Woodside Energy Limited v Richard John Moore - [2017] APO 17

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Woodside Energy Limited v Richard John Moore [2017] APO 17

Patent Application: 2012253231 & 2012253232

Title:Offshore hydrocarbon cooling system (2012253231)
Subsea cooling system (2012253232)

Patent Applicant:                   Richard John Moore
Opponent:  Woodside Energy Limited
Delegate:  Isaac Tan
Decision Date:  18 April 2017
Hearing Date:  Written Submissions filed 15 March 2017 & 22 March 2017

Catchwords: PATENTS – Amendments to the Statement of Grounds and Particulars under Regulation 5.16 - no error or omission identified – amendment refused – costs awarded against the opponent.

Representation: Applicant: FB Rice
Opponent: Corrs Chambers Westgarth

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2012253231 & 2012253232

Title:Offshore hydrocarbon cooling system (2012253231)
Subsea cooling system (2012253232)

Patent Applicant: Richard John Moore
Date of Decision: 18 April 2017
DECISION
I refuse the amendments made to the statement of grounds and particulars to introduce the grounds of novelty.
I direct the opponent to file within fourteen (14) days of the date of this decision a revised statement excluding the ground of novelty but include better particulars for the ground of inventive step.
I award costs in accordance with Schedule 8 against Woodside Energy Limited.
REASONS FOR DECISION
Background
AU 2012253231

Patent Application 2012253231 (“’231”) in the name of John Richard Moore (the “Applicant”) was filed on 11 May 2012 as the national phase application of PCT/AU2012/000509 with a priority date of 12 May 2011. The ‘231 application was accepted on 3 June 2016 and was advertised in the Australian Official Journal of Patents on 23 June 2016.
On 2 September 2016, a Notice of Opposition was filed by Woodside Energy Limited (the “Opponent”) along with a declaration under Section 36(1) of the Patents Act 1990 (the “Act”). The Statement of Grounds and Particulars (the “’231 SGP”) was filed on 2 December 2016.
On 19 December 2016, the Applicant submitted that the ‘231 SGP was deficient due to a lack of detail on the ground of inventive step, and that the opposition, at least in respect to the ground of inventive step should be dismissed. On 22 December 2016, a delegate of the Commissioner directed the Opponent to make suitable amendments to address the deficiencies within four (4) weeks. The amended ‘231 SGP was filed one day late on 23 January 2017 along with an extension of time request which was granted.
On 6 February 2017, the Opponent made a further request to amend the ‘231 SGP seeking to add the ground of lack of novelty in relation to new and existing documents. On 15 February 2017, the Opponent made a further request to ‘231 SGP to correct typographical errors.
On 28 February 2017, the Applicant filed an objection in relation Opponent’s request of 6 February 2017 and 15 February 2017 to amend the ‘231 SGP.
AU 2012253232
Patent Application 2012253232 (“’232”) also in the name of the Applicant was filed on 11 May 2012 as the national phase application of PCT/AU2012/000510 with a priority date of 12 May 2011. The ‘232 application was accepted on 6 May 2016 and was advertised in the Australian Official Journal of Patents on 26 May 2016. The deadline for filing a Notice of Opposition was on 26 August 2016.
On 2 September 2016, a Notice of Opposition was filed by the Opponent along with a declaration under Section 36(1) of the Act and an extension of time under Section 223 to file the Notice of Opposition. The extension of time was opposed and eventually granted. The details surrounding this opposition is covered in Woodside Energy Limited v Richard John Moore [2016] APO 85[1]
[1] Woodside Energy Limited v Richard John Moore [2016] APO 85 at [1] to [5]
The Statement of Grounds and Particulars (the “’232 SGP”) was filed on 2 December 2016. On 20 December 2016, the Applicant submitted that that the ‘232 SGP was deficient due to a lack of detail on the ground of inventive step, and that the opposition, at least in respect to the ground of inventive step should be dismissed. On 22 December 2016, a delegate of the Commissioner directed the Opponent to make suitable amendments to address the deficiencies within four (4) weeks. On 23 December 2016, the Opponent requested an extension of two (2) weeks which was granted, and the amended ‘232 SGP was filed on 2 February 2017 which requested that the ground of lack of novelty be added in relation to new and existing documents. On 15 February 2017, the Opponent made a further request to ‘232 SGP to correct typographical errors.
On 17 February 2017, the Applicant filed an objection in relation to the Opponent’s request of 2 February 2017.
Directions hearing
On 3 March 2017, a directions hearing was held via telephone where a delegate confirmed the following:
“I refer to the directions hearing held by telephone 03 March 2017 and confirm the following:
·The opponent will file by 08 March 2017, a declaration in support of their requests to amend the Statement of Grounds & Particulars of 2012253231 & 2012253232.
·After the 08 March 2017 the delegate of the Commissioner will consider the applicant’s request for a stay of the opposition.
The applicant’s objections to the opponent’s requests to amend the Statement of Grounds & Particulars for both 2012253231 & 2012253232 will now be heard as follow:
·Written submissions from both parties are due 15 March 2016. The parties responding submissions are due 22 March 2016. Submissions should be filed in Objective Connect.
Please note that in this instance the delegate has agreed that fee item 231A ($600.00) will only be payable once (and not per application). The excess fee paid by the applicant will be refunded.”
On 8 March 2017, the delegate made the following direction:
“The oppositions are stayed until the amendments to the Statement of Grounds and Particulars has been resolved. After this time the Applicant will have 3 months to file their Evidence in Answer for each opposition.”
Submissions
The Opponent’s evidence consists of a declaration by Kadri Elcoat (“Elcoat”) dated 8 March 2017
Submissions were filed by the Opponent on 15 March 2017 (“WEL #1”) and 22 March 2017 (“WEL #2”), and by the Applicant on 15 March 2017 (“RJM #1”) and 22 March 2017 (“RJM #2”)
Relevant law
Regulation 5.16 of the Patent Regulations 1991 (the “Regulations”) states:
(1)An opponent may request the Commissioner in writing to amend the opponent’s statement of grounds and particulars:
(a)   to correct an error or omission in the grounds of opposition; or
(b)   to update the grounds of opposition to reflect an amendment to the patent request or complete specification to which the statement relates; or
(c)   to amend the facts and circumstances forming the basis for the grounds.
(2)The Commissioner must:
(a)   notify the applicant of the opponent’s request; and
(b)   give the parties an opportunity to make representations about the amendments.
(3)The Commissioner must not make the amendment if:
(a)   The Commissioner is considering an application for dismissal of the opposition under Part 5.4; or
(b)   For an opposition begun under subregulation 5.4(1):
(i)the applicant’s complete specification is being re-examined; and
(ii)the re-examination is not completed as required by regulation 9.5.
(4)The Commissioner must make the amendment if :
(a)   Subregulation (3) does not apply; and
(b)   The Commissioner is satisfied that the amendment should be made.
(5)The Commissioner must, as soon as practicable:
(a)   notify the parties of the Commissioner’s decision; and
(b)   if the Commissioner decides to make the amendment—give the applicant a copy of the amended statement.
Regulation 5.16(1)(b) does not apply in the present situation as there is currently no amendment to the patent request or complete specification of both the ‘231 and ‘232 application.
I can allow the amendment if I am satisfied that the requirement of Regulation 5.16(1)(a) or 5.16(1)(c) is met.
The grounds
As I have outlined above, the Opponent has made a number of requests to amend the SGP in both the ‘231 and ‘232 applications. I note that the lack of a proper marked up copy of each amendment has made it difficult to easily identify and track the changes.
The proposed amendments related to both the ‘231 and ‘232 application can be summarised as follows:
·The addition of the ground of, and particulars for, lack of novelty.
·Amending the particulars in relation to the ground of lack of inventive step.
·Correction of typographical errors.
The Applicant objects to the amendment to introduce the new ground of novelty[2].
[2] RJM #1 at [37]
Relevant considerations
The Patent Manual of Practice and Procedures sets out[3]:
“Relevant factors to be taken into account in determining whether it is appropriate to make the amendment were considered in CSL Limited v Isconova AB et al [2016] APO 82, and include:
·the prospect of undue prejudice to a party – for example, the applicant may be unduly prejudiced by unnecessary delays in seeking amendment, or by the introduction of further particulars that change the case the applicant has to answer (see Diamond Scientific Company v CSL Limited [1992] APO 55);
·the timing of the amendment request and the reasonableness of the explanation of the delay;
·the public interest – noting that a correct determination of the opposition is one based on the issues properly raised in the opposition proceedings.”
[3] Patent Manual of Practice & Procedure at Paragraph 3.4.3
In CSL Limited v Isconova AB et al [2016] APO 82 (the “CSL decision”), the Deputy Commissioner refused the raising of new particulars said to arise from the amended specification as it was not filed promptly[4]. However the delegate allowed an amendment to move particulars of a document from under the ground of inventive step to under the ground of lack of novelty[5]. In both instances, the relevant factors were taken into account on amendments which comply with subregulations 5.16(1)(a) to (c).
[4] CSL Limited v Isonova AB et al. [2016] APO 82 at [15] to [16]
[5] Ibid at [6] and [19]
In the present opposition, it is clear from regulation 5.16(1)(a) that the introduction of a new ground for lack of novelty can only be added to correct an error or omission in the grounds of the opposition.
Regulation 5.16(1)(a) - Is there an error or omission?
Both parties filed one set of evidence in relation to both the ‘231 and ‘232 applications. I will provide a general summary of the circumstances.
The Opponent asserts that the proposed amendments to add the ground of novelty should be permitted under Regulation 5.16(1)(a) due to an error or omission made by the Opponent and/or their representative.
The Opponent relies on the declaration of Kadri Elcoat, a consultant retained by Corrs Chambers Westgarth (“Corrs”) to establish that the proposed amendments were made because[6]:
“The deadline for the Opponent to file its Statement of Grounds and Particulars (SGPs) in the 231 and 232 Opposition was 2 December 2016 (the December deadline).
Corrs received from the Opponent a pool of potential prior art relevant to the 231 and 232 Oppositions at about 8pm on 28 November 2016. The pool of prior art consisted of 13 patent documents and 18 articles.
It was not possible for Corrs to conduct a detailed review of that prior art, and make an informed assessment as to the relevance of each piece of prior art, prior to the December deadline for two reasons. First, it was not possible to review that volume of material within that timeframe. Since filing the original SGPs, I have personally reviewed this pool of prior art. That task took in excess of 40 working hours. Secondly, the Corrs intellectual property team does not include any staff with specialist mechanical engineering knowledge.
In these circumstances, Corrs was instructed by the Opponent to file the original SGPs for the 231 and 232 Oppositions relying only on lack of inventive step and lack of entitlement.”
and that[7]
“Had Corrs been able to undertake its review of the prior art prior to the December deadline, I believe that the matters which the Opponent now seeks to introduce by amendment would have been addressed in the original SGPs.
The present amendment applications arise because of an error or omission in relation to reviewing the available prior art and considering which grounds of opposition arise from that prior art. The Opponent and Corrs (due in part to the timing referred to above) omitted to review that prior art in sufficient detail prior to the December deadline.”
[6] Elcoat at [8] to [11]
[7] Ibid at [16] to [17]
I also note[8]:
“Corrs commenced a review of the pool of prior art on 23 December 2016. This review was commenced in response to a request by IP Australia dated 22 December 2016 that the Opponent provide further particulars in the Statement of Grounds and Particulars for the 232 Application. Due to the Christmas break, the review was not completed until about 31 January 2017.”
[8] WEL #1 at [14]
In response, the Applicant submits that[9]:
“The evidence does not explain why WEL provided its instructions and the pool of prior art only a short time before the deadline for filing the SGAPs or how WEL had arrived at its conclusion to initially rely only on inventive step and entitlement as grounds of opposition. WEL filed its Notice of Oppositions for ‘231 and ‘232 on 2 September 2016, nearly three (3) months before it instructed Corrs to file the SGAPs but there is no evidence about WEL’s conduct over this considerable period of time.”
and that[10]
“With hindsight, Ms Elcoat states at paragraph 16, the ground of novelty would have been included if she had been able to undertake a review of the prior art prior to the December deadline, but this is inconsistent with her behaviour at the time. Ms Elcoat admits that she did not commence a review of the prior art until 23 December 2016, over three weeks after receiving WEL’s instructions and only in response to a request by IP Australia dated 22 December 2016 to provide further particulars in the SGAP for ‘232.”
[9] RJM #2 at [12]
[10] Ibid at [22]
I am inclined to agree with the Applicant that the amendment should not be allowed. I cannot find any error or omission.
The evidence on file does not show that the Opponent omitted to review the prior art in sufficient detail prior to the December deadline. Rather, the evidence shows that Corrs had acted in accordance to the Opponent’s instructions. I also note that after the original SGP was filed, no review was conducted until prompted via a request by IP Australia to provide further particulars. Therefore it does not appear that there was any intention to conduct a review and thus, the error or omission does not reside with Corrs.
To the extent that an error or omission may reside with the Opponent, the evidence shows that the Opponent provided Corrs with a pool of potential prior art at about 8pm on 28 November 2016 shortly before the 2 December 2016 deadline to file the SGP for both the ‘231 and ‘232 application. However, there is no evidence showing the circumstances leading up to this date, or why the pool of potential prior art was not provided to Corrs earlier. That is, there is no evidence of an error by the Opponent.
I am not satisfied that Regulation 5.16(1)(a) applies in the present situation. Consequently I refuse to accept the amendments in relation to introduce the new ground of novelty.
Other considerations
As the request to amend the SGP to add the ground of novelty does not meet the requirement of Regulation 5.16(1)(a), the related particulars are also not allowable under Regulation 5.16(1)(c).
I note that some of the prior art listed under the particulars for the ground of novelty was previously listed under the ground of inventive step in the SGP as filed, and is already in evidence. It may be possible to amend the ground of inventive step to include these items of prior art.
Conclusion
I refuse all the amendments made to the statement of ground and particulars for both the ‘231 and ‘232 oppositions.
The Opponent is directed to file an amended statement based on the SGP as filed for both ‘231 and ‘232 which excludes the ground of novelty but include better particulars for the ground of inventive step within fourteen (14) days of the date of this decision.
The oppositions are stayed pending allowance of the amended SGP.
Costs
Generally costs should follow the event. The applicant has been successful in their opposition to the amendment of the SGP for ‘231 and ‘232. I award costs in accordance with Schedule 8 against the opponent.
Isaac Tan
Delegate of the Commissioner of Patents