Genentech Inc v Human Genome Sciences Inc

[2000] APO 33

OFFICIAL NOTICE

DECISION OF A DEPUTY COMMISSIONER OF PATENTS

Application  :          No. 710696 in the name of GENENTECH INC.

Title:          VEGF-Related protein

Action:          Request by Human Genome Sciences Inc for an extension of time under Section 223 to file a notice of opposition.

Decision:          Issued            .

Abstract

Human Genome Sciences Inc indicated to its Australian attorney that it wished to oppose certain applications. The attorney however wrote to the in-house patent counsel explaining that his firm could not represent HGS in relation to the present application because of a potential conflict of interest and that they could also not provide a watching service. The in-house counsel however retained the belief that the attorney would provide her with information concerning the acceptance of the application. Shortly after the expiry of the time for filing a notice of opposition the counsel coincidentally discovered that the application had been accepted and immediately sought the filing of a notice and the Section 223 application.

Found that there was a failure to exercise due diligence in effecting the intention to oppose which constituted an error or omission for the purpose of section 223. In all the circumstances the extension of time was justified.

PATENTS ACT 1990

DECISION OF A DEPUTY COMMISSIONER OF PATENTS

Re:Patent Application No. 710696 by Genentech Inc.; request by Human Genome Sciences Inc for an extension of time under Section 223(2)(a) to file a notice of opposition.

BACKGROUND

Patent application 710696 (70128/96) in the name of Genentech, Inc. (Genentech) derives from international application number PCT/US96/14075 (WO97/09427) filed on 30 August 1996 and is directed to a VEGF-related protein. The application was advertised accepted on 30 September 1999 and consequently the time for filing a notice of opposition expired on 30 December 1999. Ludwig Institute for Cancer Research filed a notice within this time and the time for filing a Statement of Grounds in that opposition expired on 30 March 2000.

On 7 January 2000 Human Genome Sciences Inc. (HGS) filed a notice of opposition accompanied by an application for an extension of time under section 223 indicating that the circumstances on which it was based would be detailed in a following declaration. This declaration was provided on 11 January and was made by Michele Wales who is "an in-house patent counsel" for HGS.

By a letter dated 27 January 2000 Genentech indicated that it objected to the extension application and the matter was set for hearing in Canberra on 28 February. Genentech was represented by B Fitzpatrick of counsel assisted by W J Pickering of F. B. Rice and Co., Melbourne. HGS was represented by K Howard of counsel assisted by G B Cox of Wray & Associates, Perth.

As Genentech had obtained a notice for production in relation to materials referred to in Michele Wales' declaration, part of the hearing was taken up with submissions in relation to compliance with that notice. I issued a decision in relation to that matter on 17 March 2000 finding that HGS had lawful excuse in relation to material not produced. Genentech in the meantime sought production from Davies Collison Cave of certain documents including any file notes of telephone conversations said to have taken place between Dr Hughes of that firm and Ms Wales. In the event Davies Collison Cave declined to produce the documents on the basis of client - attorney privilege. While Genentech was of the view that privilege had been waived it did not wish to press the matter so as to facilitate an early resolution of the Section 223 request. On 13 April 2000 however HGS filed a further declaration including a redacted copy of a note that is said to be the only document in Dr Hughes' possession falling within the scope of the second notice of production. Ms Wales relates this undated note to her conversation with Dr Hughes on 12 January 1999.

APPLICABLE LAW

The provisions of section 223 relevant to the present request are as follows:

"223.    (1)     ...

(2)     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.

(3)The time allowed for doing a relevant act may be extended, whether before or after that time has expired."

Both parties referred me primarily to the well known decision of Jenkinson J in Kimberly-Clark v Commissioner of Patents 13 IPR 569 in relation corresponding provisions in section 160 of the Patents Act 1952. For example on what constitutes an error or omission at 579:

"It is in my opinion difficult to suppose that only the inadvertences and accidental steps, and not errors resulting from faulty reflection, of the former class of persons were intended by the drafts person to be within section 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. Although the latter kinds of error may be those which the draftsman had principally in mind, I do not think that the phrase "error or omission" should be given the restricted meaning which the delegate assigned"

and

"I do not think that the conclusion I have reached reduces s 160(2)(a) to a mere general power of extension. 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."

On the requirements of the person seeking the extension Jenkinson also indicated that:

"In order to make out the 'proper case.... justifying an extension' to which Bowen CJ referred (in Vangedal-Nielsen v Smith (Commissioner of Patents) (1980) 33 ALR 144), 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 of the applicant ... 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. ...

Section 160(2)(a) confers a power so conditioned that in my opinion its exercise is not lightly to be granted, and a power to be invoked only upon a prompt, frank, comprehensive and clear disclosure of the all the circumstances relevant to the weighing of the discretionary considerations upon which grant or refusal of an extension of time will depend."

However while the person seeking the extension has an obligation to put before the Commissioner the circumstances it believes justify the grant of an extension of time this is not equivalent to a burden of proof (Sanyo Electric Co Ltd v Commissioner of Patents (1996) AIPC 91-283). It is also clear that a broad discretion should not be reduced to an insistence on imperative compliance (Ferocem Pty Ltd v Commissioner of Patents (1994) AIPC 91-057) and that all relevant circumstances must be taken into account. These will include the respective interests of the parties and the public interest, any undue delay and the consequence of refusing or not refusing the extension (Sanyo supra and Bausch & Lomb v Allergan (1998) 39 IPR 541).

DECISION

In the present case HGS have failed to file a notice of opposition within the three month period allowed but have filed the notice and the present application for an extension of time with 8 days of that time period expiring. From the declarations of Ms Wales the relevant circumstances put forward by HGS are essentially:

1. That HGS have an application 73941/94 for VEGF2 that has been prosecuted on their behalf by the attorney firm Davies Collison Cave (DCC).

1. Searches in relation to that application identified a number of international applications including WO97/09427 in the name of Genentech (ie the international application from which the present application is derived).

1. Ms Wales asked DCC on 12 January 1999 whether they could represent HGS in relation to an opposition to its application. She also asked DCC to determine the status of Australian applications relating to certain of the international applications and indicated to them that HGS had the intention to oppose the grant of any Australian patent deriving from these applications.

1. Dr Hughes replied by letter dated 14 January 1999 indicating a potential conflict of interest in relation to Genentech's application and that DCC would be "unable to act on your behalf in opposing the grant of a patent on this application or place a watch on the progress of this application."

1. Dr Hughes however did provide status information on the present application including that the "Australian patent application No. 70128/96 is presently under examination and a first Official Report by the Australian Patent Office in respect of this application issued on 8 July 1998. The deadline by which Australian Patent Application No. 70128/96 must be placed in a condition for acceptance expires on 8 April, 2000".

1. Ms Wales indicates that it was her belief that this was publicly available information and that DCC would be able to provide publicly available information about the acceptance of Genentech's and other third party applications. This was also her belief after a further conversation with Dr Hughes about the letter although "I do not recall the precise nature of the reply that I got from Dr Hughes". She indicates that she instructed DCC to provide acceptance information at this time.

1. Ms Wales became aware of the acceptance of the present application on 6 January 2000 when reviewing the evidence in relation to one of HGS's own applications. In her first declaration Ms Wales indicates that she did not expect to receive any information on any of the third party applications before 8 April 2000 believing that the present application would not be accepted before that date.

HGS submit that there was an error or omission on behalf of Ms Wales in her misunderstanding of the Australian patents system and the advice from Dr Hughes and on behalf of Dr Hughes in not informing HGS of the acceptance date of the present application. This had a direct causal connection with the failure to file the notice of opposition which had clearly been HGS's intention.

Genentech for its part submits that HGS has failed to disclose any error or omission which caused the failure to do the relevant act and has not provided a full and frank disclosure of the circumstances leading to that failure. Much of this argument was related to HGS's failure to provide evidence that Genentech subsequently sought by production and in the redaction of portions of the documents subsequently provided.

In my view there is sufficient evidence to confirm HGS's intent to oppose the present application. Dr Hughes' letter of 14 January 1999 clearly supports that intent and given HGS's own activities in the field of the invention it would be surprising that this intent was subsequently abandoned only to revived in haste when the acceptance of the application came to the attention of Ms Wales. In this regard I have no reason to doubt the veracity of Ms Wales declarations nor more particularly her statement that the acceptance of the application came to her attention by accident on 6 January 2000.

What constitutes the error or omission that led to a failure to carry out that intent is more difficult to identify. Certainly the error was not with Dr Hughes. His letter makes it perfectly clear that he would not provide a watching service and it is difficult to see how that message could be misconstrued by Ms Wales. Perhaps the fact Dr Hughes included status information in his letter encouraged her mistaken impression and perhaps she was influenced by an incorrect interpretation of the 8 April 2000 date. Whatever the circumstances I am satisfied that Ms Wales failed to exercise due diligence in carrying out HGS's intention to oppose and this constitutes an error or omission for the purpose of section 223 (Wier Pumps Limited v Stork Pompen B.V. (1989) 13 IPR 163).

That Ms Wales' actions may be considered unreasonable or that the reasons for her lapse are not entirely clear does not detract from this finding (Total Peripherals v Commissioner of Patents and IBM [1998] AATA 784) nor does it necessarily indicate that there has been less than a full and frank disclosure. It merely recognises that, in Jenkinson J's words, "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" and being such are sometime not readily explained in hindsight. In any event I find that HGS gave in the original application sufficient disclosure of the pertinent circumstances including the content of Dr Hughes' letter and the state of mind of Ms Wales and that the documents subsequently produced have only tended to support the 223 application.

On the other factors relevant to the exercise of the discretion under section 223 I find that the weight is heavily in favour of granting the extension. HGS filed the notice within a few days of the expiry of the time limit and immediately that the error was detected. It has also filed its statement of grounds and particulars in anticipation of a favourable decision. Thus HGS has acted promptly and the patent applicant will face little delay or inconvenience given that it is already facing the opposition by Ludwig. On balance the public interest favours allowing HGS to pursue its opposition which from the statement of grounds and particulars appears to be seriously undertaken. Consequently in consideration of all the circumstances I am of the view that I should grant the extension of time sought.

CONCLUSION

The failure of HGS's in-house council to carry out its clear intent to oppose the present application amounts to an error or omission within the terms of Section 223. Other considerations particularly the prompt action by HGS on recognising the error and the short period of extension required strongly favour granting the extension.

I grant Human Genome Sciences Inc. an extension of time under Section 223 to 7 January 2000 to file its notice of opposition in relation to patent application 710696. Since a statement of grounds and particulars has been served the time period for serving evidence in support is that provided under Regulation 5.8(1)(a).

COSTS

I award costs in this matter in favour of Human Genome Sciences Inc.

J Werner
Deputy Commissioner of Patents

Patent attorneys for Genentech Inc.:  F. B. Rice and Co., Melbourne

Patent attorneys for Human Genome Sciences Inc :                Wray & Associates, Perth