issues addressed by the proposed evidence, and whether that evidence is likely to be important in the opposition proceedings, it is difficult to see how proper consideration can be given to the public interest in having such proceedings determined on their merits.”

According to the applicant, the opponent had not established the nature or importance of the evidence they were seeking to adduce and, as a result, there was no basis to grant the extension of time.  The opponent argued that the evidence being prepared was highly relevant to the opposition.  According to the opponent, a major ground of opposition was obviousness and expert opinions were necessary to establish the opponent’s case.

While I accept that the nature of the evidence being prepared is likely to be important in the opposition proceedings, this does not explain the delay in preparing the evidence.  The opponent has attempted to justify the delay by difficulties in establishing a publication date for a new citation.  However, the new citation has not been identified either in the statement of grounds and particulars or in the opponent’s submissions.  Further, the opponent has not provided a copy of the citation.  Without such information, I am unable to determine whether the citation is relevant and therefore whether an extension of time to establish its publication date is appropriate.  As a result, the opponent has failed to satisfactorily explain the reasons for the delay. 

1. Interests of the parties involved in the opposition and of the public

The applicant argued that their interests are best served by having a patent granted in the near future to enable them to exploit and protect their invention and that they would be disadvantaged by the opponent unnecessarily protracting the opposition.  The applicant also alleged that the opponent was tactically dragging out negotiations between the parties and had been indicating by email to French seed companies that the Zenco Australian patent has been rejected.

The applicant did not provide any evidence to support their allegations and the agents representing the opponent in the opposition were not in a position to comment on the allegations.  However, even if the allegations were true, in the scheme of things, I do not believe a month’s extension would significantly disadvantage the applicant provided the evidence can be finalised in that time. 

The opponent, on the other hand, would be significantly disadvantaged if an extension were not allowed because they would be effectively shut out of the opposition.  While one option available to me would be to grant a short “Ferocem” type of extension to allow the opponent to serve evidence to hand, I do not believe this to be appropriate in the current case.  From the opponent's submissions, I understood that the main attorney who has been prosecuting the case for the opponent has been (and may still be) on leave.  I am concerned that forcing evidence on hand to be filed in this attorney's possible absence before the current deadline is not in the opponent’s or public interest.  In any case, the time left in the current extension is less than what would normally be given in a Ferocem extension.  Therefore, there would be no advantage in granting this type of extension to the applicant or public.

The issue of the public interest was considered by Burchett J in the Ferocem (supra) decision.  He concluded that in reaching a decision on this point, a balance is required between differing public interests.  Although it is desirable in the interests of cost, efficiency and the orderly prosecution of matters before the Patent Office, that oppositions progress without delay, it is equally important that decisions be made on merit, rather than parties being completely shut out as a result of a failure in procedure.

I note that the evidence being prepared by the opponent is likely to be highly relevant (even without the citation), the length of time being requested is very short and the evidence should be finalised by the deadline.  The applicant noted that the opponent had advised on 4 previous occasions (29 August 2000, 27 October 2000, 20 December 2000, and 28 February 2001) that they expected to finalise their evidence and the applicant was concerned that there was no guarantee this time that the opponent would complete their evidence in the time allowed by the current extension.

At the hearing, the opponent advised that they had genuinely believed they could have finalised their evidence several times previously.  Although they had taken around 17 months to finalise their evidence, they have suffered a number of unfortunate problems in retaining expert witnesses and appear to have been diligently prosecuting the opposition.  They have secured and briefed 4 different expert witnesses and draft declarations have been prepared from at least two of these.
I accept this, noting that previous extensions refer to a series of unfortunate problems that occurred in retaining witnesses in this opposition.  The current witness has committed the month of May to finalise his evidence and it appears that a draft declaration is almost complete.  The opponent was therefore very confident of being able to complete their evidence by the current deadline of 28 May 2001, although they were unable to commit to an undertaking to that effect.

I accept the opponent is acting in good faith and that they genuinely believe they can finalise their evidence in the period allowed by the current extension.  Considering these circumstances, the public interest is served by granting the one month extension of time.  However, this is only provided the evidence can be completed by the current deadline.

I do not accept that further delays can be justified by having to deal with a new citation, even if the opponent were to later establish the citation’s relevance.  While, as the opponent argued, there are some efficiency gains in having all the evidence discussed in a single declaration, any advantage in expeditiously dealing with all the evidence in one declaration would be outweighed by lengthy delays in finalising evidence in support.  In that case, the new evidence can be more appropriately and expeditiously dealt with in an application for leave to serve further evidence.  Therefore, I expect evidence to be finalised in the current deadline absent unforeseen circumstances.

I note that the main delay with considering the new citation is that its publication date had not been established.  Even at the hearing, the opponent advised that they had still not been able to confirm the publication date.  The opponent noted that the document was from proceedings of a conference in England which had ended on the priority date of the opposed application.  It was difficult to verify when the paper had actually been presented.

My view is that even if the publication date of the new citation cannot be established by the current deadline, this should not be the basis for any further extensions.  The rest of evidence in support should be served by the current deadline.  Any further delays will disadvantage the applicant.  The opponent will not be so disadvantaged because they can always apply later for leave to serve further evidence to establish the publication date.

Balancing the interests of both parties and the public, I find that the extension is appropriate provided the evidence can be finalised as the opponent has anticipated.

Conclusion

I find that when considering all the circumstances, it is appropriate to allow an extension of time until 28 May 2001 to serve evidence in support.  However, I am only granting the extension on the understanding that evidence will be finalised by the current deadline absent unforeseen circumstances.  I would be extremely concerned if the new citation (if later found to be relevant) delays evidence in support any further.  Such delays would outweigh any advantage in expeditiously dealing with all the evidence in evidence in support.  I note that the publication date for the citation has not yet been established.  Given the citation is from proceedings of a conference which ended on the priority date of the opposed patent application, there may be some difficulties in establishing the publication date.  If this date is not available by the current deadline, the rest of evidence in support should be served and the opponent can file an application for leave to serve further evidence if necessary to establish the publication date.

Costs

In actions before the Commissioner, costs usually follow the event.  While the opponent has been given an extension, they have failed to establish the relevance of the new citation and therefore have failed to justify the delay in finalising their evidence.  Consequently, I award costs against the opponent.

Karen Ayers
A/Deputy Commissioner of Patents

Patent attorneys for the applicant  :  Phillips Ormonde & Fitzpatrick

Patent attorneys for the opponent   :  Freehills, Carter Smith and Beadle