BP International Limited v Neste Oil Oyj
[2012] APO 40
•28 March 2012
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
BP International Limited v Neste Oil Oyj [2012] APO 40
Patent Application: 2003258753
Title:Diesel fuel composition, comprising components based on biological raw material, obtained by hydrogenating and decomposition fatty acids
Patent Applicant: Neste Oil Oyj
Opponent: BP International Limited
Delegate: Dr S.K. Aggarwal
Decision Date: 28 March 2012
Hearing Date: Written submissions completed on 22 February 2012
Catchwords: PATENTS – request to serve further evidence – no satisfactory explanation of delay - certified translations of D1, D3, D8, D10 and D11 are relevant prior art – interest of parties offsetting - public interest favours grant of request – further evidence allowed – costs not awarded
Representation: Patent applicant: Callinans, Hartwell
Opponent:Griffith Hack, Melbourne
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2003258753
Title:Diesel fuel composition, comprising components based on biological raw material, obtained by hydrogenating and decomposition fatty acids
Patent Applicant: Neste Oil Oyj
Date of Decision: 28 March 2012
DECISION
I grant the request to serve further evidence filed on 21 December 2011.
I make no award of costs.
REASONS FOR DECISION
Patent application 2003258753 in the name of Neste Oil Oyj (the applicant) was advertised accepted on 4 December 2008. An opposition to the grant of a patent was filed by BP International Limited (the opponent) on 4 March 2009. The opponent completed their evidence in support of the opposition on 10 September 2010. On 12 September 2011 the applicant requested leave to amend the specification. The leave to amend was granted and advertised on 8 February 2012 and 23 February 2012 respectively.
On 3 November 2011 the opponent made a request to serve further evidence, which was opposed by the applicant. Following a hearing of the matter, the application to serve further evidence was granted on 1 February 2012 (Neste Oil Oyj v BP International Limited [2012] APO20).
A further request to serve further evidence was made on 21 December 2011, which was also opposed by the applicant. The Commissioner set a time frame for the parties to file written submissions on whether the further evidence should be allowed. The opponent and the applicant filed their written submission via their respective patent attorneys on 15 February 2012 and 22 February 2012 respectively.
The evidence
The Statement of Grounds and Particulars alleges lack of novelty in the light of document D1 (and its English language translation D1A) and lack of inventive step in the light of documents D1, D1A, D2-D16 and D18-D25. The evidence in support of the opposition is a declaration by Mr William Roy Jackson, together with exhibits WRJ-1 to WRJ-3. The Jackson declaration relies on documents D1-D3, D7, D8, D10-D12, D16, D21 and D25 out of which the documents D1, D3, D8, D10 and D11 are not in the English language. However, the evidence in support did not include copies of any of the above documents.
The opponent’s further evidence, filed and allowed on 3 November 2011 and 1 February 2012 respectively, comprises a declaration by Mr Andrew Davey together with exhibits AD-1 to
AD-11. The exhibits to the Davey declaration are copies of the documents D1-D3, D7, D8,
D10-D12, D16, D21, D25, and unverified translations of D1 (i.e. D1A), D8, D10 and D11.The further evidence which is the subject of this decision, comprises a second declaration of 14 December 2012 by Mr Davey together with exhibits AD-13 to AD-17. The exhibits to the second Davey declaration are verified English translations of the documents D1 (i.e. D1A), D3, D8, D10 and D11.
The relevant law
The request to serve further evidence can be granted under subregulation 5.10(4) of the Patents Regulations 1991 which provides:
(4)The Commissioner may:
(a) on the application of a party; and
(b) on such reasonable terms (if any) as the Commissioner specifies;
permit the party to serve further evidence on the other party.The above provision must be read in conjunction with subregulation 5.10(5) which provides that:
(5)The Commissioner must not give a direction under subregulation (1) or grant an application under subregulation (2) or (4) 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.
Consequently, it is a prerequisite to any decision that the Commissioner must ensure that the other party has been notified, and that both parties have had the opportunity to make representations. In the present case the other party has been notified, and both parties have been given the opportunity to make representations.
Leave to serve further evidence can only be granted if the Commissioner is reasonably satisfied that it is appropriate. In exercising this discretion I am guided by the decisions of Burchett J in Ferocem Pty Ltd v Commissioner of Patents (1994) AIPC 91-057; 28 IPR 243, Sackville J in A Goninan & Co Ltd v Commissioner of Patents (1997) AIPC 91-330; 38 IPR 213 and Goldberg J in National Starch & Chemical Co v Commissioner of Patents [2001] FCA 33 on the operation of subegulation 5.10(5) in relation to extensions of time. The general principles that flow from these decisions are as follows.
(a)The power is discretionary: Regulation 5.10 confers a broad discretion, which cannot be reduced to imperative compliance with particular requirements. It is necessary to give genuine and proper consideration to all relevant considerations. (Ferocem at AIPC 38,208; IPR 247-8, Goninan at AIPC 39,434; IPR 220)
(b)Explanation of delay: The reasons why the evidence was not served earlier are a relevant consideration, but a satisfactory explanation is not a mandatory requirement. (Ferocem at AIPC 38,207-8; IPR 247)
(c)The public interest: The public interest in determining a serious opposition on its merits is a relevant consideration. (Goninan at AIPC 39, 435-6; IPR 222)
*In order to do this, it is necessary for the Commissioner to form a view as to the nature of the evidence that it is sought to adduce, and the significance of that evidence for the opposition proceedings. (Goninan at AIPC 39,438; IPR 225-6)
*The significance of the evidence is assessed having regard to any relevant material available, not just the evidence itself. (National Starch at [33])
*The public interest is not protected merely because some evidence has already been served. (Goninan at AIPC 39,438; IPR 225)
(d)The interests of the party seeking the exercise of discretion: The interests of the party seeking the exercise of discretion are a relevant consideration. (Ferocem at AIPC 38,208; IPR 247)
(e)The interests of other party: It is relevant to consider the disadvantage to the other party of delays in determining the opposition, and the effect of delays on the efficient and orderly administration of the Patent Office. (Ferocem at AIPC 38,208; IPR 247, Goninan at AIPC 39, 436; IPR 222).
The above principles are equally relevant to the determination of the present request to serve further evidence.
Explanation of delay
The opponent stated that they made an inadvertent oversight in not including prior art documents referred in the Jackson declaration in their evidence in support, and the request of 3 November 2011 to serve further evidence was filed as soon they became aware of their oversight. They submitted that the above request was filed ahead of obtaining translation verification certificates to expedite the process. Thereafter, the translation verification certificates were prepared on an urgent basis and submitted as exhibits to the second Davey declaration filed on 14 December 2012. It was further submitted that they believed that the second Davey declaration would be considered as part of their request of 3 November 2011 to file further evidence. However, it was not until the Delegate's clarifying letter of 21 December 2011 that they realised that the second Davey declaration could not be relied upon unless a formal additional request to serve further evidence was lodged.
In reply, the applicant asserted that the opponent should have filed the present further evidence back on 10 September 2010 and that there has been a delay of over a year. They indicated that the opponent has had one earlier attempt to file further evidence and they again overlooked the prescribed requirements for serving evidence. The applicant put the view that the present further evidence was filed as a result of correspondence from the applicant identifying the deficiencies in the opponent's earlier further evidence.
I cannot understand the way the opponent is preparing their evidence in support. To my mind, it is a normal practice for the declarant to exhibit copies of the documents they refer to. Additionally, any foreign language documents are translated in English and exhibited along with the related verification certificates. In the present case, the opponent has had two opportunities for completing their evidence in support. At the first opportunity, they failed to file copies of any of the document referred in the Jackson declaration. At the second opportunity, they neither included certified translations of D1, D3, D8, D10 and D11, nor foreshadowed the filing of those translations at a later date. It appears from the correspondence on file that the present request to serve further evidence was filed in response to a query from the applicant. It is also not apparent why the verified translation of the non-English documents were not obtained by the opponent before serving their evidence in support. In view of the above, I cannot conclude that the opponent has provided a satisfactory explanation of the delay.
The public interest
The public interest in opposition proceedings calls for a balance between said opposition being dealt with on its merits and expeditious processing. In order to determine the extent to which a correct and just determination of the opposition on its merits can be made, I need to assess the nature and the significance of the further evidence that will be served.
The opponent submitted that their present request does not introduce any new substantive evidence and simply formalises the previously filed uncertified translations which will enable the translations to be given their full and proper evidentiary weight. They also indicated that the allowance of the present request will not delay the opposition given the anticipated delay until at least June 2012 in processing the applicant's proposed amendment.
In response, the applicant argued that the opponent’s earlier further evidence was allowed on the basis of an interpretation of document D1A and that the present further evidence does not relate solely to D1A. They indicated that a family member of D1A was considered by the Patent Office during the prosecution of the patent application and despite this the patent application was accepted. The applicant also submitted that D1A is not relevant because it relates to plant oils while the claimed invention is limited to components produced from biological material originating from animals, and that the applicant’s proposed amendment further increase the difference between D1A and the claims. The applicant did not make any submissions regarding the nature and significance of the documents D3, D8, D10 and D11.
Following a brief review of the case file, I note that a family member of D1 was considered during the examination. However, that does not diminish the seriousness of the opposition to the application because in assessing the relevance of earlier documents, the examiner does not have the benefit of knowing the precise level of common general knowledge in the field and the benefit of evidence from people working in the field. I have also briefly looked at the translations of each of the documents in the present request. The documents relate to hydrogenation of vegetable oils and appear to be highly relevant to the claimed invention. Therefore, I am of the opinion that the further evidence to be served is significant and presents a serious challenge to the patent application. Furthermore, the allowance of the present request will not delay the opposition any further given the applicant’s request for amendment is unlikely to be finalized before June 2012. Consequently, I conclude that the public interest favours allowing the further evidence.
The interests of the party seeking the exercise of discretion
The opponent stated that their interests lie in having the translations of the prior art documents given their proper weight by having the second Davey declaration included in the evidence. In view of this, it is apparent that the opponent’s interests lie in allowing the present request for further evidence.
The interests of the party opposing the exercise of discretion
The opponent stated that if the present request is allowed, the applicant will not suffer any prejudice as translations of D1, D8, D10 and D11 have already been allowed into the opponent's evidence, and that the present request simply relates to verification of those translations. On the other hand, the applicant submitted that the opponent's further evidence is not merely the verification certificates but new documentary evidence, being an English translation and its related certificate of verification. The applicant appears to be arguing that allowing certified translation of the above documents is detrimental to their interest because it will be an appropriate evidence for use in the opposition proceedings. Taking this on face value, I conclude that the applicant’s interests lie in disallowing the further evidence.
Interests of the Patent Office
The interests of the Patent Office, although of no major significance, are in having the opposition matters resolved in a timely manner without undue delay. Although significant time has already elapsed since the evidence in support was served, the allowance of the present request will not further delay the opposition given the applicant’s request for S104 amendment is unlikely to be finalized before June 2012. Therefore, the allowance of the present request will have no bearing on the interests of the Patent Office.
The balance of considerations
The interests of the parties are largely offsetting. The public interest favours an extension of time. Had I been provided a satisfactory explanation of the delay, then the balance of consideration would have clearly favoured allowing the further evidence. However, the absence of a satisfactory explanation of the delay leaves the considerations finely balanced. Overall, I am of the view that the public interest marginally outweighs the other considerations.
Conclusion
I conclude that it is appropriate in all the circumstances to allow further evidence.
Other matters
Where further evidence is granted, the Commissioner may impose reasonable terms under paragraph 5.10(4)(b). Normally, the terms are to permit the other party to serve responding evidence. In the present case, the applicant is still in the process of preparing evidence in answer, so responding evidence can be included in the evidence in answer.
The time for serving evidence in answer is presently governed by the following direction made on 15 February 2012:
“The time limit for serving evidence in answer in the opposition expires one (1) month after the Commissioner notifies the parties of the refusal or withdrawal of the request of the request for leave to amend filed on 12 September 2011 or notifies the parties of the allowance of the amendment which is the subject of that request.”
I consider that this direction adequately addresses the issue of responding evidence, and no further terms are necessary.
Costs
The applicant submitted that the opponent is not entitled to any costs irrespective of the outcome of the opponent’s request, and that it would be inappropriate to penalise the applicant for the mistake of the opponent’s representatives in not filing the documents.
Ordinarily in proceedings such as these, costs follow the event. In the present case, the opponent has not provided a satisfactory explanation of the delay and has not demonstrated that they have been diligent in preparing their evidence in support. While the opponent has been granted the leave to serve further evidence, they should not be rewarded by an award of costs in this situation. Furthermore, I consider that the applicant is not entitled to an award of costs as they have been unsuccessful in opposing the extension.
Therefore, I make no award of costs.
Dr S.K. Aggarwal
Delegate of the Commissioner of Patents
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