WorleyParsons Services Pty Ltd v Hatch Associates Pty Ltd]

[2012] APO 114

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

WorleyParsons Services Pty Ltd  v Hatch Associates Pty Ltd] [2012] APO 114

Patent Application:                   2005250509

Title:Thick Slurry Heating System

Patent Applicant:  Hatch Associates Pty Ltd

Opponent:  WorleyParsons Services Pty Ltd

Delegate:  Nicole Howard

Decision Date:  31 October 2012

Submissions Received:             20 September 2012 (x2), 27 September 2012 (x2)

Catchwords:  PATENTS – Reg 5.10 extension – evidence in answer – evidence highly significant – explanation of delay not fully adequate- extension granted –no award of costs

Written Submissions:                Patent applicant:  Peter Caporn, Wrays Patent Attorneys

Opponent:Roger Henning, Freehills Patent Attorneys

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application:                   2005250509

Title:Thick Slurry Heating System

Patent Applicant:  Hatch Associates Pty Ltd

Date of Decision:  31 October 2012

DECISION

Extension of time to serve evidence in answer granted until 17 October 2012.  No award of costs were made.

REASONS FOR DECISION

BACKGROUND

1.Patent application 2005250509 in the name of Hatch Associates Pty Ltd. (hereafter Hatch) was filed on 1 June 2005. The application was advertised accepted on 17 June 2010. WorleyParsons Services Pty Ltd (hereafter referred to as WorleyParsons) filed a notice of opposition under Section 59 of the Patents Act 1990 on 17 September 2010 and a Statement of Grounds and Particulars (hereafter SGP) on 17 December 2010.  

2.The application relates to a heating system used in processing of dense slurries and similar types of viscous fluids.  In particular, the invention relates to a slurry heating system suitable for heating dense slurries handled in the Bayer digestion process, in which aluminium hydroxide is extracted from bauxite. 

3.Three extensions of time to file evidence in answer (EIA) under Regulation 5.10(2) of the Patents Regulations 1991 have been allowed to date. On 17 August 2012 a request for a fourth extension for a period of two months (to 17 October 2012) was filed.

4.To date no EIA has been served.

5.This decision is based on written submissions.  Submissions were received from both Hatch and WorleyParsons on 20 September 2012.  Responding submissions were then received from both parties on 27 September 2012. 

The application for extension of time

The previous extensions

6. The original delays in service of evidence in support arose as a result of

·Initially assessing the suitability of potential declarants

·Unavailability of declarants during Christmas holiday periods

·Need for fast-tracking project based work commitments by the leading declarant

·Urgently attending to a serious safety risk for a client’s engineering project

·Resignation of key project staff whom which the lead declarant had to cover for

The present extension

7. Hatch attest that the draft statutory declarations of each of the proposed declarants have now been finalised and forwarded for review and comment.  They have not completed the EIA because it took longer than hoped to receive the detailed comments of the leading declarant due to the constraints on his time detailed in the extension application dated 16 May 2012.  In particular;

·The leading declarant is the Hatch Engineering Manager on a project in which the client is pushing to fast track

·April 2012 was the final stage of preparing main documentation as part of that project to obtain necessary funds approval for the project to proceed on track, a process the leading declarant is required for

·Construction commenced early in parallel making the engineering interface intense and needing daily attention for constant streams of urgent items

·The declarant has also been required to assist another client with addressing urgent safety issues

·The Project Manager then resigned and the leading declarant had to temporarily cover this role.

8. I note that Hatch did not serve any EIA within the requested time and that they have requested another (1 month) extension until 17 November 2012.  For the purposes of this decision I will only be dealing with the present request for extension until 17 October 2012.

The law on extensions of time

9.The time for serving evidence can be extended under regulation 5.10(2):

(2)The Commissioner may:

(a)on the application of a party in the approved form;  and

(b)on such reasonable terms (if any) as the Commissioner specifies:

extend the time within which the party may take a step prescribed in this Chapter, not being a step that is taken under regulation 5.3 or paragraph 5.4(1)(a).

10. This provision must be read in conjunction with regulation 5.10(5):

(5)The Commissioner must not give a direction under subregulation (1) or grant an application under subregulation (2) or (4) unless the Commissioner:

(a)if he or she proposes to grant an application by a party -  is reasonably satisfied that the other party has been notified of the application;  and

(b)if he or she proposes to act on his own motion -  ensures that the parties are notified of the proposed action;  and

(c)in either case:

(i)gives the parties a reasonable opportunity to make representations concerning the application or proposed action;  and

(ii)is reasonably satisfied that a direction, and extension of time or the serving of evidence is appropriate in all the circumstances.

11.An extension can only be granted if the Commissioner is reasonably satisfied that it is appropriate.  In exercising this discretion I am guided by the decisions of Burchett J in Ferocem Pty Ltd v Commissioner of Patents (1994) AIPC 91-057; 28 IPR 243, Sackville J in A Goninan & Co Ltd v Commissioner of Patents (1997) AIPC 91-330; 38 IPR 213 and Goldberg J in National Starch & Chemical Co v Commissioner of Patents (2001) AIPC 91-697, 50 IPR 398. These decisions establish that:

a)        The power is discretionary:    Regulation 5.10 confers a broad discretion, which cannot be reduced to imperative compliance with particular requirements.  It is necessary to give genuine and proper consideration to all relevant considerations.  (Ferocem at AIPC 38,208; IPR 247-8,  Goninan at AIPC 39,434; IPR 220)

b)        Explanation of delay: The reasons why the evidence was not served earlier are a relevant consideration, but a satisfactory explanation is not a mandatory requirement.  (Ferocem at AIPC 38,207-8; IPR 247) 

c)        The public interest:     The public interest in determining a serious opposition on its merits is a relevant consideration.  (Goninan at AIPC 39,435-6; IPR 222)

·In order to do this, it is necessary for the Commissioner to form a view as to the nature of the evidence that it is sought to adduce, and the significance of that evidence for the opposition proceedings.  (Goninan at AIPC 39,438; IPR 225-6)

·The significance of the evidence is assessed having regard to any relevant material available, not just the evidence itself.  (National Starch at [33])

·The public interest is not protected merely because some evidence has already been served.  (Goninan at AIPC 39,438; IPR 225)

d)        The interests of the party seeking the exercise of discretion: The interests of the party seeking the exercise of discretion are a relevant consideration.  (Ferocem at AIPC 38,208; IPR 247)

e)        The interests of other parties: It is relevant to consider the disadvantage to the other party of delays in determining the opposition, and the effect of delays on the efficient and orderly administration of the Patents Office.  (Ferocem at AIPC 38,208; IPR 247,  Goninan at AIPC 39,436; IPR 222)

Explanation of the delay

12.Hatch have provided several reasons in the present delay.  The reason for the original delay, and the reason for the first extension related to delays in deciding on a suitable independent expert witness.  After the first extension Hatch determined that they will be proceeding with a single ‘independent expert’ and a ‘leading declarant’ in the preparation of their EIA.  The leading declarant is employed by Hatch as an Engineering Manager.

13.Hatch go on to explain that the subsequent delays have been caused by additional work commitments that have been outside of the control of the ‘leading declarant’. 

14.Some of these work commitments appear to have been directly relevant to the third extension.  In April 2012 the leading declarant had to complete funding documentation for one stage of a project, in May 2012 he had to temporarily cover the role of Project Manager following his resignation and at somewhere around that time he had to help another client with some serious engineering safety issues.  While I appreciate that these commitments may cause some kind of ‘knock on’ effect, it is my view they occurred well enough in the past to not play a significant role in the present delay.  I do not think it reasonable to rely on these reasons as an adequate explanation.

15.The remaining explanations for the delay centre around the leading declarant being unable to devote sufficient time to the preparation of his declaration because of a very heavy workload in maintaining a tight and changing engineering schedule in his employment with Hatch.  While this may be the case I do not see how such work commitments are entirely outside the control of an employer.  Evidence in support was completed some time ago (17 August 2011) and Hatch have been aware of their obligations since then.  I am not entirely satisfied that this constitutes a reasonable explanation of the delay.

16.As pointed out by the Opponent, the Applicant has provided scant detail in their extension requests on why the declaration of the independent expert has not been completed on time.  In their submissions, Hatch now explain that this expert has made several unexpected changes to his declaration and has been travelling overseas between May and August.  They further submit that these changes and travel were not something anticipated by Hatch and were outside of their control.  I am inclined to agree that the actions of an expert not in the employ of the Applicant are outside of their control.

17.WorleyParsons objection centres around the Applicant continuing to rely on the reasons outlined in the third extension request, his employer being in control of the leading declarants work priorities and failing to adequately explain the delay in completing the independent expert’s declaration.  I agree with their first two contentions, however find that a reasonable explanation has now been provided for the last.  In any event, the discretion to grant extensions under Regulation 5.10 is a broad one, and while a satisfactory explanation is one relevant consideration, it is not a mandatory requirement.

The interests of the parties

18.Without the extension Hatch cannot serve any EIA.  They have indicated that completion of EIA is imminent.  (However I note this will require a further extension.)  The evidence is expected to address the issues of novelty and inventive step raised in the EIS.  As a consequence, if no extension is granted then Hatch could be severely compromised when arguing these matters.  Hatch’s interests clearly favour the extension being granted.  WorleyParsons  have an interest in the opposition being determined quickly. The previous extensions have totalled 9 months.  While this is not an insignificant period of time, I do not believe this extension will make a significant difference to the interests of WorleyParsons.

The public interest

19.The public interest in determining a serious opposition on its merits is assessed by considering the nature and significance of the evidence that will be served (Goninan at AIPC 39,438; IPR 225-6).    The evidence that is the subject of this extension is likely to relate to novelty and inventive step.  This evidence is particularly significant in that without it, there would be no or little expert evidence pertaining to these grounds. 

20.I am satisfied that the nature and significance of the evidence favours the grant of an extension of time.

The balance of considerations

21.The public interest and the interests of Hatch favour granting the extension because the evidence is likely to be highly relevant to the outcome of the opposition.  WorleyParsons’ interests lie in refusal of the extension.  Although Hatch have only partly provided a reasonable explanation for the delay, I believe the public interest weighs heavily in favour of granting the extension.

22.I grant the extension of time for serving evidence in support until 17 October 2012.

Costs

23.Costs normally follow the event.  However, I have found that the only reasonable explanation for delay related to the independent expert’s declaration and this explanation was only provided in submissions provided subsequent to the request for extension.  I make no award of costs.

Other matters

24.Because the serving of EIA has not yet been completed it will be entirely dependent on the granting of a further extension.  The Applicant should not automatically assume that the Commissioner will look favourably on future requests as each will be considered on its own merit.

Nicole Howard
Delegate of the Commissioner of Patents