Rio Tinto Alcan International Limited v Norsk Hydro ASA

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Rio Tinto Alcan International Limited v Norsk Hydro ASA [2013] APO 68

Patent Application: 2004281345

Title:Al-Mg-Si alloy suitable for extrusion

Patent Applicant: Norsk Hydro ASA

Opponent: Rio Tinto Alcan International Limited

Delegate: Karen Ayers

Decision Date: 16 December 2013

Hearing Date: 21 November 2013, in Canberra

Catchwords: PATENTS - opposition to Section 104 amendment – amendments allowable under section 102 – claims as filed defined any alloy with a certain chemical composition – proposed amendments limited the alloy to particular type of alloy with specific physical properties – relationship between the chemical composition and its physical properties well recognised in specification as filed – amendments in substance disclosed in the specification as filed – no section 40(2) or (3) problems introduced as a result of the amendment.

Representation:
Patent applicant: David Longmuir (patent attorney), Phillips Ormonde Fitzpatrick Melbourne

Opponent: Greg Hunt, (patent attorney), Griffith Hack, Melbourne

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application: 2004281345
Title:Al-Mg-Si alloy suitable for extrusion

Patent Applicant: Norsk Hydro ASA

Date of Decision: 16 December 2013

DECISION

The opposition is unsuccessful. The proposed amendments filed on 23 December 2011 are allowable under subsection 102 and I allow the request to amend the specification.

Costs are awarded against the opponent Rio Tinto Alcan International Limited.

REASONS FOR DECISION

BACKGROUND

Patent application 2004281345 was filed in the name of Norsk Hydro ASA on 15 October 2004 under the provisions of the PCT. It claimed priority from a Norwegian basic application (NO 20034731) which was filed on 22 October 2003. The Australian application was advertised accepted on 22 July 2010 and a notice of opposition under section 59 was filed on 22 October 2010 by Rio Tinto Alcan International.

Evidence in support in the section 59 opposition was completed on 26 July 2011. On 22 December 2011, the applicant filed a request for leave to amend the specification under section 104. Evidence in answer is currently being held in abeyance under regulation 5.10(1) pending the final outcome of these amendments.
Granting of leave to amend the specification was published under regulation 10.5(2) on 5 April 2012. On 4 July 2012, the section 59 opponent (Rio Tinto Alcan International) filed a notice of opposition under section 104(4) to the proposed amendments. Evidence in the section 104 opposition was completed on 18 October 2013 and a hearing date was set for 23 November 2013. The hearing was held in Canberra with parties appearing remotely by phone (applicant) and videoconference (opponent) from Melbourne.
SPECIFICATION
The specification as filed relates to an Al-Mg-Si alloy suitable for extrusion at a high speed. As cast, these alloys contain β-AlFeSi intermetallic particles which convert to the α-form during homogenisation. This phase transformation is critical for extrudibility and a good surface finish in the finished alloy product because the plate-like β-particles (but not the more rounded α-particles) cause local cracks (surface defects) in the extruded material.[1]
[1] For example, type="1">
When silicon is present in the alloy at levels above 0.50 wt%,…

CaseChat Overview and Summary

In the case of Rio Tinto Alcan International Limited v Norsk Hydro ASA, the Australian Patent Office was tasked with determining the admissibility of proposed amendments to a patent application for an Al-Mg-Si alloy suitable for extrusion. The opposition to the amendments was filed by Rio Tinto Alcan International Limited, challenging the allowance of changes to the patent claims and specification proposed by Norsk Hydro ASA. The primary legal issues revolved around whether the proposed amendments were allowable under the relevant sections of the Patents Act, specifically sections 102 and 40, and whether they introduced any new subject matter not disclosed in the original specification.

The court examined the proposed amendments to claims 1, 2, and 3, which sought to narrow the scope of the claims to homogenised alloys with specific physical properties. The opponent argued that these amendments introduced matter not in substance disclosed in the original specification and lacked clarity and fair basis, contravening sections 102(1) and 40(3). The applicant, however, contended that the amendments were consistent with the disclosure in the original specification and did not extend beyond the original disclosure or introduce new subject matter.

In its reasoning, the court found that the original claims encompassed both as-cast and homogenised alloys, as the chemical composition remained unchanged during the homogenisation process. The specification as filed clearly recognised the relationship between the chemical composition and its physical properties, including the formation of AlMnFeSi dispersoid particles during homogenisation. The proposed amendments simply narrowed the scope of the claims to homogenised alloys with specific physical properties, which was in substance disclosed in the original specification. Furthermore, the court determined that the amendments did not introduce clarity or fair basis issues, as the claims provided a workable standard suitable to their intended use.

The court concluded that the proposed amendments were allowable under section 102 and did not contravene section 40(3). Consequently, the request to amend the specification was granted, and costs were awarded against the opponent, Rio Tinto Alcan International Limited.

CaseChat Overview and Summary

Orders of the court

Background to the litigation

Evidence Before The Court

Reasons for decision

Legal Principle Established