Dey, L.P. - [2002] APO 50

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…

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.

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Details

Case: [2002] APO 50
Decision Date: 19 December 2002

CaseChat Overview and Summary

In the case of Dey, L.P. v Commissioner of Patents, the applicant sought an extension of time to file patent applications in Australia for an invention that had already been sold in the United States. The applications were filed on 5 April 2002, after legislative changes to the Australian Patents Act 1990 and Patents Regulations 1991 came into effect on 1 April 2002. The applicant argued that the legislative changes, which expanded the prior art base and introduced a 12-month grace period for disclosures made after 1 April 2002, adversely affected their rights and should be grounds for an extension of time. The applicant also cited the late availability of the amended regulations and religious holidays over March 27 to April 1 as factors contributing to their inability to file the applications before 1 April 2002.

The legal issues before the court were whether the statutory provisions for an extension of time under s.223 could be invoked to address the applicant's situation and whether any relevant time period could be extended to overcome the applicant's difficulties. The court considered that an extension of time does not change the filing date of the relevant documents and that the applicant's remedy required was an antedating of the filing dates, which was not available. Additionally, the court found that no relevant period was identifiable which could be extended in a manner that would address the applicant's situation.

The court ultimately refused the extension of time request, stating that whatever extension might be granted, the filing dates of the applications would remain as 5 April 2002, and the amended legislative provisions would continue to apply to the applications. The court also noted serious deficiencies in the material in support of the extension. The applicant's arguments regarding the late availability of the amended regulations and religious holidays were not sufficient to establish a case for an extension of time.

No further orders were made.

Orders