Apotex Pty Ltd v Les Laboratoires Servier - [2012] APO 91

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Apotex Pty Ltd v Les Laboratoires Servier [2012] APO 91

Patent Applications: 2007203451

Titles:Pharmaceutical composition containing a crystalline form of perindopril tert-butylamine salt

Patent Applicant:  Les Laboratoires Servier
Opponent:  Apotex Pty Ltd
Delegate:  Dr S.D.Barker
Decision Date:  10 August 2012
Hearing Date:  27 July 2012 in Canberra

Catchwords: PATENTS – extension of time to serve evidence in reply – delay due to involvement of experts in preparing evidence in related Federal Court matter – nature and significance of evidence supports the extension – no award of costs as a consequence of the two step process of explaining the reasons for the extension

Representation: Patent applicant: Linda Govenlock and Trevor Davies of Allens Patent & Trade Mark Attorneys
Opponent:Neil Murray of counsel and Nicole Watling of Freehills Patent & Trade Mark Attorneys

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Applications: 2007203451

Titles:Pharmaceutical composition containing a crystalline form of perindopril tert-butylamine salt

Patent Applicant: Les Laboratoires Servier
Date of Decision: 10 August 2012
DECISION
Extension of time granted. The time for serving evidence in reply is extended to 29 August 2012.
No award of costs.
REASONS FOR DECISION

This matter relates to patent application 2007203451 in the name of Les Laboratoires Servier (the applicant), which is a divisional of application 2001276418 (the parent). The parent is presently the subject of proceedings in the Federal Court.
The present application was advertised accepted, and a notice of opposition to the grant of a patent was filed by Apotex Pty Ltd (the opponent). The opposition has progressed to the evidence in reply stage. Evidence in reply is due to be served by29 June 2012, and the opponent has requested an extension until 29 August 2012. The applicant objected to the extension, and a hearing was conducted in Canberra on 27 July 2012. The applicant was represented by Linda Govenlock and Trevor Davies of Allens Patent & Trade Mark Attorneys. The opponent was represented by Neil Murray of counsel and Nicole Watling of Freehills Patent & Trade Mark Attorneys.
Reasons for the extension of time
The reason for the extension of time was given as
“We have reviewed the evidence in answer by the patent applicant and have identified the issues we intend to address in evidence in reply. Some of these issues are similar to issues to be considered in the Federal Court proceedings relating to the parent patent (AU 2001276418). Our evidence in chief on invalidity is due in that proceeding on 11 July 2012. Two of the experts we have recently retained in the Federal Court proceedings have now also been retained to give evidence in reply in this opposition proceeding. However, due to the involvement of these experts in the evidence preparation for the Federal Court proceeding, the experts will be unable to assist in this opposition preceeding until their commitments on the Federal Court proceedings are completed. In the present circumstances, the experts have spent a significant amount of time (in addition to, and in some cases…

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.

Continue reading Apotex Pty Ltd v Les Laboratoires Servier

Details

AGLC: Apotex Pty Ltd v Les Laboratoires Servier [2012] APO 91
Case: [2012] APO 91
Decision Date: 10 August 2012

CaseChat Overview and Summary

This decision involves patent application 2007203451, concerning a pharmaceutical composition containing a crystalline form of perindopril tert-butylamine salt, owned by Les Laboratoires Servier (the applicant). The matter was opposed by Apotex Pty Ltd (the opponent). The dispute was heard by the Australian Patent Office and involved an application by the opponent for an extension of time to serve evidence in reply during the opposition proceedings. The parties were represented by counsel and patent attorneys.

The key legal issues before the court were whether the opponent had provided a satisfactory explanation for the delay in serving the evidence in reply, whether the public interest favoured allowing the extension, and whether the interests of the parties were largely offsetting. The court had to balance these factors in determining whether to grant the extension.

The court found that the opponent had provided a satisfactory explanation for the delay, as the experts retained to give evidence in reply had been heavily involved in preparing evidence for related Federal Court proceedings. The court was satisfied that the nature and significance of the evidence being prepared favoured allowing the extension, in the interests of determining the opposition on its merits. The interests of the parties were largely offsetting, although not identical. Therefore, the court granted the extension of time to serve evidence in reply until 29 August 2012. However, no costs were awarded as the applicant had been justified in objecting to the extension.

In summary, the court granted the opponent's application for an extension of time to serve evidence in reply during the opposition proceedings, based on the satisfactory explanation for the delay, the public interest in determining the opposition on its merits, and the largely offsetting interests of the parties. However, no costs were awarded to either party.

Orders