Boehringer Ingelheim Animal Health USA Inc. v Intervet International B.V

[2019] APO 33

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Boehringer Ingelheim Animal Health USA Inc. v Intervet International B.V. [2019] APO 33

Patent Application:             2014363695

Title:Antiparasitic use of isoxazoline compounds

Patent Applicant:                Intervet International B.V.

Opponent:Boehringer Ingelheim Animal Health USA Inc.

Delegate:Dr S. J. Smith

Decision Date:  19 July 2019

Hearing Date:  Written submissions filed on 19 June 2019 and 26 June 2019

Catchwords:  PATENTS – section 223 – extension of time to file notice of opposition – reliance on incorrect deadline to file notice – discretionary considerations – extension of time allowed – costs awarded

Representation:                   Patent attorney for the applicant: Spruson & Ferguson

Patent attorney for the opponent: FB Rice

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application:             2014363695

Title:Antiparasitic use of isoxazoline compounds

Patent Applicant:                Intervet International B.V.

Date of Decision:                19 July 2019

DECISION

Extension of time allowed under section 223(2)(a) until 20 March 2019 to file a notice of opposition.

I award costs according to Schedule 8 against Intervet International B.V.

REASONS FOR DECISION

Background

1. Patent application 2014363695 in the name of Intervet International B.V. (Intervet) was filed on 9 December 2014 under the provisions of the Patent Cooperation Treaty.  The application claims priority from EP 13196539.4 which was filed on 10 December 2013.  Examination was requested on 12 April 2017 and acceptance advertised on 13 December 2018.  Pursuant to regulation 5.4(1) the time for filing a notice of opposition to grant of a patent expired 3 months later on 13 March 2019.

2. On 20 March 2019 Boehringer Ingelheim Animal Health USA Inc. (Boehringer) filed a notice of opposition to the grant of a standard patent together with a request for an extension of time under section 223(2)(a) in which to file the notice. A declaration in support of the extension was filed on 29 March 2019. Following a request for further information, a further declaration in support of the extension was filed on 26 April 2019. The parties were advised of the Commissioner’s intention to grant the extension of time on 6 May 2019, and in accordance with the requirements of regulation 22.22 Intervet was provided with an opportunity to be heard on the extension of time request.

3. Intervet objected to the extension of time being allowed on 20 May 2019 and the matter was heard by written submissions.

   The law

4. Section 223 of the Patents Act 1990 relevantly provides:

   “(2) Where, because of: 

   (a) an error or omission by the person concerned or by his or her agent or attorney; or

   (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.”

1. The meaning of the term “relevant act” is defined by section 223(11) and regulation 22.11(4), and encompasses the act of filing of a notice of opposition to the grant of a patent under regulation 5.4.

2. The following principles for applying the provisions of section 223 are derived from decided cases:

   (i)The statutory provision to extend time is beneficial in nature and should be applied beneficially.[1]

   [1] ReSanyo Electric Co Ltd and Commissioner of Patents [1996] AATA 832; (1996) 36 IPR 470 at 479 [16].

   (ii)While the applicant has the burden of placing before the tribunal the circumstances it claims will justify the grant of an extension of time, that does not amount to a burden of proof and it is not appropriate that it be so described.[2]

   [2] Ibid.

   (iii)For section 223(2)(a) to be enlivened, it must be shown that an error or omission had contributed to cause the failure to perform the relevant act, i.e. there must be a causal connection between the error or omission and the relevant act that is required to be done within the stipulated time.[3]

   (iv)The applicants for an extension of time must demonstrate that they had an intention to do the relevant act within the time prescribed, and that an error or omission on their, or their agent’s, behalf reasonably could be said to have frustrated that intention.[4]  However, there will be exceptional circumstances where the relevant error precluded the formation of a specific intention.  In such cases the required causal connection is satisfied if the error contributed to the failure to form the intention to perform the relevant act.[5]

   (v)“In order to make out the ‘proper case … justifying an extension’ … an applicant would … have to go beyond a disclosure of the processes by which an agent’s errors came to be committed and would have to expose frankly, inter alia, all the conduct, knowledge, beliefs and mental processes of the applicant … relevant to an understanding of the way the failure to do the act or take the step occurred, or relevant to an evaluation of the reasonableness of that conduct.”[6]

   [3] Kimberly-Clark Ltd vCommissioner of Patents (No 3) [1988] FCA 421; (1988) 13 IPR 569 at 579 [9], 582 [15]; Re Lazer Safe Pty Ltd and Commissioner of Patents [2001] AATA 967 at [11].

   [4] Kimberly-Clark Ltd vCommissioner of Patents (No 3) [1988] FCA 421; (1988) 13 IPR 569 at 579 [9]; Re Lazer Safe Pty Ltd and Commissioner of Patents [2001] AATA 967 at [11].

   [5] Re Apotex Pty Limited and Commissioner of Patents [2008] AATA 226 at [21].

   [6] Kimberly-Clark Ltd vCommissioner of Patents (No 3) [1988] FCA 421; (1988) 13 IPR 569 at 583-584 [17].

3. The phrase “error or omission” in section 223 encompasses accidental slips, inadvertences and errors caused by faulty reflection;[7] an unexpected failure to exercise due diligence and/or a flaw in mental function in carrying out an intention;[8] and a breakdown in procedure in effecting an intention.[9]  Accordingly, the phrase “error or omission” has a broad scope.

   [7] Ibid at 579 [9].

   [8] Total Peripherals Pty Ltd v Commissioner of Patents [1998] AATA 784 at [14].

   [9] Oz Technology, Inc v Boral Energy Ltd [1999] APO 8.

4. In contrast, the failure to perform the relevant act cannot itself be the “error or omission” by which the failure occurred[10] and a deliberate policy or decision that leads to the failure to perform the relevant act does not constitute an “error or omission”.[11]  

   [10] Kimberly-Clark Ltd vCommissioner of Patents (No 3) [1988] FCA 421; (1988) 13 IPR 569 at 580 [11].

   [11] Re Weir Pumps Ltd and Commissioner of Patents and Stork Pompen BV [1988] AATA 331; (1988) 13 IPR 163 at 166-167 [9].

   The application for an extension of time

5. On 20 March 2019 Boehringer applied for an extension of time of one month until 13 April 2019 to file a notice of opposition to the grant of a patent.  The ground relied upon was an error or omission by the person concerned, or their agent or attorney.

   The evidence and the circumstances

6. The evidence filed by Boehringer consists of a declaration by Marcus Julian Caulfield dated 29 March 2019 (Caulfield) together with exhibits MJC-1 to MJC-5 and a declaration by John Ezcurra dated 25 April 2019 (Ezcurra).  A summary of the relevant circumstances distilled from the evidence, based on a useful summary provided by Boehringer in its written submissions,[12] is as follows:

   [12] Boehringer’s submissions dated 19 June 2019 at [8].

   (i)Dr Ezcurra instructed FB Rice on 8 November 2016 to add the application to FB Rice’s watch list, including for the purpose of monitoring the deadline for filing a notice of opposition.[13]

   [13] Exhibit MJC-1, Caulfield at [6].

   (ii)Dr Caulfield received instructions from Dr Ezcurra on 10 February 2017 that “we will likely want to oppose this application.”[14]

   [14] Exhibit MJC-2.

   (iii)On 17 December 2018 FB Rice advised Boehringer by email that the application had been accepted.  The email referred to a deadline of 13 February 2018 for opposing the application.[15]

   [15] Exhibit MJC-3

   (iv)On 19 December 2018 FB Rice provided Boehringer with a summary of cases on the watch list, which included the correct deadline for opposing the grant of the application, 13 March 2019.[16]

   [16] Caulfield at [10].

   (v)It was decided in a meeting between Dr Ezcurra and Dr Judy Jarecki-Black, Global Head of Patent Prosecution and Patent Litigation for Boehringer, on 31 January 2019 that Boehringer would oppose the application.[17]

   (vi)Dr Ezcurra realised on 12 March 2019 (US time) that he had not conveyed the intention to oppose the application to FB Rice.[18]  At 12:29 AM Australian time on 13 March 2019 he emailed Dr Caulfield regarding the application: “Do you have a minute to talk about this today?”[19]  Dr Caulfield suggested a call at 7:30 AM Australian time on 13 March 2019.  However, Dr Ezcurra cancelled the call, sending an email saying “I did not see the opposition deadline in your e-mail.  I don’t think we need a call.”[20]

   (vii)Dr Caulfield subsequently realised that the date in the 17 December 2018 email was incorrect and advised Dr Ezcurra of the error in a teleconference on 20 March 2019, following which the notice of opposition and extension of time request were filed. 

   [17] Ezcurra at [6].

   [18] Ezcurra at [7].

   [19] Exhibit MJC-4.

   [20] Exhibit MJC-5.

   Was there a relevant error or omission?

7. Boehringer identified a relevant error as the “accidental inadvertent inclusion of the incorrect deadline for filing a Notice of Opposition in the email of 17 December 2018” in its submissions.[21]  It is clear that the date included in that email was, in fact, incorrect.

   [21] Boehringer’s submissions dated 19 June 2019 at [17].

8. Dr Ezcurra explained in his declaration that he relied on that incorrect date:

   “In the process of organizing a suitable time for the teleconference, I mistakenly assumed that the deadline had already passed as I saw the 13 February 2018 rather than the actual due date of 13 March 2019.  I then cancelled the call with Dr Caulfield as a result of my incorrect apprehension.  This unintentional error was caused by me seeing the 13 February 2018 date in the email chain I used to contact our Australian counsel rather than the correct date of 13 March 2019 as advised by our Australian counsel on 19 December 2018.

   …the intention to oppose the application was formed on 31 January 2019 and due to an unintentional error, that intention was not communicated until after the deadline had passed.”[22]

   [22] Ezcurra at [7]-[8].

9. Intervet observed that there is nothing in the evidence to suggest that Dr Ezcurra checked, or sought to clarify, the deadlines with Dr Caulfield or any other attorney at FB Rice.[23]  I agree.  Intervet submitted:

   “merely noticing the deadline of 13 February 2018 in the email chain on 12 March 2019 was not causative of Boehringer failing to meet the deadline, since there was still time to file the Notice of Opposition before the 13 March 2019 deadline.

   We submit that Dr Ezcurra should have sought clarification as to the deadline, particularly since the 13 February 2018 deadline was clearly incorrect; being more than 1 year prior to the deadline as he understood it, and Dr Ezcurra should have noticed the inconsistency between this date and the deadline of 13 March 2019.

   Further, we submit that Dr Ezcurra should have proceeded with the teleconference planned for 12 March 2019, where he could have discussed the possibility of extending the time for filing a Notice of Opposition if, as he has declared, he assumed that the deadline had already passed …”[24]

   [23] Intervet’s submissions dated 19 June 2019 at [21].

   [24] Intervet’s submissions dated 19 June 2019 at [26]-[28].

10. Intervet further submitted that Dr Jarecki-Black, to whom Dr Ezcurra reports, would have been aware of the possibility of requesting an extension of time, referring to her involvement in an extension of time case regarding a notice of opposition in 2005.[25]  Accordingly, in Intervet’s submission:

    “it was not the incorrect advice relating to the deadline for filing the Notice of Opposition that caused Boehringer’s failure to file the Notice of Opposition within the prescribed time.  In fact, we submit that it is still unclear what, if anything, actually caused the deadline to be missed-too many details are missing from the evidence filed by Boehringer in support of their application for extension of time.”[26]

    [25] Intervet’s submissions dated 19 June 2019 at [29].

    [26] Intervet’s submissions dated 19 June 2019 at [30].

11. In response, Boehringer submitted that Dr Ezcurra had not been proceeding on the understanding that the deadline was 13 March 2019, but rather “a general awareness of patent matters that, since the Application had recently been accepted, it would be necessary to file a notice of opposition at some point in the near future” and so the timing of the email, being immediately prior to the deadline, was coincidental.[27]  Boehringer also submitted that neither Dr Ezcurra nor Dr Jarecki-Black are experts in Australian patent opposition or extension of time provisions[28] and that “[a]t any one time, Dr Ezcurra is involved in hundreds of patent matters across many different countries” and there are various different deadlines across different jurisdictions.[29] 

    [27] Boehringer’s submissions dated 26 June 2019 at [6].

    [28] Boehringer’s submissions dated 26 June 2019 at [14]-[15].       

    [29] Boehringer’s submissions dated 26 June 2019 at [6].

12. The submission that Dr Ezcurra was proceeding with no particular awareness of the relevant deadline for filing the notice of opposition seems somewhat surprising and is not stated explicitly in the evidence.  However, the lack of any particular urgency evident in the tone of Dr Ezcurra’s initial email (i.e. “Do you have a minute to talk about this today?”[30]) and the statement “I did not see the opposition deadline in your e-mail”[31] is consistent with a lack of pre-existing knowledge of the deadline.  I am not persuaded that the evidence supports Intervet’s submission that Dr Ezcurra was, based on his previous experience with Australian oppositions, proceeding on the basis that the deadline was 13 March 2019.[32]  That there was some deliberacy in the failure to file the notice in time, despite the declaratory evidence that a decision to oppose was made on 31 January 2019 and the filing of a notice one week after the deadline, would be even more surprising.  I do not consider that the evidence supports an inference that Boehringer’s intention to oppose the application was fleeting or ephemeral.

    [30] Exhibit MJC-4.

    [31] Exhibit MJC-5.

    [32] Intervet’s submissions dated 19 June 2019 at [19].

13. I will say that in some respects these circumstances (that is, proceeding with no particular awareness of the relevant deadline) bring to mind the situation considered by the delegate in KGK Synergize Inc.[33] in which a failure to be aware of important dates arising from a failure to maintain a docketing system for monitoring those dates was not considered to be an error, but rather an inevitable outcome of the use of an inadequate system.  However, the present facts are distinguished in my view both because there was some level of awareness on the part of Dr Ezcurra and also because of his ultimate reliance on an incorrect date at a critical time.

    [33] [2013] APO 72.

14. It is apparent that Intervet’s submissions focus on what should have happened but did not.  Clearly, Dr Ezcurra could have clarified the relevant date, and if he had, the notice of opposition could have been filed on time.  However, Dr Ezcurra’s evidence, in declaratory form, is that he cancelled the proposed call with Dr Caulfield based on his incorrect apprehension of the relevant date.  While I acknowledge Intervet’s submission that it should have been obvious that the date was incorrect given that the reference to 2018 is obviously in error,[34] I think that Boehringer’s explanation that “Dr Ezcurra simply read the date as referring to ‘13 February’”[35] is more consistent with the totality of the evidence, and I note the comments of Jenkinson J in Kimberly-Clark Ltd vCommissioner of Patents (No 3):

    “…the word ‘error’ is not easily assigned a clear meaning restricted by reference to one or several particular categories of flawed mental function.  The attempt is likely to lead to the drawing of fine and often unrealistic distinctions.  And some errors of judgment by agents and attorneys may be as bizarre and as little to be anticipated as lapses of memory and accidental slips.”[36]

    [34] Intervet’s submissions dated 19 June 2019 at [27]; Intervet’s submissions dated 26 June 2019 at [10].

    [35] Boehringer’s submissions dated 26 June 2019 at [10].

    [36] [1988] FCA 421; (1988) 13 IPR 569 at 579-580 [9].

15. I am satisfied that (a) the deadline for filing a notice of opposition indicated in the email of 17 December 2018 was in error, and (b) Dr Ezcurra’s reliance on that erroneous date was a further error. 

    Did the error or omission cause the failure to file a notice of opposition within the prescribed time?

16. It is clear that Boehringer formed an intention to file a notice of opposition before the due date.[37]  As set out above, the evidence establishes that the failure to file the notice of opposition was a consequence of Dr Ezcurra’s reliance on the erroneous date in the email of 17 December 2018.  I am satisfied that the requisite causal link is established.

    [37] Ezcurra at [6].

17. For completeness I will add that this is somewhat serendipitous, arising from the fact that despite proceeding with a  lack of specific awareness of the relevant date, Dr Ezcurra happened to make contact with FB Rice immediately prior to the deadline for filing the notice of opposition, such that had he not relied on the incorrect date in the email the notice of opposition could have been timely filed. 

    Should the discretion be exercised?

18. I have found that a relevant error occurred that prevented Boehringer from filing a notice of opposition within the prescribed period. However, the power provided by section 223(2) is discretionary – “the Commissioner may … extend the time for doing the act” – and it remains to be considered whether the balance of relevant factors justifies the exercise of the Commissioner’s discretion in favour of Boehringer.  The relevant factors to be considered were summarised in Vangedal-Nielsen v Smith (Commissioner of Patents)[38] as follows:

    [38] [1980] FCA 163; 1A IPR 731 at 736.

    (i)whether the Commissioner is satisfied that a proper case has been made out justifying an extension;

    (ii)whether a serious opposition has been foreshadowed;

    (iii)whether there has been undue delay in seeking an extension of time;

    (iv)the interests of the parties in refusing or granting an extension;

    (v)the public interest.

19. In balancing these factors, it is “more important to consider the consequences of extending or refusing to extend time than to debate the reasons why the act was not done in time”.[39] 

    Has a proper case been made out?

    [39] ReSanyo Electric Co Ltd and Commissioner of Patents [1996] AATA 832; (1996) 36 IPR 470 at 479 [16].

20. Intervet submitted that Boehringer has not provided a sufficiently full and frank disclosure:

    “Dr Ezcurra has provided no explanation or indication as to how and why he overlooked the deadlines of 13 February 2018 or 13 March 2019 communicated to him by the correspondence dated 17 December 2018 and 19 December 2018 respectively, from Dr Caulfield until as late as 12 March 2019 (US time) without seeking clarification from his Australian patent attorneys.

    Dr Ezcurra has also provided no explanation as to why, after noticing the 13 February 2018 deadline in the email chain on 12 March 2019, he made no effort to seek any confirmation of the deadline for filing the Notice of Opposition, or advice from his Australian Attorney as to whether any options for extending the time for filing a Notice of Opposition were available. …Boehringer are not an unsophisticated organisation, and Dr Ezcurra and Dr Judy Jarecki-Black would have been well aware of the possibility of filing an extension of time.

    We submit that Dr Ezcurra purportedly cancelling the teleconference planned for 13 March 2019 on the sole basis of a deadline of 13 February 2018 he noticed in an email chain (EZCURRA: paragraph 7) is inconsistent with his declaration that Boehringer intended to oppose the application from 31 January 2019 (EZCURRA: paragraph 6), and suggests that Dr Ezcurra has not provided a full and frank disclosure of all the conduct, knowledge, beliefs and mental process he had relevant to an understanding of the way the failure to file the Notice of Opposition occurred, or relevant to an evaluation of the reasonableness of that conduct.”[40]

    [40] Intervet’s submissions dated 19 June 2019 at [35]-[37].

1. I have discussed above Intervet’s first point regarding Dr Ezcurra’s understanding of the relevant deadline for filing the notice of opposition.  I agree that a more explicit statement of the basis upon which Dr Ezcurra was proceeding would have been desirable.  However, the evidence that has been provided in this regard is to my mind sufficient to form an understanding of the relevant circumstances.

2. I will accept, despite Boehringer’s submission that he is not an expert in Australian patent opposition or extension of time provisions,[41] that it might have been expected that Dr Ezcurra, believing the opposition deadline to have passed, would investigate whether there was any remedy available.  However, I do not think that the failure to do so supports an inference that there had been a change of mind regarding Boehringer’s decision to oppose the application.  On balance I do not consider that Dr Ezcurra’s failure to investigate the possibility of an extension of time, or to explain why he did not, constitutes a failure to provide a full and frank disclosure.  Indeed, the absence of any discussion of the possibility of an extension in the declaration to my mind seems more consistent with Dr Ezcurra simply not having turned his mind to the possibility, than with his having withheld information.

   [41] Boehringer’s submissions dated 26 June 2019 at [14].

3. On balance, I am satisfied that a proper case has been made out.

   Is a serious opposition foreshadowed?

4. An intention to oppose the application was indicated at an early stage and crystallised well before the due date for filing a notice of opposition.[42]  Boehringer submitted that “[t]he opposition in relation to the Application is a serious opposition, the claims of the Application are invalid, and the Application should not have been accepted.”[43]  Prior to filing the notice of opposition Dr Ezcurra started the process to conduct a prior art search to identify potentially useful references.[44]  To my mind, these factors support a view that a serious opposition is foreshadowed.

   [42] Ezcurra at [6]; Exhibit MJC-2.

   [43] Boehringer’s submissions dated 19 June 2019 at [24].

   [44] Ezcurra at [6].

5. On the other hand, the statement of grounds and particulars was due to be filed three months after the notice of opposition was filed (regulation 5.5), that is, on 20 June 2019, and it was not filed by that date.  Given that the consequences of failing to file a statement of grounds include dismissal of the opposition (regulation 5.18), this could be considered indicative of a lack of a seriousness, as submitted by Intervet.[45]  However, the date the statement was due fell within the period that submissions in this matter were filed, during which time Boehringer asserted the seriousness of the opposition, and the statement, together with an application for an extension of time, was filed on 29 June 2019.  While I make no comment on the merits or prospects of that application, I note that the statement identifies serious grounds of opposition, and I do not consider that there is any reason apparent from the evidence to consider, as Intervet submits, that the present extension of time application has been made  for “frivolous or vexatious reasons.”[46]

   [45] Intervet’s submissions dated 26 June 2019 at [16], [17].

   [46] Intervet’s submissions dated 26 June 2019 at [17].

6. I am satisfied that Boehringer intends to mount a serious opposition, although I am conscious that this will require allowance of an extension of time to file the statement of grounds and particulars.

   Has there been undue delay in seeking the extension of time?

7. The extension required is one week.  The evidence indicates that upon realising that the date in the email of 17 December 2018 was incorrect Dr Caulfield “immediately advised the Opponent” and a teleconference to discuss this took place on 20 March 2019, following which the notice of opposition and request for extension of time were filed.[47]  There has been no undue delay that would weigh against granting the extension. 

   The interests of the parties

   [47] Caulfield at [13].

8. Boehringer’s interests lie in the extension being granted and the opposition being allowed to proceed.  Intervet’s interests lie in the application proceeding to grant without a potentially lengthy opposition process.  The interests of the parties are largely offsetting.

   The public interest

9. The public interest lies in the efficient and orderly processing of matters before the Patent Office, and in ensuring that invalid patents are not granted because insufficient opportunity has been afforded to oppose the grant. 

10. The consequence of refusing to allow the extension is the denial of Boehringer’s opportunity to mount a substantive opposition to the grant of a patent in respect of application 2014363695, although there are of course other remedies available post-grant, such as re-examination or seeking revocation of the patent.  Allowing the extension will mean that the opposition will, subject to the allowance of an extension of time to file the statement of grounds and particulars, proceed, protecting the public interest in not granting invalid patents.

11. Having regard to the factors set out above, on balance I am satisfied that it is appropriate to exercise the discretion in this case.

    Conclusion

12. I am satisfied that Boehringer’s failure to file the notice of opposition within the prescribed period was the result of an error or omission enlivening the provisions of section 223(2)(a) and that it is appropriate to exercise the discretion to grant an extension under that provision. I will allow the extension of time.

13. As noted previously the statement of grounds and particulars was filed out of time on 29 June 2019.  Notwithstanding that an extension of time to file the statement has not been granted, pursuant to regulation 5.8 evidence in support is due to be filed by 29 September 2019.

    Costs

14. It is usual in matters before the Commissioner that costs follow the event.  Boehringer’s request for an extension of time has been allowed, and Intervet has been unsuccessful in its objection.  I will award costs according to Schedule 8 against Intervet.

    Dr S. J. Smith

    Delegate of the Commissioner of Patents