SNF (Australia) Pty Ltd v BASF Australia Ltd - [2018] APO 26

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

SNF (Australia) Pty Ltd v BASF Australia Ltd [2018] APO 26

Patent Application: 2012216282

Title:Treatment of Aqueous Suspensions

Patent Applicant: BASF Australia Ltd

Opponent: SNF (Australia) Pty Ltd

Delegate: Dr W.E. Guinea

Decision Date: 18 April 2018

Hearing Date: 20 September 2017, in Canberra

Catchwords: PATENTS – section 59 – opposition to the grant of a patent - inventive step – patent of addition – Commissioner’s discretion under s81 – opposition unsuccessful on all grounds

Representation: Counsel for the applicant: David Shavin QC and Peter Creighton-Selvay
Solicitor for the applicant: Gilbert+Tobin
Counsel for the opponent: Bruce Caine QC and Ben Fitzpatrick
Solicitor for the opponent: K&L Gates

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application: 2012216282

Title:Treatment of Aqueous Suspensions

Patent Applicant: BASF Australia Ltd

Date of Decision: 18 April 2018

DECISION

The Opposition is unsuccessful. None of the claims were established to lack an inventive step. As part of the inventive step analysis it was established that the opposed application is validly a patent of addition to 2001269025 (Gallagher).

The Opponent has not made out a case for the Commissioner to exercise her alleged discretion under s81 to not grant a patent of addition should such a discretion exist.

Costs are awarded against the Opponent, SNF (Australia) Pty Ltd, according to Schedule 8 of the Regulations.

REASONS FOR DECISION

Background

Patent application 2012216282 (the “opposed application”) was filed on 21 August 2012, in the name of Ciba Speciality Chemicals Water Treatments Limited (“Ciba”). The opposed application is a divisional application of 2011213769 (the “parent application”) and consequently claims an earliest priority date of 7 May 2003.
Ciba requested examination on 28 August 2012, and the opposed application was advertised as accepted on 4 December 2014.
A notice of opposition was filed by SNF (Australia) Pty Ltd (the “Opponent”) on 4 March 2015. The Opponent filed a statement of grounds and particulars (the “SGP”) on 4 June 2015.
On 15 December 2016 an assignment request was received from Ciba. This request was allowed on 20 December 2016, such that the opposed application proceeded in the name of BASF Australia Ltd. Hereinafter any reference to the “Applicant” is to BASF Australia Ltd.
At this point it is worth noting that the opposed application and the parent application are members of a patent family comprising 13 applications (the “patent family”) as of the date of this decision. The penultimate ancestor of this family of applications is 2004203785, this being filed on 7 January 2004.
The patent family, as a collective, has been the subject of extensive litigation before the Australian Patent Office and the Federal Court of Australia. Of the decisions that have issued in relation to these applications, the following are of particular interest to the opposed application:
· SNF (Australia) Pty Ltd v Ciba Specialty Chemicals Water Treatments Limited [2016] APO 8 (the “785 decision”) – this decided the opposition…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2018] APO 26
Decision Date: 18 April 2018

CaseChat Overview and Summary

The Applicant, BASF Australia Ltd, filed a patent application for a process of treating aqueous suspensions, in particular, waste mineral slurries. The Applicant's patent application was opposed by SNF (Australia) Pty Ltd. The Applicant opposed the opposition on the basis that the patent application was a valid patent of addition to a previously granted patent, Gallagher, and therefore the Gallagher patent could not be considered prior art for the purposes of assessing inventive step. The Applicant also argued that the Commissioner had no discretion to deny the grant of a patent of addition and that the Opponent had not made a case for such a denial. The Opponent argued that the patent application was not a valid patent of addition to Gallagher and that the Commissioner had a discretion to deny the grant of a patent of addition, and that this discretion should be exercised. The Opponent also argued that the patent application lacked an inventive step over prior art, including the Gallagher patent and Pearson. The Commissioner held that the patent application was validly a patent of addition to the Gallagher patent and that the Commissioner did not have a discretion to deny the grant of a patent of addition. The Commissioner found that the patent application did not lack an inventive step over Pearson and that the Gallagher patent could not be considered prior art for the purposes of assessing inventive step. The Commissioner dismissed the opposition. The Commissioner awarded costs against the Opponent, SNF (Australia) Pty Ltd, according to Schedule 8 of the Regulations.

Orders