SNF (Australia) Pty Ltd v BASF Australia Ltd - [2017] APO 2

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

SNF (Australia) Pty Ltd v BASF Australia Ltd [2017] APO 2

Patent Application: 2012216282

Title:Treatment of aqueous suspensions

Patent Applicant: BASF Australia Ltd

Opponent: SNF (Australia) Pty Ltd

Delegate: Ed Knock

Decision Date: 12 January 2017

Hearing Date: Written submissions filed on 5 and 12 December 2016

Catchwords: PATENTS – section 104 amendments – opposition thereto – request for dismissal of opposition – grounds for opposition held to be not available under the Patents Act 1990 – opposition dismissed.

Representation: Counsel for the applicant: Mr David Shavin QC with

Mr Peter Creighton-Selvay
Solicitor for the applicant: Gilbert + Tobin

Patent attorney 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: 12 January 2017

DECISION

I dismiss the opposition to the section 104 amendments at issue.

I award costs against the opponent SNF (Australia) Pty Ltd.

REASONS FOR DECISION

Patent Application 2012216282 by BASF Australia Ltd (BASF) is a member of a family of divisional applications for patents originating from Patent Application 2004203785. The application 2012216282 is the great-great-grandchild of 2004203785. All of this family of applications were originally in the name of Ciba Specialty Chemicals Water Treatments Limited (Ciba), but were assigned to BASF on 20 December 2016. For a full elucidation of the inter-relationships within this family, see the decision on the opposition to application 2004203785, SNF (Australia) Pty Ltd v Ciba Specialty Chemicals Water Treatments Limited 2016 APO 8 at [14] to [24].

Practically every member of the present family of applications has been the subject of litigation between Ciba and SNF (Australia) Pty Ltd (SNF). The most extensively litigated so far are the five now-expired innovation patents belonging to the family. These certified innovation patents have been found by both the Federal Court (Kenny J) and the Full Court of the Federal Court to be valid and infringed by SNF. A subsequent request for Special Leave to appeal to the High Court was refused. However, in the SNF v Ciba decision on the opposition to 2004203785 the delegate of the Commissioner stated that SNF had applied to set aside the declarations and orders of Kenny J on the basis of fresh evidence, and that on 3 August 2015 Davies J had dismissed that application. The delegate went on to say that he was informed that SNF have filed an appeal against that decision. To the best of my knowledge, that situation remains unresolved, but in any case does not impact on the matter at hand.
The opposition to patent application 2004203875 was upheld on one ground only, in particular, that some claims lacked an inventive step in light of International Publication WO 01/92167, which is referred to as the “Gallagher patent” in the opposition decision.
On 29 March 2016 Ciba filed a request to amend the present application to being an application for a patent of addition to Australian Patent 2001269025, which is the national phase…

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: [2017] APO 2
Decision Date: 12 January 2017

CaseChat Overview and Summary

In the case of SNF (Australia) Pty Ltd v BASF Australia Ltd, the applicant BASF sought to amend its patent application 2012216282 to convert it to a patent of addition. SNF opposed the amendment. The dispute was heard by the Australian Patent Office and the decision was made on 12 January 2017. The central issue was whether SNF's opposition to the amendment was sustainable under the Patents Act 1990 and the Patents Regulations 1991.

SNF argued that the Commissioner of Patents did not have the power to convert the application to a patent of addition, that the amendment did not meet the requirements of being an improvement or modification of the main invention, and that the Commissioner should exercise discretion to disallow the amendment. The Commissioner found that the first ground was unsustainable as section 104 allows for amendments that comply with the Act and Regulations. The second ground was also unsustainable because the amendment did not need to meet the requirements of section 81. The third ground was rejected as there is no discretion on the Commissioner to disallow amendments that are allowable under the Act and Regulations.

The Commissioner found that the opposition had no prospects of success and should be dismissed. The Commissioner awarded costs against SNF for pursuing a fundamentally misconceived opposition. The decision confirmed that while there are grounds for opposing an amendment, they are limited and do not involve considerations around patents of addition. The Commissioner found that the most appropriate forum for challenging the patent-of-addition status would be as part of the substantive opposition proceedings. The Commissioner dismissed the opposition and awarded costs against SNF.

Orders