Shell Internationale Research Maatschappij B.V. v Yara International ASA
[2020] APO 55
•16 December 2020
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Shell Internationale Research Maatschappij B.V. v Yara International ASA [2020] APO 55
Patent Application: 2016289420
Title:Method for the manufacture of a urea-based particulate material containing elemental sulphur
Patent Applicant: Yara International ASA
Opponent:Shell Internationale Research Maatschappij B.V.
Delegate:Dr Leslie F. McCaffery, Deputy Commissioner of Patents
Decision Date: 16 December 2020
Hearing Date: Written submissions completed on 17 November 2020
Catchwords: PATENTS –– extension of time under section 223(2)(b) to file statement of grounds and particulars – streamlined processes during the COVID-19 pandemic – request for an extension made at beginning of the period for preparing the statement – consideration of whether there has been a full and frank disclosure of circumstances at the time of request that were anticipated to delay completion of the statement – whether balance of interests lies with grant of the extension – shorter extension granted than was requested – no award of costs.
Representation: Patent attorney for the applicant: WRAYS PTY LTD
Patent attorney for the opponent: PIZZEYS Patent and Trademark Attorneys
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2016289420
Title:Method for the manufacture of a urea-based particulate material containing elemental sulphur
Patent Applicant: Yara International ASA
Date of Decision: 16 December 2020
DECISION
I grant an extension under section 223(2)(b) until 24 December 2020 for the Opponent to file their statement of grounds and particulars.
REASONS FOR DECISION
Patent application 2016289420, in the name of Yara International ASA (the Applicant) was accepted on 18 March 2020 following two adverse examination reports. Nothing hinges on the prosecution history and I will not discuss it further in this decision.
A notice of opposition was filed on 9 July 2020 by Shell Internationale Research Maatschappij B.V. who is also referred to as SIRM in evidence (the Opponent). At the same time the Opponent filed a request for an extension of time to file a statement of grounds and particulars (SGP):
“We request a 3 month extension of time from 9 October 2020 to 9 January 2021 in which to file our Statement of Grounds and Particulars due to the disruptive impact of COVID-19.”
The Commissioner advised the parties on 24 September 2020 that subject to an objection by the Applicant, she intended to grant the extension.
On 29 September 2020, the Applicant requested a hearing. A direction was made that the opposition be heard by written submissions. Parties were given 14 days to provide written submissions in support of their case, and a further 7 days to provide submissions in response. These submissions were completed on 17 November 2020.
Relevant Law and practice
The current COVID-19 pandemic has resulted in significant social and economic costs. To help alleviate some of these impacts for our customers, IP Australia implemented a streamlined extension of time process on 22 April 2020. These extensions are not a new form of extension but rather utilise existing extension of time mechanisms. Extensions can be requested to any period that can currently be extended under the Patents Act, except for the period to pay renewal or continuation fees. Because the extensions are based on existing provisions, they are also subject to the usual opposition processes that apply to an extension of that type. In the case of oppositions, if the legislation requires the other party to be given an opportunity to make representations on a request for an extension then they are invited to make written representations within 7 days. Parties may also seek hearing of the matter in the usual manner if they are not satisfied with a determination of the Commissioner.
The streamlined process allows a requestor to tick a box to declare that the impacts of COVID-19 had prevented a relevant act from being carried out, rather than go through the usual processes and provide the usual material in support of their request. An extension of time of up to 3 months can be requested, free of charge, for certain actions. Requestors are also advised that a false declaration could put the validity of their IP right at risk.[1] While this infers that the requestor is a right holder, I understand this to mean that the usual consequences will apply to any party making a false declaration that they have been unable to meet a deadline due to disruptions caused by COVID-19. Consistent with any declaration the statements of the requestor, in this case that they have been impacted by COVID-19, are accepted unless there are sound reasons to question their veracity.
[1] .au/free-streamlined-extensions-time-covid-19-disruptions.
Opposition matters are generally dealt with under Chapter 5 of the Act and Regulations. Extensions of time for filing evidence are dealt with under Regulation 5.9. The Commissioner may extend the period only if the Commissioner is satisfied that the party who intended to file evidence in the period:
(i) has made all reasonable efforts to comply with all relevant filing requirements under this Chapter; and
(ii) despite acting promptly and diligently at all times to ensure the appropriate evidence is filed within the period, is unable to do so; or
Alternatively, the time may be extended where there are exceptional circumstances that warrant the extension. Exceptional circumstances include the following:
(a) a circumstance beyond the control of a party that prevents the party from complying with a filing requirement
(b) an error or omission by the Commissioner that prevents a party from complying with a filing requirement
(c) an order of a court, or a direction by the Commissioner, that the opposition be stayed pending the completion of a related proceeding or action under the Act.
However, extensions of time to file the SGP in an opposition are considered under section 223. In the present case section 223(2)(b) is relevant, which states that if, because of circumstances beyond the control of the person concerned, a relevant act that is required to be done within a certain time is not done within that time, the Commissioner may extend the time for doing the act. In most cases this is a retrospective consideration where a party has intended to carry out an action but because of circumstances beyond their control has been unable to. It is well-established law that this is a force majeure provision:
“In the context in which it is found, the expression ‘circumstances beyond the control of the person concerned’ does not in my opinion designate – and designates only – occurrences which neither the person concerned nor any person acting on his behalf to do the act or take the step could prevent. The operations of nature and the activities of strangers may result in such occurrences. So, too, may the acts and omissions of certain independent contractors engaged by the person concerned or by his agent, as for example the carrier of mail or the office cleaner, either of whom causes the loss or destruction of a document to be filed. But the acts or omissions of the agent who on behalf of the person concerned is to do the act or take the step are not occurrences of the description specified in in paragraph 131(1)(a), in my opinion. Nor, in my opinion, are the acts or omissions of that agent’s servants. The section is, I think, correctly described as a force majeure provision.”[2]
[2] Re Atomic Skifabrik Alois Rohrmoser v Registrar of Trade Marks [1987] FCA 22 at [18], (1987) 7 IPR 551 at 558.
10. Section 223 also requires that once circumstances beyond the control have been identified, it must then be established that the failure to do the act was caused by those circumstances.[3] Consistent with that requirement, the streamlined extensions are not intended to be a general power of extension. They are available only where COVID-19 has prevented the relevant person from performing the act in the required time. The usual processes for extensions of time are available where a delay is not related to the impacts of COVID-19.
[3] Kimberly-Clark Ltd v Commissioner of Patents (No 3) [1988] FCA 421 (1988) 13 IPR 569 at [12], 580.
11.Those are the principles that I will apply in this case.
Reasons for the extension
12.The Opponent applied for their extension using the streamlined process and ticked the box to declare that they were unable to meet the deadline due to the impacts of COVID-19.
13.As part of their evidence in support, the Opponent filed a declaration from Dr Bülent Tugal (Tugal), together with Exhibits BT-1 to BT-8. Dr Tugal is an in-house attorney with Shell with sole responsibility for the present opposition. His declaration provided a general overview of the COVID situation in the UK and at Shell.
14.From April 2020, there had been a direction from both the UK government[4] and Shell[5] to work from home. The London transport authority also advised travellers to avoid using public transport as it was restricted to key workers such as health workers and critical infrastructure support staff. Shell staff were told that a return to the London Campus would be no earlier than 21 September 2020. A limited number of staff (200-250) were planned to return during July based on business needs and personal circumstances, but the default setting was that most staff would continue to work from home until the end of 2020.[6] More recently, London commenced a Tier 2 lockdown in October 2020. A 4-week national lockdown applied from 5 November 2020.[7]
[4] Exhibit BT-1
[5] Exhibit BT-4
[6] Exhibit BT-2
[7] Tugal at [7].
15.Dr Tugal stated that as a consequence of those directives, he commenced working at home in April, solely with the use of a laptop, without access to hardware such as printers and desktop monitors, and that he did not have access to numerous physical documents that were required for the opposition.[8] He went on to say that there was also a need to adapt to the new ways of working, which slowed progress down. Adding to the difficulty of working from home, schools were closed so his son was schooled at home, and two visiting family members were stranded in the UK and unable to return home until mid-August.
[8] Tugal at [4].
16.Dr Tugal also stated that Shell business units had to deal with COVID-19 personnel, supply and production issues which made obtaining mandates and financial approvals for the present opposition more difficult. In May 2020 Shell had announced a business restructure and programme of job losses, with a merger of the IP legal department and general legal practice being a source of concern and a distraction.[9] More broadly, the usual means of networking, such as travel to international conferences, were impacted by cancellations and travel bans. Dr Tugal said that this limited access to people who could potentially act as independent experts in the present matter.[10]
[9] Tugal at [6].
[10] Tugal at [5].
17.Finally, Dr Tugal noted that:[11]
[11] Tugal at [8].
“The opposed application relates to the production of elemental sulphur containing urea fertiliser, by using a ‘fluidised bed granulator’. The process claimed in the opposed application is known in the art and lacks patentability by way of at least lack of novelty and lack of inventive step. This was recognised by the patent office of other countries/regions (e.g. USPTO and EPO), which required claim restrictions. SIRM’s opposition to the opposed application is important to Shell because it unjustly affects its commercial aim of promoting processes leading to the reduction of atmospheric carbon.”
The Applicant’s submissions
18.The Applicant objected to the grant of an extension, arguing that the Opponent had wrongly declared that it is unable to meet the deadline and that they are sufficiently well-resourced and familiar with the Australian opposition processes to be able to prepare and file its SGP in the required time. They observed, consistent with the statement of Dr Tugal immediately above, that the Opponent had filed two rounds of third-party observations with the European Patent Office on the corresponding European application. The Opponent was therefore already cognisant of the grounds and prior art relevant in the present matter and would be able to draw on that material in the preparation of their SGP. In that regard they noted that another Shell attorney had filed the third-party observations, but no reason was provided as to why they could not have prepared, or assisted with the preparation of, the SGP. Similarly, they questioned why the Opponent did not delegate some of the task of preparing the SGP to the Australian associate.
19.In relation to the impacts of international travel bans on the preparation of the SGP, the Applicant submitted that there is no need for the Opponent to avail itself of expert witnesses for the preparation of the SGP and the amount of time required for the preparation of the SGP is considerably less than for evidence. They noted that it is open to the Opponent to request an amendment to include further and better particulars if relevant prior art comes to hand later during the evidentiary processes.
20.The Applicant considered that the grant of a 3-month extension would unduly delay the opposition and lead to an extended period of uncertainty for the Applicant in respect of the case it must answer. For similar reasons it was not in the public interest to delay the proceedings. They submitted that these interests should be taken into account when exercising the delegation and even if an extension is granted, that the length of the extension should be determined from the facts. In that regard they considered that a shorter extension might be appropriate.
Consideration of the facts of the case
21.Despite the implementation of a streamlined extension process, my consideration of section 223(2) remains a discretionary one, and in deciding whether to exercise the discretion it is necessary to consider whether there has been a full and frank disclosure of all relevant circumstances, as well as the interests of the parties and the interests of the public.
Full and frank disclosure
22.I am mindful that the global COVID pandemic has impacted widely on people’s lives and the way business is conducted, and is clearly the type of “operation of nature” referred to in Re Atomic Skifabric.[12] In my opinion the difficulties caused to business by COVID and the general uncertainty require that those impacts be given increased weight when considering requests for extensions of time in oppositions during the COVID-19 pandemic as compared to other times. But even so, it is not the existence of the pandemic, but rather the specific impacts on the responsible person, that must be taken into consideration under section 223(2)(b).
[12] Supra
23.Here the request for an extension was made at the same time the notice of opposition was filed. That is, unlike the usual extensions under section 223 which involve a retrospective disclosure of the circumstances and how they prevented the act from being done by the required time, the request here is largely prospective and based on conjecture of circumstances that might arise in the future. This is likely to have been made in light of the uncertainties that existed at the time as to the severity and duration of the pandemic.
24.But the streamlined extensions developed by IP Australia were intended to alleviate such uncertainties by making the extensions readily available when needed, and advance notice will be given when a decision is made to discontinue them. Furthermore, if a party can anticipate on-going delays, and even quantify those delays in requesting an extension upfront, then presumably they can also plan and take action to mitigate their impact. That appears to have been the basis of some of the Applicant’s concerns with the present request. I share those concerns, particularly since a party obtaining an upfront extension and working to an extended deadline may not be as diligent in completing their work, or as motivated to consider and implement mitigating strategies that could enable them to meet the original deadline. To that end, I would expect a party using the streamlined processes upfront to be able to provide reasons as to why they consider that no actions are available that would help mitigate on-going or anticipated impacts. A request closer to the required time allows for a more informed assessment as to the need for an extension and the appropriate length of extension.
25.That is not to say that I agree with the Applicant’s submissions that the Opponent has made a wrong declaration or that the extension in this case is not justified. Dr Tugal was clearly impacted by the pandemic around the time that the request was made, both personally and in his work arrangements. But much of Dr Tugal’s declaration relates to the general circumstances of the pandemic, some of which occurred two to three months prior to the filing of the request. Few specific details were provided in relation to how these were anticipated to result in such an extensive delay in the preparation of the SGP, and why no strategies were available to mitigate the anticipated delays.
26.For example, access to the Shell facilities was limited to only certain staff from April 2020 onwards, and Dr Tugal was required to work from home at that time. It appears that Shell began a phased return to their offices in July 2020, but Dr Tugal did not provide any details about when or if he was able to return. The inference I draw is that he has been unable to return to the office. Because he was working from home, Dr Tugal had limited access to physical documents required that were necessary to prepare the SGP. But as noted in Dr Tugal’s declaration, Shell has a significant commercial interest in the claimed invention, and had monitored equivalent overseas applications, and filed third-party observations on the European equivalent. Presumably, they would have been aware as early as March 2020 of the acceptance of the present application and had made an intention around that time to oppose the grant of the patent. This was well in advance of the filing of the request, but Dr Tugal did not provide any detail the actions that were taken to access the documents, nor of the extent of the consequential or anticipated delays in the preparation of the SGP.
27.Moreover, the Opponent did not provide any indication in their submissions as to the progress that had been made to date on the preparation of the SGP, and when they anticipated it being finalised. While I can infer from the evidence that there would have been impacts on the preparation of the SGP, I am unable to determine the extent of those impacts on its completion. A more full and frank disclosure of the specific circumstances that were anticipated to lead to a failure to meet the deadline would have assisted in the current determination.
28.On balance I am satisfied that there are circumstances that have impacted on the Opponent’s ability to complete the SGP within the required deadline. However, the request was made at the beginning of the period for preparing the SGP when the impacts and the extent of delay was uncertain. I am not satisfied that the Opponent has provided a sufficiently detailed disclosure of the circumstances to justify the request for an extension at that time, including the reasons why no strategies were available to mitigate the impacts.
Balance of interests
29.The key consideration here is whether there is an unnecessary delay to the proceedings if the extension is granted. The interests of the Applicant lie in an expeditious resolution of the matter to avoid an extended period of uncertainty in respect of the case it must answer. The Opponent’s interests lie in ensuring that its commercial interests are not impacted by it being shut out of the Opposition.
30.The gist of the Applicant’s arguments was that the Opponent should be cognisant of the grounds of opposition and the prior art from the third party observations they filed in Europe, and that the SGP is a relatively straightforward document that does not necessarily require input from expert witnesses. They considered the balance of interests lay against the grant of the extension.
31.I do not consider these arguments persuasive. The claims in dispute are indeed the same as the claims for which the Opponent filed third-party observations, so the Applicant themselves are cognisant of the material filed in Europe and aware of the issues likely to be in dispute. But in any case, it is open to the Opponent to argue a different case in Australia under Australian law and practice, and to seek expert evidence in preparing the SGP. As noted by Dr Tugal the Opponent has a clear interest in the invention, and their actions in Europe, together with the notice of opposition here in Australia suggests that they are undertaking a serious opposition.
32.These considerations are also in line with the interests of the public in ensuring that the system operates effectively to avoid the grant of invalid patents and that it works efficiently to avoid unnecessary delays in proceedings. The latter of these issues is mitigated when exercising the delegation by taking the facts of the case into account to ensure an appropriate period of extension is granted. To their credit the Applicants submitted that an extension of shorter duration (a month or two) might be appropriate depending on the circumstances.
33.I am satisfied that the balance of interests lies with the grant of the extension.
Exercise of the discretion
34.Despite my concerns that the Opponent has not provided a sufficient disclosure of the specific circumstances that have delayed preparation of the SGP, I consider the balance of lies with the grant of the extension. Having determined that an extension may be granted, I need to consider the length of extension that is appropriate.
35.Following completion of submissions from the parties, the Opponent was asked to provide an indication of when the progress that had been made on the SGP. They advised that a draft was currently being reviewed and was expected to be filed by 24 December 2020.
36.Under the circumstances and in view of the material provided by the Opponent in support of their request, I consider an extension to 24 December is appropriate. This of course does not preclude the Opponent seeking a further extension based on current circumstances that may prevent timely completion of the SGP by the extended date.
Conclusion
37.I grant an extension under section 223(2)(b) until 24 December 2020 for the Opponent to file their statement of grounds and particulars.
Costs
38.Costs generally follow the event. However, while the Opponent has been granted an extension of time to file the SGP, I am not satisfied that there has been a sufficient disclosure of the circumstances that were anticipated at the time the request was made to lead to a failure to meet the required deadline.
39.I therefore make no award of costs.
Dr Leslie F. McCaffery
Deputy Commissioner of Patents
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