Euroceltique S.A. - [2013] APO 30

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Euroceltique S.A. [2013] APO 30

Patent Application: 2002300863

Title:Controlled Release Formulation

Patent Applicant: Euroceltique S.A.

Deputy Commissioner: Philip Spann

Decision Date: 9 May 2013

Hearing Date: 29 April 2012

Catchwords: PATENT – Section 104 – Request to amend – whether section 112A applies – transitional provisions – meaning of “if the Commissioner had not dealt with the request” – whether the request should be refused – amendment refused.

Representation: Patent applicant: R Grant, Patent Attorney, Spruson & Ferguson.

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application: 2002300863

Title:Controlled Release Formulation

Patent Applicant: Euroceltique S.A.

Date of Decision: 9 May 2013

DECISION

The request to amend the complete specification filed on 8 October 2012 is refused.

REASONS FOR DECISION

Background

The current Patent application 2002300863 in the name of Euroceltique S.A. (Euroceltique) has been accepted but was subsequently opposed by Sandoz Pty Ltd (Sandoz). On 12 November 2009 a delegate of the Commissioner issued a decision (the opposition decision) in the matter (Euroceltique S.A. v Sandoz Pty Ltd [2009] APO 21). He found that claims 1 and 18 to 20 lack inventive step, and that claim 17 is not clear. However, finding that the application contained patentable subject matter, the delegate allowed Euroceltique the opportunity to propose amendments overcoming the successful grounds of opposition.

Both parties appealed that decision in the Federal Court (NSD 1384/2009 and NSD 1385/2009), and on 11 January 2010 Euroceltique filed a request to amend the complete specification under section 104 of the Act. In consequence of this, on 28 January 2010, Justice Bennett stood over both appeals “pending the outcome of the application dated 11 January 2010 to the Commissioner of Patents”

On 26 March 2010 an Examiner granted leave to amend. The amendments were advertised, and oppositions were commenced by Sandoz Pty Ltd and by Spirit Pharmaceuticals Pty Limited (Spirit). Those oppositions progressed through the filing of evidence in support and in answer but on 8 October 2012 Euroceltique informed the Commissioner that it wished to withdraw the opposed request to amend. At the same time it filed a new request which it says brings the claims into conformity with claims 2 to 16 of the accepted application and that “These claims were found by the Delegate of the Commissioner of Patents to have no valid ground of opposition raised against them”. (The applicant also stated that it proposed to withdraw its appeal however in the event this does not appear to have occurred).

The delegate wrote to the parties concerning the withdrawal and also sought comment on a proposal to vary his direction for the filing of amendments in response to the opposition decision. That is, to extend the period for filing amendments to 8 October 2012. Spirit objected to this but on 11 February 2012 the delegate decided (Spirit Pharmaceuticals Pty Limited v Euroceltique S.A. [2013] APO 16) that the period for filing amendments arising from the opposition decision be extended to…

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: [2013] APO 30
Decision Date: 9 May 2013

CaseChat Overview and Summary

Euroceltique S.A. sought to amend its patent application following a decision by a delegate of the Commissioner of Patents. This request was made in the context of an ongoing appeal by Euroceltique against the delegate's decision to oppose certain claims of the patent application. The Commissioner's delegate refused the application to amend the patent application on the basis of a recently enacted provision, section 112A, which restricts the Commissioner's power to amend a patent application where an appeal is proceeding and has not been finally determined, withdrawn, or otherwise disposed of. Euroceltique argued that section 112A should not apply because the Commissioner had already "dealt with" the request before the commencement date of the relevant provision, and that the delay in dealing with the request should not prejudice the applicant. The Commissioner's delegate considered the arguments but found that section 112A applied to the case and that the amendments were not allowable.

The legal issues in this case were whether section 112A applied to the current request to amend and if so, whether the application should be refused. The court found that section 112A applied because the Commissioner had not "dealt with" the request before the commencement date of the relevant provision. The term "dealt with" was construed as the completion of all steps required by Chapter 10 of the Patents Regulations. The court found that Euroceltique's submissions concerning undue prejudice did not advance its case on construction. The court concluded that the Commissioner must refuse the request to amend because section 112A applies and the amendments are not allowable. The court's decision was based on the plain meaning of the legislation and the policy intent reflected in the Explanatory Memorandum. The court found that the Commissioner had not dealt with the amendment before the commencement date and that the applicant's construction led to ambiguity that otherwise did not arise.

Orders