ExxonMobil Research and Engineering Company v Shell Internationale Research Maatschappij B.V
[2013] APO 35
•14 June 2013
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
ExxonMobil Research and Engineering Company v Shell Internationale Research Maatschappij B.V. [2013] APO 35
Patent Application: 2004249899
Title:Gasoline composition
Patent Applicant: Shell Internationale Research Maatschappij B.V.
Opponent: ExxonMobil Research and Engineering Company
Delegate: Dr S.D.Barker
Decision Date: 14 June 2013
Hearing Date: Written submissions completed on 27 May 2013
Catchwords: PATENTS - extension of time to file evidence in reply – explanation of delay is adequate – nature and significance of the evidence explained – failure to take advantage of short extension – balance of considerations favours extension
Representation: Patent applicant: Spruson & Ferguson
Opponent:Watermark
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2004249899
Title:Gasoline composition
Patent Applicant: Shell Internationale Research Maatschappij B.V.
Date of Decision: 14 June 2013
DECISION
Extension of time to serve evidence in reply allowed. Time extended to 26 June 2013.
Costs according to Schedule 8 awarded against Shell Internationale Research Maatschappij B.V.
REASONS FOR DECISION
1. Patent application number 2004249899 was filed by Shell Internationale Research Maatschappij B.V (Shell). ExxonMobil Research and Engineering Company (ExxonMobil) has opposed the grant of a patent. An application for an extension of time to file evidence in reply was filed by ExxonMobil on 28 February 2013 and Shell objected. In a decision reported as [2013] APO 29 (first extension decision) I allowed a short extension to 26 April 2013 to file evidence already available. On 26 April 2013, ExxonMobil requested a further extension of time of two months to file its evidence in reply. Shell has objected to the extension, and asked for hearing. Both parties have filed written submissions.
The relevant law
As a consequence of the Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 there are substantial changes to Chapter 5 of the Patents Regulations 1991. In the case of the present application and the present extension of time, the extension is governed by regulation 5.10 as in force immediately before 15 April 2013. One relevant consequence of the amendments to Chapter 5 is that evidence that is required to be served on or after 15 April 2013 is to be filed with the Commissioner rather than served. Consequently in this decision I will make reference to the filing of evidence where that is to happen on or after 15 April 2013.
Sub-regulation 5.10(2) gives the Commissioner the power to extend the time for taking a step prescribed in Chapter 5, which in this case is the filing of evidence in reply. 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)) and have been given 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 factors. (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)
5. I note that in considering this request for an extension of time, I must consider the particular request on its merits. This is in accordance with the observation that I made in Alcon Research, Ltd v Sylentis S.A.U. [2012] APO 55 at [14]:
"the refusal of this extension of time does not preclude the opponent from making a further application for an extension of time (as was the case in Goninan). Any further application for an extension of time will be considered on its merits, and if a proper explanation of the reasons for the delay and the nature of the evidence is provided, the opponent may be successful. Given that these are matters that are well within the knowledge of the opponent, it should not be difficult to draft a more informative application for extension of time"
6. In considering the request on its merits I must ensure proper and genuine consideration is given to all the relevant factors (Goninan at 220). As stated in Goninan (at 225) the public interest
"must be weighed with and against other relevant considerations, including the absence of any satisfactory explanation for the failure (or failures) to comply with the time limits specified in the Regulations."
7. As such I must also give consideration to the failure of the opponent to take advantage of the short extension provided by the first decision.
The extension
8. Evidence in reply was originally due to be served by 30 November 2012. That period was extended to 28 February 2013. The first extension decision extended that period to 26 April 2013. The present application for extension of time states:
"As advised on 22 April, Dr Seddon provided a draft opinion responding to the first and second Halliburton declarations on 19 April 2013. The draft opinion runs to approximately 21 pages and still requires to be finalised and then placed into proper declaratory form for service as evidence in reply. The declaratory evidence will then need to be reviewed by the expert and in house counsel prior to signature and filing. A 26 April deadline would not enable this process to proceed with proper diligence. The evidence in reply will be filed in the current period of extension barring unforeseeable circumstances of expert unavailability …
Mr Halliburton’s evidence was extensive and technical in nature and a careful reply was required …
Dr Seddon (ordinarily resident in Melbourne) had also to travel to Houston as well as Qatar earlier this year, this meaning Dr Seddon was unavailable for work on evidence during most of January and February 2013.
Dr Seddon was also in Brisbane in both November/December 2012 and late February 2013. These international and domestic travel commitments, outside the Opponent’s control, have reduced time available for preparing evidence in reply …
On 4 April 2013, Dr Seddon advised the undersigned that, over the last 2 weeks, he had, in addition to travelling to Adelaide, been ill with flu."
Explanation of delay
9. It is apparent that the delay is due to the volume of the evidence in answer in addition to the business commitments and recent illness of Dr Seddon. The evidence in answer is two declarations by Mr Halliburton. The second declaration is over 100 pages in length (including exhibits). ExxonMobil also points to the need for time to finalise the declaration for filing.
10. ExxonMobil indicates that as of 20 May 2013, a draft declaration had been produced based on the 19 April 2013 opinion of Dr Seddon. That draft declaration required some minor editing prior to filing. In their submissions dated 20 May 2013, the opponent also indicates that:
"Dr Seddon is then expected to execute the declaration after his return from a current absence on 27 May 2013".
11. The opponent indicates that Dr Seddon’s declaration will be completed and filed at IP Australia in the week commencing 3 June 2013, barring unforeseen circumstances.
12. I am satisfied that ExxonMobil have been acting diligently, and the evidence should be filed by 7 June 2013. In the circumstances there is a reasonable explanation of the delay.
Public interest
13. 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 will consist of a declaration by Dr Seddon addressing statements made by Mr Halliburton.
14. According to the opponent’s submissions, Dr Seddon’s opinion in relation to fuel speciation is fundamental to the resolution of novelty and inventive step because it provides a detailed rejection of assumptions made in Mr Halliburton’s evidence. In relation to engine sludge formation Mr Halliburton’s evidence presents a theory which forms part of the applicant’s case on inventive step. The opponent indicates that the Dr Seddon declaration explains why Mr Halliburton’s theory is incorrect. Finally, the opponent indicates that Dr Seddon’s opinion explains why the applicant’s fuels are prior art fuels available in Australia before the priority date and thus relevant to novelty and inventive step consideration, in rebuttal of Mr Halliburton’s opinions.
15. The nature of evidence in reply is different to evidence in support. Evidence in support addresses all matters pertaining to each ground of opposition. Consequently identifying the grounds to be addressed by evidence will often provide an understanding of the likely significance of evidence in support. Evidence in reply responds to matters arising out of the evidence in answer. The significance of evidence in reply depends on the aspects of the evidence in answer that it addresses. In the present request for an extension of time, the opponent makes specific reference to particular aspects of the evidence in answer and indicates the ways in which the evidence in reply will be important to questions of novelty and inventive step through rebuttal of parts of Mr Halliburton’s evidence in answer. Such an account makes it clear as to the nature and significance of the evidence in reply in that the evidence in reply will assist the delegate at hearing in reaching a better decision on the opposition. Thus I am satisfied that the nature and significance of the evidence strongly favours an extension of time.
Interests of the parties
16. As is normal in such matters, the interests of the parties are opposed. I do not believe that a detailed weighing of the relative interests of the parties is justified in this case.
Failure of Opponent to take advantage of the short extension provided
17. Shell submitted that weight should be given to the failure of ExxonMobil to take advantage of the extension ended 26 April 2013:
"by not making use of the Delegate’s award of a discretionary period of time (i.e. to April 2013) for 'the finalisation of evidence that is available' (despite having that opportunity to do so), it is submitted that the balance of considerations has been further tipped against the Opponent’s request for a further Extension of Time."
18. It is clear that ExxonMobil did not take advantage of the extension in order to file evidence. A draft document was available on 19 April 2013, which presumably could have been filed before the end of the extension. ExxonMobil submitted that the time between 19 and 26 April 2013 was not sufficient to enable a declaration to be finalised with proper diligence. ExxonMobil chose instead to seek a further extension with a proper explanation of the circumstances. As I noted in Alcon v Sylentis, this is an option that is open to a party. In the present case I am satisfied that it was an appropriate option. Thus the failure to file evidence during the short extension previously allowed does not count against the opponent.
Conclusion
19. Having regard to the considerations that are relevant to this matter, the balance falls heavily in favour of allowing the extension. I have been provided with a satisfactory explanation of the delay, and the nature and significance of the evidence supports the extension. I will allow an extension.
20. ExxonMobil has stated that the evidence in reply will be filed in the week commencing 3 June 2013, “barring unforeseen circumstances of expert unavailability”. On 10 June 2013 the Commissioner was informed that Dr Seddon would be absent until 11 June, and the evidence should be filed "very shortly". The extension requested is until 26 June 2013. I see no reason why the extension should extend beyond that required in order to file the evidence. However, it is still unclear when ExxonMobil will complete their evidence. I will allow an extension until 26 June 2013, but I am disappointed that ExxonMobil have been unable to live up to their undertakings to complete the evidence earlier.
Costs
21. Shell have been unsuccessful in their opposition, and I see no reason to depart from the normal conclusion that costs should follow the event. I will award costs against Shell.
Dr S.D.Barker
Delegate of the Commissioner of Patents
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