Exxon Chemical Patents Inc. v BP Chemicals Limited - [1999] APO 22

OFFICIAL NOTICE

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Application : No. 681147 in the name of EXXON CHEMICAL PATENTS INC.

Title: Process for polymerizing monomers in fluidized beds

Action: Request to amend a statement of grounds and particulars for an opposition by BP CHEMICALS LIMITED, and a request to extend the time for serving evidence in support.

Decision: Issued .
Abstract

The request to amend the statement of grounds and particulars is refused.

The addition of two new documents under the ground of novelty is prima facie prejudicial to the other party.

The degree of prejudice is assessed by considering all relevant factors.

There is little evidence in relation to the degree of prejudice, but that evidence suggests that the degree of prejudice is excessive.

The request to extend the time for serving evidence in support is refused.

No reasons in support of the extension have been produced.

Against this there is an inconvenience to the patent applicant and the Patent Office.

A short extension is not appropriate as the time period sought has now expired.

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Patent Application No. 681147 by Exxon Chemical Patents Inc. and a request to amend the statement of grounds and particulars for an opposition by BP Chemicals Ltd, and a request to extend the time for serving evidence in support.

BACKGROUND

Patent application number 681147 in the name of Exxon Chemical Patents Inc. (hereafter referred to as Exxon) was advertised accepted on 21 August 1997. A notice of opposition was filed by BP Chemicals Ltd (hereafter referred to as BP) on 21 November 1997. A statement of grounds and particulars was served on 23 February 1998. The statement was amended without objection on 29 June 1998.

The time for serving evidence in support was extended several times, and is now due to be completed by 23 February. A request to extend this time to 23 March 1999 has been made, and the extension was objected to by Exxon. No evidence in support has been filed since 22 January 1999.

On 15 January 1999 BP requested amendment to the statement of grounds and particulars. Exxon objected to the request, and the matter was set for hearing in Canberra on 22 March 1999. The request for extension of time was set for hearing at the same time. BP were not represented at the hearing. Exxon was represented by Mr Richard Baddeley, patent attorney of Watermark, Perth, who appeared by telephone.

THE AMENDMENT TO THE STATEMENT

The amendment proposes three changes to the statement:

(i)Correction of the title of a journal from "Chemicals and Industry" to "Chemistry and Industry" in document (L) of the particulars; and
(ii)Two new documents, designated (R) and (S), are added to the particulars.

Exxon stated in a letter dated 15 February 1999:

We object to the request on the following grounds:
1.No explanation has been provided as to the circumstances in which documents (R)…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

Continue reading Exxon Chemical Patents Inc. v BP Chemicals Limited

Details

AGLC: Exxon Chemical Patents Inc. v BP Chemicals Limited [1999] APO 22
Case: [1999] APO 22
Decision Date: 26 March 1999

CaseChat Overview and Summary

Exxon Chemical Patents Inc. (Exxon) opposed a patent application number 681147 by BP Chemicals Ltd (BP). Exxon challenged BP's request to amend the statement of grounds and particulars for the opposition, and BP's request to extend the time for serving evidence in support. BP sought to amend the statement to correct a typographical error in the title of a journal and to add two new documents to the particulars, and to extend the time to serve evidence in support of the opposition. Exxon objected to both requests on the grounds that they would cause undue prejudice and that BP had not provided a satisfactory explanation for the delay in making the requests.

The Commissioner considered the legal issues of whether the amendment and extension requests would cause undue prejudice to Exxon and whether the requests were made in good faith and at the earliest reasonable opportunity. The Commissioner found that the amendment would cause undue prejudice to Exxon as the addition of two new documents to the particulars would change the case to be answered by Exxon and there was little evidence to suggest that the degree of prejudice was not excessive. The Commissioner also found that no reasons had been provided in support of the extension request and that BP had not provided a satisfactory explanation for the delay in making the request. The Commissioner concluded that the requests were not justified and refused both requests.

The Commissioner awarded costs against BP as they had been entirely unsuccessful and had not provided an arguable case for either of their requests. The time for serving evidence in answer to the opposition would run from the date of the decision.

Orders