Carol Almond-Martin v Novo Nordisk Health Care AG - [2011] APO 42

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Carol Almond-Martin v Novo Nordisk Health Care AG [2011] APO 42

Patent Application: 2005243427

Title:O-linked glycoforms of polypeptides and method to manufacture them

Patent Applicant:                   Novo Nordisk Health Care AG
Opponent:  Carol Almond-Martin
Delegate:  Dr S.D.Barker
Decision Date:  21 June 2011
Hearing Date:  Written submissions completed on 6 May 2011
Catchwords:  PATENTS – extension of time pay acceptance fee – the decision of the Patent Committee to abandon the application was not an error or omission – if the service of the notice of opposition after it was filed was circumstances beyond control, this was not causative – extension refused

Representation: Patent applicant: Shelston IP
Opponent:Churchill Attorneys

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2005243427

Title:O-linked glycoforms of polypeptides and method to manufacture them

Patent Applicant: Novo Nordisk Health Care AG
Date of Decision: 21 June 2011
DECISION
I refuse the extension of time.
REASONS FOR DECISION

Patent application 2005243427 in the name of Novo Nordisk Health Care AG (the applicant) was accepted on 6 July 2010. An invitation to pay the acceptance fee was issued by IP Australia on 13 July 2010, and the final date for payment of the fee was 22 October 2010. On 22 October 2010 a notice of opposition was filed by Carol Almond-Martin (the opponent).
The acceptance fee was not paid in time, so the patent application lapsed (by virtue of regulation 22.2I). On 22 November 2011 the applicant paid the acceptance fee and requested an extension of time under section 223. The opponent objected to the extension of time, and the Commissioner determined to decide the matter on the basis of written submissions by both parties. Submissions were completed on 6 May 2011.
The law
Section 223(2) reads as follows:
(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.
The two aspects of section 223(2) are error or omission, and circumstances beyond control. The law on these matters is well established.
Error or omission
In Kimberly-Clark Ltd v Commissioner of Patents (No 3) [1988] FCA 421 at [9], (1988) 13 IPR 569 at 579, Jenkinson J considerd the phrase "error or omission" in the context of section 160 of the Patents Act 1952. “Error of omission” is clearly directed to mistakes, but it encompasses a wide range of mistakes:
"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 judgement by agents and attorneys may be as bizarre and as little to be anticipated as lapses of memory and accidental slips"
However, there is a limit to what constitutes an error or omission. The law distinguishes between errors and deliberate decisions (Total Peripherals Pty Ltd v IBM & Commissioner of Patents [1998] AATA 784). Of course, where a deliberate decision is made as a consequence of an error or omission, section 223 can still be enlivened (see Re Apotex Pty Ltd and Commissioner of Patents [2008] AATA 226 at [21]).
Circumstances beyond control
Circumstances beyond control were considered in the context of the Trade Marks Act in Re Atomic Skifabrik Alois Rohrmoser v Registrar of Trade Marks [1987] FCA 22 at [18], (1987) 7 IPR 551 at 558. Jenkinson J concluded:
"In the context in which it is found, the expression `circumstances beyond the control of the person concerned' does in my opinion designate - and designates only - occurrences which neither the person concerned nor any person acting on his behalf to do the act or take the step could prevent. The operations of nature and the activities of strangers may result in such occurrences. So, too, may the acts and omissions of certain independent contractors engaged by the person concerned or by his agent, as for example the carrier of mail or the office cleaner, either of whom causes the loss or destruction of a document to be filed. But the acts or omissions of the agent who on behalf of the person concerned is to do the act or take the step are not occurrences of the description specified in paragraph 131(1)(a), in my opinion. Nor, in my opinion, are the acts or omissions of that agent's servants. The section is, I think, correctly described as a force majeure provision."
It is clear that "circumstances beyond control" refers to matters that a person could not have prevented with reasonable care.
Causation
Once an error or omission has been identified, it must be established that the failure to do the act was caused by the error or omission. Causation was considered by Jenkinson J in Kimberly-Clark (No 3) at [12], 580. The concept involves a relationship of cause and effect, although the relationship may be indirect.
The reasons for the extension
The applicant has not specified which leg of section 223(2) they rely upon, referring merely to the declarations that were provided. The applicant initially filed declarations by Carsten Borgund Hansen and Karin Norvin Nilsson. The relevant parts of these declarations are as follows.
The declaration of Carsten Borgund Hansen states:
4. Prior to January 2009, Novo Nordisk was responsible for providing instructions to Shelston IP for prosecution of the Patent Application.
5. In January 2009, Novo Nordisk and Inspicos entered into a service agreement, where the responsibility for the prosecution of a number of patent families, including the Patent Application, was transferred to Inspicos. According to this service agreement, Novo Nordisk was not to receive copies of issued Office Actions and was not to be involved in the preparation of responses to Official Actions unless unforeseeable problems occurred, such as where new instructions and/or input from Novo Nordisk were required. Under the service agreement, Novo Nordisk was to be informed of Office Actions at the time a response to an Office Action was filed.
6. On March 16, 2010, Shelston IP reported by letter to Inspicos that a first Examination Report (Official Action) had issued for the Patent Application and that the application was in order for acceptance. Inspicos was informed by Shelston IP that unless Shelston IP were advised to the contrary by 9 June 2010, they would file amendments to bring the application into conformity with Australian practice and request that postponement of acceptance be withdrawn so that acceptance of the application could proceed.
7. In accordance with the service agreement between Inspicos and Novo Nordisk, this first Examination Report (Official Action) and the reporting letter from Shelston IP was not forwarded to Novo Nordisk at the time of receipt.
8. On June 30, 2010, Inspicos received instructions from Novo Nordisk to advise Shelston IP to abandon the application.
The declaration of Karin Norvin Nilsson states:
6. On May 27, 2010, a meeting of the Novo Nordisk Patent Committee took place. This Committee is responsible for deciding if Novo Nordisk patents/patent applications should be maintained or abandoned. In the case of Novo Nordisk Health Care patents/patent applications, this Committee is responsible for recommending to Novo Nordisk Health Care if such patents/patent applications should be maintained or abandoned. By way of a written submission to the meeting on May 27, 2010, I recommended that the Patent Application be maintained. I did so because I believed that the claims of the Patent Application covered subject matter that was of particular interest to Novo Nordisk.
7. At the time I made my recommendation to the Patent Committee, it was my understanding that the Patent Application was pending. I was not aware that the Patent Application had been accepted as, in accordance with the Inspicos/Novo Nordisk service agreement, I had not received the Official Report.
8. Given the importance of the technology to Novo Nordisk’s core business, I was confident that my recommendation would be accepted by the Patent Committee. As such, I did not seek a status update for the Patent Application nor did I provide a status update on the Patent Application to the Patent Committee when I made my written submission to the Committee. This was an error on my part. In the absence of the information that the Patent Application had been accepted with the (broad) original claims, the Patent Committee decided to abandon the Patent Application in order to reduce patent prosecution costs. This was clearly an uninformed decision since there would have been no further prosecution costs as the Patent Application has been accepted.
9. Had the Patent Committee been informed that the Patent Application (which the Committee was aware covered subject matter in an area core to Novo Nordisk’s business) was accepted with the original broad claims and that there were consequently no further prosecution costs to bear, it is highly likely that the Committee would have elected to maintain the Patent Application.
10. On June 30, 2010, in accordance with the decision of the Patent Committee, I instructed Inspicos to abandon the Patent Application.
11. On November 10, 2010, Carsten Borgund Hansen of Inspicos informed me that the Patent Application had been accepted, that the acceptance fee had not been paid by the due date and that a Notice of Opposition against the Patent Application had been lodged on October 22, 2010.
12. On November 17, 2010, I informed the Patent Committee of the status of the Patent Application as relayed to me by Carsten Borgund Hansen. Based on the information provided, the Patent Committee immediately decided to request that the Patent Application be reinstated.
13. The error resulting in the Patent Committee not being informed that the Patent Application was in order for acceptance prevented the Committee forming an intention to maintain the application. In the event that it was known that the Patent Application was in order for acceptance with broad claims covering subject matter core to Novo Nordisk’s business, it is highly likely that the Patent Committee would have elected to maintain the Patent Application.
The applicant filed a further declaration by Lars Kellberg which relevantly states as follows.
3. I have read Karin’s statutory declaration dated 15 February 2011 submitted in relation to the present proceedings. I am a Chair of the Patent Committee to which Karin refers in her statutory declaration. I confirm that the Committee met on 27 May 2010. At that meeting, despite a submission by Karin recommending that the Patent Application be maintained, a decision was taken to abandon the Patent Application in order to conserve costs.
4. On 17 November 2010 Karin informed the Patent Committee that a Notice of Opposition to the grant of the Patent Application had been lodged at the Australian Patent Office on 22 October 2010, the same date that the acceptance fee was due. This was the first time I, or anyone on the Patent Committee, became aware of the opposition to the Patent Application.
5. When a Patent Application is opposed, it assumes significantly greater commercial and strategic value since it is clear that a competitor is interested in the technology covered by the claims. Accordingly, the Patent Committee decided that a request should be made to extend the time for payment of the acceptance fee for the Patent Application.
6. I am sure that if I was aware, or if the Patent Committee was aware, on or before 22 October 2010 that the Patent Application had been opposed, we would have instructed our Australian attorneys to pay the acceptance fee immediately in order to maintain the Patent Application in force.
7. The Patent Committee and I were prevented from making the decision to pay the acceptance fee to maintain the Patent Application due to circumstances beyond our control i.e. we were not aware of the filing of a Notice of Opposition until after the date the acceptance fee was due, namely 22 October 2010.
Consideration
The evidence establishes the following facts.
a)Karin Nilsson recommended to the Patent Committee that the patent application should be maintained.
b)The Patent Committee decided to abandon the patent application in order to conserve costs. This was a decision within their power, and one taken with knowledge of all relevant matters at that time.
c)The notice of opposition was filed with the Commissioner on 22 October 2010, and served on the applicant on 25 October 2010.
d)The Patent Committee met on 17 November 2010 and decided to maintain the patent. The only new information available to the Committee seems to have been that a notice of opposition had been filed.
This case seems more a matter of a deliberate decision which in retrospect may have been a poor business decision. However, if an error or omission, or circumstances beyond control, can be identified in the facts (and that error or circumstances caused the failure to pay the fee), then an extension is available regardless. To my mind there are three questions that arise from the facts:
Question 1: was the failure to know that an opposition would be filed either an error or omission, or circumstances beyond control
Question 2: was the failure of Nilsson to provide the Patent Committee with a status update an error or omission
Question 3: was the failure of the Patent Committee to reconsider the application on 22 October 2010 an error or omission, or circumstances beyond control
Question 1: At the heart of this matter is the failure to know that an opposition would be filed in the future. While some things can be reasonably predicted, there is no evidence that the actions of a future opponent were reasonably foreseeable. It is not reasonable to characterise the absence of such knowledge of the future as an error or omission by the Patent Committee - otherwise the standard of behaviour expected is that the Committee would foresee all future eventualities. The role of the Committee can only be to act reasonably on the basis of the information available to it at the time, and in carrying out this role they did not fall into error or omission. It similarly follows that the failure to foresee a future opposition was not due to circumstances beyond control, as nothing uncontrollable occurred.
Question 2: Nilsson stated that there was an error in not advising the Patent Committee on 27 May 2010 that the application had been accepted. However, the application had not been accepted on that date (acceptance occurred on 6 July 2010), so I suspect that Nilsson means that she did not advise the Committee that the application was in order for acceptance, subject to withdrawal of the postponement of acceptance. Nilsson would have been unaware of this because of the service agreement with Inspicos (see the Hansen declaration). There is no suggestion that it was an error to have the agreement with Inspicos, and there is no reason to believe that the Committee would have come to a different decision had they been informed that the application was in order for acceptance (Kellberg refers to lack of knowledge of an opposition, not lack of knowledge that the application was in order for acceptance). There was no causative error or omission.
Question 3: If the Patent Committee had met on 22 October 2010 and made a decision to maintain the application, it may have been possible to pay the acceptance fee before the application lapsed (although time differences between Denmark and Australia may make this impossible in practice). Logically, the Committee would only have made a different decision if the existence of a notice of opposition was important in their decision making. The fact that the Committee made such a decision on 17 November 2010 strongly suggests they would also have such a decision on 22 October 2010. However, the Committee could not have made such a decision on 22 October 2010 as the applicant was not served with the notice of opposition until 25 October 2010. Consequently there was no error or omission by the applicant or the Committee.
The service of the notice of opposition on 25 October 2010, rather than 22 October 2010, could be viewed as circumstances beyond control, as the date of service is a matter over which the applicant had no control. However, there is no evidence that it was the normal practice of the Committee to meet (presumably in Denmark) immediately a notice of opposition was served at the address for service in Australia, and there is no evidence that leads me to believe that it was feasible to do so. I am not satisfied that even if the applicant had been served on 22 October2010, the Committee would have met to reconsider their decision on the same day. As noted above, it is doubtful whether a decision taken in Denmark could have been actioned in Australia on the same day. The causal link of cause and effect has not been established.
The applicant submitted that the present case is analogous to the circumstances in Kelvindale Products Pty Ltd v TFH Temporary Fence Hire Pty Ltd [2009] APO 25. In that case the delegate found an error or omission in the following facts:
“[17] The first Tannahill declaration states that Mr Tannahill placed the file relating to the patent application on his desk with an intention of working on it during the early part of the week beginning 12 October 2009, a few days before the due date of 16 October 2009 for filing a notice of opposition. The declaration further states that the file was removed from his desk on or about 12 October 2009 and placed on the desk of his firm’s office manager and was not returned until 21 October 2009, and therefore Mr Tannahill omitted to discuss the file with TFH by the due date of filing a notice of opposition.
[18] There is no information in the first Tannahill declaration as to who removed the file from Mr Tannahill’s desk and whether that person was aware of the due date for filing a notice of opposition in respect of the patent application. Nevertheless, I am satisfied that Mr Tannahill not noticing that the file was missing from his desk was an error within the terms of section 223(2)(a).”
I do not consider the facts of the present case analogous to Kelvindale. There is a clear difference between a person removing a file without telling Mr Tannahill and the present case where the Patent Committee was unaware that an opposition would be filed.
Conclusion
I am unable to identify an error or omission, so an extension under section 223(2)(a) is not available. While I have been able to identify circumstances beyond control, those circumstances were not causative so an extension under section 223(2)(b) is not available. Consequently, the extension of time should be refused. As the application is lapsed, there is no application for the opponent to oppose. This brings the opposition to an end.
Dr S.D.Barker
Delegate of the Commissioner of Patents