Dey, L.P.

OFFICIAL NOTICE
DECISION OF A DEPUTY COMMISSIONER OF PATENTS
Applications : No. 32974/02 and 32975/02 in the name of Dey, L.P

Action: Extension of time (s.223)

Decision: Issued 19 Dec 2002.
Abstract

Applicant had made sales of the invention in the US several months before filing patent applications in the US (and before any Australian application had been made.)
Legislative changes commencing on 1 April 2002:
·    expanded 'prior user' to include prior use anywhere in the world; and
·    introduced a general 12-month grace period - but only in respect of disclosures made on or after 1 April 2002
The Australian applications were filed on 5 April. An extension of time was requested – based largely on the late availability of the amendments to the regulations, and the Passover/Easter holidays over March 27 to April 1.
Extensions refused.
·    An extension of time does not change the filing date of the relevant documents. That is, whatever extension might be granted, the filing dates of the applications remain as 5 April, and the amended legislative provisions continue to apply to the applications;
·    No relevant period was identifiable which could be extended in a manner such that the difficulty experienced by the applicant could be overcome. The remedy required was an antedating of the filing dates, but this possibility is not available;
·    Serious deficiencies in the material in support of the extension were also noted.
PATENTS ACT 1990
DECISION OF A DEPUTY COMMISSIONER OF PATENTS
Re:Patent Applications 32974/02 and 32975/02 in the name of Dey, L.P., and a request for an extension of time under s.223.

BACKGROUND

This matter concerns an extension of time that is related to amendments to the Patents Act 1990, and Patents Regulations 1991, that came into effect on 1 April 2002. On initial consideration of the request, a delegate of the Commissioner indicated that the extension was not justified. The applicant requested to be heard; ultimately the applicant advised that they would not be appearing, not paying the hearing fee, and not making any further submissions. Accordingly, while I need to make a decision to allow or refuse the requests, I take the circumstances to be largely a request for a statement of reasons pursuant to s.13 of the Administrative Decisions (Judicial Review) Act, and/or section 28(1) of the Administrative Appeals Tribunal Act.
Statutory Background
The Patents Amendment Act 2001 was introduced into Federal Parliament on 24 May 2001. It received Royal Assent on 1 November 2001, and came into force on 1 April 2002. My understanding is that this legislation was well known to Australian Patent Attorneys well before the commencement date. The amendments made by this Act that are relevant to the present matter are those made by Part 1 of Schedule 1 of the amending Act – amending the 'prior art base' that determines the basis for the ground of objection of lack of novelty and lack of inventive step as it relates to what is commonly referred to as 'prior user'. Specifically, the amendments had the effect of expanding the range of 'acts' that could be used to establish 'prior user', from merely those done in Australia to those done anywhere in the world. By Section 13 of the amending Act, this amendment applies to any complete application made on or after the commencement - that is, on or after 1 April 2002. In particular, it applies to the present applications.
Partly in consequence of the Patents Amendment Act 2001, amendments to the Regulations were made, also coming into effect on 1 April 2002. The Commissioner has little to no control over when Regulations are made. Furthermore, until the regulations have been made the Commissioner is unable to provide any definitive statement of what might be in the regulations. Recognising that users needed to have some information about what was expected to be in the Regulations, an 'Official Notice' was circulated through the Institute of Patent and Trade Mark Attorneys of Australia on 15 March 2002 (and the applicant included a copy with the supporting declaration.) This notice outlined in some detail the changes expected to be made by the amending regulations. Ultimately the regulations were gazetted on 28 March 2002 (the day before Good Friday, and 3 days before commencement.)
Of significance to the present matter, the amendments to the regulations introduced a general 'grace period'. The statutory mechanism for grace periods has long existed in the Patents Act 1990, by way of s.24. Prior to the amendments, the grace periods that were provided for were of a limited nature - specifically, disclosure at exhibitions, learned societies, reasonable trial and experiment, and without consent. Thus there was no need to amend the Patents Act 1990 to implement a general grace period; all that was required were appropriate amendments to the regulations. In addition, and critical to the present matter, the amending regulations included a transitional provision specific to the introduction of the general grace period limiting its operation to disclosures that occurred on or after commencement – that is, on or after 1 April 2002. For this application, some relevant disclosures occurred before this date.
Factual background
From the statutory declaration filed in support of the s.223 request, the following circumstances surround the applications:
1.   The invention disclosed in the applications was sold in the USA prior to making any patent applications. Specifically, first sales occurred in June 2001
2.   Basic applications were filed in the USA on 26 October and 28 December 2001 - that is, well after the first sale of the invention in the USA.
3.   During March 2002 discussions occurred between the applicant, their US patent counsel, and an Australian pharmaceutical manufacturer – about whether they should file an application in Australia. The declaration states:
"During the week of March 25, 2002, [the manufacturer] decided that it would consider selling [the drug] and that it wanted Dey to file a patent application in Australia. This information was forwarded to Dey personnel at or about that time."
4.   Dey received the Australian company's instructions to file the application immediately after the Easter holidays - that is, 2 April 2002.
5.   On 4^th April US time [5^th April Australian time] the US patent counsel contacted the Australian attorney to instruct that the application be filed - which was duly done on that day.
6.   Together with the application, a request for an extension of time was filed - seeking an extension of time from 28 March 2002 to 5 April 2002 to file the application.
7.   The declaration in support of the application:
·Asserts that it was always the intention of Dey to file the application on or before 28 March 2002;
·That they were adversely affected by religious holidays - namely 27 March and 28 March were the first and second days of Passover, and March 29 was Good Friday, and 1 April was a holiday in Australia;
·That their rights were unfairly prejudiced due to the limited time between the gazettal of the regulations and their coming into force;
·That the 'Official Notice' gave a summary of the changes 'expected' to be in the regulations, and was explicit that practitioners 'should not rely on the contents of this notice for the purpose of providing definitive advice to clients';
·While the 'Official Notice' stated that the grace period would probably apply prospectively, the exact nature of the grace period remained uncertain until practitioners received the amendments.
·The regulations only became available on 28 March, and there was insufficient time to give Dey a meaningful opportunity to take appropriate action.
8.   In conclusion, the declaration requests that the applications be deemed filed on March 28.
DISCUSSION
The situation is indeed unusual, coming about from two separate legislative amendment issues. The request focuses heavily on the brevity of time between when the regulations were made and when they came into force. But no mention is made of when the applicant became aware of the amendments to the Act with regard to prior user, and what actions they took to ensure that their rights were protected as a result of that amendment per se.
It is the case that the grace period provisions in the Australian legislation prior to the 1 April amendments did not include a general grace period mechanism, and did not encompass the applicant's circumstances. To the best of my knowledge, the first time that users had definitive reason to believe that a general grace period provision would be introduced was with the 'Official Notice' issued on 15 March 2002. In those circumstances I fail to understand why the applicant could have proceeded before that date on any basis other than that the application MUST be filed before 1 April in order to avoid anticipation by the sale in the US. Yet there is nothing before me to suggest that the applicant was proceeding on that basis – even though contact with the Australian manufacturer was made before the date of the Official Notice.
The declaration makes much of the fact that the Official Notice was advisory only, and should not form the basis of definitive advice to clients. However I am perplexed about the apparent selective approach evident in the declaration regarding acceptance of the advice contained in the 'Official Notice'. On the one hand, the only basis the applicant had for believing that a general grace period would be in place as from 1 April was that Notice – with the qualification that this was 'expected'. Yet that Notice included advice that the grace period would only apply to future disclosures – again qualified by 'expected'. If that Notice was sufficient to indicate the existence of a grace period as from 1 April 2002, why wasn't it equally sufficient to indicate that it would only apply to future disclosures? By corollary, if the applicant truly believed that the advice about the prospective nature of the grace period was unreliable, then the advice about the very existence of a general grace period must surely be equally unreliable.
Additionally, the declaration asserts at several locations that it was always the intention of the applicant to file the application on or before 28 March 2002. However this is not supported by the facts. It is clear that in early March Dey was exploring with the Australian manufacturer whether they wished to sell the drug in Australia, and "if so, whether they wanted the present application to be filed in Australia". That is, as of early March Dey did not have an established intention to file in Australia. It subsequently transpires that "During the week of March 25" the Australian manufacturer decided they wanted Dey to make a patent application in Australia. The date of this decision is not specified beyond being 'during the week of…'. It was forwarded to Dey personnel 'at or about that time' – although again it is not clear when that actually occurred. However, the declaration goes on to state that Dey received the instructions immediately after the holidays, on 2^nd April. From this I can only conclude that prior to 2^nd April Dey had not decided to file an application in Australia – contrary to what is otherwise asserted in the declaration.
From this, I am not satisfied that the circumstances are such that the applicant had an intention to apply in Australia before 1 April 2002, and was prevented from doing so by an intervening error or omission. At most it might be argued that if they had have been aware earlier of the details of the legislative changes they might have decided to file before 1 April. But even then there are significant unanswered questions concerning their knowledge of the legislative changes, and the selective reliance on certain parts of the Official Notice. From the material filed I am not satisfied that a full and frank disclosure of the circumstances has been made, nor (more significantly) that any relevant causative error has been demonstrated.
However, irrespective of the above, there is a more fundamental issue of difficulty to the applicant. The provisions of s.223 enable an extension of time to be granted to enable the timely doing of an action. Critical to the present case, s.223 does not operate to change the actual date on which an action was done. The date of filing is immutable [subject only to the specific mechanisms set out in regulation 3.5(4) and (7), and regulation 3.5A(5) and (7) – which reflect Article 5 of the Patent Law Treaty]. Accordingly, whatever extension might be granted under s.223, the respective filing dates of the present applications remain as 5 April 2002 and the amended legislative provisions continue to apply to the applications.
This being the case, the question that arises is – what time period can be extended to overcome the problems experienced by the applicant? The only time periods that I can envisage are:
· Time for filing a convention application. But the applicant has complied with the statutory time period of 12 months for making such an application – and in any event this has nothing to do with the new grace period provisions, or the expansion of the prior art base;
· Time to filing an application entitled to the grace period provisions as they existed before 1 April. However those grace period provisions do not cover the factual circumstances of the applicant (irrespective of how any accrued rights might be affected by the amending legislation), and so there is nothing to be gained by extending those periods.
I am unable to conceive of any other time period that might be extendible in a manner that might address the applicant's situation. The material from the applicant does not assist me in identifying any other possible time period.
It might be argued, given the need to file the application before 1 April 2002 in order to avoid the stricter requirements of the amended Act, that it might be possible to grant an extension of the 'period' in which to file an application under the provisions of the Act as it existed before amendment.
However, what is being extended in this situation is not the date for filing an application. Rather, it is extending the operation of the Act as before amendment. Apart from such an extension not falling within the meaning of a 'relevant act' as defined in s.223(11), any extension under s.223 that purported to extend the operation of the Act in its pre-amendment state would be, in my view, ultra vires.
Additionally, it is appropriate to briefly consider the statutory regime that applies when an Act is amended. The effect of the repeal (or amendment) of an Act is governed by s.8 of the Acts Interpretation Act - and especially s.8 (c) which provides:
Where an Act repeals in the whole or in part a former Act, then unless the contrary intention appears the repeal shall not:
(c)affect any right privilege obligation or liability acquired accrued or incurred under any Act so repealed
……
As of 1 April 2002 the applicant had not accrued any right under the Act as before amendment – having not made an application under that Act. In addition, the transitional provisions are quite explicit in their operation vis-à-vis the date of 1 April 2002 – indicating the clear intention of Parliament about how the amendments were to apply. That is, the statutory regime for dealing with legislative change does not assist the applicant.
DECISION
I am unable to determine any relevant time period that might be extended to address the applicant's situation. The difficulty is that the applicant's situation can only be addressed if the filing dates for the applications were antedated – and there is no legislative basis for such. Further, any purported extension that had the effect of extending the operation of the pre-amended Act would be ultra vires.
Thus, irrespective of whether there has been a full and frank disclosure of all the relevant circumstances, or whether a case for an extension has been made out, there is nothing relevant that can be extended. Accordingly, the requests for an extension of time must be refused.
D Herald
Deputy Commissioner of Patents
Patent attorneys for the applicant : Spruson & Ferguson, Sydney

[2002] APO 50

19 December 2002