ExxonMobil Upstream Research Company v Shell Internationale Research Maatschappij B.V - [2014] APO 51

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
ExxonMobil Upstream Research Company v Shell Internationale Research Maatschappij B.V.
[2014] APO 51

Patent Application: 2006291954

Title:Process and apparatus for removal of sour species from a natural gas stream

Patent Applicant:                   Shell Internationale Research Maatschappij B.V.
Opponent:  ExxonMobil Upstream Research Company
Delegate:  Dr S.D. Barker
Decision Date:  15 July 2014
Hearing Date:  2 May 2014, in Canberra
Catchwords:  PATENTS – opposition to the grant of a patent – grounds of novelty, inventive step, section 40(2) and 40(3) – claim 23 lacks novelty and inventive step – opportunity to amend – costs awarded against successful party

Representation: Patent applicant: Mr Ben Fitzpatrick of counsel, assisted by Ms Mary Turonek, patent attorney of Griffith Hack
Opponent:Watermark

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2006291954

Title:Process and apparatus for removal of sour species from a natural gas stream

Patent Applicant: Shell Internationale Research Maatschappij B.V.
Date of Decision: 15 July 2014
DECISION
I allow the amendment of the statement of grounds and particulars.
Claim 23 lacks novelty and inventive step.
I allow 2 months from the date of this decision to propose amendments.
I award costs according to Schedule 8 against ExxonMobil Upstream Research Company
REASONS FOR DECISION

Patent application number 2006291954 was filed on 15 September 2006 (under the provisions of the Patent Cooperation Treaty). The applicant was Cool Energy Limited, but the application now stands in the name of Shell Internationale Research Maatschappij B.V. (Shell) as a result of a direction under section 113 of the Patents Act (the Act). The application was examined and accepted by the Commissioner, and subsequently opposed by ExxonMobil Upstream Research Company (ExxonMobil). A hearing was held on 2 May 2014 in Canberra to decide the opposition. Shell was represented by Mr Ben Fitzpatrick of counsel, assisted by Ms Mary Turonek, patent attorney. Mr Jeroen du Pont, European attorney for Shell, also attended. ExxonMobil relied upon written submissions filed prior to the hearing.
The relevant law
The present opposition was commenced before 15 April 2013. As a consequence amendments to the Act and Patent Regulations introduced by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 and the Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (No 1) do not apply.
The opposition
The statement of grounds and particulars identified four grounds of opposition: lack of novelty, lack of inventive step, lack of compliance with section 40(3), and lack of compliance with section 40(2). All grounds were argued at the hearing.
The parties relied upon evidence by several declarants. Evidence in support consists of a declaration by Costa Tsesmelis (Tsesmelis 1). Evidence in answer consists of a declaration by Craig Dugan (Dugan 1). Evidence in reply consists of two declarations by Richard Hiram Baddeley (Baddeley 1 and Baddeley 2) and Costa Tsesmelis (Tsesmelis 2 and Tsesmelis 3). Further evidence has also been filed, consisting of declarations by Richard Hiram Baddeley (Baddeley 3), Craig Dugan (Dugan 2), P. Scott Northrop and Craig Dugan (Dugan 3). I will refer to the relevant parts of the evidence where appropriate.
ExxonMobil filed a request to amend the statement of grounds and particulars on 17 April 2014. Shell objected to the amendment and made submissions on the point at the hearing. I stated that I would decide the allowability of the amendment as part of this decision.
The amendment of the statement is solely directed to the particulars. Pursuant to regulation 5.9(1)(c) there are no grounds on which to refuse an amendment to the particulars. I therefore allow the amendment of the statement of grounds and particulars.
The specification
The specification relates to the treatment of natural gas to remove unwanted components. The specification containts three Figures and 25 claims.
What is the invention as described
Before commencing to construe the specification, I note what Middleton J said in Eli Lilly and Company Limited v Apotex Pty Ltd [2013] FCA 214, 100 IPR 451 at [139]:
"It is well settled that the Court should, from the outset, approach the task of patent construction with a generous measure of common sense. The Court must place itself in the position of a person skilled in the relevant art, being the subject matter of the patent. From this perspective, the patent is to be read as a whole, in the context of the specification and in light of the prevailing common general knowledge and state of the relevant art at the priority date."
The background to the invention
The specification states that natural gas typically contains components that form solids at low temperature, which is undesirable as it can decrease the operating efficiency of equipment. Where the components are carbon dioxide, hydrogen sulphide, mercaptans or mercury (referred to generically as "sour" species) they can cause corrosion of pipework.
The specification goes on explain that methods of removing sour species are known. For instance, sorption by molecular sieves or chemical absorption systems. However, these processes are said to be complex and expensive to implement. The specification then discusses at length the more recent method of intentionally solidifying the sour species. Three patent specifications relating to solidification of sour species are discussed in detail. The specification then states at page 4:
“The present invention seeks to overcome at least some of the aforementioned disadvantages.”
It is clear that the specification relates to the removal of sour species from natural gas. It is a matter of dispute whether the problem specifically relates to improving the known processes of removing sour species by solidification.
The fact that the specification discusses processes for removal of sour species by solidification does not automatically mean that this is the starting point from which the invention was developed. In the present case I believe that solidification processes are discussed as part of a review of known processes that is part of developing the solution rather than defining the problem. The specification clearly indicates an interest in exploring the solidification process, and recognises the limitations in existing solidification processes. Consequently, the development of the invention described in the specification also had regard to the limitations in the known solidification processes.
The aim of the invention
At page 4, the specification says that the present invention seeks to overcome at least some of the disadvantages associated with the prior processes.
The nature of the invention
The essence of the invention is stated at page 4:
"It has been demonstrated that a dehydrated natural gas stream may be sweetened by solidifying sour species contained therein. However, at any fixed temperature, the solid sour species has a characteristic fixed vapour pressure, and thus sour species will also be present in the vapour phase. The present inventin is based on the realisation that it is possible to sequentially and selectively separate solid, liquid and gaseous fractions of a contaminant sour species from a dehydrated natural gas feed stream, thereby enhancing the removal of sour species from the dehydrated natural gas product stream."
The process adopted in the specification is essentially three steps:
·     cool a dehydrated natural gas to form (i) a slurry of solid sour species and hydrocarbon liquids and (ii) a gaseous component of gaseous hydrocarbons and gaseous sour species;
·     separate the gaseous component from the slurry; and
·     treat the gaseous component with a liquid solvent in which the sour species dissolve.
Construction of the claims
The correct approach to the construction of claims was discussed by Bennett J in H Lundbeck A/S v Alphapharm Pty Ltd [2009] FCAFC 70, 81 IPR 228 at [118] – [120]:
"the words in a claim should be read through the eyes of the skilled addressee in the context in which they appear … while the claims define the monopoly claimed in the words of the patentee's choosing, the specification should be read as a whole … it is not permissible to read into a claim an additional integer or limitation to vary or qualify the claim by reference to the body of the specification … terms in the claim which are unclear may be defined or clarified by reference to the body of the specification"
Claim 13 is the key claim in this matter. It reads
An apparatus for removing a sour species from a dehydrated natural gas feed stream comprising:
a vessel with a solids formation zone in fluid communication with a gas solvation zone, wherein the solids formation zone is configured to facilitate formation of a slurry of solid sour species and hydrocarbon liquids, and a gaseous feed stream containing gaseous sour species, and the gas solvation zone is configured to facilitate formation of a liquid solution of sour species;
a gas expander configured to define an inlet in the vessel for introducing the dehydrated natural feed gas stream to the solids formation zone;
a fluid communication device configured to direct the gaseous stream containing gaseous sour species from the solids formation zone to the gas solvation zone;
an inlet for introducing liquid solvent into the gas solvation zone;
a first outlet for removing the liquid solution of the sour species from the gas solvation zone; and
a second outlet for removing a dehydrated sweetened gas product stream from the gas solvation zone.
I consider that it is clear that claim 13 is directed to an apparatus that is capable of use in the process described above. The apparatus, though, is characterised by its components, and not by the process. The components are:
· a vessel having:
-a solids formation zone in fluid communication with a gas solvation zone
-an inlet in the form of a gas expander
· . a communication device that directs gaseous species from the solids formation zone to the gas solvation zone
-an inlet for introducing liquid solvent to the solvation zone
-an outlet to remove liquid containing sour species from the solvation zone
-an outlet to remove gas from the solvation zone
There are several points of construction that need to be resolved. I will address each in turn in the following paragraphs.
Is a vessel a single container?
It is clear from Figure 3 that the apparatus of the present application can have the solids formation zone and the solvation zone in different chambers connected by conduits. In the context of the specification, a vessel can be one or more chambers connected by conduits.
The claim defines the device as “a vessel”. As a technical matter, it is conceivable that the solidification and solvation zones could be either in one or two containers. The use of the indefinite article “a” in the claim suggests a single vessel incorporating both the solidification and solvation zones. However, appended claim 15 defines the solid formation zone and solvation zone as disposed in separate vessels. The overall structure of the claims make it clear that “a vessel” in claim 13 can be either a single vessel or two vessels.
When is a gas expander configured to define an inlet?
It is a requirement of claim 13 that the gas expander is “configured to define an inlet” in the vessel. The expression “define an inlet” is curious, and somewhat ambiguous. It is clear that the gas exiting the expander next enters the vessel, but is the gas expander is attached directly to the vessel without any intervening pipe, or does the exit pipe from the gas expander attach directly to the vessel without any intervening components.
The description says at page 9 that in some embodiments the gas expander can define the inlet “for introducing the dehydrated natural gas feed stream into the solids formation zone”. This embodiment now appears in claim 13. It is this embodiment that is shown in the Figures, and is the only form of the invention discussed in detail. At page 18 the specification says:
“The process of expanding the dehydrated natural gas feed stream upon introduction to the solds formation zone 80 of the vessel 12 achieves temperature and pressure conditions within the solids formation one 80 at which the sour species contaminants contained in the dehydrated natural gas feed stream solidify.”
It is clear that the formation of solids takes place inside the vessel, and not within any pipes leading into the vessel. Since solid formation will take place rapidly upon exit from the gas expander, the only logical arrangement that will enable this result is if the gas leaving the gas expander enters directly into the vessel.
Claim 23 also needs to be considered as a result of the amendment of the statement of grounds and particulars. Claim 23 reads:
A process for recovering liquid carbon dioxide from a dehydrated natural gas feed stream comprising the steps of:
a)cooling the dehydrated natural gas feed stream and forming a slurry of solid carbon dioxide particles and hydrocarbon liquids, and a gaseous stream containing gaseous carbon dioxide;
b)separating the gaseous stream containing gaseous carbon dioxide and the slurry;
c)treating the gaseous stream containing gaseous carbon dioxide with a liquid solvent and forming a liquid solution of carbon dioxide; and
d)heating the slurry and melting the solid carbon dioxide particles and forming liquid carbon dioxide.
The process that is the subject of this claim could be carried out using the apparatus of claim 13, but there is no requirement to use that apparatus. The process is characterised solely by the four processing steps.
Novelty
It is a requirement of subsection 18(1) of the Act that the invention, so far as claimed in any claim, is novel. Subsection 7(1) states that an invention is taken to be novel unless it is not novel in the light of the prior art. A citation is part of the prior art base for the purposes of novelty if it was published before the priority date of the claim.
It is well established that the general test for lack of novelty is the reverse infringement test. The classic formulation of this test is that given by Aickin J in Meyers Taylor Pty Ltd v Vicarr Industries Ltd [1977] HCA 19 at [20], 137 CLR 228 at 235:
"The basic test for anticipation or want of novelty is the same as that for infringement and generally one can properly ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement"
This test is satisfied if the alleged anticipation discloses all the essential features of the invention as claimed (see Nicaro Holdings Pty Ltd v Martin Engineering Co (1990) 91 ALR 513 at 517). In order to meet this requirement, the prior art must “contain clear and unmistakeable directions to do what the patentee claims to have invented” (The General Tire & Rubber Company v The Firestone Tyre and Rubber Company Limited [1972] RPC 457 at 486).
ExxonMobil relied on two citations to allege lack of novelty: US 2,996,891 and WO 2004/070297.
US 2,996,891
US 2,996,891 (D1) was published on 22 August 1961. Consequently it is part of the prior art base. The most important part of this document is Figure 5 (reproduced below).
Figure 5 shows a gas expander (35) linked to a vessel termed a settler (36), which is then linked to a second vessel termed a scrubber (37). The gas exiting from the expander passes through a pipe before entering the settler.
The apparatus in Figure 5 cannot be said to have the gas expander configured to define the inlet to the settler. It follows that D1 does not render the invention defined by claim 13 lacking in novelty.
In relation to claim 23, it is necessary to consider the disclosure of D1 more carefully. The process uses a dehydrated natural gas that is cooled by the expander (35). This results in the formation of solid carbon dioxide which settles in the settler (36). The carbon dioxide will be in the form of a slurry of solid carbon dioxide in liquid hydrocarbon (for instance, see Dugan 2, Table C). The gaseous carbon dioxide and hydrocarbons then enter the scrubber (37) where the remaining carbon dioxide is dissolved (for instance, see Dugan 2, Table C).
The solid carbon dioxide in the settler (36) "may be removed by heat supplied to steam coils provided for such purpose" (column 4, lines 72 – 73). It seems inevitable that the material removed from the settler (36) is liquid carbon dioxide.
It seems clear that D1 discloses a process that produces liquid carbon dioxide that falls within the scope of claim 23.
WO 2004/070297
WO 2004/070297 (D2) was published on 19 August 2004. Consequently it is part of the prior art base.
D2 discloses a process for removing water and sour species from natural gas. This is achieved by sequentially removing water and then sour species. Water removal occurs by cooling (page 3):
"the present invention comprises the steps of cooling the natural gas feed stream in a first vessel to a first operating temperature at which hydrates are formed; and removing from the first vessel a stream of dehydrated gas"
Sour species are removed in a second vessel (page 3):
"When the natural gas feed stream further includes sour species, the process according to the present invention suitably further comprises the steps of cooling the dehydrated gas in a second vessel to a second operating temperature at which solids of the sour species are formed or at which the sour species dissolve in a liquid; and removing from the second vessel a stream of dehydrated sweetened gas."
This seems to envisage the possibility of first removing water in solids formation zone and then removing sour species in a second solid formation zone. This is not relevant for present purposes. However, there seems to be a possibility of the second zone involving dissolution of the sour species. Figure 2 (reproduced below) shows an arrangement that further explains this feature.
The second zone is vessel 14. Liquid can be introduced to the second zone (page 9 to 10):
"Alternatively, the dry sour gas can be cooled using one or more sprays of a sub-cooled liquid supplied through inlet 49 … The temperature and pressure conditions in the second vessel 14 are adjusted so as to form solids of the freezable species"
It is not clear to me that the second zone can be regarded as a solvation zone. It seems clear that the liquid is used to cool the gas, and produce solid sour species. The solid may be able to dissolve in the cooling liquid after it has separated by solidification. The sour species are separated based on cooling, not dissolution. In other words, this is a second solid formation zone.
There is a question whether the gas expander defines the inlet to the first vessel. The relevant features are the expander 24 and the inlet 20 of vessel 12. The specification says at page 5:
"The Joule-Thompson valve 24 may alternatively define the inlet 20 to the first vessel 12."
There is a high probability that this means the same as it does in the present specification.
Finally, there is no disclosure of recovering liquid carbon dioxide (as required by claim 23).
I am not satisfied that there is a lack of novelty in the light of D2.
Prior use of the invention
There is also an allegation that there is a lack of novelty due to prior use of the invention. The evidence for this allegation is a letter referring to an intellectual property licensing agreement between Cool Energy and Shell Global Solutions International BV. The letter does not specify the technology with precision. On this basis, at least, the letter fails to support an allegation of prior use.
Inventive step

It is a requirement of subsection 18(1) of the Act that the invention, so far as claimed in any claim, involves an inventive step. Subsection 7(2) states that an invention is taken to involve an inventive step unless it would have been obvious to a person skilled in the art in the light of the common general knowledge, considered alone or together with the prior art. A document is prior art for this purpose if "a skilled person mentioned in subsection (2) could, before the priority date of the relevant claim, be reasonably expected to have ascertained, understood, regarded [the document] as relevant" (subsection 7(3)).
The test for whether an invention is obvious is to ask whether it would have been a matter of routine to proceed to the claimed invention. In Wellcome Foundation Ltd v V.R. Laboratories (Aust.) Pty Ltd [1981] HCA 12 at [45], 148 CLR 262 at 286 Aickin J stated:
"The test is whether the hypothetical addressee faced with the same problem would have taken as a matter of routine whatever steps might have led from the prior art to the invention, whether they be the steps of the inventor or not."
The High Court approved this approach in Aktiebolaget Hassle v Alphapharm Pty Ltd [2002] HCA 59, 212 CLR 411.
In the present case the problem addressed by the specification is improvement of the process of removal of sour species from natural gas. There is a general aim to utilise the solidification process.
ExxonMobil allege that there is a lack of inventive step in the light of the common general knowledge alone, and also in the light of three patent documents: WO 2004/070297, US 5,819,555, US 2,996,891
In essence, the present invention is the sequentially application of two known methods of removing sour species. If it would not have been a matter of routine to sequentially apply two different means of removing sour species, and specifically solidification and solvation, then the ground of lack of inventive step must fail.
Shell argued that the evidence shows that the combination of different means of removing sour species was not routine in this art. For instance, Dugan 1 says at [20]:
"it is not a matter of routine to design an apparatus where two distinct processes, such as solids formation and gas solvation, are performed in the same vessel. It is also not a matter of routine to design an apparatus for sweetening a gas which would have two separate vessels in which two distinct processes are employed in each vessel, i.e. a vessel with a solids formation zone followed by a vessel with a gas solvation zone. In my experience a sweetening unit would involve a single process such as molecular sieves adsorption or separation membranes or solvent absorption. It is not normal to combine different sweetening processes to perform the same purpose in the same plant – one uses one method or another method. I would be disinclined to combine two processes because it would introduce complexity and potential for operational difficulties into the design."
On the other hand, in Tsesmelis 3 at [12.20] it is stated:
"Mr Dugan again refers (paragraph 6.20) to it not being normal to combine different sweetening processes. However, this is common general knowledge where membrane separation processes are utilised, absorption then being selected as the polishing step. Jarrett's 1983 article in Hydrocarbon Processing also describes use of absorption as a further sweetening step following cryogenic fractionation."
I consider that the evidence shows that combining different sweetening processes was known in the art, but was not common. Looking specifically at the sequential combination of solidification and solvation, the evidence does not satisfy me that this would have been regarded as a matter of routine. Consequently, unless a piece of prior art in itself discloses a combination solidification and solvation, the invention cannot be regarded as obvious.
US 5,891,555
US 5,891,555 discloses a process for removing carbon dioxide by solid formation. While there is a possibility of further separation, it would not have been a matter of routine to include a solvation stage. The claims cannot lack inventive step in the light of this document. Consequently it is unnecessary to consider whether this document would have been ascertained, understood and regarded as relevant.
WO 2004/070297 (D2)
As previously discussed, D2 discloses removal of carbon dioxide by solid formation (including when the gas is cooled by introduction of liquid). Since it has not been established that it would have been a matter of routine to include a solvation stage, the claims cannot lack inventive step in the light of this document. Consequently it is unnecessary to consider whether this document would have been ascertained, understood and regarded as relevant.
US 2,996,891 (D1)
As previously discussed, D1 is part of the prior art base and discloses a combination of solid formation and solvation. This the most relevant document, so I will deal with the question of whether it would have been ascertained, understood and regarded as relevant.
There is competing evidence as to whether persons in this art considered patent literature (in Tsesmelis 3, Northrop, Duggan 1). On balance, it seems likely that a person would consult databases that cover both patent and non-patent information, and D1 could have been ascertained. On its face, D1 is clearly relevant to removal of sour species from gas.
The critical question is whether it would have been a matter of routine to incorporate the gas expander (35) into the settler (36), rather than utilising a pipe to link the two parts. Dr Northrop said at [3.7]:
"good engineering practice in natural gas treating, before 15 September 2005 (priority date), would be to minimise the distance between a natural gas expansion device and any following vessel. I do not see any invention in such an approach."
and at [3.8]:
"Integrating throttling valve 35 with an inlet to settler 36 is a design option the skilled person would have had to consider before the priority date."
This is addressed directly in Dugan 3 at [12.10]:
"minimizing the distance between the expansion device and any following process vessel is not the same as integrating the throttling valve 35 with an inlet into a settler 36. I do not consider that an ordinary skilled person would have considered the latter as a design option because it was not common practice before September 2005 to integrate an expansion device with an inlet of a vessel."
I accept that it would have been sensible to minimise the distance between the gas expander and the vessel. However, the evidence does not go so far as to establish that it would have been a matter of routine to integrate the expander and the vessel. In this situation it has not been established that the apparatus of claim 13 lacks inventive step.
Turning to claim 23, I previously stated that D1 discloses a process that is the same as claim 23. Consequently, it would have been a matter of routine to do what is disclosed. It follows that claim 23 lacks inventive step.
Full description
It is a requirement of subsection 40(2) of the Act that the specification must describe the invention fully. The High Court in Kimberly-Clark Australia Pty Ltd v Arico Trading International Pty Ltd [2001] HCA 8 at [25], 207 CLR 1 at 17 explained this requirement as:
"The question is, will the disclosure enable the addressee of the specification to produce something within each claim without new inventions or additions or prolonged study of matters presenting initial difficulty?"
ExxonMobil submitted that claims 13 to 22 are not fully described with respect to the gas expander configured to define an inlet in the vessel. ExxonMobil referred to the evidence of Mr Duggan that configuring the gas expander could pose difficulties. It is true that Mr Dugan stated that there could be problems of accessibility for maintenance. However, at [4.37] of Dugan 1 he says:
"In my opinion the description and the figures are sufficient to teach me the nature of the process and the apparatus that is used to remove acid gases from natural gas. In view of my experience in this field, I believe that I could design a natural gas processing plant which uses the process and apparatus as described in the patent from a reading of the Specification."
It has not been shown that the specification fails to provide a full description of the invention.
Fair basis
It is a requirement of subsection 40(3) of the Act that the claims must be fairly based on the matter described in the specification. The High Court in Lockwood Security Products Pty Ltd v Doric Products Pty Ltd [2004] HCA 58 at [69], 217 CLR 274 at 300 approved the words of Gummow J in Rehm Pty Ltd v Websters Security Systems (International) Pty Ltd (1988) 81 ALR 79 at 95:
"the question is whether there is a real and reasonably clear disclosure in the body of the specification of what is then claimed, so that the alleged invention as claimed is broadly, that is to say in a general sense, described in the body of the specification"
ExxonMobil asserts that the specification says that a problem with the prior art is that heavy hydrocarbons are removed along with sour species in the prior art. ExxonMobil then argue that addressing this problem is part of the invention as described, and claims 13 to 23 are not fairly based as they do not refer to features relating to this problem.
Whatever else the specification may say, there is a real and reasonable disclosure on pages 7 to 13 of the apparatus of claims 13 to 22 and the process of claim 23. The fact that the specification also makes reference to other things does not diminish this disclosure. It follows that these claims are fairly based.
Conclusion
Claim 23 is not novel, and lacks inventive step, in the light of D1. As this is capable of rectification by amendment, I will allow an opportunity to propose amendments.
Observation
Regulation 5.20(4) specifies that the opponent must file a written summary of submissions no later than 10 business days before the hearing. The applicant must then file a written summary of submissions no later than 5 business days before the hearing. If these requirements are not met, the Commissioner may take that into account in the award of costs (as stated in regulation 5.20(6)).
In the present case ExxonMobil have not met their requirements. Their written summary of submissions was due to be filed by 15 April 2014. The summary was filed on 17 April 2014. A "Summary of Opponent's Further Submissions" was then filed on 1 May 2014. Clearly ExxonMobil did not meet the requirements of regulation 5.20(4). Pursuant to regulation 5.20(6), I will take this failure into account in making an award of costs.
Further, ExxonMobil filed amendments to the statement of grounds and particulars on 17 April 2014. The amendment contracted the case to be answered in some respects, but expanded the case in others. Significantly, the opposition to claim 23 was only introduced in this amendment. Because the amendment was filed shortly before the hearing, even though the evidence had been completed long before, the amendment had not been allowed at the time the hearing took place. This caused considerable difficulty at the hearing, as the scope of the issues that Shell had to answer was not settled. This matter is also relevant to the award of costs.
Costs
I have found that the opposition succeeds in relation to claim 23. Consequently, ExxonMobil have been successful in their opposition. However, this is not a case where costs should follow the event. Only one claim was found to lack novelty and inventive step, and the amendment to the statement of grounds and particulars to formally bring this issue into the opposition was only filed a few weeks before the hearing and had not been allowed at the time of the hearing. ExxonMobil were completely unsuccessful in relation to the particulars as they stood at the date of the hearing. Further the behaviour discussed above in relation to the filing of the summary of submissions must be taken into account.
I consider it appropriate to award costs against ExxonMobil
Dr S.D. Barker
Delegate of the Commissioner of Patents