FEDERAL COURT OF AUSTRALIA National Starch & Chemical Company v Commissioner of Patents [2001] FCA 33 PATENTS – review of decision of delegate of Commissioner of Patents – opposition proceedings – refusal of application for an extension of time for filing evidence – whether improper exercise of power – whether failure to take relevant considerations into account – whether delegate required explanation for delay in filing evidence as precondition to granting extension of time – whether failure to give proper, genuine and realistic consideration to public interest in determining serious opposition on its merits – whether failure to give proper, genuine and realistic consideration to nature and significance of evidence for which extension of time sought – whether error of law – whether delegate applied test of determining whether opposition would be rendered untenable if extension of time was not allowed. Administrative Decisions (Judicial Review) Act 1977 (Cth): ss 18, 40, 59 Patents Act 1990 (Cth): ss 40(2), 40(3) Patents Regulations 1991 (Cth): rr 5.8, 5.10(2), 5.10(5)(c) Ferocem Pty Ltd v Commissioner of Patents (1994) 49 FCR 205 considered A Goninan & Co Ltd v Commissioner of Patents (1997) 75 FCR 2000 applied Hindi v Minister for Immigration and Ethnic Affairs (1988) 20 FCR 1 referred to Minister for Immigration and Ethnic Affairs v Wu Shan Liang (1996) 185 CLR 259 referred to Northern NSW FM Pty Ltd v Australian Broadcasting Tribunal (1990) 26 FCR 39 applied F Hoffman‑La Roche AG v New England Biolabs Inc (2000) 99 FCR 56 referred to NATIONAL STARCH AND CHEMICAL COMPANY v COMMISSIONER OF PATENTS & ORS V 415 of 2000 GOLDBERG J 2 FEBRUARY 2001 MELBOURNE IN THE FEDERAL COURT OF AUSTRALIA VICTORIA DISTRICT REGISTRY V 415 of 2000 BETWEEN: NATIONAL STARCH AND CHEMICAL COMPANY Applicant AND: COMMISSIONER OF PATENTS First Respondent THE UNIVERSITY OF NEW SOUTH WALES BURNS PHILP AND COMPANY LIMITED BURNS PHILP RESEARCH AND DEVELOPMENT PTY LTD COMMONWEALTH SCIENTIFIC AND INDUSTRIAL RESEARCH ORGANISATION ARNOTT'S BISCUITS LTD GIST-BROCADES AUSTRALIA PTY LIMITED GOODMAN FIELDER INGREDIENTS LIMITED Second Respondents JUDGE: GOLDBERG J DATE OF ORDER: 2 FEBRUARY 2001 WHERE MADE: MELBOURNE THE COURT ORDERS THAT: 1. The decision of the first respondent given by his delegate, Dr S D Barker on 19 May 2000 refusing the application made by the applicant for an extension of time for serving a copy of the evidence in support of the opposition to the grant of Patent No 705095 in the name of the second respondents is set aside. 2. The applicant's application for an extension of time for serving a copy of such evidence is remitted to the Commissioner for further consideration and determination according to law by a different delegate. 3. The second respondents pay the applicant's costs of the application. Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules IN THE FEDERAL COURT OF AUSTRALIA VICTORIA DISTRICT REGISTRY V 415 of 2000 BETWEEN: NATIONAL STARCH AND CHEMICAL COMPANY Applicant AND: COMMISSIONER OF PATENTS First Respondent THE UNIVERSITY OF NEW SOUTH WALES BURNS PHILP AND COMPANY LIMITED BURNS PHILP RESEARCH AND DEVELOPMENT PTY LTD COMMONWEALTH SCIENTIFIC AND INDUSTRIAL RESEARCH ORGANISATION ARNOTT'S BISCUITS LTD GIST-BROCADES AUSTRALIA PTY LIMITED GOODMAN FIELDER INGREDIENTS LIMITED Second Respondents JUDGE: GOLDBERG J DATE: 2 FEBRUARY 2001 PLACE: MELBOURNE REASONS FOR JUDGMENT Introduction 1 The applicant ("National Starch") applies for an order of review under the Administrative Decisions (Judicial Review) Act 1977 (Cth) of a decision of a delegate of the Commissioner of Patents, the first respondent ("the delegate"), made on 19 May 2000 ("the decision"). The delegate refused the application by National Starch under reg 5.10(2) of the Patent Regulations 1991 (Cth) ("the Regulations") for an extension of time within which to file evidence in support of its opposition to the grant of a patent for which the seven second respondents ("the respondents") had applied. 2 The patent (Australian Patent No 705905) relates to the enhancement of microbial colonisation of the gastrointestinal tract. The invention is more fully described in the abstract as: "Probiotic composition comprising one or more probiotic microorganisms, a carrier which will function to transport the one or more probiotic microorganisms to the large bowel or other regions of the gastrointestinal tract of an animal, the carrier comprising a modified or unmodified resistant starch or mixtures thereof, which carrier acts as a growth or maintenance medium for microorganisms in the large bowel or other regions of the gastrointestinal tract, and an oligosaccharide. Method of increasing the number of probiotic or resident microorganisms in the gastrointestinal tract of an animal comprising providing to the animal the probiotic composition." Background 3 The relevant chronology commences with the respondents' patent application which was lodged on 20 March 1997 and advertised as accepted on 13 May 1999. National Starch filed a notice of opposition on 13 August 1999 and a copy of the statement of grounds and particulars on 15 November 1999. Accordingly National Starch was required, pursuant to reg 5.8(1)(a), to serve the evidence in support of its opposition within three months of 15 November 1999. On 20 January 2000 the Patent Office, at the request of the respondents, directed National Starch to provide further and better particulars in respect of the opposition. 4 On 15 February 2000 National Starch filed three applications: an application for a stay of proceedings for six months because the parties were negotiating with a view to settling the opposition, which was not granted; an application for a one month extension to 15 March 2000 to file evidence in support of the opposition, which was granted; an application to amend the statement of grounds and particulars, which was granted. 5 On 15 March 2000 National Starch served part of its evidence in support, which consisted of journal articles on which it intended to rely as part of the prior art, and some library declarations concerning publication dates. Also on 15 March 2000, National Starch lodged a further application for a three month extension of time to 15 June 2000 within which to file its evidence. The grounds of the application were: · difficulties in contacting, and obtaining the views of an expert witness; · difficulties in identifying libraries from which to obtain publication dates for various references; · the parties were conducting negotiations with a view to settlement of the opposition. The respondents opposed the application and a hearing was held on 9 May 2000. On 19 May 2000 the delegate refused the extension sought but allowed seven days for the serving of any evidence immediately to hand. National Starch filed some journal articles and further library declarations in the time allowed. 6 National Starch claims that had the extension of three months been granted, it would have filed evidence of two experts in the relevant field of microbiology and evidence as to publication dates of journal articles in support of its grounds of opposition of lack of novelty and lack of inventive step. The grounds of opposition 7 National Starch's grounds of opposition are that: · the invention is not a manner of manufacture. · the invention is not novel. · the invention does not involve an inventive step. · the complete specification does not comply with ss 40(2) or (3) of the Patents Act 1990 (Cth) ("the Act"). Relevant legislation 8 Chapter 5 of the Regulations sets out the procedure and time limits governing opposition proceedings. The time for serving evidence in support of an opposition is three months from the date of serving the statement of grounds and particulars: reg 5.8. Any party may apply to the Commissioner, by way of application in the appropriate form, to extend this and other time limits pursuant to reg 5.10(2). 9 Regulation 5.10(2) provides: "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)." Regulation 5.10(5) relevantly provides: "The Commissioner must not give a direction under subregulation (1) or grant an application under subregulation (2) or (4) unless the Commissioner: (a) … (b) … (c) in either case (i) … (ii) is reasonably satisfied that…an extension of time…is appropriate in all the circumstances." The decision of the delegate 10 The delegate identified the relevant regulations and set out the principles that govern extensions of time to serve evidence which are found in Ferocem Pty Ltd v Commissioner of Patents (1994) 49 FCR 205 and A Goninan & Co Ltd v Commissioner of Patents (1997) 75 FCR 200. The delegate noted that reg 5.10 conferred a broad discretion which cannot be reduced to imperative compliance with particular requirements, that the reasons why the evidence was not served in time was a relevant consideration but a satisfactory explanation was not a mandatory requirement, and that the public interest in determining a serious opposition on its merits was a relevant consideration which involved forming a view as to the nature of the evidence sought to be adduced and its significance. The delegate also accepted that the interests of the applicant for the extension was a relevant consideration as was any disadvantage to the other parties of delays in determining the opposition and the effect of delays on the efficient and orderly administration of the Patents Office. 11 The delegate then set out National Starch's reasons for, and evidence in relation to, the application for the extension of time which, broadly stated, related to difficulties in obtaining expert evidence and relevant library declarations as to dates of publication, and to the fact that National Starch informed its patent attorneys that it was negotiating with Goodman Fielder Ingredients Limited, one of the second respondents. The delegate concluded that there was no explanation why National Starch had taken until 22 December 1999 to give instructions to its patent attorneys to engage experts, or why the evidence of the then unidentified overseas expert was not available. The delegate found that although there had been negotiations between the parties, the evidence failed to satisfy him that, there were negotiations for the resolution of the opposition, and, overall, there had not been an adequate explanation for the delay. 12 On the issue of the nature and significance of the evidence, the delegate reasoned: "The nature of the evidence that is still to be served makes it preferable (although not essential) for that evidence to be included. The significance of the evidence cannot be determined as there is no material before me on this point. I conclude that the nature and significance of the evidence interest is neutral in relation to the extension of time." The delegate accepted that the interests of National Starch supported the grant of the extension of time, but found that any further extension of time was contrary to the interests of the second respondents as the patent applicant. The delegate said that the effect of the delay on the efficient and orderly administration of the Patent Office lay against allowing the extension. 13 The delegate then turned to what he called "Other considerations" and reiterated that there had been a significant and undue delay by National Starch in instructing its patent attorneys to engage an expert, which had not been explained. The delegate balanced the various considerations to which he had referred and concluded: "On balance, the extension is supported by the interests of National Starch. All other considerations are either against allowing the extension or neutral on the issue. I am not satisfied that an appropriate case has been made out." He therefore allowed a seven day extension of time to enable National Starch to serve any evidence immediately to hand, but otherwise refused the application. The applicant's submissions 14 National Starch submitted that the effect of the decision was that it would be precluded from relying on any expert evidence to support its allegation that the invention is neither novel nor involves an inventive step. It relied on ss 5(1)(e) and (f) of the Administrative Decisions (Judicial Review) Act contending that the decision involved: · an improper exercise of power in that the delegate failed to take relevant considerations into account by failing to give proper, genuine and realistic consideration to relevant matters and exercised his discretionary power in accordance with a rule or policy without regard to the merits of the case; · an error of law in that the delegate applied the wrong test by refusing the extension on the basis that the opposition would not be rendered untenable if an extension was not allowed. 15 National Starch submitted that: · the delegate required an explanation for the delay as a precondition to granting the extension of time sought, and treated what he saw as an inadequate explanation for the delay as a paramount consideration which foreclosed proper consideration of other relevant factors; · it was not open to the delegate to find that there was no adequate explanation for the delay; · the delegate ignored the nature and significance of the evidence for which the extension of time was sought and erred in concluding that there was no material before him on the issue with the result that he failed to give proper, genuine and realistic consideration to the issue of the nature and significance of the evidence; · the delegate applied the wrong test, namely would the opposition be untenable if the extension of time to file the evidence was not granted; · it would suffer prejudice unless the decision of the delegate was set aside and it was allowed to file further evidence. The respondents' submissions 16 The respondents submitted that the delegate understood and identified the relevant factors he had to take into account and that he gave them genuine and realistic consideration. They submitted that he had not applied the wrong test and had summarised properly the correct principles to apply. It was contended that National Starch had not placed before the delegate sufficient material to enable him to form a view of the nature and significance of the evidence proposed to be served. Reasoning 17 National Starch relied on two affidavits by its patent attorney which dealt with the history of the application and exhibited relevant documents such as the patent application and the decision of the delegate. They also raised the issue of the prejudice National Starch will suffer in maintaining its grounds of opposition as a result of the decision and exhibited declarations of two expert witnesses dated 15 and 22 June 2000 upon which National Starch wishes to rely in the opposition proceeding. The respondents objected to the admissibility of the two declarations and the evidence as to prejudice on the grounds that the declarations were not before the delegate, and that prejudice was not relevant to a claim that an administrative decision‑maker had made a reviewable error. National Starch propounded the two declarations and the evidence as to prejudice not to support the grounds for judicial review but to support a claim for the exercise of discretion in favour of the grant of relief pursuant to s 16 of the Administrative Decisions (Judicial Review) Act if reviewable error was otherwise established. The respondents accepted that as the grant of relief in judicial review proceedings is discretionary, prejudice to National Starch would be relevant if reviewable error was found, but the respondents specifically disavowed any submission that if I found reviewable error I should, as an exercise of discretion, not grant National Starch the relief sought. 18 I do not, therefore, regard National Starch's evidence of the two declarations and prejudice as relevant or admissible in relation to any of the grounds of review raised. Although the respondents are making no submissions as to the manner in which I should exercise the discretion to grant relief found in s 16 of the Administrative Decisions (Judicial Review) Act, it is a matter for the Court to consider whether that discretion should be exercised in any particular way. Accordingly, I consider the declarations and evidence as to prejudice relevant and admissible in relation to the exercise of that discretion. 19 The principles applicable to the power to extend time pursuant to reg 5.10(2) have been given detailed consideration in Ferocem Pty Ltd v Commissioner of Patents (supra) and A Goninan & Co Ltd v Commissioner of Patents (supra). In Ferocem Pty Ltd v Commissioner of Patents (supra) Burchett J said at 208: "Regulation 5.10 lays down a perfectly general requirement – that the Commissioner be 'reasonably satisfied that … an extension of time … is appropriate in all the circumstances'. The idea that such a broad discretion can validly be reduced by a decision‑maker to an insistence upon 'imperative' compliance with particular requirements has repeatedly been rejected by the courts." Burchett J was rejecting the approach to reg 5.10(2), taken by the delegate of the Commissioner of Patents in an application for an extension of time to file evidence in an opposition proceeding, that there had to be a proper explanation of the facts and circumstances surrounding the delay in filing the evidence, and without such a proper explanation a case had not been made out justifying an extension of time. 20 Burchett J continued at 209: "The determination of an application for an extension of time under reg 5.10(2) involves a balancing exercise, in which competing considerations must be taken into account. There are the interests of the persons directly concerned in the application and opposition in question. There are also public interests, which are not necessarily all ranged on the same side. They include the expeditious disposal of matters in the Patents Office, and questions of costs, of efficiency, and of insistence upon the professional standards being maintained by those who deal with the office. But they also include, as Kitto J pointed out in Kaiser Aluminium & Chemical Corporation v Reynolds Metal Co (1969) 120 CLR 136 at 143, 'the public interest that a serious opposition by a person entitled in fact to oppose the grant of a patent should be dealt with on the merits, rather than that it should be shut out in consequence of a failure in procedure, lamentable though the failure may be.'" 21 In A Goninan & Co Ltd v Commissioner of Patents (supra) the delegate of the Commissioner of Patents had pursuant to reg 5.10(2) refused an application for an extension of time to file evidence in support of an opposition to a grant of patent. It was submitted that the delegate had failed to take proper account of the public interest, and had failed to give effect to what was said to be the Commissioner's duty to deal with a proper opposition on its merits. Sackville J adopted the principle that an administrative decision‑maker was required to give proper genuine and realistic consideration to the merits of the case before the decision‑maker. Sackville J followed the judgment of Sheppard J in Hindi v Minister for Immigration and Ethnic Affairs (1988) 20 FCR 1 at 13 in which Sheppard J adopted the observations in Brelin v Minister for Immigration and Ethnic Affairs (unreported, Wilcox J, 14 May 1987) and Khan v Minister for Immigration and Ethnic Affairs (unreported, Gummow J, 11 December 1987), briefly noted at 14 ALD 291. However, Sackville J bore in mind the principles stated in Minister for Immigration and Ethnic Affairs v Wu Shan Liang (1996) 185 CLR 259 at 272: "… the reasons of an administrative decision‑maker are meant to inform and not to be scrutinised upon over‑zealous judicial review by seeking to discern whether some inadequacy may be gleaned from the way in which the reasons are expressed. In the present context, any court reviewing a decision upon refugee status must beware of turning a review of the reasons of the decision‑maker upon the proper principles into a reconsideration of the merits of the decision." Sackville J, adopting the observations of Mason J in Minister for Aboriginal Affairs v Peko‑Wallsend Ltd (1986) 162 CLR 24 at 41, said at 211: "… in general it is for the decision‑maker and not the court to determine the appropriate weight to be given to the various matters which are to be taken into account in the exercise of a statutory power." 22 Sackville J concluded that the delegate had not given proper, genuine and realistic consideration to the public interest in opposition proceedings being determined on their merits, although the delegate in his reasons made statements to the effect that he had taken into account the public interest in opposition proceedings being determined on their merits. Sackville J recognised that a decision‑maker must do more than simply assert that he or she has taken such a matter into account. His Honour said at 212: "However, as Hindi shows, the assertion by a decision‑maker that he or she has taken a factor into account does not necessarily determine whether proper, genuine and realistic consideration has been given to that factor." In Hindi Sheppard J at 13 adopted the observation of Gummow J in Khan at 12: "The assertion by a decision‑maker that he has acted in this fashion will not necessarily conclude the matter; the question will remain whether the merits have been given consideration in any real sense …" 23 Sackville J continued at 213: "In order for the Commissioner or his delegate to give proper, genuine and realistic consideration to the aspect of the public interest I have identified, it is necessary to consider the nature of the evidence the opponent seeks to adduce and the significance of that evidence for the opposition proceedings. I do not mean to suggest that evidence has to be scrutinised in the same way as would occur at a hearing on the merits. But unless the delegate forms a view as to the issues addressed by the proposed evidence, and whether that evidence is likely to be important in the opposition proceedings, it is difficult to see how proper consideration can be given to the public interest in having such proceedings being determined on their merits." 24 I do not consider that the delegate required an explanation for National Starch's delay in filing its evidence as a precondition to granting the extension of time sought, nor do I consider that the delegate treated what he regarded as an inadequate explanation for the delay as a paramount consideration which foreclosed proper consideration of other relevant factors. National Starch submitted that what the delegate did, in substance, was to reduce a broad discretion to an insistence upon an imperative compliance with the requirement that there be an adequate explanation for the delay. If the delegate had adopted this approach or reasoning he would have offended the principles analysed by Burchett J in Ferocem Pty Ltd v Commissioner of Patents (supra). It is true that the delegate considered the issue of delay in two discrete parts of his reasons under two headings, namely "Explanation of the delay" and "Other considerations". There is no inconsistency between the reasoning in these two passages and in neither of the passages does the delegate require that there be an adequate explanation for the delay as a precondition to the grant of the extension of time sought. In the first passage in which delay is considered, the delegate reached the conclusion that "overall, there has not been an adequate explanation of the delay". It was open to the delegate so to find, and National Starch recognised, correctly, that it could not invite the Court to consider whether that was an incorrect finding. 25 I am prepared to accept that there may have been duplication in the delegate's reasons. National Starch submitted that a delay only becomes undue, or an explanation for a delay only becomes inadequate, if there has been a period of time for which there is no proper justification. It was submitted that the delegate had considered the cluster of issues relating to delay as two separate considerations and thereby insisted upon an adequate explanation as an imperative requirement. I reject this submission. To accept it would be to impinge upon the proposition that I should not scrutinise the delegate's reasons over‑zealously and seek to extract an inadequacy from duplicated reasons: see Minister for Immigration and Ethnic Affairs v Wu Shan Liang (supra) at 272. The duplication of part of the reasoning in relation to the delay issue does not mean that the delegate has insisted upon an adequate explanation for the delay as an imperative requirement. 26 The delegate recognised and acknowledged in his reasons that the discretion conferred by reg 5.10(2) "cannot be reduced to imperative compliance with particular requirements" and that "the reasons why the evidence was not served in time are a relevant consideration, but a satisfactory explanation is not a mandatory requirement". Not only did the delegate understand these principles, he took them into account, and on a fair reading of the whole of his reasons he observed these principles. 27 There is no merit in the submission that it was not open for the delegate to find that there was no adequate explanation for the delay. National Starch contended that its patent attorney had given uncontradicted and uncontested evidence in the statutory declaration placed before the delegate that she had received letters from National Starch as to the existence of negotiations. It was submitted that there was no other evidence to the contrary and that, accordingly, on the evidence before the delegate, it was not open to him to conclude that he was not satisfied that there were negotiations. The delegate referred to the patent attorney's evidence, noted that the respondents' patent attorney had contended, albeit in submissions other than in evidence, that there were no negotiations but had accepted that there had been "some type of discussions between Goodman Fielder and National Starch". However, the delegate was uncertain whether these discussions could be characterised as negotiations for the resolution of the present opposition. His conclusion was that "the balance of the evidence fails to satisfy me that there were negotiations for the resolution of the opposition". It was open to the delegate to make this finding. Although National Starch's patent attorney's evidence on this issue was uncontested, that evidence simply referred to negotiations between National Starch and Goodman Fielder. The evidence did not go so far as to characterise the nature of the negotiations as negotiations for settlement of the opposition. The delegate was not obliged to infer that this was the nature of the negotiations, and it was for the delegate to determine on the whole of the evidence whether he was satisfied that there were negotiations for the resolution for the opposition. He was not satisfied, and it is not for this Court to review the merits of that finding. 28 I do not consider that the delegate applied a test of determining whether the opposition would be rendered untenable if the extension of time was not allowed for the filing of evidence. Although he agreed with the observation of the hearing officer in Kimberly‑Clark Worldwide Inc v Carter Holt Harvey Tissue Australia Pty Ltd [1999] APO 83 that: "An opposition without evidence‑in‑support is one which, in practical terms, is rendered untenable.", he did so in response to a submission by National Starch's patent attorney. The delegate noted that the case before him was different as some evidence in support of the opposition had already been filed, which included copies of documents referred to in the statement of grounds of particulars and evidence of publication dates. It was for that reason the delegate said that the opposition would not be rendered untenable if an extension was not allowed. However, the delegate, on a fair reading of the whole of his reasons, did not apply this test in reaching his conclusions. He reached his conclusion that an extension was not justified by taking into account and balancing relevant matters. 29 I turn to the issue whether the delegate failed to give proper, genuine and realistic consideration to the issue of the nature and the significance of the evidence for which the extension of time was sought. In this context it is important to note that the invention claimed is in the field of biochemistry in which technical considerations arise and technical terms which require explanation are used. National Starch carries the burden of proof in the opposition and expert evidence is relevant to its grounds of opposition. The delegate had before him the patent specification, National Starch's statement of grounds of opposition and particulars relating to each ground (since amended). The delegate accepted that: "… the evidence of experts in relation to documents is normally of assistance in deciding whether the documents anticipate the claimed invention." 30 Although the delegate recognised that the public interest in determining a serious opposition on its merits was a relevant consideration to take into account, and in order to do this it was necessary to form a view as to the nature and significance of the evidence sought to be adduced in the opposition proceeding, I do not consider that delegate gave proper, genuine and realistic consideration to this aspect of the public interest. Although the delegate said that "the nature of the evidence that is still to be served makes it preferable (although not essential) for that evidence to be included", he did not relate the nature of that evidence to the grounds of opposition. The delegate found: "The significance of the evidence cannot be determined as there is no material before me on this point." In fact there was material before the delegate on this point, namely the patent specification, the grounds of opposition and the evidence which had been filed on 15 March 2000. 31 The material before the delegate also included: · the technical nature of the invention which was apparent on the face of the specification; · the technical nature of the documents which were referred to in the statement of grounds of opposition; · the statement of grounds of opposition and the particulars relating to each ground; · the role and importance of experts in an opposition proceeding which was recognised by the delegate in his reasons; · the statement by the patent attorney in her submission before the delegate that the evidence comprised proof of publication and expert's views on the opposition, including novelty, obviousness and other validity issues. 32 The respondents submitted that National Starch had not provided any evidence as to which of the grounds of opposition were to be the subject of expert evidence and what the evidence might be. However, there was the material, to which I have already referred, which provided a basis on which the delegate could relate the material to the various grounds of opposition. The delegate did not consider the significance of the evidence, regarding it as neutral in relation to the extension of time, although he was required, consistently with the reasoning in A Goninan & Co Ltd v Commissioner of Patents (supra), to do so. 33 The respondents submitted that in the passage of the delegate's reasoning where he said that the significance of the evidence could not be determined as there was no material before him on the point, the delegate was addressing the relevant consideration of the significance of the evidence, and that his conclusion was to be characterised as an error of fact, rather than an error of law, which was not reviewable. It was said that the error of fact was that there was material before the delegate from which he could make a determination of the significance of the evidence. I do not consider this is a correct characterisation of the error into which the delegate fell. If there was material before the delegate from which findings could be made as to the significance of the evidence, it was incumbent upon the delegate to address that issue in the context of that material. By failing to consider the significance of the evidence in respect of which the extension of time was sought in the context of the patent specification, the grounds of opposition and the particulars of the grounds and the material which had already been filed, the delegate failed to give proper, genuine and realistic consideration to the significance of that evidence, which had a flow on consequence in relation to the consideration of the public interest in determining a serious opposition on its merits. To that extent the delegate failed to take into account a relevant consideration. 34 National Starch submitted that the delegate failed to consider that if it could not file further evidence, it might be precluded from relying upon any expert evidence if the opposition went on appeal to the Federal Court. It was submitted that this restriction followed from the reasoning of Emmett J in F Hoffman‑La Roche AG v New England Biolabs Inc (2000) 99 FCR 56. His Honour had observed (at 64) that s 160 of the Act, which empowers the Court, on an appeal against a decision or direction of the Commissioner, to admit further evidence, suggested that it was within the power of the Court to constrain further evidence, and indicated that the Court may exercise a discretion as to the extent to which further evidence would be admitted beyond that which was before the Commissioner. This decision, delivered twelve days before the hearing before the delegate, was not drawn to his attention. It was put that the delegate should have considered the consequences of this decision in the context of the public interest in having an opposition determined on its merits as if it was not so determined in the Patent Office, it was unlikely to be determined on its merits in the Federal Court. 35 Having regard to the conclusion I have reached, it is not necessary to consider whether Emmett J's observations should have been taken into account by the delegate. This issue was not raised before the delegate and even if it had been, it would have required the delegate to speculate as to the issues which might arise on an appeal, which was not part of the task committed to him. He was only required to have regard to the public interest in having an opposition determined on the merits at the opposition stage. 36 I conclude, therefore, that the decision of the delegate should be set aside and the matter remitted to the Commissioner of Patents for further consideration and determination according to law. I cannot see any basis upon which I should exercise the discretion committed to me pursuant to s 16(1) of the Administrative Decisions (Judicial Review) Act adversely to National Starch. No basis was submitted by the respondents. Consistently with the principles set out in Northern NSW FM Pty Ltd v Australian Broadcasting Tribunal (1990) 26 FCR 39 at 42, the matter should be remitted to be heard and determined by a different delegate. 37 The Commissioner did not seek to make any submissions and abided any order of the Court, save as to costs. National Starch does not seek costs against the Commissioner, but does seek costs against the second respondents. The second respondents should pay National Starch's costs of the application. I certify that the preceding thirty‑seven (37) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Goldberg. Associate: Dated: 2 February 2001 Counsel for the Applicant: Ms P M Tate Solicitor for the Applicant: Callinan Lawrie Lawyers Counsel for the Second Respondents: Mr J E Griffiths Solicitor for the Second Respondents: Blake Dawson Waldron Date of Hearing: 27 October 2000 Date of Judgment: 2 February 2001