FEDERAL COURT OF AUSTRALIA Iluka Midwest Ltd v Technological Resources Pty Limited [2002] FCA 49 PATENTS – opposition proceedings – interim decision of a Delegate of the Commissioner of Patents upholding opposition but granting leave to amend the specification to cure deficiencies in the specification – final decision to grant the patent – after the final decision opponent appeals against interim and final decision – whether appeal against interim decision out of time – whether opponent is entitled to rely on grounds of appeal that relate to matters decided by the interim decision – whether leave to appeal out of time should be granted Patents Act 1990 (Cth) ss 59, 60 and 61 Federal Court Rules O 58 r 4 R v Smith (Commissioner of Patents); Ex parte Mole Engineering Pty Ltd (1981) 147 CLR 340 - considered F Hoffman La-Roche AG v New England Biolabs Inc (2000) 99 FCR 56 – cited Kaiser Aluminum & Chemical Corporation v The Reynolds Metal Company (1969) 120 CLR 136 - cited Broken Hill Pty Co Ltd v American Can Co [1980] VR 143 – applied Acushnet Co v Spalding Australia Pty Ltd (1990) 18 IPR 364 - cited L. Oertling Ltd. And Anr.'s Application for a Patent [1959] R.P.C.148 - considered Rose Bros. (Gainsborough) Ltd.'s Application (Amendment) [1960] R.P.C. 247 - considered Ratnam v Cumarasamy [1965] 1 WLR 8 - cited Gallo v Dawson (1990) 93 ALR 479 - cited Jackamarra v Krakouer (1998) 195 CLR 516 - cited Kabushiki Kaisha Universal v Aristocrat Leisure Industries Pty Ltd [1998] AIPC 91-396 - cited ILUKA MIDWEST LTD (formerly known as RGC MINERAL SANDS LIMITED) v TECHNOLOGICAL RESOURCES PTY LIMITED V 1056 OF 2001 JUDGE: MERKEL J DATE: 6 FEBRUARY 2002 PLACE: MELBOURNE IN THE FEDERAL COURT OF AUSTRALIA VICTORIA DISTRICT REGISTRY V1056 OF 2001 BETWEEN: ILUKA MIDWEST LTD (formerly known as RGC MINERAL SANDS LIMITED) APPLICANT AND: TECHNOLOGICAL RESOURCES PTY LIMITED RESPONDENT JUDGE: MERKEL J DATE OF ORDER: 6 FEBRUARY 2002 WHERE MADE: MELBOURNE THE COURT ORDERS THAT within fourteen days the parties bring in agreed minutes of orders that give effect to my reasons for judgment and, in so far as any matters cannot be agreed upon, written submissions be filed and exchanged about those matters within a further seven days. 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 V1056 OF 2001 BETWEEN: ILUKA MIDWEST LTD (formerly known as RGC MINERAL SANDS LIMITED) APPLICANT AND: TECHNOLOGICAL RESOURCES PTY LIMITED RESPONDENT JUDGE: MERKEL J DATE: 6 FEBRUARY 2002 PLACE: MELBOURNE REASONS FOR JUDGMENT 1 The present matter concerns the grounds of appeal that are available as of right to a party to a pre-grant opposition who appeals under s 60 of the Patents Act 1990 ("the Act") to the Federal Court against a decision of the Commissioner of Patents made in the course of the opposition. 2 The applicant ("Iluka") and the respondent ("Technological Resources") are mineral sands producers. Either directly, or through associated companies in their respective corporate groups, the companies have been engaged in substantial litigation in the Court in relation to the scope of, and their entitlements under, certain patents and patent applications. 3 The present proceeding concerns patent application 678375 (46915/93) filed by Technological Resources on 12 August 1993 ("the patent application"). The patent application relates to a process for upgrading a titaniferous material by removal of impurities. 4 Acceptance of the patent application was advertised on 29 May 1997. On 27 August 1997 Iluka filed a notice of opposition to the patent application under s 59 of the Act. Iluka's statement of grounds and particulars of opposition filed on 28 November 1997 listed the following grounds: "Ground 1: The invention, so far as claimed in any claim of the opposed application, is not a patentable invention because it does not comply with paragraph 18(1)(a) or (b) of the Patents Act 1990. Ground 2: The specification filed in respect of the application does not comply with sub-section 40(2) or (3) of the Patents Act 1990." 5 The grounds were accompanied by a number of particulars. Iluka indicated at the hearing of the opposition before a Delegate of the Commissioner of Patents that it would not be relying on all the particulars set out in its statement of grounds and particulars ("the grounds not pursued at the first hearing"). It stated that the only grounds it was pursuing at the hearing were that the claims lacked novelty in light of Australian patent application 676682 in the name of RGC Mineral Sands Limited (45513/93) which, prima facie, has an earlier priority date (see s 18(1)(b)(i)) and that the specification did not comply with s 40 (see s 40(2) and (3)) ("the grounds pursued at the first hearing"). 6 The first hearing took place on 22-23 April 1999. On 2 August 1999 the Delegate published his decision ("the interim decision") upholding Iluka's opposition and awarding costs against Technological Resources. The Delegate stated his conclusions as follows: "It is not a requirement of section 18 of the Act for the published specification referred to in subparagraph (b)(ii) of the definition of prior art base in schedule 1 to be in existence before the priority date of the claim under consideration. It is the information contained in the specification that must have existed before the priority date. It is not correct to say the requirement of definition (b)(ii) of prior art base in schedule 1 of the Act is one wholly of fair basis and not one of novelty. It is clear from the wording of section 7(1) that the well-known tests for novelty are to be applied to the 'prior art information'. That is, the information as it existed before the priority date of the claims (in this case the information in the provisional specification) must satisfy the requirement for novelty. The claims are not fairly based on the first TR provisional specification, PL4105, insofar as they define an acid leach in the absence of any alkaline leaching step and in that they define the formation of a liquid oxide phase as distinct from a siliceous liquid phase. Apart from claims 21 to 24 when appended to claim 3, none of the claims are fairly based on PL4105. All of the claims are fairly based on the disclosure in the second TR provisional specification, PL 7193, and are entitled to a priority date of 10 February 1993. RGC provisional specification PL3876 does not contain clear and unmistakable directions to form a liquid oxide phase containing impurities. Further, the opponent has not established that the information contained in the RGC complete specification is fairly based on PL3876. The references to adding a flux cannot be said to be a real and reasonably clear disclosure of forming a liquid oxide phase including impurities that is subsequently cooled to form a leachable impurity bearing phase. All of the claims of the opposed application except claims 18 and 20 to 22 are disclosed in the RGC complete specification. The information contained in the RGC complete application is also disclosed in the RGC provisional specification PL6401. This information therefore has a prior date of 16 December 1992. As this date is before the prior date I have determined for the claims, claims 1 to 17, 19, and 23 to 26 lack novelty in light of AU 45513/93. I have found that there is patentable subject matter contained in the specification. I therefore allow the applicant 60 days from the date of this decision to file amendments overcoming my objections." 7 In his reasons the Delegate indicated that if the claims were amended so as to remove provision for an acid leach in the absence of any alkaline leaching steps, and were limited to a siliceous liquid phase (a subset of the class of liquid oxide phases), the deficiencies he identified could be overcome. As the Delegate found that there is "patentable subject matter contained in the specification" he allowed Technological Resources 60 days to file amendments overcoming his objections. Thus, although Iluka succeeded in its opposition, its success was only partial as the Delegate found that if the deficiencies he identified were overcome, the patent application, as amended, might be able to proceed to grant. 8 The amendments filed by Technological Resources narrowed the claims by replacing the words "liquid oxide phase" with "siliceous liquid phase" throughout the claims. Otherwise, the main amendments made by Iluka to the claims (showing additions as underlined and striking out deletions) were as follows: "1. A process for upgrading a titaniferous material by removal of impurities which process includes the steps of: (i) heating the titaniferous material to a temperature of less than 1300oC to produce a solid titaniferous phase and a siliceous liquid oxide phase containing impurities; (ii) cooling the solid titaniferous phase and the siliceous liquid oxide phase produced in step (I) to form a solidified material comprising the solid titaniferous phase and an impurity bearing phase that is formed from the siliceous liquid oxide phase and is leachable in an acid and/or an alkaline leachant; (iii) leaching the solidified material with an acidic and/or leachant and an alkaline leachant or with an alkaline leachant to leach at least a portion of the impurities from the impurity bearing phase. 2. A process according to claim 1, wherein the liquid oxide phase is a liquid glassy phase as described herein. 3. A process according to claim 2, wherein the liquid glassy phase is a siliceous liquid phase. … 22 24 A process according to any one of claims 1 to 17 wherein step (iii) claim 23 wherein comprises leaching the alkaline leached solidified material with an acidic the alkaline leachant and subsequently with the acidic leachant. 23 A process according to any one of claims 1 to 17 wherein step (iii) comprises leaching the solidified material with the acidic leachant and subsequently with the alkaline leachant." 9 Prior to the second hearing before the Delegate Iluka indicated that it wished to make submissions about the following matters: "1. That the amended claims are not fairly based on the provisional application PL4105, in light of the findings in the decision dated 2 August 1999, and that the claims are therefore invalid in the light of Australian application 45513/93; 2. That the amended claims do not comply with Section 40 of the Patents Act 1990; 3. That the applicant has not complied with the findings of the hearing officers in the decision dated 2 August 1999 in that the amended claims do not overcome the grounds of invalidity upheld by the hearing officer in that decision; 4. That, in view of (1) to (3), either: (a) The application should be refused, or (b) The applicant should be directed to further amend the application pursuant to Section 107 of the Patents Act 1990." 10 At the second hearing the parties were in agreement that it was only open to the Delegate to address those issues arising out of specific deficiencies found in the earlier decision, and anything consequential upon amendments to correct those deficiencies: see R v Smith (Commissioner of Patents); Ex parte Mole Engineering Pty Ltd (1981) 147 CLR 340 ("Mole Engineering"). 11 The Delegate, by his decision published on 10 September 2001 ("the final decision"), rejected Iluka's further submissions and concluded that the amendments overcame the deficiencies identified in the interim decision and awarded costs against Iluka. 12 The Delegate's Abstract of the final decision stated: "The amendments made to the specification by the applicant overcome the deficiencies identified in the decision of 2 August 1999. That decision held that there was no disclosure of an acid leach in the absence of an alkaline leach in the first provisional specification. The amendments have removed the possibility of an acid leach alone from the claims. The claims have also been amended to define formation of a siliceous liquid phase, in conformity with the decision of 2 August 1999. There was no finding in the decision of 2 August 1999 that the claims needed to specifically define removing silica impurity in the alkaline leaching step. The definition of an acid leach subsequent to an alkaline leach in new claim 23 was encompassed by 'an acidic and/or alkaline leach' in the claims as accepted. This had already been considered to be fairly based on the first provisional specification in the original decision and was not open to reconsideration. As the deficiencies in the decision of 2 August 1999 have been overcome, the claims as amended are now fairly based on provisional application PL4105 filed 14 August 1992. This is before the priority date of the prior art information contained in Australian patent application 676682, which was found to be 16 December 1992. Therefore all of the claims as now amended are novel. Direction that the application be sealed after 30 days from the date of this decision. If the Commissioner has been served with a notice of appeal before that time, direction that sealing not occur until the appeal has been decided or discontinued. Costs relating to the final determination awarded against the opponent." 13 On 1 October 2001 Iluka filed a notice of appeal in the Court against the interim and the final decisions. Technological Resources claimed that the appeal was out of time in respect of the interim decision and was incompetent in so far as the grounds of appeal related to issues decided by the Delegate in the interim decision. Iluka disputed that claim contending that, as the appeal was a hearing de novo in respect of the Delegate's decision to grant the patent, it was open to it to rely on any ground upon which that decision may be challenged under the Act. Consistent with this contention, Iluka applied to the Court to amend its notice of appeal by adding the grounds not pursued at the first hearing as well as grounds that had not been previously raised at either hearing ("the new grounds"). 14 Iluka moved the Court for orders that it have leave to file and serve its amended notice of appeal and, in so far as its appeal was out of time in respect of the interim decision, that the time for filing and serving its notice of appeal be extended under O 58 r 4(3)(b). 15 Technological Resources moved the Court for orders that, to the extent the appeal and any grounds of appeal were based on the interim decision (paras 1, 3(a), 3(e) and "possibly" 3(d) of the notice of Appeal), the appeal be dismissed under O 20 r 2 or as incompetent. It also claimed that leave to appeal out of time should be refused and leave to amend the notice of appeal should also be refused in so far as the amended grounds of appeal related to the grounds not pursued at the first hearing, the grounds pursued at the first hearing and the new grounds. 16 In support of its motion Iluka submitted, inter alia: "5. [Iluka] … is entitled to raise the issues contained in the Amended Notice of Appeal, being an appeal against the decision of the Delegate of 10 September 2001 that the Patent application proceed to grant ("the second decision"). 6. The decision of the Delegate of 2 August 1999 was in favour of the Applicant ("the first decision"). It prevented the Patent Application from proceeding to grant (except as to claims 18 and 20-22). In challenging the adverse second decision, it may, of course, be necessary for the Applicant to questions aspects of the reasoning of the Delegate in the first decision but the Applicant does not need and did not need to challenge that decision. This is the same distinction as that which underlies the difference between a cross-appeal and a notice of contention. See FCR O58 r5A. As to the distinction between a 'judgment' and reasons, see, e.g., Landsal Pty Ltd v REI Building Society (1993) 41 FCR 421, 424-425. 7. In the first decision, the Delegate decided 'that the opponent (the Applicant) has been successful on the ground of novelty' and awarded costs against the Respondent. With a decision in its favour, there was no occasion for the Applicant to appeal. There was nothing to appeal 'against' in terms of s 60(4) of the Patents Act 1990. 8. The Respondent subsequently amended the Patent Application and the Applicant opposed the Patent Application in amended form. The opposition to the amended Patent Application as amended is the subject of the second decision. The Delegate found that the Amended claims were novel and, as a consequence, the Applicant was unsuccessful in its opposition. The Applicant appeals that decision. 9. The particular grounds relied upon by an opponent before a Delegate do not limit the grounds available at the de novo hearing before the Court. Even the Delegate may '…take into account any ground on which the grant of a standard patent may be opposed, whether relied upon by the opponent or not': s. 60(3). The Court has equivalent powers, including the power to admit further evidence: s. 160 Patents Act 1990. It follows that the Court has power to take into account new grounds. 10. Accordingly, it also follows that on a properly constituted appeal from the second decision, the Applicant is entitled to raise any or all of the grounds available under s59. See s60, s160. 11. Thus, whether or not the Applicant could or should have appealed from the first decision, it is entitled to raise all of the grounds set out in the proposed Amended Notice of Appeal because there is a de novo proceeding constituted by the appeal against the second decision." 17 Iluka also submitted that, if leave was found to be necessary, it should be granted as: "27. …special circumstances do exist in respect of the Court hearing and determining an aspect of the earlier decision. The inter-relationship between the first decision and the adverse second decision takes this proceeding 'out of the ordinary'. The present question of law has not been settled. 28. In exercising a procedural discretion, there are no fixed rules. Certain factors may be taken into account, including: (a) the explanation for the delay – it was not necessary for the Applicant to act until the second decision was handed down; (b) any prejudice to the Respondent – in light of the timing of the second decision there can be none; (c) actions taken to alert the Respondent that the decision would be contested - the Respondent would have expected the Applicant to appeal and is taken to know that such decisions are decisions de novo. (d) the merits – the Applicant's case has on its face substantial merit; (e) alternative avenues of relief – there is no precise equivalent. A bad patent should not proceed to grant; it is undesirable to have to wait for revocation proceedings if, by hypothesis, the patent is plainly bad; (f) public interest – similarly it is not in the public interest for a bad patent to proceed to grant; (g) length of the delay – there is no effective delay because the Notice of Appeal in respect of the adverse decision is within time." 18 Technological Resources disputed Iluka's submissions. It submitted that the authorities make it quite clear that the interim decision is an appellable decision under s 60(4) of the Act and therefore must be appealed within 21 days after the date of the decision (O 58 r 4). It relied, in particular, upon the observation of Wilson J (at 355-356) in Mole Engineering that unless a party challenges an interim decision by appeal it is not open to it to challenge the matters decided in the interim decision after the final decision has been made. 19 In respect of the scope of the grounds that are available as of right on an appeal, Technological Resources submitted, inter alia: "27. In the proposed amended notice of appeal (but not the existing notice of appeal) Iluka seeks to go further than challenging the matters expressly decided by the Delegate in the first decision. By the proposed amendments Iluka wishes to rely upon particulars which were pleaded in the statement of grounds of opposition but not relied upon at the hearing before the Delegate and in some instances upon particulars which did not appear in the statement of grounds of opposition at all. 28. This aspect of the proposed amendments to the notice of appeal raises for consideration the scope of the 'decision' embodied in the first decision. 29. On one view the first decision should be construed as at least extending to all of the grounds identified in the notice of grounds of opposition viz Ground 1 (alleged non-compliance with sections 18(1)(a) or (b) of the Patents Act 1990) and Ground 2 (alleged non-compliance with sections 40(2) or (3) of the Patents Act 1990). The Delegate decided both of those grounds even if the express findings in the first decision were limited to the matters advanced by Iluka. 30. This kind of approach has been adopted by the Commissioner of Patents in cases concerned with amendments following an opposition hearing. The Commissioner takes the view, in reliance upon Mole's case, in a hearing to consider the validity of the amendments that the earlier decision in the opposition is to be treated as final insofar as it determined all issues capable of determination at that time. On that basis the second hearing may only deal with issues arising from the specific deficiencies found in the earlier decision and any arising consequentially upon amendments to correct those deficiencies (eg Queensland Plumbing Pty Ltd v Trade Waste Diversion Pty Ltd (1993) 27 IPR 303). 31. An alternative view is that the first decision is limited to the matters expressly decided by the Delegate in which event there is no 'decision' below by the Delegate on the new matters sought to be raised by Iluka. Iluka cannot appeal on those grounds because such an appeal would not be 'against a decision' of the Delegate within the meaning of s.60(4) of the Patents Act. 32. There is a policy which encourages an opponent to the grant of a patent to advance all of its grounds of opposition before the Delegate. The Patents Act sets out an elaborate procedure for the filing of evidence, production of documents, filing of grounds of opposition and hearings (see generally Lahore 'Patents, Trademarks & Related Rights'). If an opponent were permitted to 'save up' its true grounds of opposition until the appeal to the Federal Court the proceedings before the Delegate would not deal with the true issues raised by the opposition. The Court would not derive the benefit of the application of the specialist expertise of the Delegate (see RGC Mineral Sands Ltd v Wimmera Industrial Minerals Pty Ltd (1999) 161 ALR 93). 33. In this case whichever view of the scope of the 'decision' embodied in the first decision is adopted does not matter. On the first view the appeal is out of time. On the second view there is no relevant decision which may be the subject of an appeal. Both views produce the same outcome." 20 Technological Resources opposed the grant of leave on the bases that, inter alia, there were no special circumstances, no explanation has been proffered for the failure to appeal against the interim decision, and the giving of leave to appeal more than two years after the Delegate's decision would severely undermine "the policy" emphasised in the authorities that favours "finality and expedition in the conduct of patent applications". 21 The contentions of the parties require consideration of the legislative scheme applicable to an opposition. A patentable invention is defined in s 18 of the Act which, relevantly, provides: "(1) …a patentable invention is an invention that, so far as claimed in any claim: (a) is a manner of manufacture within the meaning of section 6 of the Statute of Monopolies; and (b) when compared with the prior art base as it existed before the priority date of that claim: (i) is novel; and (ii) involves an inventive step; and (c) is useful; and (d) was not secretly used in the patent area before the priority date of that claim by, or on behalf of, or with the authority of, the patentee or nominated person or the patentee's or nominated person's predecessor in title to the invention." 22 Section 29(4) provides for a person to apply for the grant of a patent, by a complete application, by filing, inter alia, a patent request which must be accompanied by a complete specification. Section 40, relevantly, provides: "(1) … (2) A complete specification must: (a) describe the invention fully, including the best method known to the applicant of performing the invention; and (b) where it relates to an application for a standard patent – end with a claim or claims defining the invention; and (c) where it relates to an application for a petty patent – end with a single claim, or a single independent claim and not more than 2 dependent claims, defining the invention. (3) The claim or claims must be clear and succinct and fairly based on the matter described in the specification. (4) The claim or claims must relate to one invention only." 23 Section 59 provides: "The Minister or any other person may, in accordance with the regulations, oppose the grant of a standard patent on one or more of the following grounds, but on no other ground: (a) that the nominated person is not entitled to a grant of a patent for the invention; (b) that the invention is not a patentable invention because it does not comply with paragraph 18(1)(a) or (b); (c) that the specification filed in respect of the complete application does not comply with subsection 40(2) or (3)." 24 Section 60 provides: "(1) Where the grant of a standard patent is opposed, the Commissioner must decide the case in accordance with the regulations. (2) The Commissioner must give the applicant and the opponent a reasonable opportunity to be heard before deciding a case. (3) The Commissioner may, in deciding a case, take into account any ground on which the grant of a standard patent may be opposed, whether relied upon by the opponent or not. (4) The applicant, and any opponent, may appeal to the Federal Court against a decision of the Commissioner under this section. 25 Plainly, in so far as the interim and the final decisions decided "a case" before the Delegate each party to the case had a right of appeal in respect of the matters determined by those decisions (ss 60(3) and (4)). 26 Pursuant to s 61(1)(b) the Commissioner must grant a standard patent by sealing the patent in the approved form if, in spite of opposition, the Commissioner's decision or decision on appeal, is that a standard patent should be granted. Section 104 provides for the Commissioner to give leave to amend a patent request or a complete specification "for any purpose" (including "removing a lawful ground of objection to the request or specification"). Section 104(4) provides for the Minister or any other person to oppose allowing the amendment. Section 104(7) provides for an appeal against the decision of the Commissioner in relation to the amendment. 27 Section 154 confers jurisdiction on the Federal Court with respect to matters arising under the Act. Section 160 confers broad powers on the Court on the hearing of an appeal against a decision or direction of the Commissioner, including the power to admit further evidence. 28 Part II of O 58 of the Rules of Court provides for appeals from a decision of the Commissioner. Save as is otherwise provided by statute an appeal must be instituted within 21 days of the decision appealed from or within such further time as the Court, on application, fixes (O 58 r 4(2)). Rule 4(3)(b) provides for application to the Court to extend time by motion supported by affidavit "showing special circumstances". 29 Finally, a patent may be revoked in proceedings under Ch 12 of the Act. Under s 138 the Minister or any other person may apply for an order revoking a patent on the grounds prescribed by the section which include: the patentee is not entitled to the patent; the invention is not a patentable invention; and the specification does not comply with s 40(2) or (3). The distinction between opposition and revocation proceedings was considered by Emmett J in F Hoffman La-Roche AG v New England Biolabs Inc (2000) 99 FCR 56 at 66: "The fact that the legislation contemplates two stages at which the question of validity of a patent might be challenged indicates that there must be a distinction between the two proceedings. Such an approach is consistent with the proposition that pre-grant opposition is intended to provide a relatively inexpensive mechanism for resolving third party disputes as to validity. The purpose of pre-grant opposition proceedings is to provide a swift and economical means of settling disputes that would otherwise need to be dealt with by the courts in more expensive and time consuming post-grant litigation; that is, to decrease the occasion for costly revocation proceedings by ensuring that bad patents do not proceed to grant (see Genetics Institute Inc v Kirin-Amgen Inc (1999) 92 FCR 106 at 112…). It is a good thing to have some process by which patents that are obviously invalid will not be allowed to clutter the register (see McGlashen v Rabett (1909) 9 CLR 223 at 229)." 30 An appeal against a decision of the Commissioner under s 60 of the Act is an original proceeding in the Court which is to be decided as the Court thinks fit in all the circumstances upon the evidence before the Court, notwithstanding that the evidence may present a case that is completely different from the case before the Commissioner: see Kaiser Aluminum & Chemical Corporation v The Reynolds Metal Company (1969) 120 CLR 136 at 142-143. 31 There may be much to be said for the view that appeals to the Court from an interim decision made in the course of a pre-grant opposition will fragment the opposition and may be antithetical to a "swift and economical" disposition of the opposition. However, it is now well established that an interim decision of the Commissioner that upholds one or more grounds of opposition, but which allows the applicant to amend its application to overcome those successful grounds of opposition is an appellable decision for the purpose of s 60: see Broken Hill Pty Co Ltd v American Can Co [1980] VR 143 at 147-148 ("BHP v American Can"), Mole Engineering at 348-350 per Mason J and 355-356 per Wilson J and Acushnet Co v Spalding Australia Pty Ltd (1990) 18 IPR 364 ("Acushnet") at 372-375. 32 The statutory scheme providing for appeals against an interim decision of the Commissioner does not have the consequence that, if a party appeals against the final, but not an interim, decision the Court is bound by all findings of fact and conclusions of law made and applied by the Commissioner in the interim decision: see Acushnet at 376. It is well established that the Court's jurisdiction and powers on an appeal under s 60 are wide, and are not inhibited or fettered by findings of fact and conclusions of law made by the Commissioner or his delegate. 33 The cases, however, do not appear to deal directly with the issue arising on the present motions namely, whether Iluka in its appeal against the final decision is entitled, without seeking leave to appeal out of time against the interim decision, to appeal against the interim decision and to rely upon grounds dealt with and decided by the interim decision. Put another way, the issue is whether Iluka is only entitled to appeal against the final decision to grant the patent applied for by Technological Resources as of right on grounds that are consequential upon or related to its opposition to the amendments made by Technological Resources to correct the deficiencies identified by the Delegate in the interim decision, and not on grounds that were only applicable to the interim decision. 34 The answer to those questions depends on the proper construction of s 60 of the Act and, in particular, the consequences that attend a failure to appeal an interim decision. 35 The latter issue was considered by Lloyd-Jacob J in L. Oertling Ltd. And Anr.'s Application for a Patent [1959] R.P.C.148 at 148-149: "In the course of the argument, it emerged that some practitioners feel doubt and uncertainty when deciding how best to proceed after an interim decision is given. This should not continue. An interim decision, no less than a final decision, conclusively determines the position of the Comptroller-General in relation to such matters as the decision may specify. It is the means whereby the Comptroller notifies the parties of his decision in relation to so much of the dispute as is susceptible of present determination and his decision also as to the manner in which the remaining matters in dispute may be dealt with. If, in relation to any matter so decided, a party is not satisfied with the Comptroller-General's ruling, his dissatisfaction cannot become effective in expression unless and until the ruling is reversed or modified on appeal. Such party must therefore enter notice of appeal in due time if he desires to question the propriety of a ruling. The decision may contain a number of rulings, and the objector may desire to adopt some and repudiate others or possibly repudiate only one. Such repudiation may have no relation to the matters remaining for determination, in which event it may seem an unnecessary delay to adjourn all further consideration until after an appeal has been heard. There is, moreover, the consideration that, unless adjournment of further consideration is absolutely necessary, it should be avoided if possible to save the time, trouble and expense of reminding all concerned of the facts involved after an interval of months. There may therefore be advantage if extensions of the time within which an appeal can be notified are more frequently sought. During the period of any such extension the parties preserve a right to contest any ruling although the right remains ineffective throughout the period." 36 Subsequently, in Rose Bros. (Gainsborough) Ltd.'s Application (Amendment) [1960] R.P.C. 247 ("Rose Bros.") Lloyd-Jacob J refused an applicant for a patent leave to appeal an interim decision after the final decision was issued. Lloyd-Jacob J observed at 253-254: "By that time this tribunal had already issued two decisions in which attention had been drawn to the position in cases where interim and final decisions were issued in respect of the same opposition, one decision having been published in June, 1958, Klangfilm A.G.'s Application [1958] RPC 237 and the other in June, 1959 Oertling Ltd.'s Application [1959] RPC 148. In each specific attention had been directed to what I imagine is thoroughly well known to all practitioners in this branch of the law, that a decision issued by an officer of the Comptroller-General, whatever the heading of it, is what it expresses itself to be, namely, a decision, and that, to the extent that any findings are therein set out, those represent the view of the Comptroller-General upon which both parties to the proceedings must thereafter proceed. Mr. Levy, Q.C., who represented the appellants initially sought to persuade me that I could upon this appeal against the final decision permit him to re-open the matters that was not open upon this appeal, he sought leave to have the time for appealing the interim decision extended, and indicated that he would additionally seek leave to introduce further evidence. As it seems to me, it would be bringing this jurisdiction almost into disrepute if, after having made two public pronouncements as to the rights of parties in respect of interim and final decision, I were, save under the compulsion of the fullest disclosure of exceptional circumstances, to allow the substance of an interim decision to be reviewed when it has been accepted and proceeded upon by the parties to the dispute and the Patent Office ever since the extended time for appealing expired." 37 In BHP v American Can Fullagar J (at 147-148), following the approach of Lloyd-Jacob J in the English decisions, construed s 60 of the Patents Act 1952 (Cth) (which is not, relevantly, different from s 60 of the Act) as follows: "First I notice that the right of appeal is given from 'a decision of the Commissioner under this section'. In the result I find that I do not need to decide whether one should construe this expression in sub-section (5) of s 60 as referring only to a decision of the Commissioner whereby he does 'decide the case' within the meaning of sub-section (1). For the purposes of this case I shall simply assume that this is correct and that the expression in sub-section (5) refers only to some act whereby the Commissioner does 'decide the case'. It is in my opinion quite clear that the case which the Commissioner is bound by statute ultimately to decide is the opposition proceeding, but I see no reason why the opposition proceeding should not be decided by several decisions provided that each of them can be said in a real sense to decide 'the case' as presently constituted so far as that case is at the time susceptible of present decision. If the Commissioner decides so much of the opposition proceeding as is susceptible of decision at the time, and at the same time decides what things may be done in the future conduct of the opposition proceedings, I am of the opinion that this constitutes 'a decision of the Commissioner under this section' within the meaning of sub-section (5) on any view, because I think it is indeed a deciding of 'the case' as it presently subsists as a matter or proceeding capable of present resolution. It does in my view decide the case so far as the case is at the time fully constituted. If on opposition proceedings the Commissioner concludes as follows and expresses the conclusions expressly or by necessary implication:- (1) The invention of the present specification is shown to be not novel. (2) The present specification does not define the invention. (3) These defects can on the material before me be cured by amendment. (4) I give leave to amend. (5) I shall decide nothing further until I see what amendments are brought in and if brought in are ultimately allowed. I shall not give any final decision yet- Then if the lack of novelty and lack of s. 40 definition are the only grounds of the opposition, such a decision appears to me to decide 'the case' as the case is at the time of the decision fully constituted. But I wish to say expressly that I would consider (3) and (4) and (5) above to be in most imaginable circumstances part of the decision of 'the case'. In my view the matters dealt with in (3) and (4) are matters in the case, and with (5), and perhaps a reservation of costs, would cover the whole case as then constituted, and would leave the whole case as then constituted decided. The word 'finally' does not appear in the statute, and in my opinion should not be imported in order to base an argument upon its supposed presence." 38 In BHP v American Can the interim decision in the pre-grant opposition decided, relevantly, that the complete specification did not comply with s 40 in that the claims did not sufficiently define the invention, that this defect could be cured by relatively simple amendments the nature and content of which was indicated with some particularity. It was held that the indicated amendments, if applied for and subsequently allowed, would overcome all the grounds of objection including paper anticipation and non-compliance with s 40. The "interim decision" concluded with a direction that the applicant lodge amendments to remove the objections within 60 days. 39 Fullagar J (at 148) stated: "Looking then at the position as at 26 June 1979, the date of the 'interim decision', either the amendments will not be made or not succeed on the one hand, or on the other hand, they will be made and will succeed. On the first alternative, it is true, questions now sought to be raised on the appeal might prove in the end to have been unnecessary to decide depending upon which is the more speedy operation, that of the appeal or the progress of amendments. But in the circumstances of the present case I consider that it is still proper to regard, even as at 26 June 1979, the question, of the future fate of the grounds for the opposition in the predicated future presence of an amended specification as being sufficiently a part of 'the case' to make the Commissioner's decision upon that fate 'a decision of the case' for the purposes of s. 60 and 'a decision under this section' for the purposes of sub-section (5) of that section." 40 Mole Engineering concerned the power of the Commissioner to re-hear issues arising in an opposition which had been determined by an interim decision. The High Court held that the interim decision had been a final decision on the original application, dealing with all the issues arising on the opposition so far as they were capable of final determination, with the consequence that the Commissioner did not have power to order a re-hearing of the opposition. The main judgments were given by Mason J and by Wilson J with whose reasons the other members of the Court agreed. 41 Mason J, citing, inter alia, the English decisions of Lloyd-Jacob J, and Fullagar J in BHP v American Can in support of his view, stated (at 348-349): "It is a natural consequence of the procedures under Pt V and Pt VIII that an officer who upholds objections to the grant of an application under Pt V will refrain from refusing the application where it appears that the objections may be cured by amendment. Then it is a practical and sensible course to allow the applicant time within which to lodge a request to amend the specification, as Mr Kildea did in this instance. But his decision was nonetheless a final decision on the original unamended application – there was nothing provisional or tentative about the finding on the grounds of objection. It dealt with all the issues arising on the notice of opposition so far as they were capable of final determination." 42 Wilson J, also cited, inter alia, the decisions of Lloyd-Jacob J and Fullagar J. His Honour observed (at 355-356): "If a party wishes to challenge the merits of an interim decision he must do so by appeal. If he wishes to abide by the interim decision and nonetheless save the specification by complying with the amendments suggested in the interim decision then he must proceed to draft amendments which are consistent with the decision and submit the same. Having filed such amendments a decision will thereafter follow which itself is capable of appeal. But on such an appeal it will be too late to challenge the matters canvassed and decided in the interim decision." 43 Wilson J (at 356) rejected a contention that there was any material distinction between the relevant statutory provisions in the English and Australian Acts. 44 There is some force in Iluka's contention that most of the cases but, in particular, the observations of Wilson J in Mole Engineering, were concerned primarily with an unsuccessful applicant seeking to re-agitate issues already decided against it in an interim decision rather than with a successful opponent who should not be expected to appeal an interim decision in its favour. However, BHP v American Can and Mole Engineering establish that the right of an appellant to re-agitate issues on an appeal or further hearing before the Commissioner depends on the issues dealt with and decided by the interim decision, rather than on whether the decision was in favour of one party or the other. 45 In my view it is at least implicit, if not explicit, in the authorities to which I have referred that, to the extent that those issues have been determined by an interim decision in a manner that it is unfavourable to the interests of either party, it is incumbent upon that party, if it so desires, to appeal the decision. If it fails to do so then it is not open to that party to appeal, whether directly or indirectly, against the interim decision of the Commissioner out of time without leave of the Court. Accordingly, an appeal out of time against the interim decision without leave would be incompetent. Further, a failure to appeal against the matters decided adversely to a party in an interim decision can preclude that party from seeking to re-agitate those matters as grounds of appeal against a final decision unless those matters were also dealt with in, and were also decided by, the final decision. It must follow, for the purposes of O 20 r 2, that it is an abuse of process and vexatious for a party to rely, in an appeal against a final decision, on grounds of appeal that only relate to matters decided in the interim decision if no appeal has been brought in respect of the interim decision. Put simply, a party cannot achieve indirectly what it is not permitted to achieve directly. Of course, leave can always be sought to appeal out of time, but that raises separate issues under O 58 r 4(3)(b). 46 In the present case the interim decision dealt with and determined Iluka's opposition to the unamended application. Adopting the approach of Fullagar J in BHP v American Can (at 147-148), the interim decision concluded, expressly or by necessary implication, that: · the invention disclosed by the present specification was not shown to be fairly based and novel; · the present specification did contain patentable subject matter; · the deficiencies in the present specification could be cured by amendment; · the applicant was to be allowed to file amendments overcoming the deficiencies; · nothing further was to be decided until the amendments were considered; · the applicant was to pay the costs of the opposition. 47 It is plain that the interim decision decided the "case" as the case was at that time constituted. To the extent Iluka wished to challenge the decisions that the specification contained "patentable subject matter", that the deficiencies could be cured by appropriate amendments to the claims, and that such amendments were to be allowed to be made within 60 days, it was incumbent upon it to do so within 21 days of the decision. As Iluka failed to do so it was only at liberty to appeal against the "case" decided by the interim decision by leave. 48 The final decision, expressly or by necessary implication, decided: · to allow the amendments requested by Technological Resources; · the specification as amended was fairly based and novel; · subject to appeal, the patent application be granted; · the opponent pay the costs relating to the final determination. 49 Plainly, the "case" and the issues decided by the final decision are distinct from the "case" and the issues decided by the interim decision. It follows from the foregoing that, in so far as the present grounds of appeal, or any of the proposed amended grounds of appeal relate to or seek to re-agitate matters decided only by the interim decision those grounds ought only to be able to be relied upon if leave to appeal against the interim decision out of time is granted. 50 In my view, in the context of the statutory scheme in respect of an opposition, the interim decision is to be taken as dealing with and generally deciding the grounds of novelty and fair basis under ss 18 and 40 which were stated to be Iluka's grounds of opposition, rather than only with the specific grounds of novelty and fair basis particularised, argued or pressed by Iluka at the hearing before the Delegate. In that regard it is relevant that the opposition is a proceeding between the applicant and the opponent in which the Commissioner is to adjudicate on whether the patent application should be granted (see s 61(1)). A patent is not to be granted if the invention is not novel or the claims are not fairly based on the specification (ss 18 and 40). In that context it is appropriate to view the interim and final decisions as relating to the grounds of opposition of novelty and fair basis generally, and as not restricted to novelty and fair basis as particularised, argued or pressed at the hearing. A narrow approach to the decisions (ie deciding only the matters particularised, argued or pressed) is not consistent with their content, would tend to undermine the statutory objective of finality and expedition, is inconsistent with the approach to opposition proceedings taken in the English and Australian cases (and, in particular, with the view taken by Fullagar J at 147-148 in BHP v American Can) about matters decided by an interim decision and is not mandated by the Act. Thus, prima facie, it does not appear to be open to Iluka, without leave, to rely upon the grounds of novelty or fair basis not pursued at the first hearing, the grounds of novelty or fair basis pursued at the first hearing, or any new novelty or fair basis grounds that were only applicable to the unamended application, as such grounds must be taken as having been decided by the interim decision. 51 I have indicated above that "prima facie" Iluka cannot as of right rely upon grounds that must be taken to have been decided by the interim decision. I have used that expression as it may be arguable that some grounds now sought to be relied upon arise out of, or directly relate to, the amended specification and, as such, are not to be taken to have only been dealt with and decided by the interim decision. It should be noted, however, that senior counsel for Iluka conceded that the amendments narrowed the scope of the claims. Accordingly, subject to the issue of leave to appeal out of time, it is appropriate to afford the parties an opportunity to consider these reasons and, in particular, whether any of the grounds that I regard as prima facie not open to Iluka ought to be permitted as grounds of appeal against the final decision. 52 Finally I turn to the question of leave. The importance of adherence to time limits prescribed for appeals has been emphasised on numerous occasions. In Ratnam v Cumarasamy [1965] 1 WLR 8 at 12 Lord Guest stated: "The rules of court must prima facie be obeyed, and in order to justify a court in extending the time during which some step in procedure requires to be taken there must be some material on which the court can exercise its discretion. If the law were otherwise, a party in breach would have an unqualified right to an extension of time which would defeat the purpose of the rules, which is to provide a time table for the conduct of litigation." In Gallo v Dawson (1990) 93 ALR 479 at 481 McHugh J observed: "When the time for appealing has expired, the litigation is at an end; the successful party is entitled to the benefit of the judgment in his or her favour. At that stage, the successful party has a 'vested right to retain the judgment'. It would make a mockery of [the relevant rule] if, months after the time for appealing has expired, the unsuccessful party could obtain an extension of time on the ground that he or she had delayed appealing because that person wanted to research the issues involved. Lack of legal knowledge is a misfortune, not a privilege." Finally, in Jackamarra v Krakouer (1998) 195 CLR 516 at 539-540 Kirby J stated: "…it is impossible to lay down fixed and binding rules for the exercise of discretions to enlarge time. Of necessity, each case must depend upon its own particular circumstances. …The starting point for the exercise of any power granted under legislation is the ascertainment of the terms of the grant and a consideration of the purposes for which the power has been afforded. Thus, if a rule requires that 'special reasons' or 'special circumstances' be shown as a pre-condition to a procedural indulgence, this will indicate a need to demonstrate circumstances out of the ordinary … Necessarily, the indulgence is not granted as of course. It is for the party seeking to persuade the decision-maker to show that it should be granted. Such persuasion will usually depend upon the provision of an acceptable explanation of how the time default occurred. Neither a party nor its legal advisers may simply assume that a request for an extension of time will always be acceded to. Inherent in the grant of a discretionary power is the assumption that it will sometimes be refused." 53 The principles governing an application for an extension of time in a case such as the present were summarised by Branson J in Kabushiki Kaisha Universal v Aristocrat Leisure Industries Pty Ltd [1998] AIPC 91-396 at 37,127-37,128: "The terms of O 58 r 4(3)(b) indicate that an extension of time pursuant to O 58 r 4(2) is only to be granted where special circumstances are shown. Special circumstances are circumstances which take the case out of the ordinary so as to justify departure from the general rule that an appeal is to be instituted within twenty-one days from the date of the decision (cf. the discussion by the Full Court of the expression 'for special reasons' appearing in O 52 r 15(2) in Jess v Scott (1986) 12 FCR 187 at 195). The power given by O 58 r 4 to grant an extension of time within which to file an appeal is a grant of a flexible discretionary power which, although it is only to be exercised in a particular case when circumstances exist which justify departure from the usual rule, is not otherwise confined except by the dictates of the justice of the case. Factors appropriate to be taken into account in the exercise of the discretion include: (a) the length of the delay (Jess v Scott at 195); (b) the explanation for the delay, and in particular, whether the plaintiff is personally blameless for the delay (cf. Stollznow v Calvert [1980] 2 NSWLR 749 at 753); (c) any prejudice to the respondent or to other persons, arising out of the delay (cf. Douglas v Allen (1984) 1 FCR 287 at 294-5; Hunter Valley Developments Pty Ltd v Cohen (1984) 3 FCR 344 at 349); (d) actions taken by the applicant to alert the respondent to the fact that the decision is, or may be, contested (cf. Hunter Valley Developments Pty Ltd v Cohen at 348-9); (e) the merits of the proposed appeal (cf. Hunter Valley Developments Pty Ltd v Cohen at 349; Seiler v Minister for Immigration (1994) 48 FCR 83 at 98); (f) alternative avenues of relief, if any, available to the applicant (cf. Re Envirotech Australia Pty Ltd (1989) 14 IPR 108 at 116); and (g) questions of public interest, if any, in the subject matter of the appeal (cf. Johns v Australian Securities Commission (1992) 108 ALR 277)." 54 The present matter is one in which both parties are experienced and well-resourced patent litigants and have been represented at all stages of the opposition and in the court proceedings by legal representatives who are competent, experienced and well-versed in patent law and practice. Notwithstanding these matters no explanation has been proffered by Iluka as to why it did not file an appeal against the interim decision. The most that can be said is that senior counsel for Iluka argued that, as Iluka was the successful party in respect of that decision, it was not incumbent upon it to appeal against it. Iluka, so it was argued, was entitled to await the final decision. Iluka, however, was not successful in so far as the Delegate decided that, with appropriate amendments, the deficiencies he identified could be cured. In any event counsel's argument was not supported by any evidence that Iluka, albeit erroneously, desisted from appealing against the interim decision because it regarded itself as the successful party and considered it was entitled to await the final decision before appealing. 55 In my view it is likely that, for its own reasons, Iluka elected not to appeal the interim decision. It is also likely that Iluka or its legal representatives were aware that the interim decision was an appellable decision and that a failure to appeal might have adverse consequences further down the track. Even if Iluka was of the view that the prosecution of an appeal against the interim decision should await the final decision it was open to it to file an appeal, but request the Court not to proceed with it until after the final decision. 56 In any event, Iluka has not discharged the onus upon it to establish that there are "special circumstances" for the purposes of O 58 r 4(3)(b). Even if I were in error in reaching that conclusion, having regard to the above observations and notwithstanding the matters put forward on Iluka's behalf for the grant of leave, I would not exercise my discretion in Iluka's favour in the present case. The absence of an explanation and the inferences of Iluka's knowledge and awareness of its rights that I am prepared to draw outweigh the factors relied upon by Iluka. While an explanation for the failure to appeal in time is usually required, its absence in the present case is particularly significant. As was pointed out by Lloyd-Jacobs in Rose Bros., it would bring the pre-grant opposition jurisdiction "into disrepute"if a party were allowed, without good cause shown, to allow the substance of an interim decision to be reviewed on appeal out of time when the interim decision has been accepted and proceeded upon by the parties. 57 I would add that if the leave sought were granted it is not in dispute that that would considerably delay and extend the final hearing, thereby further delaying the final determination of the pre-grant opposition. Thus, it is not correct for Iluka to contend that the grant of leave cannot prejudice Technological Resources. 58 It follows that Iluka's application for leave to appeal against the interim decision should be refused and that, in so far as the amended grounds of appeal are grounds that relate to or are based on matters dealt with and decided only by the interim decision, I would refuse the leave sought. 59 As Technological Resources has been successful in respect of the issues argued on the present motions it is appropriate to order that Iluka pay its taxed costs of and incidental to the motions. 60 I propose to direct that within 14 days the parties bring in minutes of orders that give effect to these reasons for judgment. In so far as any matters cannot be agreed upon I will direct that within a further 7 days the parties file written submissions on those matters. I certify that the preceding sixty (60) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Merkel. Associate: Dated: 5 February 2002 Counsel for the Applicant: DK Catterns QC with AJ Maryniak Solicitor for the Applicant: Clayton Utz Counsel for the Respondent: PW Collinson Solicitor for the Respondent: Allens Arthur Robinson Date of Hearing: 20 December 2001 Date of Judgment: 6 February 2002