BHP Billiton Aluminium Australia Pty Ltd v Central Chemical Consulting Pty Ltd
[2013] APO 20
•27 February 2013
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
BHP Billiton Aluminium Australia Pty Ltd v Central Chemical Consulting Pty Ltd
[2013] APO 20
Patent Application: 2006225251
Title:Method and system for the measurement of chemical species in caustic aluminate solutions
Patent Applicant: Central Chemical Consulting Pty Ltd
Opponent: BHP Billiton Aluminium Pty Ltd
Delegate: Dr S.D.Barker
Decision Date: 27 February 2013
Hearing Date: 15 February 2013 in Canberra
Catchwords: PATENTS – extension of time to serve evidence in response to further evidence – nature of the evidence suggests it could be significant – extension allowed – no award of costs
Representation: Patent applicant: Mr Richard Baddeley, patent attorney of Watermark
Opponent:Mr Andrew Fox of counsel, assisted by Dr Marguerite Port, patent attorney of McCarthy Port
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2006225251
Title:Method and system for the measurement of chemical species in caustic aluminate solutions
Patent Applicant: Central Chemical Consulting Pty Ltd
Date of Decision: 27 February 2013
DECISION
Extension of time allowed.
No award of costs.
REASONS FOR DECISION
Central Chemical Consulting Pty Ltd (Central) filed patent application 2006225251 on 5 October 2006. BHP Billiton Aluminium Australia Pty Ltd (BHP) filed an opposition to the grant of a patent. The opposition has proceeded to the point where evidence in support, answer and reply have been completed, as well as a first round of further evidence. A second round of further evidence is underway, and the present matter concerns an extension of time for BHP to serve evidence in response to that further evidence.
Evidence in response was originally due by 28 December 2012. This was extended to 28 January 2013. BHP has applied to extend this period to 28 February 2013, and Central has formally objected. A hearing was conducted in Canberra on 15 February 2013. BHP was represented by Mr Andrew Fox of counsel, assisted by Dr Marguerite Port (both of whom appeared by telephone). Central was represented by Mr Richard Baddeley, who appeared in person.
The relevant law
Regulation 5.10(2) of the Patents Regulations 1991 gives the Commissioner the power to extend the time for taking a step prescribed in Chapter 5, and further evidence is a procedure prescribed in that Chapter. The Commissioner must not grant an extension unless satisfied that the parties have been notified of the application for extension (reg. 5.10(5)(b)), has given the parties a reasonable opportunity to be heard (reg. 5.10(5)(c)(i)), and is reasonably satisfied the extension is appropriate (reg. 5.10(5)(c)(ii)). In the present case the parties have been notified and have had an opportunity to be heard. The only remaining question is whether it is appropriate to extend the time.
The considerations relevant to this question have been considered several times by the Federal Court (Ferocem Pty Ltd v Commissioner of Patents [1994] FCA 981; 28 IPR 243, A Goninan & Co Ltd v Commissioner of Patents [1997] FCA 424; 38 IPR 213 and National Starch & Chemical Co v Commissioner of Patents [2001] FCA 33; 50 IPR 398). In summary, the power to extend time is discretionary, so it is necessary to give genuine and proper consideration to all relevant considerations. (Ferocem at 247-8, Goninan at 220). Relevant considerations include:
a)The reason why the evidence was not served earlier (Ferocem at 247)
b)The public interest in determining a serious opposition on its merits (Goninan at 222)
c)The interests of the parties (Ferocem at 247)
Explanation of delay
The application for extension of time lists the events that have happened, and the things that have prevented BHP being able to complete their evidence in time. Significantly, a declarant named Dr Grocott has been unavailable due to work commitments that required him to travel through a number of overseas countries. I am satisfied that there is an explanation of delay.
Public interest
When considering the public interest, it is necessary to form a view as to the nature and significance of the evidence that is being prepared (Goninan at 225-6). The evidence consists of two declarations by Dr Grocott and Mr Clark. At the hearing it became apparent that these declarations address matters that were raised in the further evidence of Power and Karakyriakis. Mr Fox explained that the evidence relates to a secret use issue, and also inventive step.
The complexity of this case means that it is difficult to form a simple view on whether the evidence in question will be significant. However, it seems clear that the evidence is directed to matters that are clearly in dispute, and it is of a type that is capable of being significant. I am satisfied the public interest favours the extension.
Interests of the parties
As is normal in such matters, the interests of the parties are opposed. Both parties expressed a desire to bring the evidence stages of the opposition to a speedy conclusion, but they had different views about how this should be achieved.
Central expressed a concern that there may be a further round of further evidence if the present evidence is admitted. While this is possible, the present extension needs to be considered according to the established principles, and any future application for further evidence will be considered on its merits.
Conclusion
Taking account of all information available to me, there is an explanation of the delay, and the nature of the evidence suggests that it could be significant. I am satisfied that it is appropriate to allow the extension of time.
Costs
While BHP has been successful in the extension, my decision relies upon information as to the nature of the evidence that was not included in the application for the extension of time. In this situation, it was reasonable for Central to raise an objection. Consequently it is not appropriate for costs to follow the event. I believe there should be no award of costs.
Dr S.D.Barker
Delegate of the Commissioner of Patents
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