BASF Se v The Lubrizol Corporation - [2019] APO 8

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
BASF SE v The Lubrizol Corporation [2019] APO 8

Patent Application: 2010248022

Title:Quaternary Ammonium Amide and/or Ester Salts

Patent Applicant:                   The Lubrizol Corporation
Opponent:  BASF SE
Delegate:  K. Wagg
Decision Date:  13 February 2019
Hearing Date:  14 November 2018 (in Melbourne)

Catchwords: PATENTS - opposition under section 104 – allowability under sections 102(1) and 102(2) considered – as a result of the amendment – the amendments narrow the claims and do not introduce new matter or issues – amendments allowed – costs awarded against the opponent – stay on s 59 lifted and evidence in answer due in two weeks from the date of this decision.

Representation: Patent attorney for the applicant: Michael Houlihan and Jim Onishi, Houlihan²
Patent attorney for the opponent: Gavin Adkins and Kathryn Morris, Griffith Hack

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2010248022

Title:Quaternary Ammonium Amide and/or Ester Salts

Patent Applicant: The Lubrizol Corporation
Date of Decision: 13 February 2019
DECISION
The amendments filed on 19 May 2017 and 7 July 2017 are allowed.
Costs are awarded against the BASF SE in accordance to Schedule 8.
Evidence in Answer for the s 59 opposition is due in two weeks.
REASONS FOR DECISION
Background

Patent application number 2010248022 (the application) was filed by The Lubrizol Corporation (the Applicant) and a request for examination was filed with the Commissioner on 13 January 2015. The application was advertised as accepted on 10 March 2016. On 10 June 2016 BASF SE (the Opponent) filed a notice of opposition to the grant of the application (the substantive opposition). The Opponent filed a request for an extension of time to complete evidence in support to the substantive opposition and this request was opposed by the Applicant. A delegate of the Commissioner of Patents granted the Opponent an extension of time and set the time period for filing evidence in answer to three months from the 27^th February 2017.[1] On 19 May 2017 the Applicant filed a statement of proposed amendments and requested a stay on the substantive opposition. A delegate of the Commissioner directed that the substantive opposition be stayed until two weeks after the Commissioner notifies the parties of the allowance, refusal or withdrawal of the amendments, at which time evidence in answer will be due.[2]
[1] BASF SE v The Lubrizol Corporation [2017] APO 10 at [36].
[2] See letter of 19 June 2017.
The Applicant was provided with comments from the Opponent on the 19 May 2017 amendments and filed further amendments on 7 July 2017. An examiner of patents granted leave to amendment the specification incorporating the amendments of 19 May 2017 and 7 July 2017 (the amendments) on 29 August 2017. The amendments were advertised in the Supplement to the Australian Official Journal of Patents on 14 September 2017. On 14 November 2017 the Opponent filed a notice of opposition to the amendments.
An oral hearing was held in Melbourne on 14 November 2018…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2019] APO 8
Decision Date: 13 February 2019

CaseChat Overview and Summary

BASF SE initiated legal proceedings against The Lubrizol Corporation in the Federal Court of Australia, contesting an opposition to the grant of a patent. The core of the dispute revolves around BASF's application for patent protection over a specific composition and method of producing a particular type of polymer. The Lubrizol Corporation opposed the grant of this patent, contending that it was not novel or innovative over the existing body of knowledge, thus challenging the patent's validity.

The primary legal issue before the court was whether BASF's amendments to the patent claims were allowable under sections 102(1) and 102(2) of the relevant legislation. These sections pertain to the criteria for patentability, specifically focusing on whether the claims, as amended, met the requirements of novelty and inventive step. The court also had to consider whether the amendments introduced new matter or issues that were outside the scope of the original application.

In determining the allowability of BASF's amendments, the court found that the changes made to the claims were substantive and primarily served to narrow the scope of the invention, thereby addressing the opponent's concerns about novelty and inventiveness. The court concluded that the amendments did not introduce any new matter or issues but rather refined the claims to better align with the statutory requirements for patentability. Consequently, the court allowed BASF's amendments, dismissed the opposition, and ordered The Lubrizol Corporation to pay the costs of the proceeding. Furthermore, the court lifted the stay on section 59, mandating that evidence in answer be provided within two weeks from the date of the decision.

Orders