Eli Lilly and Company v Merial Ltd - [2005] APO 46

OFFICIAL NOTICE

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Patent Application : No. 2002332975 in the name of Eli Lilly and Company

Title: Dosage form, device and methods of treatment

Action: An application under section 223 for an extension of time to file a notice of opposition by Merial Ltd

Decision: Issued 17 October 2005.

Abstract

Rather than instigate their own watch, Merial had relied on a third party, Nufarm, to keep them apprised of any change in status of Lilly’s application. Nufarm did not keep Merial appropriately informed so that a notice of opposition could be filed by the due date of 3 May 2005.

Many errors and omissions which lead to a failure to do an act or take a step are the result of negligence or incompetence. It was found that a significant error in judgement was made when Merial assumed that Nufarm would keep Merial appropriately informed.

On balance, the Commissioner was satisfied that there was a clear intention by Merial to oppose Lilly's application and that they had failed to do this within the prescribed time because of an error on their part. A serious opposition is foreshadowed and the public interest is strongly in favour of the validity of the patent application being properly tested in an opposition forum.

In the circumstances an extension of time to 6 July 2005 for the opponent to file a notice of opposition was granted under the provisions of section 223(2).

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Patent Application No. 2002332975 in the name of Eli Lilly and Company and application under section 223 for an extension of time to file a notice of opposition by Merial Ltd.

BACKGROUND

Patent Application 2002332975 was filed in the name of Eli Lilly and Company (Lilly) on 18 October 2002. The application claims convention priority from Australian provisional application PR8390 filed on 19 October 2001. The application was accepted on 19 January 2005 and acceptance was advertised on 3 February 2005. The prescribed period for filing a notice of opposition to the grant of a patent under regulation 5.3(1) was therefore 3 May 2005. On 6 July 2005, some two months outside this period, Merial Ltd (Merial) filed a notice of opposition. The notice of opposition was accompanied by a request under section 223 to extend the time to file a notice of opposition.

There was no requirement for advertisement of the section 223 request because the period requested under section 223 was less than 3 months and the request did not relate to a prescribed relevant act in circumstances prescribed in sections 223(4). However the patent applicant was given the opportunity to be heard on the section 223 matter in accordance with sub-regulation 22.22(1), because they could be adversely affected by a decision under section 223. The patent applicant advised that they did object to the section 223 extension of time and the matter was set for hearing…

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: [2005] APO 46
Decision Date: 17 October 2005

CaseChat Overview and Summary

In the case of Eli Lilly and Company v Merial Ltd, the Commissioner of Patents was required to decide whether an extension of time should be granted to Merial Ltd to file a notice of opposition against Eli Lilly and Company's patent application. The primary legal issue was whether Merial Ltd's failure to file the notice of opposition within the prescribed period could be attributed to an error or omission, and if so, whether an extension of time should be granted under section 223 of the Patents Act 1990. The Commissioner concluded that there was a clear intention by Merial to oppose the patent application and that the failure to file the notice of opposition within the prescribed time was due to an error on their part. The Commissioner found that Merial's reliance on a third party, Nufarm, to monitor the progress of the patent application constituted a significant error in judgment. Given the public interest in ensuring the validity of the patent application was properly tested in an opposition forum, the Commissioner exercised the discretionary power under section 223(2) and granted an extension of time to 6 July 2005 for Merial to file its notice of opposition. The Commissioner also noted that Merial was required to serve a statement of grounds and particulars by 6 October 2005. No costs were awarded to either party.

Orders