ExxonMobil Research and Engineering Company v Shell Internationale Research Maatschappij B.V - [2013] APO 29

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
ExxonMobil Research and Engineering Company v Shell Internationale Research Maatschappij B.V. [2013] APO 29

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:  22 April 2013
Hearing Date:  Written submissions completed on 12 April 2013
Catchwords:  PATENTS – extension of time to file evidence in reply – explanation of delay is inadequate – nature and significance of the evidence not explained – balance of considerations does not favour extension – a short extension allowed in order to file evidence that is already available

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: 22 April 2013
DECISION
Extension of time to serve evidence in reply is not justified. I allow a short extension until 26 April 2013 to file whatever evidence is already available.
Costs according to Schedule 8 awarded against ExxonMobil Research and Engineering Company.
REASONS FOR DECISION

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. The opposition is presently in the evidence in reply stage. ExxonMobil has requested an extension of time to serve 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 considerations. (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)
The extension
Evidence in reply was originally due to be served by 30 November 2012. That period has already been extended to 28 February 2013. The present extension would take that period to 28 April 2013. The application for extension of time states:
"In the time so far available, the Opponent has reviewed the evidence in answer in detail. This evidence in answer is voluminous, taking a longer time for review and analysis than usual in a patent opposition. Issues requiring input by experts have been identified and an expert, Duncan Seddon, has been briefed to provide evidence in reply. The proposed evidence in reply will respond to contentions made by Mr Halliburton on the issues of novelty and inventive step raised by he opposition. Further time is requested to obtain Dr Seddon's opinion and prepare corresponding declarations to assist in resolution of the opposition."
Explanation of delay
The reasons advanced seem to come down to the volume of the evidence in answer, and more time is needed. The evidence in answer is two declarations by Mr Halliburton. The second declaration is over 100 pages in length (including exhibits).
ExxonMobil provided additional information in their written submissions:
- Dr Seddon provided answers to preliminary questions in late January
- Dr Seddon was in Qatar for a 2 to 3 week trip in January or February
- Dr Seddon has been provided with more detailed questions, and he is still working on those questions
- Recently Dr Seddon travelled to Adelaide and been ill with flu
It also seems that Dr Seddon has been unable to devote time to the preparation of evidence due to his other commitments:
"Dr Duncan Seddon is independent of the Opponent and not subject to its control. He cannot attend solely to this opposition matter due to his other personal and business commitments"
It seems that Dr Seddon has been busy at various times, but that does not account for all of the period up to 28 February. There is much of the period that is not explained, so it does not form a sufficient explanation of the delay. It is a fair inference that the finalisation of Dr Seddon's evidence is still a long way off, given Dr Seddon's other commitments.
Public interest
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. The issues addressed will relate to novelty and inventive step. This is all that I have been told about the evidence that is being prepared.
In National Starch the court stated that it may be possible to draw inferences as to the nature and significance of the evidence by considering, for example, the specification or other information on file. In the present case the specification and the statement of grounds and particulars provide no insight into the possible evidence in reply. The evidence in answer also fails to suggest the nature of any evidence in reply. ExxonMobil, who are fully aware of the nature of the questions that were put to Dr Seddon, have chosen to keep this information to them self.
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. A bare statement of the grounds of opposition relating to the evidence does not provide an understanding of the likely significance of evidence in reply. In the present case the evidence will relate to novelty and inventive step, but this tells me nothing useful about the nature of the evidence, and does not enable me to be satisfied that the nature and significance of the evidence favours an extension of time.
Interests of the parties
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.
Conclusion
Having regard to the considerations that are relevant to this matter, the balance falls heavily against allowing the extension. Both the explanation of delay and the nature and significance of the evidence do not support the extension. The interests of the parties are opposed. In this situation I cannot be reasonably satisfied that an extension is appropriate. I cannot allow an extension.
In such a case I must always consider whether a short extension is appropriate to allow the filing of evidence that is already available (as stated in Ferocem). In the present case ExxonMobil are likely to have expected an extension to be allowed, and evidence is in the process of being prepared (if not already prepared). Consequently I will allow a short period for the finalisation and filing of evidence that is available. However, noting that the requested extension was until 28 April 2013, the short extension should not run beyond that time. I consider that it is reasonable to allow ExxonMobil until 26 April 2013 to file evidence.
I feel compelled to repeat 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"
Costs
Shell have been successful 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 ExxonMobil.
Dr S.D.Barker
Delegate of the Commissioner of Patents