Resolute Resources Limited v QNI Limited

[2000] APO 9

OFFICIAL NOTICE

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Application  :          Nos 694821 in the name of Resolute Resources Limited.

Title:          The recovery of nickel and cobalt from lateritic ores.

Action:          An application by QNI Limited for an extension of time under Regulation 5.10(2) to serve evidence-in-support and an objection thereto by Resolute Resources Limited.

Decision:          Issued            .

Abstract

The opponent did not make out a proper case in its application justifying an extension of time to serve evidence-in-support.  This was the fifth such application for an extension.  However the opponent completed and served its evidence in support prior to this matter being heard.

The applicant cited the fact that because the opponent had a commercial relationship with another opponent it could rely on the other opponent's evidence to substantiate its claims of invalidity.  The evidence was found to be different between the two opponents and consequently the opponent should not have to rely on other evidence to present its case.  Consequently it would be shut out if the application for an extension of time were refused.

There were also co-pending multiple oppositions to the patent application, one of which was still to serve evidence in support.  Hence this particular opposition would not unduly delay proceedings as all the oppositions need to be heard together when all of the evidence in all of the oppositions is complete.

A limited extension of time was granted from 1 December 1999 to 21 December 1999 to QNI Limited in order to validate the service of evidence-in-support.

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Patent Application No. 694821 by Resolute Resources Limited and opposition under Section 59 of the Patents Act by QNI Limited and an objection to an application for an extension of time in which to serve Evidence-in-Support.

BACKGROUND

Patent Application 694821 was filed by Resolute Resources Limited (Resolute) and associated with Australian provisional specification PN 0441 filed 9 January 1995.  The application was published accepted on 30 July 1998.  QNI Limited (QNI) filed a Notice of Opposition on 30 October 1998.

Further Notices of Opposition were filed by Western Minerals Technology and Billiton SA Limited on 29 October and 30 October 1998 respectively.  Billiton SA served its evidence-in-support on 2 August 1999 whilst evidence-in-support from Western Minerals Technology remains outstanding.

Under Regulation 5.8(1) evidence-in-support from QNI was due 1 May 1999.  Numerous (5) extensions of time to serve evidence have been granted to QNI, with evidence-in-support due on 1 December 1999.

QNI on 1 December 1999 filed a request for an extension of time of one month for serving their evidence-in-support, which Resolute subsequently objected to.  Evidence-in-Support was served by QNI on 21 December 1999.

A hearing was held in Canberra on 22 December 1999.  Resolute was represented by Mr David Clark of Griffith Hack, patent attorneys, Sydney and QNI was represented by Mr David Tadgell of Phillips Ormond & Fitzpatrick, patent attorneys, Melbourne who appeared by telephone.

THE APPLICATION FOR EXTENSION OF TIME

The application provides the following reasons for the need for further time in which to serve evidence-in-support:

"Preparation of Evidence-in-Support is nearing completion.  A local expert, namely Mr Mal Price has been engaged, interviewed and substantial comments have been obtained.

Since our previous application for an extension of time, preparation of a draft Declaration in the name of Mr Mal Price ('The Price Declaration') has been substantially completed and subject of a final review from the Australian Attorney, will be forwarded to Mr Mal Price for comment this week.  Substantial comments have already been obtained from Mr Mal Price in relation to the prior art referred to in The Price Declaration so it is anticipated that Mr Price will only require a short period of time to complete his review of The Price Declaration.

Publication dates relating to the Exhibits attached to The Price Declaration have also been obtained, and a Declaration is being prepared relating to those publication dates.

Further time is required in order to allow this final review of The Price Declaration and have that Declaration placed in a form suitable for service as Evidence-in-Support."

DECISION

Subregulation 5.10(2) states:

“The Commissioner may:
(a)  on the application of a party in the approved form; and
(b)  on such reasonable terms (if any) as the Commissioner specifies;
extend the time within which the party may take a step prescribed in this chapter,
not being a step that is taken under regulation 5.3 or paragraph 5.4(1)(a).”

Subregulation 5.10(5) qualifies the operation of subregulation 5.10(2) by, inter alia, stipulating that the Commissioner must not grant an extension application under subregulation (2) unless the Commissioner:

“gives the parties a reasonable opportunity to make representations; and

is reasonably satisfied that the extension of time is appropriate in all the circumstances.”

The law on extension of time provisions, and specifically the law on Regulation 5.10, has been considered and summarised by Burchett J in Ferocem Pty Ltd v Commissioner of Patents (1994) 28 IPR 243 and more recently by Sackville J in A Goninan & Co Ltd v Commissioner of Patents (1997) 38 IPR 213. Both of these decisions indicate that regulation 5.10 confers a broad discretion, which cannot be reduced to an imperative compliance with particular requirements. On the contrary, it is necessary to give proper, genuine and realistic consideration to all relevant matters of the case. Relevant matters include:

• Explanation of delay

• The public interest

• The interest of the opponent

• The interest of the applicant

Explanation of delay

The person seeking the extension of time, in this instance the opponent, must discharge the onus of satisfying the Commissioner that the extension is appropriate in all the circumstances.  I need to consider whether a full and frank disclosure has been made by the opponent in its application.

In reviewing the explanation it is clear the opponent believes the preparation of evidence is nearing completion and that all that is required is a final review from the declarant and the declaration needs be placed in suitable form.  As such the opponent believes only a short period of time is required.  I note the application does not give a specific reason, or reasons as to why the declaration could not have been reviewed earlier by Mr Price, thus causing a further delay.

The applicant submitted that the previous applications for extensions are relevant to a determination as to whether this application should be granted.  In particular it highlighted the fact that the statement:"Preparation of evidence nearing completion" in the application has been used by the opponent on all five previous applications.  Hence the applicant questions the opponent's intentions in promptly serving its evidence as the evidence appears to have been "nearing completion" since 1 August 1999.  Such a line of reasoning by the applicant now seems irrelevant as the entire evidence-in-support was served on 21 December 1999.

The applicant further submitted that the serving of evidence in support on the eve of this hearing supports its allegation that "merely the objection to the opponent's extension was what prompted the immediate filing or serving of the opponent's evidence".  To my mind the serving of the evidence-in-support prior to the hearing adds weight to the statements in the application that "preparation of evidence-in-support is nearing completion" and "Mr Price will only require a short period of time to complete his review" as the time ultimately required was less than what was requested, irrespective of what other motives the opponent may have had for serving the evidence at the time they did.

However, whilst I am cautious in not reducing the reasoning to an imperative I find this application has not identified a particular reason or reasons justifying a delay.  I acknowledge the application shows that some progress was made and that only a brief period time was required to complete the evidence, but this in itself does not constitute a valid explanation of delay.  It still remains for me to consider whether an extension of time is appropriate in all of the circumstances.

The public interest and interest of the parties

In considering the public interest I need to balance the competing factors of ensuring only valid patents are granted against the expeditious disposal of matters in the Patent Office, and questions of costs, efficiency and maintenance of professional standards as addressed by Burchett J in the Ferocem decision.

I am also conscious of the words of Kitto J in Kaiser Aluminium & Chemical v. The Reynolds Metal Company (1969) 120 CLR at 143, viz a serious opposition should be dealt with on its merits rather than be shut out as a consequence of a failure of procedure.

The opponent clearly wishes to rely on the evidence served and as such submits it would effectively be shut out if the extension were not granted.  The applicant highlighted the fact that the opponent QNI has a commercial relationship with another of the opponents, Billiton, suggesting QNI is wholly owned by Billiton.  Consequently the applicant asserted QNI would not be shut out entirely as it could rely on Billiton having the opportunity to invalidate the patent.  (I note QNI acknowledged there was a relationship between itself and Billiton without elaborating exactly what that relationship was.)

On perusing the respective statement of grounds and particulars from QNI and Billiton I find that whilst having some commonality they do raise significantly different particulars (for example the particulars relating to a lack of inventive step).  As such I find these differences require a different consideration in preparing evidence, and indeed also in assessing how the validity of the patent may be affected.

I also note the applicant observed in its written submission that although there are multiple oppositions, each opposition is to be considered independently.  Furthermore the applicant submitted that their evidence is "strictly evidence-in-answer to that of each of the opponents and thus, although the applicant may engage the same declarants, the evidence is likely to be different in its nature and content insofar as it answers to the evidence of the respective opponents". 

From the above submissions it appears the applicant has anticipated differing evidence from each of the opponents.  I cannot see then how the present opponent should be placed in the position of having to rely on the evidence of another party (irrespective of any "relationship" between these parties) where that evidence differs from its own in order to substantiate its (the present opponent's) own claims of invalidity.  Furthermore it does not necessarily follow that the applicant will allow an opponent to rely on another opponent's evidence merely because there is some type commercial relationship.

Consequently I believe that if the extension were not granted, QNI would be denied the opportunity to fully state its case and be shut out.  In addition the validity of the patent may also remain in question if this were the case.  This clearly is of detriment to the opponent, as well as not being in the best interest of the public.

The applicant submits its interests are best served by having the opposition resolved as expeditiously as possible.  The applicant made further submissions questioning the intent and diligence of the opponent in preparing its evidence and its ability to complete the serving of evidence in the time provided if this extension were allowed, or indeed if this were to be the last application for an extension of time based on the previous number of extensions requested.  In the light of the fact that the evidence-in-support has now been completed and served, I believe these issues are no longer relevant.  It also cannot be said that the applicant will be disadvantaged by any delay in allowing this particular extension per se. 

As there are multiple opponents this implies that whilst the oppositions will be dealt with independently, the oppositions will be heard concurrently, see Resolute Resources Limited v Billiton SA Limited [1999] APO 82 (issued 21 December 1999). In turn this means that all the evidence has to be completed on all the oppositions before any one opposition can be heard. In this instance it cannot be said that proceedings will be unduly protracted as evidence in support is still outstanding from another opponent. Hence any delay caused to the applicant may be attributed to the time taken for the final opponent to serve its evidence-in-support as the remaining opponents (QNI and Billiton) have served their evidence-in-support.

In weighing up the public interest I observe there are three opponents each having different statements of grounds and particulars, foreshadowing a serious opposition to the validity of the patent.  Consequently the question of the validity of the patent outweighs the consideration of ensuring an expeditious disposal of matters in this instance.  As such I find it in the public interest to allow the extension of time.

CONCLUSION

The opponent has not made out a proper case justifying the extension in its application.  On the other hand the opponent would be shut out if the extension were not allowed as it has different evidence to that of the other parties, and should not have to rely on other parties to substantiate its claims of invalidity.  The applicant will not be disadvantaged by any undue delay caused by an extension of time being granted as this opponent's evidence-in-support has been served before the last opponent of the three has served its evidence.

Bearing this in mind I believe a limited extension of time to validate the service of evidence-in-support served on 21 December 1999 is appropriate in all circumstances.  I allow an extension of time to 21 December 1999 to validate the service of this evidence.

COSTS

In matters before the Commissioner costs usually follow the event.  In this instance although I have allowed the limited extension of time I find the applicant was justified in objecting to an extension of time being granted based on the insufficient explanation of the delay in the opponent's application.  Furthermore it seems the fact that evidence was served on the eve of the hearing gave the applicant insufficient time to consider withdrawing their objection, thus negating the need for this hearing.  As a result I find it inappropriate to award costs against the applicant.  Hence I find it appropriate that each party bears its own costs.

Lars Koch
Delegate of the Commissioner of Patents

Patent attorneys for the applicant  :  Griffith Hack, Sydney

Patent attorneys for the opponent  :  Phillips Ormonde & Fitzpatrick, Melbourne