It is always interesting to observe the Patent Office interfering in proceedings where it has had lesser authority to do so before. This is what we observe in this decision1 which outlines the Office’s approach to dismissal of patent opposition proceedings.
According to Les Laboratoires Servier v Apotex Pty Ltd [2008] APO 11 (Servier), an applicant will be successful in dismissal of a ground of an opposition where he can persuade the Office that the opponent has ‘no reasonable prospect of success’ in relation to the relevant ground.
What was not clear from Servier is how the Office should weigh the factors relevantly cited in Servier as to whether dismissal is appropriate based on the ‘prospect of success’ principle. Among Servier’s relevant factors are:
- whether the opponent intends to rely on expert evidence in a later stage of proceedings, and
- whether the relevant ground has been properly particularised in the opponent’s Statement of Grounds and Particulars.
In this decision, Sepracor had requested for dismissal of Wyeth’s opposition, alleging that Wyeth’s Statement had not particularised certain grounds of opposition. Specifically, Sepracor alleged that Wyeth’s particularisation of lack of written description, fair basis and clarity of claims was insufficient or otherwise nothing more than legal argument. The Office agreed with Sepracor and dismissed Wyeth’s opposition to Sepracor’s application insofar as the opposition alleged invalidity on these grounds.
What is perhaps surprising is the opposite outcome the Office reached on the novelty, obviousness, and utility grounds. Here the Office formed the view that these grounds would ultimately have to be established by expert evidence, and so opposition on these grounds was not dismissed, even though the Office was satisfied that these grounds had not been particularised. It is as if written description—related grounds do not require expert evidence—(ie testimony from the skilled worker as to his view of what is taught by the relevant specification) to establish invalidity.
From one perspective, the balance seems to be that in weighing the ‘expert evidence’ and ‘particularisation’ factors, the Office may be more likely to give weight to the former where prior art grounds are under consideration (thereby permitting opposition on these grounds) and more likely to give weight to the latter where the relevant ground is written description – related (thereby dismissing opposition on these grounds).
Summing up, for opponents, this case illustrates the importance of providing proper particulars for every ground that is intended to be relied upon in opposition proceedings. For applicants, particularisation of each of the opponent’s grounds should be carefully assessed in formulating strategy for defending against opposition.
This article was written by Milena Kasprzyk, Patent Scientist and Tom Gumley, Partner, Freehills Patent & Trade Mark Attorneys.
Endnotes
1. Wyeth v Sepracor, Inc. [2010] APO 5 (29 April 2010)
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