Author: Peter Caporn
A recent decision of the Commissioner of Patents has held that a blasting method used in open cut mining (most commonly for coal) that combines a throw blast and a stand-up blast, separated by a period of at least 500ms, in a single blast cycle, is novel and inventive.
Australian Patent Application 2004293486 in the name of Orica Explosives Technology Pty Ltd was originally filed in 2004. The application was finally accepted in 2009 and was then opposed by Dyno Nobel Inc. The opposition process had been playing out ever since, with the decision in the opposition being issued on 17 June 2016. The full decision can be read here.
The opposition has proven to be a hotly contested affair and has been anything but a routine matter. After the regular evidentiary stages of the patent opposition had played out (over several years) there were several additional rounds of ‘further evidence’ (also over years) before an unsuccessful attempt by Orica to obtain an injunction to prevent the hearing taking place before they’d been provided with an opportunity to answer some still further evidence from Dyno Nobel. A further hearing was then required to deal with Orica’s responsive evidence to that last round of further evidence from Dyno Nobel. A positive from this series of events is that it demonstrates an appetite from the Australian Patent Office to intervene proactively to bring a much contested opposition to a head. Such an appetite hasn’t always been present.
From a patent law perspective the issues at play included novelty, inventive step/obviousness and clarity. The clarity issues included questions of how to interpret the terms ‘throw blast’, ‘stand-up blast’ and ‘buffering’. Each of these were said to be clear in the context of the specification.
From a technical point of view each of the terms ‘throw blast’, ‘stand-up blast’ and ‘buffering’ were again at issue, as was the specific content of various prior art documents and acts, each conducted prior to the filing of the opposed patent application. Interestingly, each of the following were held to be part of the common general knowledge at the priority date in 2003:
- Throw Blasting
- Stand-up Blasting
- Through-seam Blasting
- Buffering; and
- Baby Decking
Despite this, the specific combination of features claimed by Orica was not able to be identified in any single prior art document or act. Nor could the evidence put forward by Dyno Nobel demonstrate that the person skilled in this technology would combine those features in a single blast cycle as a matter of course (at the 2003 priority date).
This opposition has highlighted the difficulties that can be experienced when an opponent attempts to rely on evidence of prior acts undertaken and for which there is little written record. One prior disclosure of the invention, relied upon by Dyno Nobel, was a single prior test blast believed to have been conducted in the late 1990s. Unfortunately for Dyno Nobel the evidence put forward regarding this test blast proved inconclusive. Observations in the decision make it clear that the evidence from those with knowledge of the test blast may have been prepared differently. However, with the recollections of individuals of a single event in question there can be difficulties in recalling all the facts immediately. This serves to further highlight the importance of effective exert witness management.
The decision is able to be appealed by either party if there are aspects of it that they disagree with. Clearly, any appeal is most likely to come from Dyno Nobel and is due to be filed with the Federal Court (typically) by 8 July 2016.