BHP Billiton Worsley Alumina Pty Ltd v Alcoa Australia Limited
[2012] APO 22
•16 February 2012
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
BHP Billiton Worsley Alumina Pty Ltd v Alcoa Australia Limited [2012] APO 22
Patent Application: 2004224944
Title:Method For Causticisation of Alkaline Solutions
Patent Applicant: Alcoa Australia Limited
Opponent: BHP Billiton Worsley Alumina Pty Ltd
Delegate: Xavier Gisz
Decision Date: 16 February 2012
Hearing Date: Written submissions filed on 20 January 2012 and 27 January 2012
Catchwords: PATENTS - request under subregulation 5.10(2) – request for extension of time to serve evidence-in-reply – satisfactory explanation of delay – public interest is neither in favour nor against granting the extension – interests of parties are offsetting – time for service of documents provided in regulation 22.10AC – extension of time is granted
Representation: Patent applicant: Wrays Patent and Trade Mark Attorneys, Perth
Opponent:McCarthy Port Patent and Trade Mark Attorneys, Perth
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2004224944
Title:Method For Causticisation of Alkaline Solutions
Patent Applicant: Alcoa Australia Limited
Date of Decision: 16 February 2012
DECISION
I grant the extension of time to serve evidence-in-reply in respect of the patent application until 28 March 2012.
I award costs against the Applicant, Alcoa Australia Limited.
REASONS FOR DECISION
Background
Patent application 2004224944 in the name of Alcoa Australia Limited (the Applicant) was advertised accepted on 31 July 2008. An opposition to the grant of a patent was filed by BHP Billiton Worsley Alumina Pty Ltd (the Opponent) on 30 October 2008. The Opponent completed their evidence-in-support of the opposition on 2 February 2010. The Applicant completed their evidence-in-answer on 31 March 2011. The Opponent has been granted two extensions of time (up to the 28 December 2011) to serve their evidence-in-reply. On 23 December 2011 a third extension of time to serve their evidence-in-reply was requested by the Opponent. On 4 January 2012 the Applicant opposed this extension of time.
On 6 January 2012 the Delegate informed the parties that a decision would be made on the basis of written submissions and allowed the parties 14 days to provide written submissions, and a further 7 days to provide written submissions in response.
The relevant law
The subregulations of regulation 5.10 dealing with extensions of time to serve evidence state:
(2)The Commissioner may extend the time … :
(a) on the application of a party in the approved form; and
(b) on such reasonable terms (if any) as the Commissioner specifies; and
(c) after the party has served a copy of the application on the other party.
(5)The Commissioner must not … grant an application under subregulation (2) … unless the Commissioner:
(a)if he or she proposes to grant an application by a party -- is reasonably satisfied that the other party has been notified of the application; and
(b)if he or she proposes to act on his or her own motion -- ensures that the parties are notified of the proposed action; and
(c) in either case:
(i)gives the parties a reasonable opportunity to make representations concerning the application or proposed action; and
(ii)is reasonably satisfied that a direction, an extension of time or the serving of further evidence is appropriate in all the circumstances.
The considerations for deciding whether to grant an extension of time under regulation 5.10 have been investigated in the Federal Court in Ferocem Pty Limited v Commissioner of Patents (1994) 28 IPR 243, A Goninan and Co Ltd v Commissioner of Patents (1997) 38 IPR 213, and National Starch & Chemical Company v Commissioner of Patents (2001) 50 IPR 398. The relevant considerations arising from these decisions have been set out and followed in numerous Patent Office decisions relating to regulation 5.10, and may be summarised as follows:
(a) The broad discretion afforded by regulation 5.10 cannot be reduced to insistence on imperative compliance with particular requirements;
(b) The reasons why the evidence was not served earlier is a relevant consideration, but a satisfactory explanation is not a mandatory requirement;
(c) The public interest in determining a serious opposition on its merits is a relevant consideration and must be balanced with the requirement that matters before the Patent Office should be dealt with in an efficient, orderly manner and not be unduly prolonged;
(d) The public interest is assessed by forming a view as to the nature of the evidence sought to be adduced, and the significance of that evidence for the opposition proceedings. The nature and significance of the evidence is assessed having regard to any relevant material available, not just the evidence already on file;
(e) The interests of the opponent, the applicant and any other parties are a relevant consideration.
The application for an extension of time
The application for extension of time provides the following circumstances and grounds upon which it is made:
“ –Progress has been made in the preparation of evidence in support by way of preparation and service of evidence-in-reply since the previous application for an extension of time.
– To progress the matter forward as expeditiously as possible, the attorney for the applicant conducted a series of face to face meetings with Dr Armstrong in Brisbane between 1 December and 5 December 2011 culminating in the preparation and execution of the Second Armstrong Declaration on 5 December 2011. The Second Armstrong Declaration addressed issues by way of evidence-in-reply related to claim construction, the expertise of the witnesses on both side, and views regarding the Opposed Application in isolation. A copy of the Second Armstrong Declaration was sent to the attorneys for the Applicant by express post on 20 December 2011.
– A third declaration setting out Dr Armstrong's views by way of evidence‑in‑reply regarding the relevance of the cited prior art is being prepared for review by Dr Armstrong upon his return to Australia in late January 2012.
– Additional time is required to allow the applicant to settle the third declaration with Dr Armstrong.
– It is anticipated that no further extension of time will be required.
– The applicant's interests would be heavily adversely affected if it is not allowed to present its full evidence in support.”
Explanation of the delay
The Opponent’s submissions
The reasons for the delay given in the Opponent’s submissions are as follows:
“The Opponent has been progressing with preparing its evidence-in-reply as set out above. However, progress has been slower than anticipated because of:
oThe change of representation of the Opponent from Griffith Hack to McCarthy Port
oThe interruption to the availability of the declarant (Dr Armstrong) caused by the death of his father in mid-August 2011
oThe interruption to the availability of Dr Armstrong who was required to move to live at his late father's remote cattle station to discharge his legal obligation to wind up his late father's estate.
oLate notification of the unavailability of the declarant Dr Armstrong for five weeks on annual leave over the Christmas/New Year period to visit his daughter for the first time since the death of Dr Armstrong's father.
oThe extent of evidence being prepared.
The death of Dr Armstrong's father and his appointment as co-executor of his father's estate are outside the control of the Opponent. These circumstances clearly extended the time required to prepare evidence, in particular given the primacy of Dr Armstrong's evidence. Similarly, the late notification of Dr Armstrong taking five weeks' leave is not a matter directly under the control of the Opponent and has compounded the delay.
The Evidence in Answer was substantial and the issues are complex.”
The Applicant’s submissions
The Applicant summarises the Opponent’s reasons for the delay in their submissions as follows:
“The factors relied upon by [the Opponent] in support of the Opposed Extension Application may be summarised as follows:
a. Change of representation of the Opponent;
b. The death of Dr Armstrong's father and subsequent interruption to his availability;
c. Annual leave by Dr Armstrong; and
d. The extent of the evidence being prepared.
These factors fail to adequately explain the extensive delay in the preparation of [the Opponent]'s Evidence in Reply.”
Change of representation
The present application for an extension of time should explain why the evidence-in-reply was not completed in the period of 28 September 2011 to 28 December 2011. The patent attorney responsible for this opposition was transferred from Griffith Hack to McCarthy Port on 7 June 2011. Although it is possible that there were some residual issues in the transfer which caused delay within the period of 28 September 20 to 28 December 2011, this has not been stated in the application for extension of time nor the submissions. Therefore I am not satisfied that the change of representation is an explanation for the delay.
The death of Dr Armstrong’s father
Dr Armstrong’s father died in mid-August 2011. The Opponent’s submissions state:
“Dr Armstrong … was required to move to live at his late father's remote cattle station to discharge his legal obligation to wind up his late father's estate.”
10. The Opponent’s previous extension of time application stated:
“Dr Armstrong has indicated that he expects to be in a position to resume his role as expert witness in mid to late October.”
11. The Applicant’s submission state:
“[The Opponent] provides no explanation as to how each of these activities impacted [the Opponent]'s ability to prepare its Evidence in Reply. [The Opponent] provides no explanation why Dr Armstrong was not able to at the very least review and comment on the Evidence in Answer during this time.”
Although the application for extension of time does not explicitly describe how the events impacted on the Opponent’s preparation of the evidence-in-reply, in my opinion it is inherent that such circumstances would cause a delay the preparation of such evidence. I accept that Dr Armstrong was unavailable to resume his role in providing expert opinion until late October, thus causing at least a month’s delay within the period of 28 September 2011 to 28 December 2011.
Annual leave by Dr Armstrong
13. The Opponent states in their submissions:
“Late notification of the unavailability of the declarant Dr Armstrong for five weeks on annual leave over the Christmas/New Year period to visit his daughter for the first time since the death of Dr Armstrong's father.”
14. This indicates that Dr Armstrong was unavailable for about the last week of the period in which the evidence-in-reply should have been served. Furthermore, the Opponent was only given ‘late notification’ of the holiday. I accept that the late notification of Dr Armstrong’s holiday was substantially beyond the control of the Opponent and caused a delay of approximately one week in the preparation of evidence.
The extent of the evidence being prepared
15. The Opponent states in their submissions:
“The Evidence in Answer was substantial and the issues are complex.”
16. The amount of evidence-in-answer is large; it comprises a statutory declaration of 165 pages plus an annex containing a novelty table. However, the amount of evidence-in-answer is not unusual compared with typical oppositions. Consequently I do not accept that this has contributed to the delay.
Summary of the explanation of delay
In summary, the change of representation and the extent of the evidence do not contribute to an adequate explanation the delay in preparing the evidence-in-reply. However, the death of Dr Armstrong’s father, and to a lesser extent the late notification of the holiday taken by Dr Armstrong over the Christmas and New Year period, do adequately explain the delay in the preparation of evidence.
The public interest
Nature and significance of the evidence
18. In Goninan (supra) Sackville J stated:
“In order for the Commissioner or his delegate to give proper, genuine and realistic consideration to the aspect of the public interest I have identified, it is necessary to consider the nature of the evidence the opponent seeks to adduce and the significance of that evidence for the opposition proceedings.”
The Opponent has already provided evidence-in-reply in part, by way of a statutory declaration by Dr Armstrong and accompanying exhibits. The remainder of the evidence‑in‑reply the Opponent intends to produce is an expert opinion by Dr Armstrong relating to the novelty and inventiveness of the claimed invention.
20. The Opponent notes in their submissions that the remainder of the evidence is significant for the following reasons:
“The remaining evidence expected to be filed in the near future relates to the key substantive issues of novelty and inventive step. The Opponent asserts that the remaining evidence is particularly significant in that without it, there would be no or little evidence-in-reply pertaining to these grounds. The Opponent further asserts that there is a serious opposition in train and the public interest favours the grant of an extension of time.”
21. The nature of the evidence is a declaration by Dr Armstrong which pertains to the novelty and inventive step of the claimed invention. However, there is an absence of specific information on which to base a conclusion as to the significance of the evidence. Whether, and to what extent, another declaration by Dr Armstrong (who has already provided a declaration on novelty and inventive step in the evidence‑in‑support) will be significant in the opposition is unknown. Consequently, I consider that the public interest lies neither in favour nor against extending the time in this regard.
Expeditious disposal of the opposition
22. The public interest is also in the expeditious disposal of the opposition. In Ferocem (supra) Burchett J. states:
“The determination of an application for an extension of time under reg 5.10(2) is a balancing exercise between the interests of the persons directly concerned in the application and opposition in question and public interests including the expeditious disposal of matters in the Patents Office, questions of cost and efficiency, the maintenance of proper professional standards by those who deal with the Patents Office and the public interest in having a serious opposition dealt with on the merits rather than shut out in consequence of a failure in procedure.” [emphasis added]
23. The Applicant argues in their submissions:
“Magimix v Breville [Magimix SAS v Breville Pty Ltd [2010] APO 32] held that the public interest will not be served in granting an extension of time where a party has not shown a genuine attempt to prepare and serve evidence.
Although Worsley has filed and served one declaration from Dr Armstrong, the length of time taken by Worsley to file and serve this declaration demonstrates that it has not made a genuine attempt to prepare its evidence.”
24. If a party has not made a genuine attempt at preparing evidence (as was the case in the Magimix v Breville opposition) there is a real possibility that the evidence will not ultimately be produced at all. This may potentially cause undue delay in the opposition and is thus a factor to be considered when determining whether the matter is being dealt with expeditiously.
25. The Opponent states in their application for an extension of time (made on 23 December 2011):
“ –A third declaration setting out Dr Armstrong's views by way of evidence‑in‑reply regarding the relevance of the cited prior art is being prepared for review by Dr Armstrong upon his return to Australia in late January 2012.
– Additional time is required to allow the applicant to settle the third declaration with Dr Armstrong.”
26. In this case, the evidence has already been partially prepared. Furthermore, I consider the Opponent to be making a genuine attempt to complete the preparation of the evidence. Consequently, I find that the Opponent has not caused undue delay in the preparation of evidence in this regard.
27. The evidence-in-reply was originally due to be served on 28 June 2011. On one hand, allowing this extension would mean the delays in serving evidence-in-reply totalling nine months would have occurred – a significant length of time by most standards. On the other hand, the opposition has been running for more than three years (since 30 October 2008) and a further delay of three months due to the presently considered extension of time amounts to a relatively small fraction of the total opposition running time. I consider that these two conflicting perspectives offsetting and thus the public interest is neither in favour nor against allowing the extension in this regard.
The interests of the Opponent and the Applicant
28. It is clearly in the interests of the Opponent that they be granted time to serve evidence‑in‑reply. It is in the interests of the Applicant to have the validity of their patent determined expeditiously. I consider that the interests of the Opponent and Applicant lie in opposing directions. The interests of the parties are offsetting.
Balance of considerations
29. I have found that the Opponent has provided a satisfactory explanation of delay in preparing and serving the evidence-in-reply. In considering the public interest in granting the extension, I have found that both the considerations of the nature and significance of the evidence and expeditious disposal of the matter are equally balanced. I have found the interests of the Opponent and Applicant are offsetting. Overall, the satisfactory explanation of the delay tips the balance slightly, but sufficiently, in favour of granting the extension.
The period of extension
The application for an extension of time was made for a period of three months beginning on 2 January 2012. However the application should have been made from 28 December 2011 as this was the date on which the evidence-in-reply was due.
31. The Opponent appears to be under the misunderstanding that since the Patent Office (IP Australia) was not open for business on 28 December 2011, an extension only needs to be made from the time the Office is again open for business. Section 222A says that if the last day for doing an act falls on a day that the Patent Office is not open for business, then the act can be done on the next day that the Office is open for business. This section does not apply to the present case because:
section 222A does not apply to the service of evidence (regulation 22.10AC and section 222A(7)); and
the service of evidence-in-reply is not done at the Patent Office, but is “on the applicant” (regulation 22.10AA and regulation 5.8(4)).
32. The evidence was due on 28 December 2011 and an extension of time is needed from this date.
33. If the due date had been either a Saturday, Sunday or a public holiday in the place where the evidence-in-reply was to be served, then the evidence could have been validly served on the next working day (due to section 36 of the Acts Interpretation Act). However, this would only apply if the evidence was served on that day, and cannot form the basis of recalculating the starting date for an extension of time.
34. An extension of three months has been requested. The Opponent’s reasons for the three month extension is as follows:
“Without the extension the Opponent will not have served all of its evidence‑in‑reply. If a shortened extension of two months is granted, the Opponent will not have served any expert declarations by way of evidence in reply relating to the substantive issues of novelty and inventive step in light of the prior art documents, and would be severely hindered in their prosecution of the opposition.”
35. The amount of work remaining to serve the evidence can be estimated from the application for an extension of time which states:
“A third declaration setting out Dr Armstrong's views by way of evidence-in-reply regarding the relevance of the cited prior art is being prepared for review by Dr Armstrong upon his return to Australia in late January 2012.”
From this statement I understand that the third declaration will be ready for Dr Armstrong’s review upon his return from holiday. If Dr Armstrong needs to make only minor corrections to the third declaration, I would expect the evidence-in-reply could be served several weeks before the end of the extension period of 28 March 2012 and urge to Opponent to do so if this is the case. However, I acknowledge that Dr Armstrong may need to make substantial changes to the declaration in which case an early service of evidence may not be possible. Consequently it is appropriate that I grant the three months extension of time requested.
Conclusion
37. I have found that the discretion should be exercised in favour of granting the extension of time. I grant the extension of time until 28 March 2012 to serve evidence-in-reply.
Costs
38. Costs normally follow the event. On this occasion, I see no reason to depart from this approach. I award costs against the Applicant, Alcoa Australia Limited, according to Schedule 8 of the Patents Regulations 1991.
Xavier Gisz
Delegate of the Commissioner of Patents
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