BHP Billiton Worsley Alumina Pty Ltd v Alcoa of Australia Limited - [2012] APO 60

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
BHP Billiton Worsley Alumina Pty Ltd v Alcoa of Australia Limited [2012] APO 60

Patent Application: 2004224944

Title:Method For Causticisation of Alkaline Solutions

Patent Applicant:  Alcoa of Australia Limited
Opponent:  BHP Billiton Worsley Alumina Pty Ltd
Delegate:  Dr S.D.Barker
Decision Date:  13 June 2012
Hearing Date:  Written submissions filed on 26 April 2012
Catchwords:  PATENTS – extension of time to serve evidence – evidence has been served – explanation of delay provided – evidence relates to matters in dispute regarding inventive step – extension granted

Representation: Patent applicant: Wrays
Opponent:McCarthy Port

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2004224944

Title:Method For Causticisation of Alkaline Solutions

Patent Applicant: Alcoa of Australia Limited
Date of Decision: 13 June 2012
DECISION
Extension of time granted.
I award costs according to Schedule 8 against the applicant, Alcoa of Australia Limited.
REASONS FOR DECISION

Alcoa of Australia Limited is the applicant for patent application 2004224944. BHP Billiton Worsley Alumina Pty Ltd has opposed the grant of a patent. The present matter relates to an application for an extension of time to serve evidence in reply from 28 March 2012 to 28 June 2012. Written submissions in relation to the extension were filed by both parties on 26 April 2012. These submissions form the basis of this decision.
Evidence in reply was completed on 24 April 2012.
The relevant law
Extensions of time are governed by regulation 5.10:
(2)The Commissioner may extend the time within which the party may take a step … :
(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 discussed by the Federal Court in Ferocem Pty Limited v Commissioner of Patents [1994] FCA 981, (1994) 28 IPR 243, A Goninan and Co Ltd v Commissioner of Patents [1997] FCA 424, (1997) 38 IPR 213, and National Starch & Chemical Company v Commissioner of Patents [2001] FCA 33, (2001) 50 IPR 398. The relevant considerations arising from these decisions 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 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 applicant submitted that it is a requirement that there be a full and frank disclosure of the reasons and circumstances for the delay. The applicant quoted from the Ferocem case in support of this proposition, but the quote in question comes from the decision of the delegate of the Commissioner – and represents a view that the Court rejected. There is no requirement for a full and frank disclosure, although such a disclosure is clearly helpful.
It is clear that an extension of time is a discretion, and a party seeking an extension needs to place before the Commissioner sufficient information to allow the Commissioner to exercise the discretion. In line with the decision in Ferocem, if I find that an extension of time is not justified it is appropriate to consider a short extension for the opponent to serve any evidence immediately to hand. In the present case, that suggests that an extension to validate the evidence already on file should be considered even if the extension is not justified. In these circumstances the objection seems to be futile, and to have no useful purpose. Consequently, I will only briefly deal with the merits of the matter.
Explanation of delay
The application for an extension of time is lengthy, and provides a detailed explanation of the delay. In summary, Dr Armstrong has been preparing his third declaration, and provided edits on 11 March 2012. A final version was sent to Dr Armstrong by email on 24 March 2012. The declaration is 248 pages long, and Dr Armstrong is not set up to scan or fax lengthy documents from his father’s remote cattle property. Dr Armstrong travelled to Gladstone for his declaration to be witnessed on 25 March 2012, and sent by express post on 26 March 2012. Additional time was needed to receive the declaration, make copies and serve and file them. This declaration was served on 30 March 2012.
A fourth declaration by Dr Armstrong was being prepared to address views on inventive step expressed by Dr Power. I am unsure why this information was not included in the third declaration. In the submissions the opponent said that the death of Dr Armstrong’s father and his appointment as co-executor of his father’s estate continued to limit his availability to act as an expert witness. Further, the heavy rains in Queensland during February 2012 caused challenges relating to running his late father’s property. Overall, I consider that I have been given a very full explanation of the delay.
Nature and significance of the evidence
The evidence is a final declaration by Dr Armstrong. This declaration has now been served, so its nature is apparent. The declaration states that it responds to certain views of Dr Power in an earlier declaration. The issues addressed are broadly relevant to the ground of lack of inventive step. It is apparent that the final declaration of Dr Armstrong relates to a matters that are in dispute relating to inventive step. Prima facie the significance of this evidence supports the extension of time.
Interests of the parties
It is a normal finding in extension of time matters that the interests of the parties lie in opposite directions. This is true in the present case. However, as the evidence has now been completed, no further delay will result from granting the extension.
Balance of considerations
It is apparent that the considerations lie heavily in favour of granting the extension. I will grant the extension.
It is normal for costs to follow the event. In the present case I can see no reason to depart from this practice. Costs will be awarded against the applicant.
Dr S.D.Barker
Delegate of the Commissioner of Patents