In Opposition proceedings against IL 151450 and IL 120382, Dexel Ltd. Opposed patents filed by Wyeth.
Wyeth (represented by Richard Luthi and Partners) objected to Dexel (represented by Cynthia Webb and Partners) providing new substantive grounds for objection at a relatively late stage in the proceedings.
The arguments for allowing new material to be entered is that the important thing is whether there is novelty and inventive step over the prior art. Occasionally, relevant prior art only comes to light at a relatively late stage in the proceedings.
The argument for not allowing material to be submitted past the initial deadline for producing evidence is that delaying a patent issuing indefinitely is almost as good as having it cancelled, since until the opposition is disposed of, the patent cannot be enforced.
Additionally, it should be noted that a patent can be voided in the courts, or if invalid, competitors can infringe and void the patent when the patentee sues for infringement.
In a decision published on 1 September 2009, the arbitrator of patents decided to allow the new material to be entered for consideration, providing it didn’t have sufficient importance to tip the balance regarding the validity of the patent.
We find this ruling a little absurd. It means that the arbitrator will consider the new evidence and know of its existence and understand it’s relevance. After examination of it, if previously supplied evidence is insufficient to invalidate the party, will validate it even if the new evidence is novelty destroying, and would have convinced an Examiner not to have allowed the patent had he been aware of it!
Clearly the opposer will appeal to the court and win, so this decision merely wastes public resources, time and money.
First the disclaimer: My remarks should not be construed as an attempt to justify or support the decision as handed down. I am merely trying to pinpoint and understand the underlying logic.
Section 10 of the decision reads as follows (my apologies for any errors in translation):
“In light of the above, I reject the petition. Even so, since the plaintiff has repeatedly stated that the prior art that it wishes to add does not expand the scope of discussion, and in light of the circumstances in front of me, I hereby grant the request to allow the plaintiff to rely on prior art not included in the writ of complaint but appended to his statement, as long as this prior art is insufficient to materially affect the ruling in the case.”
Parsing through this paragraph, it’s hard to ignore that the fundamental ruling is given in the first sentence: The answer is NO.
It would appear to me (and in the interests of full disclosure I am not a lawyer) that the rest of the paragraph addresses a slightly different issue. According to the arbiter, the plaintiff had repeatedly stated that the additional prior art did not materially affect its case (so why file it???). My guess is that the arbiter decided to seize an opportunity to expand the ruling in order to forestall future appeal and underline a tacit admission of irrelevance by the plaintiff.
Although the fundamental answer to the plaintiff’s request is still NO, the arbiter has already begun a de facto appeal process by agreeing to allow the prior art to be submitted. However, by attaching the proviso that the prior art must be as essentially characterized by the plaintiff (for all intents and purposes,irrelevant), the arbiter has left very little to discuss in this particular case – without creating a whole lot of effective precedent for any future cases, where, presumably, only relevant prior art will be submitted for consideration.
Having said all that … I could be wrong. And in any case, it was worded pretty badly.