Ashmont Holdings Limited v American Home Products and Nature Vet Pty Limited

OFFICIAL NOTICE
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No. 707949 in the name of ASHMONT HOLDINGS LIMITED

Title: Anthelmintic Formulations

Action: Request for an extension of time under Section 223 for the purpose of filing the application and oppositions thereto by AMERICAN HOME PRODUCTS CORPORATION and NATURE VET PTY LIMITED

Decision: Issued 19 June 2002.
Abstract

In a previous decision on the extension of term of petty patent 711820 (which is a divisional application of 707949), it was found that all the claims lack novelty and inventive step in the light of the Virbac patent application, AU 691990. In those proceedings Ashmont argued that Virbac constitutes an unauthorised disclosure of its invention, within the meaning of section 24(1)(b).
Virbac was published on 6 June 1996 and the previous decision found that, in order for Ashmont to rely on the provisions of section 24(1)(b), the present application 707949 would need to have been filed by 6 June 1997. However, the filing date of application 707949 was 25 July 1997. The present section 223 request is for an extension of time to file application 707949 in order that Virbac may be disregarded for the purposes of assessing novelty and inventive step if it were subsequently determined that it does constitute an unauthorised disclosure.
Section 223(2) was considered to be applicable to extend the time period prescribed in section 24(1)(b) and regulation 2.3(2). Nevertheless, it was found that Ashmont had a deliberate policy not to keep a watch for patent applications and by doing this, failed to become aware of the Virbac application. Ashmont failed to appreciate that Virbac would file a patent application without their knowledge and Ashmont made deliberate decisions, not errors, about when to file its application and where. No error or omission was found which caused Ashmont not to file the application before 6 June 1997. Although Ashmont gave a satisfactory and credible explanation of the delay in applying for the extension and have made a full and frank disclosure of all the circumstances, the application under section 223 is refused as there was found to be no causative error.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No. 707949 in the name of Ashmont Holdings Limited, a request by the applicant for an extension of time under the provisions of section 223 to file the application and opposition to that request by American Home Products Corporation and Nature Vet Pty Limited.

BACKGROUND

Patent application 707949 (AU 35604/97) in the name of Ashmont Holdings Limited (Ashmont) was filed under the provisions of the PCT on 25 July 1997 as international application PCT/NZ97/00096 (published as WO98/06407). This claimed priority from New Zealand applications 299094 and 299387 with filing dates of 30 July 1996 and 13 September 1996 respectively. Patent application 707949 was advertised accepted on 22 July 1999. Notices of opposition were subsequently served on the applicant by American Home Products Corporation (AHPC) and Jurox Pty Ltd (Jurox).
Petty patent 711820, also in the name of Ashmont, was filed on 20 August 1999 as a divisional application of application 707949. Ashmont applied to extend the term of the petty patent under section 69. Notices under section 28 were filed by AHPC and Nature Vet Pty Limited (Nature Vet). I heard these matters concerning petty patent 711820 in Canberra on 22 May 2001 and my partial decision was issued on 5 September 2001. In that decision I found that all the claims of the petty patent lack novelty and inventive step in the light of AU 691990 (Virbac). However, Ashmont made submissions at that hearing concerning an exception to novelty provided by section 24(1)(b) of the Patents Act where there has been an unauthorised disclosure of certain information. In my decision I found that the parent application, 707949, was filed too late for section 24(1)(b) to apply in relation to the disclosure in the Virbac document. Ashmont were given 60 days from the date of that decision in which to either file amendments or file a request for an extension of time under section 223 in which to file application 707949.
Ashmont filed an application under section 223 on 2 November 2001 to extend the time for filing application 707949. Because the outcome of this section 223 request will have considerable impact on the petty patent, further consideration of petty patent 711820 was deferred until the outcome of the section 223 is determined. In addition, AHPC, Nature Vet and Jurox, as interested parties, were given the opportunity to object to the granting of the extension. Both AHPC and Nature Vet took the opportunity to object. This matter was heard in Sydney on 13 March 2002. Dr Annabelle Bennett SC, instructed by Mr Martin Earley of Pipers, Melbourne, represented Ashmont. Both AHPC and Nature Vet were represented by Ms Katrina Howard of counsel, assisted by Mr Christian Dimitriadis, instructed by Mr Denis Tuffery of Baldwin Shelston Waters, Sydney for AHPC and Mr John O'Connor of Spruson & Ferguson, Sydney for Nature Vet. Also present were Ms Jovanka Naumoska and Dr Ute Feldman of Spruson & Ferguson and Ms Lea Lewin of Baldwin Shelston Waters.
THE APPLICATION FOR EXTENSION
The application for extension of time was made on 2 November 2001 and specified that the extension required was for two months from 6 June 1997 to 25 July 1997. The application outlines the reasons as being:
"For the purpose of filing Convention application no 35604/97 being national phase of PCT/NZ97/00096 filed on 25 July 1997 and now accepted and current application 707949 which is based on New Zealand Application Nos 299094 and 299387 filed on 30 July 1996 and 13 September 199s(sic) respectively in order to meet the requirement of Section 24(1)(b) of the Australian Patents Act of filing within 12 months of unauthorised publication being the publication of Australian patent application no 691990 on 6 June 1997.
The grounds under Section 223 upon which this application is made are as follows:
Paragraph 223(2)(a) an error or omission by ourselves, our agent or our attorneys;
Paragraph 223(2)(b) circumstances beyond my control."
The following evidence was subsequently provided to support this application:
Declaration by Martin Gerard Earley dated 2 November 2001 (this has exhibits MGE1 to MGE5 being: the front page of pamphlet WO98/06407, the front page of AU-B-39087/95, copies of statutory declarations by Michael Ffloyd Forster and Colin Manson Harvey -which were filed by Ashmont in response to the section 28 notices in relation to petty patent 711820 - and my decision on petty patent 711820)
Declaration by Colin Manson Harvey dated 21 November 2001
Declaration by Martin Gerard Earley dated 14 December 2001
Declaration by James William Piper dated 12 March 2002
Neither AHPC nor Nature Vet provided any declarations but, by letter of 11 March 2002, provided a copy of a Request for Registration of an Interest in a Patent dated 11 May 2000 and a Licence Agreement dated 29 February 2000 in respect of the petty patent 711820.
RELEVANT LAW
Section 223
……..
(2)            Where, because of:
(a) an error or omission by the person concerned or by his or her agent or attorney; or
(b) circumstances beyond the control of the person concerned;
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.
(3) The time allowed for doing a relevant act may be extended, whether before or after that time has expired.
(4)        The Commissioner must advertise in the Official Journal:
(a) an application made for an extension of time for more than 3 months; or
(b) an application made for an extension of time for doing a prescribed relevant act in prescribed circumstances.
(6)        A person may, as prescribed, oppose the granting of the application.
………
(11)       In this section:
relevant act means an action (other than a prescribed action) in relation to a patent, a patent application, or any proceedings under this Act (other than court proceedings), and includes the making of a Convention application within the time allowed for making such applications.
Regulation 22.11
(1)            For the purposes of subsection 223(2) of the Act, an application for an extension of time must be in the approved form and have with it a declaration setting out the grounds on which the application is made.
(1A)     Subregulation (1B) applies if:
(a) an application for an extension of time for doing a relevant act is made under subsection 223(2) of the Act; and
(b) the relevant act has not been done; and
(c) a notice of opposition to the grant of the application is filed.
(1B) If the Commissioner grants the application, the Commissioner must extend the time to include the period from the day on which the notice of opposition is filed to the end of:
(a) if an application is made to the Tribunal for a review of a decision of the Commissioner — the day when the application is withdrawn or finally dealt with or determined; or
(b) in any other case — 21 days after the end of the day on which the Commissioner decides the application.
(2)        Notice of the grant of an extension of time must be published in the Official Journal.
(3)        For subsection 223(4) and paragraph 223(9)(b) of the Act:
(a) the payment of a continuation fee or a renewal fee within the 6 month period mentioned in subregulation 13.3(1A) or 13.6(2) is a prescribed relevant act; and
(b) the prescribed circumstances are that the fee is not paid within that 6 month period mentioned in subregulation 13.3(1A) or 13.6(2).
(4) For the definition of relevant act in subsection 223(11) of the Act, each of the following actions is prescribed:
(a) an action or step prescribed in Chapter 5, other than an action or step taken under regulation 5.3 or 5.3AA, paragraph 5.4(a) or subparagraph 5.8(1)(a)(i);
(b) filing, during the term of a standard patent as required by subsection 71(2) of the Act, an application under subsection 70(1) of the Act for an extension of the term of the patent.
Section 24(1)
For the purpose of deciding whether an invention is novel or involves an inventive step or an innovative step, the person making the decision must disregard:
(a) any information made publicly available, through any publication or use of the invention in the prescribed circumstances, by or with the consent of the nominated person or patentee, or the predecessor in title of the nominated person or patentee; and
(b) any information made publicly available without the consent of the nominated person or patentee, through any publication or use of the invention by another person who derived the information from the nominated person or patentee or from the predecessor in title of the nominated person or patentee;
but only if a patent application for the invention is made within the prescribed period.
Regulation 2.3(2)
For the purposes of subsection 24(1) of the Act, in the case of information of the kind referred to in paragraph 24(1)(b) of the Act, the prescribed period is 12 months from the day when the information referred to in that paragraph became publicly available.
PRELIMINARY MATTER
A preliminary matter raised by Ms Howard at the start of the hearing was concerned with the late filing of three of the declarations in support of the section 223 request, particularly the declaration by Mr Piper which was only served on the parties the day before the hearing. I note that the other two declarations, that from Mr Harvey and the second Earley declaration, were filed on 14 December 2001. Dr Bennett argued that the Piper declaration was in response to the copy of the licence agreement between Ashmont and Virbac, which was filed by Nature Vet only on 11 March 2002. Ms Howard pointed out that this agreement was on file in IP Australia and that it was only brought to my attention in advance as it would be relied on it at the hearing.
I agree with Ms Howard that it is most unfortunate that these declarations were filed late. Ashmont were given 60 days from the date of the decision on the extension of term of petty patent 711820 in which to file the section 223 application which should have been ample time to obtain the necessary supporting declarations. Nevertheless, I believe that I should be considering all relevant material in coming to my decision and that the matter should be decided on its merits, rather than excluding information on the basis of a failure in procedure on the part of Ashmont. However, I note that the delay may be a factor in determining whether it is appropriate in all the circumstances to exercise my discretion to grant the application for extension and in the determination of costs.
DECISION
Is section 223 applicable here?
Section 223(2) allows the Commissioner to extend the time for doing a relevant act where the act is not done because of an error or omission by the person concerned or their agent or attorney, or because of circumstances beyond the control of the person concerned. Section 223(11) defines a relevant act as being "an action (other than a prescribed action) in relation to a patent, a patent application, or any proceedings under this Act (other than court proceedings), and includes the making of a Convention application within the time allowed for making such applications". The prescribed actions excluded from section 223 are given in regulation 22.11(4). These essentially relate to opposition actions (apart from filing a notice of opposition and the statement of grounds and particulars) and filing an application for extension of term of a patent under section 70 during the term of the patent.
I initially need to determine if section 223 is applicable in the present circumstances. If I find that it is, I need to be satisfied that there is a causal link between the error or omission and the failure to do the relevant act, since section 223(2) requires that an extension may be granted where the act is not done "because of" the error or omission. I must also be mindful that the granting of an extension of time under section 223(2) is a discretionary provision, and in order to exercise that discretion, I should have regard to all the relevant facts.
In my decision on the extension of term of petty patent 711820, I found that all the claims lack novelty and inventive step in the light of the Virbac patent application, AU 691990. In those proceedings Ashmont argued, on the basis of evidence from Mr Harvey and Mr Forster, that Virbac constitutes an unauthorised disclosure, within the meaning of section 24(1)(b), of collaborative work performed between Virbac and Ancare New Zealand (Ancare). (Ancare is the exclusive licensee of all technology held by Ashmont with Ashmont being the holding company for all patents developed by Ancare and its employees). Patent application 711820 is a divisional application of 707949.
Section 24 is a very specific provision that instructs the decision-maker to disregard certain information when considering whether an invention is novel and inventive. Section 24(1)(b) in particular is concerned with information being made publicly available without the consent of the nominated person or patentee. Validity is not affected "but only if a patent application for the invention is made within the prescribed period" which is given in regulation 2.3(2) as twelve months.
Virbac was published on 6 June 1996. In my decision (issued on 5 September 2001) I found that, in order for Ashmont to rely on the provisions of section 24(1)(b), the present application 707949 would need to have been filed within twelve months of the information in Virbac being made publicly available, that is by 6 June 1997. However, the filing date of application 707949 was 25 July 1997, which is outside this time period. It should be noted though that no decision has been made as to whether Virbac does in fact represent an unauthorised disclosure with regard to the invention claimed in petty patent 711820. However, the present request is for an extension of time under section 223(2) to file application 707949 in order that Virbac may be disregarded for the purposes of assessing novelty and inventive step if it is subsequently determined that it does constitute an unauthorised disclosure.
On this basis, it seems to me that the act not done in this case was the filing of application 707949 within twelve months from the publication date of the Virbac document. However, I need to determine if this is a "relevant act" as prescribed by section 223(11) and regulation 22.11(4), as otherwise section 223(2) would not apply in the present situation. The parties were not able to direct me to any previous decisions in which section 223(2) was used to extend the prescribed period in section 24(1)(b) and I am not aware of any such decisions.
Dr Bennett submitted that section 24(1)(b) is a protective provision, which avoids a disadvantage to the patentee if their invention is published without their consent. She also submitted that the act not done in this case is a "relevant act" and that section 223(2) is applicable to extend the time period. However, Ms Howard argued that section 24(1)(b) is not a protective provision but is a special exception to novelty and that section 223(2) does not apply since there is no relevant act required to be done within a certain time. Thus, in her view this prescribed period cannot be extended.
The courts have interpreted section 223 (and section 160 which is the corresponding section of the 1952 Patents Act) as having general application and as being a remedial section, applicable unless there is some clear indication to the contrary. (See Scaniainventor v Commissioner of Patents (1981) 36 ALR 101 and Danby Pty Ltd v Commissioner of Patents and Another (1988) 112 IPR 151). Section 223 has been found to be applicable to extend the time to make a Convention application ( see Scaniainventor v Commissioner of Patents (supra)) and this is reflected in the definition of "relevant act" in section 223(11). However, Ms Howard directed my attention to the decision in Norman Stibbard v The Commissioner of Patents (1985) 7 IPR 337 where the AAT upheld the delegate's decision to refuse an extension of time to lodge the patent application:
"The Tribunal considers that, as expressed by Stephen J, as he then was, s160(2) does not contemplate what amounts effectively to antedating the lodgment of a complete specification so as to effectively defeat the interests of other inventors who have lodged their specifications more promptly. If it were otherwise, the lonely inventor working away unaware of the inventive steps of others ………would suffer a rude shock if he promptly lodged his application and specification only to be defeated by a less prompt inventor applying under section 160(2) for an indulgence."
Ms Howard submitted that this was analogous to the present situation with Ashmont seeking to antedate the filing of the patent application. However, I do not agree. In Stibbard there was no time period in the legislation which was not complied with, merely the applicant seeking to obtain an earlier priority date. Ms Howard contrasted the wording of section 94 where an applicant "may make a Convention application…..within the prescribed period" with section 24 where information may be disregarded "only if a patent application for the invention is made within the prescribed period".
However, I do not believe that the word "only" alters the fact that there is a clear reference to a prescribed period in section 24(1)(b) of the Act and it is this which Ashmont is seeking to extend. I believe that the filing of a patent application within twelve months from unauthorised disclosure of the information is a relevant act required to be done within a certain time, as required by section 223. I can see no clear indication in the legislation to exclude section 24 from the provisions of section 223. Without a specific exclusion, as is the case for the time for filing a notice of opposition or a statement of grounds and particulars, I believe that section 223 applies. As a result, I find that section 223(2) is applicable to extend the time period prescribed by section 24(1)(b) and regulation 2.3(2).

Nevertheless, having found that section 223(2) is applicable, I must also be satisfied that in this case there was an error or omission by the applicant or their attorney which caused patent application 707949 not to be filed within twelve months from the publication of Virbac. Thus, this error or omission must have happened before 6 June 1997.
Has there been a causal error or omission?
I find the decision of Justice Jenkinson in Kimberly-Clark Ltd v Commissioner of Patents and Another (No3) 13 IPR 569-584 helpful when considering the factors which need to be taken into account in determining if the Commissioner's discretion to grant an extension of time should be exercised. Justice Jenkinson considered the meaning of the phrase "error or omission" and found that this should not be given a restricted meaning since:
"………some errors of judgement by agents and attorneys may be as bizarre and as little to be anticipated as lapses of memory and accidental slips."
Dr Bennett also referred me to the decision in Total Peripherals Pty Ltd and Commissioner of Patents and International Business Machine Corporation [1998] AATA 784 which was a decision by the AAT to uphold a Delegate's decision to grant an extension of time to pay renewal fees. The Tribunal found that "there has not been a failure to act by Mr Holcombe but rather, on review, a flaw in his mental function in carrying out his intentions, which is an error made by him". The Tribunal noted the difference between extending the time for filing a notice of opposition and for payment of renewal fees in which the parties "live or die". Although there appears to have been little assistance provided by Mr Holcombe's affidavit, the Tribunal was satisfied that there was "an unexpected failure of a servant to exercise due diligence when giving directions".
In the present case, from the evidence and Dr Bennett's submissions, it seems that:
·     Ashmont were unaware of Virbac until October 1998
·     At that time they were represented by patent attorneys Pipers New Zealand and an opposition to Virbac was filed in New Zealand
· In October 1998, Ashmont and Pipers New Zealand were not aware of the provisions of section 24(1)(b) of the Australian Patents Act and did not take steps check the Australian law provisions
· In late 2000, Australian patent attorneys APT advised Ashmont and Pipers New Zealand that section 24(1)(b) was relevant (although Ashmont are unable to locate that letter). Still no action was taken as it seems that Pipers New Zealand believed that the filing of the New Zealand priority documents was sufficient to satisfy section 24(1)(b)
·     Patent application 707949 was transferred to Pipers Melbourne in early 2001. Mr Earley took over responsibility for the file but did not review it until April 2002. Section 24(1)(b ) was still overlooked until a few days before the hearing on the extension of term of petty patent 711820 set for 22 May 2002 when it was realised that the prescribed date for the Australian application was 6 June 1997
·     It was decided to argue at the hearing that Virbac could be distinguished, rather than apply for an extension of time
·     The extension of time application was only made after the hearing decision on petty patent 711820 was issued
Most of this took place subsequent to 6 June 1997 and so cannot constitute the relevant error or omission. However, before this time it seems that Ashmont was not aware of the Virbac application until "the publication of its New Zealand equivalent was reported to us by our patent attorneys by letter dated 9 October 1998" (Harvey declaration paragraph 6). Mr Harvey also states that this report "was the result of a standard watching service we have to keep an eye on our competitors patents proceeding to grant". This is confirmed by Mr Earley in paragraph 1 of his declaration "the Virbac patent application was published in June 1996 but that Ashmont were unaware of this until Ancare’s own watch service located the published document in October 1998, and it would have been Ancare’s administrative staff that would have reported to Ashmont".
Thus, it seems that Ashmont filed its New Zealand basic documents on 30 July 1996 and 13 September 1996 and followed through by filing international application PCT/NZ97/00096 on 25 July 1997. This is within the usual twelve month Paris Convention period in order to obtain priority from the New Zealand applications. Ashmont was unaware of Virbac, which apparently only came to its notice as a result of some sort of watching service provided by its patent attorneys. Unfortunately, no details of this watching service have been given but it is my understanding, from the evidence and Dr Bennett’s submissions, that it was a watch in New Zealand on the publication of accepted patents rather than published patent applications.
Dr Bennett outlined five errors or omissions that she said led to the failure of Ashmont to file the application before this time, namely:
1.    The failure to appreciate that Virbac would breach its obligations of confidence
2.    The failure to appreciate that Virbac would file a patent application disclosing the Ashmont work independently and without informing Ashmont
3.    The failure to conduct searches of the publication of filed patent applications (in contrast to a search of accepted applications) in Australia
4.    Filing the patent applications in New Zealand and relying upon the Paris Convention for protection in Australia
5.    Failing to file in Australia as the country of the basic application and the failure to file the PCT based upon the New Zealand filings immediately upon the filing of the second New Zealand application (or within the prescribed period for s24)
Dr Bennett submitted that this series of errors or omissions led to the failure to file the patent application in time. These all occurred prior to the expiration of the prescribed period. However, Ms Howard contended that these were not errors "such as to lead, as a matter of causation, to the Parent Application not being filed by 6 June 1997".
Errors 1 and 2 above relate to Ashmont's failure to appreciate that Virbac would file a patent application disclosing Ashmont's work without their knowledge. Clearly, Ashmont was completely unaware of the existence of the Virbac application until well after the crucial date of 6 June 1997. It had no knowledge of it and was not looking for it. Error 3 is a consequential error, very much linked to errors 1 and 2 and can be considered together with them. A watch was apparently put in place but it seems to have been to look for granted patents rather than patent applications. However, no details have been given of the watching service or reasons for choosing that type of watch, other than that it was a "standard watching service". As pointed out by Ms Howard, there is no evidence to show that the watching service was actually in place during the relevant time. Nor is there anything to indicate what Ashmont would have done differently so that it would have become aware of Virbac before the deadline.
The parties referred me to a number of relevant decisions dealing with applications for extension of time to file a notice of opposition. In Re Weir Pumps Ltd and Commissioner of Patents and Stork Pompen BV (1988) 13 IPR 163, where the AAT upheld a decision of the Commissioner to refuse an extension of time to lodge a notice of opposition. This was dealt with under the relevant provisions in the 1952 Patents Act, section 160(2). It was found that the opponent was completely unaware of the patent application in question as it had a "deliberate policy not to maintain a watch for pending patent applications or their acceptance".
In Danby Pty Ltd v Commissioner of Patents and Another (1988) 12 IPR 151, the Federal Court upheld the Delegate's decision to allow an extension of time for lodging a notice of opposition. Despite rather "thin" evidence, the Court was satisfied that instructions to oppose when acceptance took place were firmly given but that they were not carried out due to an error, rather than the opponent having lost interest in opposing. As a result, no watch was instituted and the deadline missed.
Henkel Kommanditgesellschaft Auf Aktien v Fina Research SA (1993) 27 IPR 289 was a decision by the Commissioner's Delegate. The opponent was aware of the patent application in question but were not aware that it had proceeded to acceptance due to their watch being conducted in an inappropriate database. The Delegate was satisfied that this prima facie constituted an error or omission. However, he found that the evidence provided was inadequate as to the chain of causation and refused an extension of time for filing a notice of opposition.
Amrad Corporation Ltd v Genentech (1994) 29 IPR 218 was another decision by a Delegate of the Commissioner. Again, the opponent was aware of the patent application but were not aware of its acceptance due to their choice of database. The Delegate found that "this was a breakdown in procedure rather than a deliberate decision or policy". He was satisfied that this was an error and that this had caused the notice of opposition to be filed out of time and thus allowed the extension.
Although these decisions were not concerned with the application of section 24(1)(b), they do provide some guidance to me since it seems that the circumstances are somewhat analogous to the present situation. Dr Bennett submitted that it was always Ashmont's intention to obtain patent protection for its invention. She contrasted this situation with the filing of a notice of opposition where the above cases indicate that the opponent needs to show their intention to oppose before the relevant deadline in order for an extension of time to be granted. In her view, Ashmont could not show its intent to file within twelve months from Virbac as it was not aware of it and "if one was of the view that there would be no breach of confidence, one would not take steps to discover the consequence of such a breach".
Dr Bennett maintained that Ashmont and its advisers failure to institute a watch was an error or omission resulting "from a faulty reflection" as in Total Peripherals (supra). However, I note that in Total Peripherals it was found that Mr Holcombe "went off the rails". He "mistakenly departed from his normal practice". In the present case there was no departure from normal practice. It was apparently Ashmont's normal practice not to search for filed patent applications and in doing so, it failed to notice Virbac.
As with Henkel and Amrad (supra), it seems that Ashmont kept a watch but the watch kept was inappropriate. However, in this case Ashmont was unaware of Virbac in time whereas in Danby, Henkel and Amrad (supra), the opponents were all aware of the patent application beforehand yet their error was in either failing to institute a watch or putting in place a watch in an inappropriate database. (I note that in Henkel, the extension was refused due to inadequate evidence as to the causal link, yet in Amrad the extension was allowed). However, I agree with Ms Howard that the present situation is more similar to Weir Pumps (supra) where it was found that the opponent never had any intention to oppose the application within the prescribed period as they were unaware of it at that time.
In my view, Ashmont had a deliberate policy not to keep a watch for patent applications and by doing this, failed to become aware of the Virbac application. This is entirely analogous to Weir Pumps (supra). Ashmont was not looking for Virbac and with the benefit of hindsight, this was an error on its part. However, I do not believe this was an error that caused the application not to be filed within the relevant time period. Ashmont never had any intention to file its application before 6 June 1997. Nothing prevented it from giving effect to its intention as that intention simply did not exist. Ashmont chose not to keep a watch and chose when to file the patent application. Whilst it seems that there may have been a breach of confidence, the remedy for this is not the granting of a section 223 extension but lies elsewhere outside my considerations here.
Furthermore, I am unable to determine what would have occurred if Ashmont had realised that Virbac would publish the invention. Ashmont may have made the decision to file their application earlier but according to Mr Earley's declaration of 14 December 2001 at paragraph 7, Ashmont's attorneys were unaware at that time of the provisions of section 24(1)(b). Thus, it seems unlikely that the application would have been filed before 6 June 1997 even if Ashmont had appreciated Virbac would break their agreement.
Dr Bennett tried to distinguish Weir Pumps. She pointed out that this present case is a situation where the patentee would "live or die" depending on whether the application for extension is allowed or not and is somewhat different to the filing of a notice of opposition where revocation provisions remain open to an opponent. In Weir Pumps, Deputy President Bannon also refers to this issue and that loss of opportunity to oppose is not disastrous. However, this seems to be in the context of his discretion to apply the extension of time provisions rather than in determining whether an error or omission occurred. In the present case, there has been no causal error to enliven the provisions of section 223 and so no discretion to be considered.
Thus, I find that errors 1, 2 and 3 were deliberate decisions, not errors or omissions which caused the relevant act not to be done in time.
With regard to errors 4 and 5, I note here that in Mr Forster's declaration at MGE3, he states that Virbac and Ancare New Zealand were working together on the Speedwell project between 1993 and 1995. This is confirmed by Mr Harvey in his declaration of 2 June 2000 at MGE4. Virbac, which Ashmont claims discloses its invention, has an earliest priority date of 28 November 1994 and a filing date of 28 November 1995. Thus, it seems the invention dates back to at least November 1995 and possibly November 1994. In my view, Ashmont could have filed its patent application much earlier than it did but made a deliberate decision to only file the first basic document on 30 July 1996 and then not file the international application until 25 July 1997. Ashmont also made a deliberate decision to file their basic applications in New Zealand , not Australia. In doing so, Ashmont obtained its priority rights but missed out on being able to rely on section 24(1)(b) by less than two months. The decisions of when to file the application and where are both deliberate decisions by Ashmont, rather than errors or omissions such as to satisfy section 223(2).
Thus I am not satisfied that any of the errors or omissions 1 to 5 listed above caused Ashmont not to file the application before 6 June 1997 and I am not aware of any other relevant error or omission.
Discretionary issues
At the hearing there were a number of submissions made by the parties in relation to the delay by Ashmont in applying for the extension of time and whether Ashmont have made a full and frank disclosure of all the relevant circumstances. Section 223 is a discretionary provision and such issues are related to the exercise of that discretion. Although I have been unable to find a causal error or omission, I will include these submissions for the sake of completeness.
I note that the extension needed is short, less than two months, although the section 223 application was not made until 2 November 2001. In Ms Howard's view, Ashmont have not provided a sufficient explanation for this delay. However, I agree with Dr Bennett on this point. Although it is regrettable, I have no reason to doubt that Ashmont's New Zealand attorneys were unaware of the provisions of section 24(1)(b) and that their Australian attorneys did not appreciate its relevance until just prior to the hearing date. At that late stage in the proceedings, it seems to me that Ashmont's decision to argue that Virbac did not anticipate the claims of petty patent 711820, rather than apply for an extension of time, was entirely reasonable.
Ms Howard argued that Mr Piper is the principal attorney of Pipers New Zealand and that he is a qualified Australian patent attorney so would have been aware of the significance of section 24(1)(b). However, from the evidence before me, I am not satisfied that it has been established that Mr Piper was personally handling the case or that he was aware of the provisions of section 24(1)(b) and their relevance to Australian application 707949. Thus, I am satisfied that Ashmont have provided a satisfactory and credible explanation for the delay in applying for the section 223 extension of time.
Another point raised by Ms Howard was in relation to the late filing by Ashmont of the supporting declarations. This has been dealt with as a preliminary matter at the start of this decision. While the declarations have been considered, I agree that there has been no explanation of the delay in filing them and that this is a factor in determining if the discretion to grant the extension should be given. However, I believe that Nature Vet and AHPC have had ample time to address the issues raised in the declarations, apart from the Piper declaration, and they did not indicate to me at the hearing that more time was needed. As a result, I am not convinced that the late filing of the declarations has unduly disadvantaged them.
Ms Howard also argued that Ashmont have not provided a full and frank disclosure of all the circumstances in that not all supporting documentation has been provided, such as the letter of advice from APT to Ashmont and Pipers New Zealand mentioned in paragraph 4 of the second Earley declaration. I am not convinced that this alone should weigh heavily against Ashmont as, despite any advice that it may have contained, Mr Earley declares that Pipers Melbourne were not made aware of the section 24(1)(b) issue until 29 March 2001.
A further issue raised by Ms Howard was that to grant the extension of time would be futile. She submitted that the publication of Virbac was not unauthorised and there is a serious issue of Ashmont's entitlement to the grant of petty patent 711820. However, these are issues on which the parties disagree and have not yet been decided. This is also rather a circular argument as, without the extension of time being granted, Ashmont would not be able to rely on the provisions of section 24(1)(b) to claim unauthorised disclosure of the invention.
Thus, on balance I believe that Ashmont have given a satisfactory and credible explanation of the delay in applying for the extension and have made a full and frank disclosure of all the circumstances. It seems that had I been satisfied that there was a causal error, these discretionary considerations would lead me to grant the extension in Ashmont's favour.
CONCLUSION
I have found above that section 223(2) is applicable to extend the time period prescribed in section 24(1)(b) and regulation 2.3(2). However, I am not satisfied that in the present circumstances there has been an error or omission that caused the relevant act not to be done before 6 June 1997. As a result, the application under section 223(2) by Ashmont to extend the time for filing application 707949, from 6 June 1997 to 25 July 1997, is refused.
RAMIFICATIONS FOR PETTY PATENT 711820
At the hearing Ms Howard and Mr O'Connor made the point that section 24(1)(b) does not flow through to a divisional. Section 24(1)(b) only applies if "a patent application for the invention is made within the prescribed period". They submitted that the present section 223 request only applies to the filing of the parent application 707949 and that it does not relate to the filing of divisional petty patent 711820. In their view, the relevant patent application for petty patent 711820 is that filed on 20 August 1999, not 25 July 1997 and that even if I was to grant the present extension of time, Virbac could not be disregarded with regard to petty patent 711820.

This is an interesting point and is one that could be argued. I note that the Patents Regulations have been recently amended to include subregulations 2.3(3) and (4), which specifically relate to the requirements for a divisional application.
(3) Subregulation (4) applies:
(a) if an application for a patent is a divisional application:
(i) under section 79B of the Act for an invention disclosed in the specification filed with a previous application for a standard patent (the original application); or
(ii) under section 79C of the Act for an invention disclosed in the specification filed in respect of an application for an innovation patent (the original application); and
(b) only to information disclosed in the divisional application that was disclosed in the original application.
(4) For determining the prescribed period for subsection 24 (1) of the Act, the filing date of the divisional application is taken to be the filing date of the original application.
In light of this amendment it could be said that this only clarifies the previous intention of the legislation or, on the other hand, that the legislation originally had a different meaning, as put forward by Ms Howard. Furthermore, it is not clear how this affects the present case taking into consideration the doctrine of accrued rights.
However, I do not believe that I need to decide the correct interpretation of the provision at this time. If Ms Howard's interpretation were correct, the current request under section 223 would be ineffective to address the difficulties with respect to petty patent 711820. Ashmont would need to obtain an extension of time not until 25 July 1997 but until 20 August 1999 in which to file their relevant application. Only then could the issue of unauthorised disclosure be considered in regard to petty patent 711820.
I have already made an adverse finding on the facts presented to me in relation to application 707949. In particular, I have found that there was no causative error preventing the application being filed before the relevant date. In the case of a divisional application, prima facie any further error or omission could only arise after the filing of the parent. That gives rise to a strong presumption that any request for extension of time with respect to the divisional will fail for the same lack of causative error as exists for the parent. Thus, although Ashmont could request an extension of time for filing the petty patent, such a request is unlikely to be successful.
It seems that it is only in the unlikely event that Ashmont both file and are granted a section 223 extension of time to file petty patent 711820 does the issue of unauthorised disclosure need to be considered further. As a result, I believe that my finding that all claims of petty patent 711820 lack novelty and inventive step in the light of Virbac stands. In that previous decision, issued on 5 September 2001, I allowed Ashmont 60 days in which to either file amendments to the specification or file a section 223 application. They chose the latter, which has now been refused. I now need to determine how to best proceed with petty patent 711820 since further consideration of the extension of term matters have been deferred.
I believe that it was entirely reasonable for Ashmont to have taken the option to apply for the section 223 extension of time, in order that these issues could be properly debated. However, having gone down that track, it would certainly be disastrous for Ashmont if I were to proceed to refuse the extension of term of petty patent 711820 at this stage without giving it a further opportunity to amend. At the same time, I am concerned to ensure that these proceedings are now finalised as quickly as possible without any unnecessary further delays. On balance, I believe it is appropriate to allow Ashmont a further 60 days from the date of this decision in which to file amendments to petty patent 711820 in order to overcome the deficiencies noted in that previous decision. In the absence of such a request to amend being filed, I will formally refuse to grant the extension of term.
My decision on the extension of term of petty patent 711820 also raised the issue of Ashmont's entitlement to the grant of patent 711820, due to their acknowledgement of Forster's contribution to the invention. However, I found that this issue did not arise in respect of pastes comprising the solvents ethyl lactate and N-methyl-2-pyrrolidine. I believe that if the petty patent is amended in such a way as to overcome the deficiencies noted in that decision, then the problem of entitlement also disappears.
COSTS
Nature Vet and AHPC have been successful in their opposition to the request for extension of time. I see no reason to depart from usual practice and thus award costs against Ashmont in relation to this section 223 request.
Gillian Jenkins
Delegate of the Commissioner of Patents
Patent attorneys for Ashmont : Pipers, Melbourne
Patent attorneys for AHPC : Baldwin Shelston Waters, Sydney
Patent attorneys for Nature Vet : Spruson & Ferguson, Sydney
Corrigenda (issued 24 June 2002)
Two small typographical errors were found in the decision after it was issued. The corrections are as follows:
Paragraph 26, point 5 : dates should read April 2001 (not April 2002) and 22 May 2001 (not 22 May 2002).

[2002] APO 24

24 June 2002