QNI Limited v CESL Limited - [2012] APO 126

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
QNI Limited v CESL Limited [2012] APO 126

Patent Application: 740712

Title:Chloride assisted hydrometallugical extraction of nickel and cobalt from sulphide or laterite ores

Patent Applicant:  CESL Limited
Opponent:  QNI Limited
Delegate:  Dr S.D.Barker
Decision Date:  12 November 2012
Hearing Date:  Written submissions filed on 30 October 2012
Catchwords:  PATENTS – extension of time – settlement negotiations have been in progress for several months – interests of the parties favours resolution of the opposition by negotiation – other interests favour refusal of the extension – extension not justified – short extension allowed to serve evidence immediately to hand

Representation: Patent applicant: Spruson & Ferguson
Opponent:Phillips Ormonde Fitzpatrick

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 740712

Title:Chloride assisted hydrometallugical extraction of nickel and cobalt from sulphide or laterite ores

Patent Applicant: CESL Limited
Date of Decision: 12 November 2012
DECISION
I allow the opponent seven (7) days from the date of this decision to serve any evidence immediately to hand.
REASONS FOR DECISION

CESL Limited is the applicant for patent application 740712. QNI Limited is the opponent. Evidence in reply is not yet completed. The opponent has applied for an extension of time until 28 October 2012. The Commissioner wrote to the opponent stating that she was not satisfied that an extension was appropriate, and set the matter for hearing. The opponent filed written submissions. The patent applicant made no submissions. A subsequent application for an extension of time until 28 November 2012 has been filed, but has not been actioned.
The law
Extensions of time are governed by regulation 5.10. Before deciding whether to grant an extension the Commissioner must ensure the parties have been notified and have had an opportunity to make submissions. In the present case, that has happened.
The considerations relevant to an extension of time are well settled by the Federal Court decisions in 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. 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 247-8, Goninan at 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 247)
c)The public interest:                The public interest in determining a serious opposition on its merits is a relevant consideration. (Goninan at 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 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 225)
d)The interests of the parties:    The interests of the party seeking the exercise of discretion are a relevant consideration. (Ferocem at 247). It is also 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 Patents Office. (Ferocem at 247, Goninan at 222)
The facts
The application for extension of time states:
Preparation of Evidence-in-Reply is substantially complete. David White has executed a Declaration, and it is ready to be submitted if needed.
A settlement position has been reached between the Applicant and the Opponent, and a draft settlement agreement has been prepared and comments from the Attorneys for the Applicant have been received. The Attorneys for the Opponent are currently reviewing the latest draft and are endeavouring to organise a discussion with the Applicant company this week. It is anticipated that a settlement position will be reached between the Applicant and the Opponent and both the Applicant and the Opponent are desirous of the negotiations continuing. The Opponent is however maintaining its option to file the Declaration in the name of David White if needed.
It is apparent from the file that settlement negotiations have been proceeding since at least April 2011, and have not yet been concluded. It is also apparent that a declaration by David White was executed on 16 May 2011, but has not been served. It is not apparent why settlement negotiations have not been completed.
Explanation of the delay
It is apparent that the evidence is available, but has not been served on account of the settlement negotiations. It remains unknown why the settlement negotiations have not been concluded after a period of at least 18 months. The explanation of delay is inadequate.
Nature and significance of the evidence
The opponent has stated that the evidence to be served is significant “given that the scope of the claims has changed dramatically since filing the Evidence-in –Support”. This is a reference to an amendment of the claims. However, there is no indication of the nature of the evidence, and how it relates to the grounds of opposition. I am unable to reach any conclusion as to the nature of the evidence, and consequently as to the significance of the evidence. Given that the evidence was finalised over year ago, it is surprising that the opponent has not provided a description of it. In the absence of any detail I am unable to draw any inference as to the nature of the evidence, and the opponent has not established that the nature and significance of the evidence supports the extension.
Interests of the parties
The opponent stated “both parties seek to resolve this matter by way of settlement”. Accepting the truth of this statement, it is apparent that the interests of the parties support the extension.
Other matters
There is a public interest in the timely resolution of oppositions, and the Patent Office has an interest in orderly administration of oppositions. In the present case the lengthy delay in concluding settlement negotiations is frustrating both of these interests.
Balance of considerations
Taking account of all relevant matters, it is clear that the balance lies significantly against allowing the extension. There is no proper explanation of the delay, the nature and significance of the evidence is not apparent, and timely resolution of the opposition is not occurring. While the parties have a personal preference to resolve the opposition by settlement, this preference cannot prevail when the balance of considerations is so clearly against the extension. The extension is not justified.
I note that the extension sought has already expired, and a further extension has been sought on the same basis. However, the evidence of David White has been finalised and is available to be served immediately. I will allow a short period so that the opponent can complete their evidence in reply by serving the declaration of David White (and any other evidence immediately to hand). Once the evidence is completed, the latest extension of time will be unnecessary and the opponent can request refund of the application fee.
Dr S.D.Barker
Delegate of the Commissioner of Patents