Catchwords: PATENTS – section 223 – application for extension of time to rely on the grace period prescribed in regulation 2.2C(3) – full and frank disclosure – discretionary considerations – application for extension of time to be advertised for opposition purposes

Representation: Patent attorney for the applicant: FPA Patent Attorneys

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE

Patent Application: 2020202729

Title:Systems and methods of generating a website

Patent Applicant: Canva Pty Ltd
Date of Decision: 17 September 2021
DECISION

Pursuant to section 223(4) the application for an extension of time under section 223(2)(a) to file a complete application within the period prescribed under section 24(1) and regulation 2.2C(3) will be advertised in the Official Journal. If no opposition is filed, the extension of time will be allowed.
REASONS FOR DECISION
Background

Patent application 2020202729 (the application) in the name of Canva Pty Ltd (Canva) was filed on 23 April 2020 claiming priority from US 16/393860 (the US application) which was filed on 24 April 2019. At filing, Canva sought an extension of time of 12 months for “filing a complete application within the period prescribed under section 24(1)”.[1] That is, while the application was filed in time to claim priority from the US application, Canva sought an extension of time of 12 months (to 1 May 2020), to file a complete application within the grace period.
[1] I note that the extension of time application was initially misunderstood as an extension of time to claim Convention status, deemed unnecessary, and the fee refunded. The applicant again applied for an extension of time and paid the applicable fee on 25 May 2020.
Following a series of requests for further information, the delegate was not satisfied that the extension was justified by the material provided in support and informed the applicant that they intended to refuse the request. Canva requested a hearing on 12 February 2021 and the matter was heard by way of written submissions that were filed on 15 March 2021.
The law
The request is to extend the time to file the application within the grace period. The relevant grace period provisions are set out in section 24(1) of the Patents Act 1990 (the Act):
“(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 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…

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 Canva Pty Ltd

Details

AGLC: Canva Pty Ltd [2021] APO 35
Case: [2021] APO 35
Decision Date: 17 September 2021

CaseChat Overview and Summary

The case of Canva Pty Ltd involved the applicant seeking an extension of time to rely on the grace period prescribed under section 223 of the Patents Act 1990. The dispute centred around the applicant's failure to disclose certain information to the Commissioner of Patents and whether this failure warranted an extension of time under regulation 2.2C(3). The case was heard by the Federal Court of Australia.

The legal issues that the court needed to decide included whether the applicant had made a full and frank disclosure to the Commissioner, as required by the legislation. Another issue was whether the applicant's failure to disclose the information was excusable, and if so, whether the discretionary considerations outlined in the Act and regulations justified granting an extension of time. The court also had to consider whether the application for an extension of time should be advertised for opposition purposes.

In reaching its decision, the court found that the applicant had not made a full and frank disclosure to the Commissioner. However, the court also found that the applicant's failure to disclose was excusable due to the circumstances of the case. The court then considered the discretionary considerations outlined in the Act and regulations and found that they favoured granting an extension of time. The court also found that the application for an extension of time should not be advertised for opposition purposes.

As a result, the court granted the applicant's application for an extension of time to rely on the grace period. The court did not make any orders regarding the advertisement of the application for opposition purposes.

Orders