Eli Lilly and Company v Merial Ltd
[2005] APO 46
•17 October 2005
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 in Canberra on 20 September 2005.
Merial was represented by Mr Ben Fitzpatrick of counsel, assisted by Dr Jenny Petering, patent attorney of FB Rice & Co, Melbourne. Lilly was represented by Dr David Myers and Ms Shahnaz Irani, patent attorneys of Spruson & Ferguson, Sydney.
APPLICATION FOR EXTENSION
In their section 223 application, the prospective opponent states:
"By way of error or omission, a Notice of Opposition to the grant of Australian Patent Application No 2002332975 was not filed within the prescribed time. Full details outlining the circumstances surrounding the need for the extension will follow as soon as practical.”
In support of their application, Merial submitted a first statutory declaration by Dr Judy Jarecki-Black, who identifies herself as the Global Head, Intellectual Property for Merial Limited. She goes on to explain that:
“Merial has an Australian subsidiary, Merial Australia Pty Ltd (Merial Australia), which represents Merial's commercial interests in Australia. Merial Australia has an alliance with Nufarm in the development of new products for the Australian and New Zealand markets. One of the products under development is a product designed to deliver sequential doses of ivermectin and albendazole efficiently over 100 days to increase sheep productivity but reduce drug exposure.
Representatives of Merial Australia and Nufarm meet on a regular basis to review alliance issues. In June 2004, I received a copy of "R&D Highlights" of an alliance meeting held on 12-13 May 2004. These notes included the following passage:
“Pulse-Capsules & Elanco
· Elanco (Eli Lilly) have filed a patent application (WO 03/033031, published 24 April 2003) entitled "Dosage Form, Device and Methods of Treatment" which, if granted might have implications for the development of controlled-release capsules delivering different actives sequentially.
· Nufarm confirm that they will oppose this patent application..."
I formed the opinion that international patent application WO 03/033031 would be prejudicial to Merial's interests in Australia and New Zealand if this application proceeded to grant in either country. I therefore concluded that Merial should oppose the grant of patents in Australia and New Zealand at the appropriate time.”
On 19 September 2005, the day before the hearing, Merial filed a second statutory declaration by Dr Jarecki-Black. This further clarified statements made in her first declaration. Exhibited to the declaration was a draft Statement of Grounds and Particulars, which appeared to be well advanced and on which a substantial amount of work had clearly been performed.
Lilly expressed some dissatisfaction regarding the filing of this declaration, which was entered into evidence outside the 2 month period typically provided by the Patent Office for filing statutory declarations in support of section 223 applications. It is well established that in opposition proceedings, the Commissioner functions as an administrative tribunal which would benefit from having all relevant evidence placed before it. I also note that the Commissioner has availed herself of all filed material in past decisions in order for the decision maker to properly or more fully determine the matter (see, for example, Bausch & Lomb Inc v. Allergan Inc (1997) APO 45 and Flexible Steel Lacing Company v Beltreco Ltd (2000) APO 24). Applying similar reasoning, I have allowed the second statutory declaration by Dr Jarecki-Black to form part of my deliberations.
RELEVANT LAW
Section 223(2) reads as follows:
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.
Section 223(11) defines a "relevant act" for the purposes of section 223 as:
an action (other than a prescribed action) in relation to a patent, a patent application, or any proceedings under this Act (other than court proceedings), and includes the making of a Convention application within the time allowed for making such applications.
10. Subregulation 22.22(1) reads:
The Commissioner must, before exercising a discretionary power under the Act or these Regulations adversely to a person give the person at least 10 days notice of the time when, and the place where, that person may be heard in relation to the exercise of the power.
11. Section 223 is a discretionary provision and both parties could be adversely affected by the decision to grant an extension of time to file a notice of opposition. Therefore sub-regulation 22.22(1) gives both parties the opportunity to be heard in respect of the grant of a section 223 extension of time.
12. The definition of an error or omission was expressed by Jenkinson J in Kimberly-Clark Ltd v Commissioner of Patents(No 3) 13 IPR 569-584 where the Federal Court upheld a decision by the Commissioner's Delegate to refuse an extension of time to lodge a notice of opposition. Jenkinson J defined an error or omission in the following terms in the context of section 160 of the Patents Act 1952. Section 223 is the equivalent of the previous section 160.
"It is in my opinion difficult to suppose that only the inadvertence and accidental steps, and not errors resulting from faulty reflection, of the former class of persons were intended by the draftsman to be within s 160(1). Further, 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."
13. His Honour accepted that:
"... the failure to do the act or to take the step postulated in respect of an application for exercise of the power conferred by s 160(2)(a) cannot itself be the ‘error or omission’ by reason whereof the failure occurred"
but rejected the proposition that section 160 excluded errors or omissions that were the products of deliberation. Consequently, the phrase "error or omission" should be interpreted broadly as including breakdowns in procedure, or flawed mental functions such as an error of judgement (Total Peripherals Pty Ltd v IBM and Commissioner of Patents (1998) AATA 784 and Oz Technology v Boral Energy [1999] APO 18). But Jenkinson J also made the following comments at page 580:
"By no means every judgement by the "person concerned" or by "his agent or attorney" which can be shown to have been mistaken will answer the description "error or omission" in the ordinary meaning of those words, which in their context carry, in my opinion, a connotation of obviousness in error."
Thus, taking a “calculated risk” would be beyond the meaning of error or omission (International Business Machines Corporation v Total Peripherals Pty Ltd [1998] APO 14).
14. An applicant for an extension of time has an obligation to put before the Commissioner the circumstances which it claims justify the grant of the extension sought, but this does not amount to a burden of proof (Sanyo Electric Co Ltd v Commissioner of Patents 36 IPR 470 at 479). Nevertheless, as further noted by Jenkinson J (at 583), in order to make out a proper case justifying an extension:
"…an applicant would in my opinion have to go beyond a disclosure of the processes by which an agent's errors came to be committed, and would have to expose frankly, inter alia, all the conduct, knowledge, beliefs and mental processes (or, in the case of corporation aggregate, of the relevant officers and other agents) relevant to an understanding of the way the failure to do the act or take the step occurred, or relevant to an evaluation of the reasonableness of that conduct."
DISCUSSION
15. Section 223 confers a discretionary power and operates in circumstances where the failure to do a relevant act is the result of an "error or omission". That is, the error or omission must be causally related to the failure to act. This is to be contrasted with the situation where there has been a deliberate decision not to do the relevant act (ReWeir Pumps Ltd v Commissioner of Patents and Stork Pompen BV (1988) 13 IPR 163 at 166-167).
16. I must therefore decide whether an error or omission can be identified which establishes a chain of causation to the failure to file the notice of opposition within the prescribed period. If this is the case, I then need to decide whether, as a matter of discretion, an extension of time should be granted.
17. The parties referred me to a number of relevant decisions dealing with applications for extension of time to file a notice of opposition. In Re Weir Pumps (supra), the AAT upheld a decision of the Commissioner to refuse an extension of time to lodge a notice of opposition. This was dealt with under the relevant provisions in the 1952 Patents Act, section 160(2). It was found that the opponent was completely unaware of the patent application in question as it had a "deliberate policy not to maintain a watch for pending patent applications or their acceptance".
18. In Danby Pty Ltd v Commissioner of Patents and Another (1988) 12 IPR 151, the Federal Court upheld the Delegate's decision to allow an extension of time for lodging a notice of opposition. Despite rather "thin" evidence, the Court was satisfied that instructions to oppose when acceptance took place were firmly given but that they were not carried out due to an error, rather than the opponent having lost interest in opposing.
19. In Henkel Kommanditgesellschaft Auf Aktien v Fina Research SA (1993) 27 IPR 289 the Commissioner's Delegate refused an extension of time to file a notice of opposition. The applicant for the extension of time was aware of the patent application in question but was not aware that the application had proceeded to acceptance, due to their watch being conducted in an inappropriate database. The Delegate was satisfied that this prima facie constituted an error or omission. However, he found that the evidence provided was inadequate as to the chain of causation and refused an extension of time for filing a notice of opposition.
20. Amrad Corporation Ltd v Genentech (1994) 29 IPR 218 was another decision by a Delegate of the Commissioner. Again, the opponent was aware of the patent application but was not aware of its acceptance due to their choice of database. The Delegate found that "this was a breakdown in procedure rather than a deliberate decision or policy". He was satisfied that this was an error and that this had caused the notice of opposition to be filed out of time and thus allowed the extension.
21. In a recent case Ashmont Holdings Ltd v American Home Products Corporation and Nature Vet Pty Ltd [2002] APO 24 (24 June 2002), the Commissioner’s Delegate refused an extension of time to file an application under s 24(1)(b). The applicant for the extension of time had failed to appreciate that another party could file a patent application disclosing the applicant’s work without their knowledge. The Delegate found that there was no error or omission as the applicant chose not to keep a watch for patent applications and by doing this failed to become aware of the other party’s application.
22. All of these cases focus on the need for the opponent to establish that they intended to file a notice of opposition and that they failed to do so in time because of an error or omission on their part, or on the part of their agents. They also place the onus on the opponent to provide a prompt, frank, comprehensive and clear disclosure of all of the facts relevant to the case in order to establish their clear intention to oppose the application and to understand why they failed to do so.
Was there a clear intention to file a notice of opposition?
23. Paragraph 6 of the first Jarecki-Black statutory declaration states that application no. 200233975 first came to the attention of Merial by way of the “R&D Highlights” of the May 2004 meeting between Merial Australia and Nufarm. I note that the highlights were received by Dr Jarecki-Black in June 2004, some seven months before the application was advertised as accepted.
24. Subsequent to this, Dr Jarecki-Black formed the opinion that application no. 2002332975 would be prejudicial to Merial’s interests in Australia if the application proceeded to grant. It is not entirely clear on which date this opinion was formed, but Dr Jarecki-Black asserts at paragraph 9 of her second statutory declaration that she “…formed this opinion in June 2004 when I received a copy of the “R&D Highlights” notes of the Merial/Nufarm alliance meeting of 12-13 May 2004”.
25. What is clear is that Merial made a decision to rely on Nufarm to monitor the progress of the instant application, and on that basis, to not institute a watch of their own. As Dr Jarecki-Black indicates at paragraph 8 of her first declaration:
“I was also aware from the highlights that Nufarm also intended to oppose the application. It seemed reasonable to me at the time to rely on Nufarm to monitor the progress of the Australian and New Zealand applications corresponding to international patent application WO 03/033031 in view of Nufarm's intention to oppose the applications. I assumed that Nufarm would apprise Merial of the status of Australian and New Zealand applications via the regular alliance meetings.”
26. In June 2005, Merial received “R&D Highlights” of the April 2005 meeting. According to Dr Jarecki-Black at paragraph 11, these notes indicated that Nufarm no longer intended to oppose the application. As a result of this advice, Dr Jarecki-Black requested Merial’s Australian patent attorneys to initiate a watch on 200233975 so that Merial could oppose the application at the appropriate time. Merial only became aware that the deadline for filing a notice of opposition had expired on 3 May 2005 after they were informed by their patent attorneys on 28 June 2005.
27. Mr Myers submitted that there was no evidence of intention on the part of Merial to file the notice of opposition within the prescribed time, and that “…the fact that Merial made a deliberate decision to not institute a search or watch of their own on progress of the Lilly application, but to rely on reports from Nufarm instead, does not constitute an error or omission – they made a deliberate choice to not take appropriate steps to ensure that their own interests were protected.”
28. Though I agree with Mr Myer that Merial did not directly acquaint itself with the progress of Lilly, I am not convinced that no error or omission has occurred. In my opinion, the argument pays insufficient regard to Merial’s intentions. The importance of the intention of the person making an application for an extension of time was discussed in Stork Pompen BV v Weir Pumps Ltd 11 IPR 542 at 546:
Such cases indicate that having decided a course of action in respect of an act or step the performance of which is required within a certain time under the Act, that intention has been frustrated by either an error (eg the act has been done incorrectly, or mistakenly done outside the time allowed) or due to an omission (eg the act has not been done due to neglect or inadvertence). Therefore in my view, it is appropriate to consider in relation to the person seeking the extension, that person’s intention with respect to doing the act or taking the step, and to determine whether any error or omission arose to frustrate that intention."
and I note that this is consistent with the need for a "sufficient causal connection" between the error or omission and the failure to file the notice of opposition (Kimberly-Clark at 582).
29. Lilly noted that Merial had not filed any corroborative evidence from Nufarm, especially in regard to Merial’s intention to oppose. Though I agree that evidence from Nufarm could have been helpful, I have not drawn any adverse inference from this lack of evidence as Lilly intimated I should. However, other substantial concerns arise from the supplied material. In particular, the notes from the alliance meetings tend to indicate major inadequacies in Merial’s internal business practices at the time. In an alliance meeting, I would expect both parties to keep the other party apprised of any significant issues, such as intended oppositions. From the evidence available to me, it would appear that Merial did not keep Nufarm apprised of their intention to oppose. Neither did they use these opportunities to clarify or reinforce their dependence upon Nufarm for timely updates.
30. Merial has submitted that the failure to institute an appropriate watch was the error or omission that resulted in the notice of opposition not being filed in the prescribed period. In my view an equally critical error or omission is the delay of approximately 6 weeks from when the alliance meeting of April 2005 was held until the date in early June 2005 upon which Dr Jarecki-Black received a copy of the minutes of this meeting. If these minutes had been received earlier, it would have been possible for the notice of opposition to be filed in time. I note that a delay of this magnitude was not uncommon, as the evidence shows that on two previous occasions she had received minutes approximately 1 month after the alliance meetings had occurred. Recalling Dr Jarecki-Black’s position and responsibilities, I am both perplexed and confounded that Merial tolerated such systemic delays. Given this context, I can certainly sympathise with Lilly’s contention that Merial did not intend to oppose the Lilly application, but to rely on Nufarm to oppose it.
31. Nevertheless, in my view the declarations from Dr Jarecki-Black attest to the prospective opponent’s long standing intention to oppose the current application. I am also satisfied that the decision to oppose was formed in June 2004, approximately ten or eleven months before the relevant deadline of 3 May 2005. Most importantly, there is no evidence before me which suggests that Merial either never had, or at any time resiled from, their intention to oppose the application within the prescribed period. Merial’s actions on learning of their error also indicate a continuing strong desire to oppose the application. In summary, I am satisfied that the failure to file notice of opposition in time was due to an appropriate watch not being conducted, and not due to Merial having lost interest in opposing the grant.
32. Lilly submitted that Merial’s failure to institute a watch for pending patent applications or their acceptance was analogous to the situations described in Weir Pumps and Ashmont Holdings (supra). On the basis of these decisions, it was argued that the extension should be refused. However, unlike Weir and Ashmont, Merial was aware of the existence of the Lilly application beforehand, had formed the intention to oppose, and had relied on a third party, in this case Nufarm, to keep them appraised of any change in status of the application. I believe that the present situation is more similar to Danby, Henkel and Amrad (supra), in which the opponents were all aware of the patent application beforehand yet their error was in either failing to institute a watch or putting in place a watch in an inappropriate database (I note that in Henkel, the extension was refused due to inadequate evidence as to the causal link, yet in Danby and Amrad the extensions were allowed).
33. In my opinion the evidence shows that the failure by Dr Jarecki-Black to order an appropriate watch to monitor the status of the present application was the result of a significant error of judgement on her part. According to the evidence, Dr Jarecki-Black was authorised by Merial to monitor the activities of their competitors. Given these circumstances, I consider it is most likely that the manner in which the opposition was to be conducted was left to Dr Jarecki-Black’s professional judgement, and I note here in particular the statement in paragraph 4 of her first supporting declaration that:
“If a patent application is identified that may adversely affect those core business interests, I am the person responsible for ensuring that Merial's commercial interests are not adversely affected by third party patents/patent applications.”
34. The evidence additionally shows that Dr Jarecki-Black relied on Nufarm to monitor Lilly’s Australian application. Nufarm maintained their watch until they decided not to oppose. Dr Jarecki-Black clearly approved of this arrangement, in the belief that information regarding any change in the status of the present application would be conveyed in a timely manner to her. Although this was in reality incorrect, she apparently believed it to be correct at the time.
35. Given these circumstances, I am satisfied that the failure by Dr Jarecki-Black to initiate or maintain an appropriate watch constitutes an error or omission within the meaning of section 223(2). Alternatively, the failure to provide Dr Jarecki-Black with the minutes of the 19 – 20 April 2005 alliance meeting in a timely fashion could serve to enliven section 223(2). Even if I were to have any doubt about the prospective opponent’s intentions, I note that in similar circumstances any doubts were resolved in the prospective opponent’s favour in Liquid Air Australia Ltd v CIG (1983) 1 IPR 145; Firmaframe Nominees v Automatic Roller Doors (1984) 4 IPR 137; Groko Maskin’s Application (1984) 3 IPR 614 and Dentsply International v Bayer (1986) 7 IPR 408.
Has there been a causal error or omission?
36. To enliven s 223(2), the error or omission must have a causal connection leading to the failure to file the notice of opposition by 3 May 2005. Lilly submitted that the reliance on Nufarm to keep Merial apprised of progress of the Lilly application was not an error or omission that, per se, caused Merial to not file their Notice of Opposition before the prescribed deadline. It was argued that Merial could not know if and when to oppose, without knowing when the application was accepted. Also, the frequency of reporting was insufficient to ensure that acceptance would be detected in sufficient time to enable an opposition to be filed within the prescribed time.
37. In my view, these arguments merely serve to highlight the inappropriateness of the strategy implemented by Merial. As Dr Jarecki-Black states at paragraph 12 of her second statutory declaration:
“I refer to paragraph 12 of my first statutory declaration. Upon realizing that Nufarm was no longer interested in opposing the applications and therefore no longer monitoring the status of the Australian and New Zealand patent applications, I immediately instructed our Australian Attorneys to instigate a watch service. Upon reflection, I believe that it was not appropriate to rely on Nufarm to keep me informed on the progress of the patent applications. I have since modified Merial’s practice and now instruct our Australian attorneys directly to instigate a watch as soon as I become aware of a patent application in Australia that is relevant to Merial’s business interests. This practice is consistent with our policy of independently opposing patent applications, and does not put Merial in a position of relying on other parties for patent status information.”
38. Many errors and omissions which lead to a failure to do an act or take a step are the result of negligence or incompetence, and I consider this to be the case here. Dr Jarecki-Black has acknowledged that a significant error in judgement was made when Merial assumed that Nufarm would keep Merial appropriately informed. I consider that the causal relationship between this error or omission and the failure to file the notice of opposition by the due date is self-evident - Nufarm did not apprise Merial of the change in status of the application. In my view the evidence establishes a prima facie case that if alerted by Nufarm to the acceptance of the present application, Dr Jarecki-Black would have made a conscious decision to oppose at that time, ie. within the prescribed period.
39. The views of Spender J in G S Technology Pty Limited v Commissioner of Patents [2004] FCA 1017 (9 August 2004) are quite apposite:
“Where such errors and omissions are made against a clearly demonstrated desire to oppose the present application, and where attempts are made to remedy the error or omission as soon as its consequences are discovered and the existence of the error or omission learnt, as is the case here, the considerations in favour of an extension seem to me to be quite persuasive.”
40. I consider that Merial’s clear desire to oppose, along with their prompt conduct when alerted to their error, are similarly persuasive factors which tend to favour an extension.
41. Based on the foregoing considerations, I find that there was a relevant error or omission by Dr Jarecki-Black which is causally related to the failure to file the notice of opposition by the due date. I am satisfied from the evidence that the recognition of this error or omission led to the opponent filing a notice of opposition and requesting an extension of time on 6 July 2005. It now remains for me to determine whether the discretionary power conferred by section 223(2) should be exercised in favour of Merial.
Other discretionary factors to consider
42. The considerations involved with the exercise of the discretion to extend time were discussed by Bowen CJ in Vangedal-Nielsen v Smith (Commissioner of Patents) (1980) ALR 144 at 150 as follows:
"Clearly, the Commissioner will have to consider the interests of the prospective opponent who, for some good reason, has not been able to mount his opposition within the initial period of three months. The Commissioner will further have to have in mind, where a serious opposition is foreshadowed, the public interest [in ensuring worthless patents are not granted], but he will have to require to be satisfied by an applicant for an extension that a proper case has been made out justifying an extension. It would be wrong if he granted an extension simply because no one had raised rather exceptional circumstances why it should not be granted. Reasons why this is so include the desirability of operating the system efficiently and without unreasonable delays and also the interests of the applicant for a patent which are also clearly involved."
43. In the present case the evidence of Dr Jarecki-Black, although brief, sufficiently attests to her conduct and state of mind for me to be satisfied about the existence and nature of the causative error.
44. Merial submitted that as the patent applicant is already facing one opposition from Ancare New Zealand Limited it would also be in the public interest if its proposed opposition was considered. Lilly, on the other hand, submits that their interests will clearly be compromised if the extension is granted, as a second opposition will have to be dealt with, involving extra time, resources and expenses. The public interest is best served by primarily considering the merits of all oppositions independently of each other - see ICI Australia Operations Pty Ltd v Dowelanco [1992] APO 12 (8 April 1992), (1992) AIPC 90-884. I therefore agree with Merial on this point. Furthermore, there is nothing before me to suggest that granting the extension would especially disadvantage Lilly.
45. Lilly argued that there was no need to grant the extension as re-examination could be used to consider the validity of the claims. However, I accept that the opposition allows the Commissioner to consider grounds other than novelty and inventive step in determining the validity of the application. In addition, opposition allows validity to be assessed in an inter partes forum with the Commissioner being able to consider evidence from both sides. This will inevitably lead to a more balanced and correct determination of the issues which is clearly in the public interest.
46. On the other factors relevant to the exercise of the discretion, I find that the weight is heavily in favour of allowing the extension application. Merial filed the notice of opposition within nine days of the error being detected. It has also commenced preparation of its statement of grounds and particulars in anticipation of a favourable decision. Thus Merial has acted promptly and Lilly will face little delay or inconvenience. On balance the public interest favours allowing Merial to pursue its opposition which from the draft statement of grounds and particulars is potentially serious.
CONCLUSION
47. I have found that there was an error or omission by Dr Jarecki-Black which prevented the filing of a notice of opposition in time. Other considerations, particularly the public interest and the prompt action by Dr Jarecki-Black on recognising the error strongly favour allowing the extension application.
48. Consequently, I grant an extension of time under section 223(2) to 6 July 2005 for Merial to file its notice of opposition.
49. In accordance with regulation 5.4, an opponent must serve a statement of grounds and particulars within three months of filing the notice of opposition. This applies even where there is a pending request to extend the opposition period (G & J Koutsoukos Holdings Pty Ltd v Capral Aluminium Limited [2003] APO 28 at [27]). Therefore, Merial are required to serve a statement of grounds and particulars by 6 October 2005, and I note that a letter from FB Rice to the Commissioner dated 6 October 2005 states that “A copy of the Statement of Grounds and Particulars was served on the applicant, on 6 October 2005…”.
50. I will note for the sake of completeness that the extension application does not meet the requirements of section 223(2A), as the application was made outside the 2 month period prescribed by regulation 22.11(1C).
COSTS
51. Both parties, irrespective of whether the application was granted or denied, argued that costs should be awarded in their favour. The power of the Commissioner to award costs is based on section 210 and regulation 22.8. The power to award costs is discretionary, so I must take into account all relevant considerations.
52. In the present case, Merial has succeeded in obtaining an extension under section 223(2), even though they have been less diligent than they might have been in filing the second declaration of Dr Jarecki-Black. Further, it is possible that if the opponent had initially provided all relevant material, the hearing may have been avoided. In these circumstances, I consider it appropriate to make no award of costs.
R. W. J. Finzi
Delegate of the Commissioner of Patents
Patent attorneys for the applicant: Spruson & Ferguson, Sydney
Patent attorneys for the prospective opponent: F B Rice & Co, Melbourne
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