Affymax Technologies N.V. v Diversa Corporation - [2001] APO 52

OFFICIAL NOTICE

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Application : No. 703264 in the name of Affymax Technologies N.V.

Title: DNA mutagenesis by random fragmentation and reassembly

Action: Opposition under section 59 by Diversa Corporation and objections to an extension of time under regulation 5.10(2) to serve evidence in answer and a direction under regulation 5.10(1) to defer service of evidence in answer until amendments under section 104 to the specification were finalised

Decision: Issued .
Abstract

The nature of the amendments to the broad claims is such that they are likely to have a significant effect on the type of evidence that needs to be adduced and also are necessary to more “completely and fairly defined” the invention. The amendments have been diligently processed to date and the public and applicant’s interest resides in deferring the evidence in answer because of the pending amendments.

A direction was therefore provided under regulation 5.10(1)(a) to defer evidence in answer pending determination of the amendments. An extension of time was also granted under regulation 5.10(2) up until leave was granted to amend. Both the direction and extension of time under regulation 5.10 have been granted on the understanding that the preparation of evidence will be diligently progressed as much as possible while evidence has been stayed so that there are no undue delays in completing evidence in answer once amendments have been finalised.

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Patent Application No. 703264 by Affymax Technologies N.V and opposition under Section 59 of the Patents Act 1990 by Diversa Corporation. Objections to an extension of time to service evidence in answer under regulation 5.10(2) and to a direction under regulation 5.10(1) to defer service of evidence in answer until amendments filed under section 104 to the specification were finalised

BACKGROUND

Patent Application 703264 was filed on 17 February 1995 under the provisions of the PCT by Affymax Technologies N.V., claiming priority from a US basic application (US 198,431) filed on 17 February 1994. The Australian application was advertised accepted on 25 March 1999 and a notice of opposition was filed by Diversa Corporation (Diversa) on 23 June 1999.

The Statement of Grounds and Particulars was filed on 23 September 1999 and evidence in support was completed on 25 January 2001, after 7 extensions of time under regulation 5.10(2). As a consequence, evidence in answer was initially due on 10 April 2001. The applicant applied for, and was granted, a first extension of time up until 10 July 2001 without objection from the opponent. Within this extended period (on 18 May 2001), the applicant filed amendments under section 104. At the same time, they also sought a direction under reg 5.10(1) to defer evidence in answer until 1 month the amendments were finalised.

The delegate proposed a direction on 1 June 2001 in the following terms:

"The time for serving evidence in answer will expire 1 month after the…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2001] APO 52
Decision Date: 5 October 2001

CaseChat Overview and Summary

Affymax Technologies N.V. (Affmax) filed an application for a patent in Australia for a method of DNA mutagenesis by random fragmentation and reassembly. Diversa Corporation opposed the application. The dispute was heard before a delegate of the Commissioner of Patents. The central issue was whether the Commissioner could direct a deferral of the service of evidence in answer under regulation 5.10(1) and extend the time for serving evidence in answer under regulation 5.10(2) given the proposed amendments to the specification. The applicant argued that the amendments were necessary to more completely and fairly define the invention and would have a significant effect on the evidence required. The opponent argued that the amendments were trivial and would not affect the evidence.

The delegate considered the nature of the amendments, whether there would be undue delay in proposing or processing the amendments, and the interests of the parties and the public. The delegate found that the amendments were non-trivial and likely to have a significant effect on the evidence required. While the opponent raised concerns about the addition of many new claims, the delegate did not find this to be a significant issue. The delegate also found that there was no undue delay in proposing or processing the amendments and that the interests of the parties and the public would be served by deferring the evidence until the amendments were finalised.

Accordingly, the delegate directed under regulation 5.10(1)(a) that the time for serving evidence in answer would expire one month after the Commissioner notified the parties of the allowance or refusal of the request for leave to amend. The delegate also granted an extension of time under regulation 5.10(2) until 10 October 2001. The delegate emphasised that evidence should be progressed as much as possible during the stay so as to avoid undue delays once the amendments were finalised. The delegate did not award costs to either party.

Orders