BHP Billiton Aluminium Australia Pty Ltd v Central Chemical Consulting Pty Ltd

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

The case before the Australian Patent Office involves an application for an extension of time by BHP Billiton Aluminium Australia Pty Ltd to serve evidence in response to further evidence in opposition to a patent application by Central Chemical Consulting Pty Ltd. The patent application, 2006225251, relates to a method and system for the measurement of chemical species in caustic aluminate solutions. The opposition, filed by BHP, has progressed through several stages, including a first round of further evidence, with a second round ongoing at the time of the decision. The specific issue in this case was whether the time for BHP to serve its evidence in response to the second round of further evidence should be extended from 28 January 2013 to 28 February 2013.

The legal issues at hand involved the interpretation and application of the Patents Regulations 1991, specifically Regulation 5.10(2), which provides the Commissioner with the discretion to extend time for taking steps prescribed in Chapter 5, including the submission of further evidence. The court needed to determine whether the application for extension met the statutory criteria: notification of the application to the parties, an opportunity for the parties to be heard, and the appropriateness of the extension based on the relevant considerations. These considerations include the reason for the delay, the public interest in determining the opposition on its merits, and the interests of the parties.

The court found that BHP had provided a satisfactory explanation for the delay in serving its evidence, attributing it to the unavailability of a key declarant due to overseas travel. Regarding the public interest, the court considered the nature and potential significance of the evidence to be submitted, which involved a secret use issue and inventive step. The court concluded that the evidence was likely to be significant and that the public interest favoured granting the extension. The interests of the parties were in opposition, but the court found that the extension was warranted based on the evidence's potential significance and the explanation for the delay.

The final outcome was that the application for an extension of time was allowed, but no costs were awarded to either party. The court reasoned that it was reasonable for Central to object to the extension based on the lack of information about the nature of the evidence in the application, and therefore, it was appropriate not to award costs to BHP.

CaseChat Overview and Summary

Orders of the court

Background to the litigation

Evidence Before The Court

Reasons for decision

Legal Principle Established