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Genentech v Wellcome Foundation Ltd

Genentech v Wellcome Foundation Ltd

Case [1988] APO 15 16 May 1988

Intellectual Property Law

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In the Matter of the Patents Act 1952 and - In the Matter of Patent Application No. 563031 in the Name of GENENTECH INC. - and - In the Matter of Opposition under Section 59 by THE WELLCOME FOUNDATION LIMITED.

DECISION OF A SUPERVISING EXAMINER OF PATENTS:

Application 563031 was advertised accepted in the Official Journal of Patents of 25 June, 1987. On 25 September, Wellcome lodged and served notice of opposition, but failed to serve evidence-in-support within the time provided by regulation 55, which would normally have expired on 25 December; however, pursuant to the provisions of the Acts Interpretation Act 1901, that time actually expired on the next working day which was the 28 December.

On 15 February, 1988 Wellcome lodged an application for extension of time under regulation 55 to 25 March, 1988, invoking the provisions of sub-regulation 82(b). Genentech sought to prevent the allowance of that application. Accordingly the matter was set down for hearing in Canberra at the earliest possible date which was convenient for the parties, viz. 22 April. This represents an extraordinarily long delay in the circumstances, as it extends beyond the period of the extension sought : suffice it to say that pursuant to submissions made on behalf of Wellcome and Genentech, the delegate of the Commissioner agreed to the postponement.

At the hearing Genentech was represented by Mr. B. Caine of Counsel advised by Dr. Peter Stearne of Davies & Collison and Wellcome was represented by Dr. M.G. Horner of Griffith, Hassel & Frazer.

The Application for Extension

The regulations governing this application are regulations 55 and 82. Regulation 55 provides, inter alia, that an opponent:

"may serve on the applicant, within 3 months after the notice of opposition has been lodged at the Patent Office or within such further time as the Commissioner ..... allows, a copy of each of the declarations on which he relies in support of his opposition; ...... "

Regulation 82 provides:

"An application for an extension of time under these Regulations shall be lodged at the Patent Office -
(a) before the expiration of the time sought to be extended; or
(b) if the Commissioner is satisfied that special circumstances existed which prevented the application being made before that time, within such time as the Commissioner allows."

In this case the time sought to be extended expired on 28 December, 1987 nominally, 25 December), and the application was lodged on 15 February, 1988. Therefore the conditions of paragraph (b) of regulation 82 became applicable. Unless the Commissioner is satisfied as stated in that paragraph, it would seem that the application is to be deemed not lodged, in the sense that though received by the Office and incorporated into the Genentech case file, it would not receive further consideration. Consequently, I will deal with the regulation 82 matter first.

Regulation 82

The application for extension by Wellcome was accompanied by a statutory declaration by Dr. Horner. Paragraphs 3 and 4 thereof, set out immediately below, relate…

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.

Continue reading Genentech v Wellcome Foundation Ltd

Details

AGLC: Genentech v Wellcome Foundation Ltd [1988] APO 15
Case: [1988] APO 15
Decision Date: 16 May 1988

CaseChat Overview and Summary

In the case of Genentech v Wellcome Foundation Ltd, the dispute revolved around the granting of an extension for the lodging of evidence-in-support of an opposition to a patent application filed by Genentech Inc. The matter was brought before the Supervising Examiner of Patents who was tasked with deciding whether the Commissioner should grant an extension of time to Wellcome Foundation Ltd, the opponent, for lodging evidence-in-support of their opposition to the patent application. The legal issues at hand were whether the Commissioner was satisfied that special circumstances existed under regulation 82 of the Patents Regulations 1953, and whether the extension sought by Wellcome Foundation Ltd was justified under regulation 55 of the same regulations.

The Supervising Examiner of Patents found that the failure of Wellcome Foundation Ltd's agents to make appropriate entries in the firm's official diarying system and in the personal diary of Dr. Horner amounted to special circumstances in terms of regulation 82, as it prevented the applicant from making the application within the prescribed time. The Examiner noted that the modern view is that a failure of a solicitor to take the proper steps could itself be regarded as establishing sufficient cause for an extension of time. Furthermore, the Examiner was satisfied that Wellcome Foundation Ltd was mounting a serious opposition, and that the public interest would be better served if the opposition were allowed to proceed, rather than being stopped. Consequently, the Examiner extended the time for lodging evidence-in-support to 25 March, 1988.

Regarding the costs of the action, the Supervising Examiner of Patents awarded the costs in favour of Genentech Inc., the patent applicant, as Wellcome Foundation Ltd's evidence was initially insufficient, and Genentech had every right to object as it did. However, the Examiner noted that Genentech would have been aware of most of the matters relating to regulation 55, and therefore, there was no basis for an award of costs in their favour on that aspect of the action.

Orders