Amending a Statement of Case

FinchimicaIsrael Patent Application Number IL 221005 titled “METHOD FOR THE SYNTHESIS OF 5- AMINO-1-PHENYL- 3-CYANO-4- TRIFLUOROMETHYL SULFINYL PYRAZOLE ” to Finchimica S.P.A. was allowed and published for opposition purposes and was opposed by Adama Machteshim ltd, which is Israel’s largest agrochemical manufacturer.

AdamaOn 18 March 2018 the Opposer Adama applied to amend the Statement of Case. The requested amendment was to include an allegation that the results of the claimed synthesis are unreliable and do not support the professed advantage. The purpose of the amendment is to return to the file wrapper parts of Dr Gravnick’s opinion and his affidavit and appendices thereof after these were struck from the record in a decision of 14 February 2019 since they raised issues not stated in the Statement of Case.

truth.jpgThe arguments brought in support of the request are that the additional allegation is required to clarify the real disagreement between the parties and to uncover the truth; that addition of the new grounds will only slightly extend the proceedings, and any resultant damage to the Applicant can be compensated for by awarding costs. The Opposer adds that general approach regarding amendments to the Statement of Case is the liberal approach, and the consideration of the integrity of the patent register requires allowing the amendment. The Opposer further suggested a procedural arrangement that limits the extension to the proceeding to a mere two months.

2nd amendmentBefore relating to the request, the Commissioner reviewed the main developments until now. The Opposition was submitted on 30 October 2014 and the Statement of Case was filed on 8 March 2015 together with a request to cancel the allowance of the patent. The request to cancel the allowance was dismissed, and the counter-statement of claims of the Applicant was submitted on 20 September 2015. The Opposer’s evidence was submitted on 20 July 2017. On 29 June 2017 the Applicant requested to amend the specification and the Opposer objected, but the amendment was allowed following an interim hearing on 16 January 2018. The Amended Statement of Claims was submitted on 15 March 2018, and on 26 April 2018 the Applicant’s amended counter-statement of claims was submitted.  On 21 May 2018 the Opposer submitted a request to reach a preliminary understanding of the claims and this was rejected on 13 August 2018. On 9 December 2018 the Opposer’s amended evidence was submitted. The Applicant requested that parts of the evidence be struck from the record on 14 February 2019. On 7 March 2019, the current requestbefore the commissioner was submitted, which asks to  further amend the Statement of Case, after this was already amended once following amendments to the specification.

Contrary to the Claim of the Opposer, not all amendments requested to clarify the real argument between the parties and which can be compensated for by an award of costs are allowable. There are other relevant considerations, such as the behavior of the party requesting the amendment, the stage of the proceeding reached and whether allowing the amendment will complicate the issue, see Ori Goren – Civil Procedural Issues volume 12, page 324). On that page, Goren goes on to state:

 Although the regulation allows amendments to be made at “all stages”, it has been ruled that not at every stage and in every circumstances will amendments to the Statement of Claims be allowed, and one has to contemplate various considerations of “fair play” – equitable behavior, and tardiness by the party requesting the amendment, and also the potential damage to the defense of the opposing party, and communal-institutional considerations including the aspiration to use judicial resources effectively. These considerations support the conclusion that one has to carefully consider the timing of the submission with respect to the proceedings as a whole.  That means to say that the further on in the proceeding that the request to make an amendment is submitted, the more likely it will be rejected, but that the court has wide discretion within the framework of common sense and healthy logic to the specific case.

In the Commissioner’s decision to delete the evidence that the Opposer now wishes to reintroduce by amending the Statement of Case, it was noted that the advantages of the invention over the deficiencies of the prior art are described at length in the Application and examples are given in paragraphs 23-25 of the request that state:

  1. This is different with respect to chapter 11 of Dr Gravnick’s opinion, affidavit and its appendices. The allegation that the examples of the patent are unreliable is a substantive new claim that lies beyond the previously alleged disagreement. This allegation should have been submitted in the amended Statement of Case, and the Opposer has not provided any justification for not having done so.
  2. The justification submitted for allowing this allegation to be raised was that it is required to reach the truth. This cannot be allowed in the current circumstances. The civil procedures define the different stages of the process and in general one should follow the civil procedures, since these also help ascertain the truth and do justice. The opposition before the Commissoner was opened in October 2014. It has been going on for four and half years, and is still not ready for a hearing. The delays are the result of the behavior of both parties: requests for extensions, various interim requests from the Opposer and requests to amend the specification from the Applicant, which preferably should have been submitted earlier.
  3. In these circumstances, the Commissioner does not see fit to allow the procedural time-table which has already been stepped on, to be destroyed by allowing substantive arguments not in the statement of claim.

rejectedThese considerations also require the present request to be rejected. The case before the Commissioner requires an amendment to the statement of case based on the allegation that the experimental results reported in the Applicant itself were unreliable, after the statement-of-case was already amended once, and without a reasonable explanation as to why this was not requested previously. This is precisely the situation where allowing the amendment would not lead to justice but to anarchy, damage to the civil–establishmental requirement of using judicial resources wisely, and of concluding the proceedings in a reasonable time frame.

DELAYSThe Commissioner notes that he is not the slightest bit convinced that the requested amendment would only result in a two month delay, as the Opposer alleges. He considers it more likely that allowing the Statement-of-Case to be amended will lead to further interim proceedings, would complicate matters and delay the hearing.

However, even if the Opposer is right and the hearing would not be delayed for long by the amendment, the Commissioner still thinks that allowing it at this stage would be a breach in the civil procedures that should not be allowed in the present circumstances.

Since the Opposer’s request is refused without turning to the Applicant for his comments, no costs are awarded.

Re IL 221005, Interim ruling by Ophir Alon on amending the Statement of Case, 28 March 2019.   

COMMENT

At a meeting prior to Commissioner Alon taking over as Commissioner, he announced that he felt that there was room for greater efficiency in the Israel Patent Office in general, and in patent opposition proceedings in particular. We not that in the previously posted article regarding Nemiroff trademarks the commissioner veered from standard procedure to avoid a pointless competing marks proceeding. Here he is following procedure. It is not a question of formalism or non-formalistic interpretation of the law. Like Judge Binyamini, Commissioner Ophir seems to be concerned with efficiency and moving cases quickly. I see this as generally a good thing.



Categories: bad faith, costs, inequitable behaviour, Intellectual Property, interim decision, Israel IP, Israel Patent Office Rulings, החלטת ביניים, החלטת רשות הפטנטים, התנגדות, פטנט, פטנטים, קניין רוחני, קנין רוחני

Leave a Reply

Fill in your details below or click an icon to log in:

WordPress.com Logo

You are commenting using your WordPress.com account. Log Out /  Change )

Google photo

You are commenting using your Google account. Log Out /  Change )

Twitter picture

You are commenting using your Twitter account. Log Out /  Change )

Facebook photo

You are commenting using your Facebook account. Log Out /  Change )

Connecting to %s

%d bloggers like this: