Advanta Seeds Pty Ltd and Commissioner of Patents
[2022] AATA 1157
•6 May 2022
Advanta Seeds Pty Ltd and Commissioner of Patents [2022] AATA 1157 (6 May 2022)
Division:GENERAL DIVISION
File Number(s): 2020/8517
Re:Advanta Seeds Pty Ltd
APPLICANT
AndCommissioner of Patents
RESPONDENT
AndNurfarm Australia Limited
OTHER PARTYClick here to enter decision.
DECISION
Tribunal:Deputy President I R Molloy
Date:6 May 2022
Place:Brisbane
1.The reviewable decision made on 24 November 2020 to refuse the Applicant’s application for an extension of time to pay a renewal fee on its Australian Patent 2009304572 is set aside.
2.The Applicant is granted an extension of twenty-eight (28) days from the date of this decision to pay the said renewal fee.
3.The parties to confer and file agreed or competing further proposed orders (if any) finalising this matter within fourteen (14) days.
4.The parties are at liberty to file and serve written submissions within fourteen (14) days on the further orders and on costs which until then are reserved.
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Deputy President I R Molloy
Catchwords
Intellectual Property – Patents – failure of applicant to pay continuation fee on or before due date – application for extension – evidence of applicant’s ongoing intention to maintain the patent – error or omission - failure of applicant to put in place a proper redirection of email correspondence - reviewable decision set aside - applicant granted an extension of time pursuant to the Act to pay the renewal fee.
Legislation
Patents Act 1990 (Cth) ss 13(1), 143(a), 223, 223(2), 223(11).
Patents Regulation 1991 (Cth) regs 13.6(2), 22.11(4).Cases
AlphapharmPtyLtdvHLundbeckA/S [2014] HCA 42
AspenPharmaPtyLtdvHLundbeckA/S [2013] FCAFC 129
Boehringer Ingelheim Animal Health USA Inc. v Intervet International B.V. [2019] APO 33
FerocemPtyLtdvCommissionerofPatents (1994) 49 FCR 205
G STechnology Pty Limited v Commissioner of Patents [2004] FCA 1017
G STechnology Pty Limited v Commissioner of Patents [2004] AATA 1391
Kimberly-Clark Ltd v Commissioner of Patents (No 2) (1988) 13 IPR 551
Kimberly-ClarkLtdvCommissionerof Patents (No 3) [1988] FCA 421
ReSanyoElectricCoLtdandCommissionerofPatents [1996] AATA 832
OzTechnologyIncvBoralEnergyLtd [1999] APO 18REASONS FOR DECISION
Deputy President I R Molloy
6 May 2022
The Applicant, Advanta Seeds Pty Ltd (“Advanta”), is a broadacre seed company. Under its brand Pacific Seeds, it supplies seeds for crops including sorghum, corn, forage, canola and wheat. With its related companies, it holds more than 2,300 patents relating to agricultural chemicals, seeds and seed technologies.
This is an application by Advanta for review of a decision of a delegate of the Respondent, the Commissioner of Patents, dated 24 November 2020, refusing Advanta’s application pursuant to s 223 of the Patents Act 1990 (Cth) (“the Act”), for an extension of time to pay a renewal fee on its Australian Patent 2009304572 (“the Patent”).
The Patent is a standard patent and relates to a hybrid plant cell. The application for the Patent was filed on 6 October 2009 and the Patent was granted on 7 January 2016. Under s 13(1) of the Act, subject to the Act, a patent gives the patentee the exclusive rights, during the term of the patent, to exploit the invention and to authorize another person to exploit the invention.
A renewal fee must be paid each year to maintain a patent application and a patent. The first renewal fee falls due four years from the filing of the patent application; in this case on 6 October 2013. Regulation 13.6(2) of the Patent Regulations 1991 (Cth) (“Regulations”) provides that the period for payment is taken to be extended if the renewal fee is paid within six months after the end of the relevant anniversary (the “grace period”).
Under s 143(a) of the Act a standard patent ceases if the patentee does not pay a renewal fee for the patent within the prescribed period.
The renewal fee, a relatively modest sum, was paid for the first four years as required, that is, for years 2013, 2014, 2015 and 2016. The 2016 fee was paid in early 2017 within the grace period.
This application relates to the failure to pay the fifth renewal fee either by the due date,
6 October 2017, or within the grace period. The Patent was, and will be if this application succeeds, of considerable commercial value to Advanta.Dr D Tabah (“Dr Tabah), Advanta’s Crop Research Lead (Canola), said that the Patent was well-known to canola breeders and he considered it to cover “important and valuable technology in respect of hybrid Brassica plants, specifically canola.” He describes it as “very important for Advanta’s commercial strategies and activities in relation to canola in Australia.”
Only a year before the 2017 renewal fee was due, Advanta entered into a licensing agreement in relation to the technology protected by the Patent which was intended to run for a further thirteen years.
There is no dispute, and I find on the evidence, that Advanta always intended to maintain the Patent.
The application is opposed by the Other Party, Nufarm Australia Limited (“Nufarm”), a commercial competitor of Advanta. The Respondent Commissioner has not taken any active role in this application.
Advanta’s application is made pursuant to s 223(2)(a) of the Act which provides relevantly:
(2) Where, because of:
(a)an error or omission by the person concerned or by his or her agent or attorney; …
(b)…
a relevant act that is required to be done within a certain time is not, or cannot be, done within that time, the Commissioner may, on application made by the person concerned in accordance with the regulations, extend the time for doing the act.
The term “relevant act” is defined by s 223(11) of the Act and reg 22.11(4) of the Regulations to include the act of payment of a renewal fee for a patent.
In G S Technology Pty Limited v Commissioner of Patents[1] Spender J in the Federal Court, considered the content and purpose of s 223 which he described, at [50], as a “remedial section designed to advance the purposes of the Act and, to that end, permitting the forgiving of error or mistake where it is appropriate to do so.”[2]
[1] [2004] FCA 1017 (“G S Technology No 1”).
[2] See also AlphapharmPtyLtdvHLundbeckA-S [2014] HCA 42, per Crennan, Bell and Gageler JJ at
His Honour, also contrasted circumstances where the failure to do an act or take a step is the result of an error or omission with “the situation where there has been a deliberate decision not to do the act or take the step.”[3]
[3] G S Technology No 1 at [51].
In G S Technology v Commissioner for Patents,[4] on remittal from Spender J, Downes P said, at [25]: “The combination of the existence of an applicant which intended to pay fees when due and the failure of that applicant to pay the fees suggests the possibility of error. It suggests the possibility of ‘lapses of memory and accidental slips’ to use the words of Jenkinson J.”
[4] [2004] AATA 1391 (“G S Technology No 2”).
In the case Downes P was referring to, Kimberly-Clark Ltd v Commissioner of Patents
(No 3),[5] Jenkinson J also said that a company applying for an extension has to disclose frankly and fully all conduct, knowledge, beliefs and mental processes of its relevant officers or other agents relevant to an understanding of the way the failure to do the act occurred.[5] [1988] FCA 421 (“Kimberly-Clark”).
ISSUES
The issues are:
(a)was there an error or omission by Advanta or its agent or attorney that caused the failure to pay the renewal fee; and
(b)if so, should the discretion be exercised so as to grant an extension of time for the payment.
SUMMARY OF FINDINGS
I am satisfied that because of an error or omission of Advanta there was a failure to pay the renewal fee due on 6 October 2017 within s 223(2)(a) of the Act.
In making that finding I am satisfied that Advanta has provided, through its evidence, comprehensive, frank, and clear disclosure of all the circumstances, including how the failure occurred.
I am also satisfied that the discretion should be exercised to grant an extension of time for the payment to be made.
Evidence
Advanta relied on the following declarations which were before the delegate:
(a)a declaration of Mr B J Croker (“Mr Croker”), Advanta’s managing director since May 2018, dated 11 April 2019;
(b)a further declaration of Mr Croker dated 3 April 2020; and
(c)a declaration of Mr N D Gardner (“Mr Gardner”), Advanta’s managing director until May 2018, dated 17 October 2019.
Additionally, before the Tribunal, Advanta relied on affidavits from:
(a)Mr Croker dated 21 May 2021;
(b)Mr Gardner dated 21 May 2021;
(c)Dr Tabah, Advanta’s Crop Research Lead (Canola), dated 21 May 2021;
(d)Mr S L Burchmann (“Mr Burchmann”), Advanta’s current IT Business Manager, dated 21 May 2021;
(e)Mr J R Grundon (“Mr Grundon”), Advanta’s previous IT Business Manager, dated 21 May 2021;
(f)Ms C I Savage (“Ms Savage”), solicitor, dated 21 May 2021;
(g)Mr B J Gouldson (“Mr Gouldson”), solicitor, dated 20 May 2021; and
(h)a further affidavit of Dr Tabah dated 8 March 2022.
Mr Gardner and Mr Croker were each cross-examined. Dr Tabah was available, but ultimately, together with Advanta’s other witnesses, was not required for cross-examination.
Mr Gardner answered questions candidly and was willing to say so when he was not able to answer a question. He acknowledged in cross-examination, as he had in his affidavit, that his recollection of events in his declaration before the delegate was flawed. I accept his explanation as rational and truthful.
I also accept Advanta’s submission that Mr Croker was a reliable and candid witness. He acknowledged that he did not remember particular events. He made appropriate and considered concessions. Mr Croker accepted, for instance, that his recollection of who was responsible or involved in the management of the Patent, as recounted in his evidence before the delegate, and subsequently corrected, was “flawed”.
Mr Croker explained to my satisfaction that when he referred to making enquiries, as managing director, he relied on information sought from others in the Advanta organisation and did not intend to convey that he personally undertook every enquiry.
Nufarm did not suggest, either in cross-examination or submissions, that Mr Gardner’s or Mr Croker’s evidence was dishonest. Considerable criticism, however, was directed at the discrepancies between the evidence presented to the delegate and the evidence before the Tribunal.
I am satisfied, however, that the inaccuracies in the evidence before the delegate, acknowledged and corrected before the Tribunal, were adequately explained.
The substantive difference was that before the delegate Advanta erroneously advanced its new management database (Anaqua) was causative of error or omission. As I have said, I think this was adequately explained.
I am satisfied that Advanta’s evidence before the delegate was not deliberately misleading and that the searches it conducted prior to the filing of its evidence before the delegate were reasonable in the circumstances and were not deliberately confined.
Nufarm contends that Advanta’s case, as presented to the delegate, containing what Nufarm chose to describe as misrepresentations, should bear on the exercise of the discretion under s 223(2) of the Act.
Nufarm goes so far as to submit that Mr Croker’s alleged failure to properly explain the basis of his evidence before the Commissioner’s delegate “should, in itself, disentitle Advanta from the indulgence of being granted an extension of time pursuant to s 223(2)(a) of the Patents Act.” I disagree. I am satisfied that Mr Croker has given a proper explanation.
I am not satisfied that any conduct on the part of Advanta in respect of the application before the delegate, including any shortcomings or flaws in its evidence, should have any impact on the exercise of the discretion under s 223(2) of the Act in this de novo hearing of Advanta’s application for an extension.
As I have said, the other Advanta witnesses, Dr Tabah, Mr Grundon, Mr Burchmann,
Ms Savage and Mr Gouldson, were not cross-examined. None of their evidence was or could be described as far-fetched or fanciful, and in the circumstances, I accept their evidence.Error or omission
The filing of the patent application was managed by Advanta’s Mr A Easton (“Mr Easton”), and Ms J Davey (“Ms Davey”), Advanta’s Global Legal Lead. Mr Easton, as well as being responsible for the management of the application, was responsible for the Patent until July 2016, when he ceased his employment with Advanta. This included renewals which were described as within Mr Easton’s budget.
Griffith Hack acted as Advanta’s patent attorney until September 2014. Until approximately early 2011, correspondence in relation to the Patent application was sent by Griffith Hack to Ms Davey and was either copied to Mr Easton or forwarded to him. Thereafter, Griffith Hack sent correspondence in relation to the Patent directly to Mr Easton.
CPA Global Limited (“CPA”) was appointed by Griffith Hack to handle the payment of renewal fees during the application process and after the grant. On 20 April 2011, Griffith Hack wrote to Mr Easton stating, under the heading “Annuities”, “Please correspond directly with CPA in relation to annuities and forward payment to them directly.”
In October 2013, Dr D Stalker (“Dr Stalker”), Advanta’s Global Technology Lead based in the United States, engaged Spruson & Ferguson (“Sprusons”) to review a notice that had been issued in respect of the Patent application. On 1 September 2014, Mr Easton advised Griffith Hack that management of the Patent application was being transferred to Sprusons.
On 5 November 2014, Mr Easton sent an email to Sprusons requesting that all accounts-related correspondence be sent to him. Shortly thereafter, Sprusons confirmed that it had updated its records accordingly.
On 19 April 2016, Sprusons wrote to Dr Stalker, copy to Mr Easton, advising of the grant of the Patent. This letter noted that Sprusons understood that “you have a special agreement directly with CPA Global … and accordingly we will not be taking any action in relation to management of renewal fees for this case.”
In July 2016, Mr Easton left Advanta. Dr Stalker had left three months earlier. Following
Mr Easton’s departure no-one replaced hm as the person mainly responsible for the Patent until Dr Tabah’s commencement in January 2017.The first, second and third renewal fees for the Patent were paid by the due dates on the fourth, fifth and sixth anniversaries of the application for the Patent. The process was CPA would monitor the due date. It would send a notice to Advanta, seeking its authorization to pay the renewal fee, and on receipt of that authorization would make the payment. CPA would then send an invoice or statement for reimbursement. Plainly the system operated adequately during these years.
In July 2013 CPA had been advised that Ms Amos, an employee of Advanta, was a contact in relation to the Patent. Ms Amos ceased her employment with Advanta in approximately November 2016. There were therefore several relevant changes in personnel in Advanta in 2016.
There was a delay in payment of the fourth renewal fee, due on 6 October 2016, the first one after the grant. When asked by Ms Hamblin (an administrative officer employed by Advanta) whether to pay the fourth fee to renew the Patent in January 2017, Dr Hossain, a canola breeder employed by Advanta until approximately October 2017, promptly responded, "we need to renew it". CPA paid it during the grace period.
When CPA sought reimbursement from Advanta, there was uncertainty as to what the fee statement dated 20 February 2017 related to. When Advanta obtained a copy of the actual invoice in May 2017 it became apparent that it related to CPA’s payment of the fourth renewal fee and that the invoice had been addressed to Dr Stalker (who by that time had left Advanta 13 months prior).
This confusion, as Advanta submits, is consistent with Dr Stalker and Mr Easton having been responsible for the Patent, including renewal payments, and both having recently left Advanta, no-one having been allocated with clear responsibility for ensuring payments were made. The Advanta employees who arranged payment of the CPA statement, Ms Hamblin and Dr Hossain, left Advanta shortly thereafter.
So, as Advanta submits, following the departures of Dr Stalker and Mr Easton, two other employees, Ms Hamblin and Dr Hossain, both of whom had at least a brief acquaintance with the need to make renewal fee payments in relation to the Patent, left Advanta too.
Nufarm submits that the fact that the fourth renewal payment was made after the departure of Dr Stalker and Mr Easton presents an insurmountable barrier to any contention that their departure could have contributed to the failure to pay the fifth renewal. I do not accept that at all. There was a system in place for the payment of renewal fees which worked satisfactorily until it started to falter in late 2016.
The events concerning payment of the fourth renewal fee, during the grace period, and the confusion concerning reimbursement of CPA, are consistent with Dr Stalker’s, and particularly, as Advanta submits, Mr Easton’s departure, and provide background and an understanding of the failure to pay the fifth renewal fee.
I accept Advanta’s submission that the fact the fourth renewal fee was eventually paid, despite the absence of Dr Stalker and Mr Easton, does not mean their absence at the time the fifth renewal fee was payable (together with the failures to redirect mail and emails to them as referred to below) was not a cause of the failure to pay the fifth renewal fee.
As to fifth renewal fee, due in October 2017, CPA’s records indicate that it created renewal notices addressed to Advanta in June, August and October 2017 and February 2018. Each notice was addressed to the long-departed Dr Stalker. CPA had not been advised he had ceased to be employed by Advanta.
It appears, and I am satisfied on the evidence, that each notice was issued in hard copy only and sent by post. It is unclear whether the notices were sent from CPA’s office located in Jersey, Channel Islands, or CPA's office located in Sydney, Australia.
Searches of Advanta’s records have not located a single notice or associated record. Advanta submits, and I accept, either the notices did not arrive, or they were delivered to Advanta’s office, in Toowoomba, and were subsequently lost. I accept Advanta’s submission that the latter is less likely, as not one notice or associated record has been located in Advanta’s records.
Neither CPA's nor Advanta’s records disclose any correspondence from CPA to Advanta in relation to the notices. It appears that CPA did not follow up its notices with email correspondence directly to Advanta. CPA did, however, correspond with Sprusons.
Sprusons, the patent attorneys, sent an email to Advanta in February 2018 in relation to the non-payment of the renewal fee. Unfortunately, no-one at Advanta received the email. It was incorrectly addressed to [email protected], a defunct address for marketing support purposes that had not operated since 2016.
The email was also wrongly copied to Dr Stalker and bounced back to Sprusons. As a former employee, Dr Stalker’s email account was shut. I accept Advanta’s submission that had it re-directed emails from Dr Stalker’s address to Dr Tabah, as the person at Advanta then responsible for the management of the Patent, payment could have been made before the Patent ceased.
Equally, had Sprusons directed its email to Dr Tabah, whom it had been instructed in August 2017 was the person responsible for the management of the Patent, then payment could have been made. Dr Tabah, unfortunately, was not otherwise alert to the need to pay renewal fees for the Patent or of the involvement of CPA.
Dr Tabah had commenced with Advanta round the time the 2016 renewal fee was paid, but he was not involved with or aware of that payment. A handover report provided to Dr Tabah, in January 2017, made no reference to the role of CPA in relation to the payment of renewals for the Patent.
Dr Tabah’s evidence is that, while he was the Advanta officer responsible for the management of the Patent from January 2017, he was not aware of the need to pay renewal fees for the Patent. His evidence is, had he been aware, he would “have immediately alerted administrative staff to pay [them]”.
The Sprusons’ email was also addressed to Mr Easton, whose email account was still open despite Mr Easton no longer being an Advanta employee. The email was received by the account’s inbox but not accessed by anyone. Advanta erred in not closing Mr Easton’s account and/or re-directing email traffic to the relevant employee.
Mr Easton’s email account continued to receive emails after his departure from Advanta until January 2021 but was not checked by any Advanta employee. Advanta submits, and I accept, there was plainly an error on the part of Advanta in not closing Mr Easton’s email account, and instead leaving it open and unmonitored for more than four years.
The situation, as submitted by Advanta, and borne out by the evidence, was that both
Dr Stalker (on 30 April 2016) and Mr Easton (on 22 July 2016) ceased their employment with Advanta. On the departure of Dr Stalker and Mr Easton, Advanta did not immediately appoint a direct replacement. Further, Advanta failed to take steps to ensure that hard copy correspondence directed to Dr Stalker was redirected to other Advanta employees and failed to ensure that emails addressed to Dr Stalker or Mr Easton were forward to others. This problem was exacerbated by the omission of leaving Mr Easton’s email account open so that senders to his email address did not receive a “bounce back” message.The direct cause of the failure to pay the fifth renewal was Advanta’s error or omission in failing to authorize CPA to make the payment. That error had several contributing causes including the following:
(a)Advanta either not receiving the CPA Global notices or, if they were received, failing to forward them to the relevant person and to act upon them;
(b)The failure to advise CPA of Dr Stalker’s (and Ms Amos’s) departure from Advanta, potentially combined with the failure to arrange for Dr Stalker’s hard copy correspondence (assuming it was ever received from CPA) to be forwarded to another Advanta employee;
(c)The failure to refer to CPA’s role in relation to the payment of fees in the January 2017 handover report provided to Dr Tabah;
(d)Advanta’s failure to provide advice (prior to August 2017) to Sprusons that both Dr Stalker and Mr Easton had ceased their employment with Advanta and to provide updated contact details in relation to correspondence regarding the Patent;
(e)Sprusons’ failure to send the email of 5 February 2018 to Dr Tabah in circumstances where he had expressly advised them that he was the Advanta contact person in relation to the Patent; and
(f)Advanta’s failure to close Mr Easton’s email account at the time of his departure from the company and instead Advanta leaving it open and unmonitored.
These errors or omissions directly resulted in the missed CPA Global notices and the missed Sprusons email not coming to the attention of Advanta and thereby caused the failure to authorize CPA to make the fifth renewal payment.
Nufarm rightly accepts there can be more than one contributing error or omission. It is sufficient if the error or omission “contributed to” the failure to do the act or if there is “some link between” them.[6]
[6] Kimberly- Clark at 581.
The phrase “error or omission” has a broad scope[7] and includes a series of errors[8] and breakdowns in procedure or a failure to exercise due diligence.[9] It also extends to negligence and incompetence.[10] It includes the breakdown of a system that lacks sophistication.[11]
[7] Boehringer Ingelheim Animal Health USA Inc v Intervet International B.V. [2019] APO 33 at [7].
[8] ReSanyoElectricCoLtdandCommissionerofPatents [1996] AATA 832.
[9] OzTechnologyIncvBoralEnergyLtd [1999] APO 18.
[10] G STechnologyNo1 at [65].
[11] See GSTechnologyNo2 at [20]-[38].
The failure to pay the renewal fee by the due date, or by the end of the grace period, was caused by identifiable errors or omissions, and ultimately the failure to authorize CPA to pay the renewal fee, which in my view can be properly regarded as being within the “broadly protective and remedial operation”[12] of s 223 of the Act.
[12] AlphapharmPtyLtdvHLundbeckA/S [2014] HCA 42 at [64] per Crennan, Bell and Gageler JJ.
Nufarm submits that Advanta’s failure to authorize CPA to pay the fifth renewal fee is tantamount to Advanta simply not paying the fee. That, Nufarm submits, is not an error causing a failure, but is the failure itself.
It is correct that the failure to do the relevant act is distinct from the error or omission that must be shown to have caused or contributed to the failure.[13] The act or omission cannot be the relevant act itself.[14]
[13] AspenPharmaPtyLtdvHLundbeckA/S [2013] FCAFC 129 at [60] per Yates J (Jessup and Jagot JJ agreeing).
[14] Kimberley-Clark and G STechnologyNo2.
In this case the error in failing to authorize CPA to make the payment, and the other contributing errors or omissions outlined above, are all at least one step earlier in the chain, and properly seen as causing or contributing to the failure to pay.
Nufarm also submits that Advanta has not provided sufficient evidence in terms of the disclosure required in an application of this sort. I do not accept that submission. Nufarm has made extensive, and more than reasonable enquiries, to establish and then disclose how it came about that the Patent was not renewed, and more than that, has laid out all of the facts and circumstances. I reject Nufarm’s submission that the material goes no further than speculation as to relevant matters.
Nufarm submits that there are other persons from whom Advanta should have obtained direct evidence and points out that some of the evidence relied on is hearsay. I have considered those submissions. It is acknowledged by Advanta that not every relevant document has been able to be produced to the Tribunal and not every relevant witness has been willing to give evidence.
Advanta has sought, obtained, and put before the Tribunal, the whole of the files from its patent attorneys, Sprusons, and its payment agent, CPA. It has sought information from other witnesses who were not prepared to give evidence themselves. The evidence goes beyond a mere “disclosure of the processes by which [the] errors came to be committed” but “expose[s] frankly … all the conduct, knowledge, beliefs and mental processes of the applicant… relevant to an understanding” of how the failure occurred.[15] It was not put to any of Advanta’s witnesses that the evidence put forward was not the best evidence available.
[15] Kimberly-Clark at 583-584.
I am satisfied that the absence of direct evidence from the persons identified by Nufarm, including Dr Stalker, Ms Trinder, Dr Hossain, Ms Hamblin and Mr Chandrin, by reason of their roles in Advanta, the nature and extent of their involvement (if any) in respect of the Patent at the relevant times, and/or their willingness to co-operate, do not detract from a finding that the Advanta has made more than sufficient disclosure as envisaged by decisions such Kimberly-Clark.
I am satisfied that there has been an error or omission within s 223(2)(a) of the Act enlivening the exercise of the discretion.
Discretion
In exercising the discretion, the Tribunal must take into account all of the relevant circumstances.[16]
[16] FerocemPtyLtdvCommissionerofPatents (1994) 49 FCR 205 per Burchett J.
Advanta became aware that the Patent had ceased on 1 April 2019 as part of a review of Advanta’s contractual arrangements. Mr Croker immediately instigated an investigation to determine the reason for the failure to pay the renewal fee.
Having ascertained what, he then understood to be the circumstances surrounding the failure, Mr Croker caused an application for an extension of time to be prepared and filed on 8 April 2019. There has been no delay.
Since discovering its failure to pay the fifth renewal fee, Advanta has paid subsequent annual renewal fees, “as though the Patent remains on foot”. These payments have apparently been accepted notwithstanding the Patent has “ceased”.
As I have said Advanta has always maintained an intention to keep the Patent valid and subsisting.
There are, as mentioned, serious adverse consequences to Advanta if the extension is refused.
Nufarm refers to Advanta’s disclosure before the Tribunal, and to its case before the delegate, as matters going to the exercise of the discretion. I refer to what I have said above. Neither matter weighs against the exercise of the discretion in favour of Advanta.
There is no evidence of any prejudice to any third party, including Nufarm, if the extension is granted. Nufarm is the ultimate parent company of the licensee under the licence referred to above. There is the prospect, therefore, of Nufarm and/or the licensee missing out on a windfall benefit if the extension is granted. That, of course, is not a factor favouring refusal of an extension (and was not submitted as such by Nufarm).
Advanta submits, and I accept, there is a broad public interest in promotion of innovation through the reward of patent rights. That entitlement should not be lost because of mere error or omission on Advanta’s part or the part of its attorney. That is consistent with the purpose of s 223 of the Act. The public interest therefore supports the grant of the extension.
CONCLUSION
The reviewable decision should therefore be set aside. The Applicant will be granted an extension of time pursuant to s 223 of the Patents Act to pay the renewal fee due on
6 October 2017 for Australian Patent 2009304572.The parties asked for an opportunity, after this decision was known, to consider the precise orders that should be made. Advanta also sought, if it was successful, an order for costs, both before the Tribunal and before the delegate of the Commissioner.
Accordingly, the parties shall have fourteen (14) days to lodge short minutes of orders and/or to lodge and serve written submissions on the orders that should be made.
Within the same time each party is at liberty to lodge and serve written submissions on costs, including the jurisdiction to order costs before the Tribunal.[17]
[17] See Kimberly-Clark Ltd v Commissioner of Patents (No 2) (1988) 13 IPR 551.
I certify that the preceding eighty-nine (89) paragraphs are a true copy of the reasons for the decision herein of Deputy President I R Molloy
..................[SGD]......................................................
Associate
Dated: 6 May 2022
Date(s) of hearing: 7 March 2022, 8 March 2022 and 21 April 2022 Counsel for the Applicant: Mr John Hennessy SC and Mr Ben Gardner Solicitors for the Applicant: Baker McKenzie Solicitors for the Respondent: Australian Government Solicitor Counsel for the Other Party: Mr Ben Fitzpatrick Solicitors for the Other Party: Phillips Ormonde Fitzpatrick
[64]-[65] and per Kiefel and Keane JJ at [115].
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