BASF SE v The Lubrizol Corporation - [2017] APO 10

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
BASF SE v The Lubrizol Corporation [2017] APO 10

Patent Application: 2010248022

Title:Quaternary ammonium amide and/or ester salts

Patent Applicant:  The Lubrizol Corporation
Opponent:  BASF SE
Delegate:  Dr S.D. Barker
Decision Date:  27 February 2017
Hearing Date:  Written submissions filed on 16 January 2017 and 24 January 2017

Catchwords: PATENTS – extension of time to file evidence in support – regulation 5.9 – whether opponent has acted promptly and diligently – whether opponent has made all reasonable efforts to meet filing requirements – extension of time granted.

Representation: Patent attorney for the applicant: Houlihan²
Patent attorney for the opponent: 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: 27 February 2017
DECISION
The opponent has met the requirements of paragraph 5.9(2)(a) of the Patent Regulations. I grant an extension of the time for filing evidence in support until 31 January 2017.
For the purposes of subregulation 5.8(2), this decision represents notice that all of the evidence in support has been filed. The time for filing evidence in answer is 3 months from the date of this decision.
I award costs according to Schedule 8 against The Lubrizol Corporation.
REASONS FOR DECISION
Background

This matter relates to patent application 2010248022, in the name of The Lubrizol Corporation (Lubrizol), which was advertised as accepted on 10 March 2016. A notice of opposition to the grant of the patent was filed by BASF SE (BASF) on 10 June 2016. The statement of grounds and particulars was filed on 9 September 2016. BASF was directed to provide further and better particulars on 25 October 2016, and an amended statement of grounds and particulars was duly filed on 8 November 2016. Evidence in support was due to be completed by 9 December 2016. Part evidence in support was filed on 2 December 2016 and 9 December 2016.
BASF filed an application for an extension of time of three months to file evidence in support (the application) on 8 December 2016. Lubrizol requested to be heard on 12 December 2016 and a delegate of the Commissioner of Patents requested further information on the application on 14 December 2016, indicating that Lubrizol’s request to be heard would be held pending the delegate’s decision on the extension. BASF responded with the requested further information (the further information) on 21 December 2016, and on 3 January the delegate indicated that he intended to grant BASF an extension of two months to file evidence in support, and provided a timeline for hearing Lubrizol’s objection to the extension of time by means of written submissions. Written submissions were filed by Lubrizol on 16 January 2017 and by BASF on 24 January 2017.
The law
On 15 April 2013 the Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (No 1) (the Amendment Regulation) commenced. The Amendment Regulation significantly amended the Patents…

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: [2017] APO 10
Decision Date: 27 February 2017

CaseChat Overview and Summary

BASF SE v The Lubrizol Corporation [2017] APO 10 involved a patent opposition over a patent application 2010248022 for quaternary ammonium amide and/or ester salts filed by The Lubrizol Corporation (Lubrizol) and opposed by BASF SE (BASF). The dispute was heard by Dr S.D. Barker, a delegate of the Commissioner of Patents. The primary legal issue the court needed to resolve was whether BASF had acted promptly and diligently in filing evidence in support of their opposition and if there were exceptional circumstances warranting an extension of time. The opposition was filed on 10 June 2016, and the evidentiary period was due to end on 9 December 2016. BASF filed for an extension of time on 8 December 2016, seeking a three-month extension.

The court found that BASF had made all reasonable efforts to comply with the filing requirements and had acted promptly and diligently despite delays. The court noted that BASF had difficulty identifying suitable experts and had to replace an expert who withdrew from the opposition. BASF’s approach to engaging experts and preparing evidence was considered reasonable and in line with the complexity of the case. The court granted BASF a two-month extension to file their evidence in support, concluding that BASF had met the criteria for an extension under regulation 5.9(2)(a) of the Patents Regulations 1991. The court also awarded costs according to Schedule 8 against Lubrizol.

Orders