Generic Partners Pty Ltd v Neurim Pharmaceuticals Ltd - [2022] APO 2

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Generic Partners Pty Ltd v Neurim Pharmaceuticals Ltd. [2022] APO 2

Patent Application: 2016426598

Title:Melatonin mini-tablets and method of manufacturing the same

Patent Applicant: Neurim Pharmaceuticals Ltd.

Opponent:Generic Partners Pty Ltd

Delegate:Dr W.E. Guinea

Decision Date: 14 January 2022

Hearing Date: 23 February 2021, by Video Conference

Catchwords: PATENTS – opposition pursuant to s223(6) – extension of time under s223(2)(a) – grace period under s24(1)(b) – whether 223 applicable to s24 – 223 considered applicable to s24 – whether there is an error or omission – error or omission established – whether the error or omission is causative to frustrate an intention – causative error or omission established – discretion – whether discretion should be exercised – appropriate to exercise discretion – extension of time granted – costs awarded against Opponent

Representation: Counsel for the applicant: David Shavin QC
Solicitor for the applicant: Nicholas Tyacke of DLA Piper
Counsel for the opponent: Richard Cobden SC and David Larish
Solicitor for the opponent: Rob Silberstein of Silberstein & Associates

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE

Patent Application: 2016426598

Title:Melatonin mini-tablets and method of manufacturing the same

Patent Applicant: Neurim Pharmaceuticals Ltd.
Date of Decision: 14 January 2022

DECISION

I am satisfied that the Applicant, Neurim Pharmaceuticals Ltd, failed to file in time to claim the benefit of the grace period pursuant to s24(1)(b) and Reg 2.2D due to the failure of Dr Nir to inform Dr Laudon about the publication of D1. The relevant discretionary factors weigh in favour of grant of the extension. I grant Neurim Pharmaceuticals Ltd an extension of time of eight (8) months pursuant to s223(2)(a) to file the application in time to claim the benefit of the grace period pursuant to s24(1)(b) and Reg 2.2D.

I award costs against the Opponent, Generic Partners Pty Ltd according to Schedule 8 of the Regulations.

Pursuant to the direction made 4 March 2020, the evidence in reply for the opposition to this application under s59 of the Patents Act is due two (2) weeks from the date of this decision.

REASONS FOR DECISION

Background

Patent application 2016426598 (the “application”) entered national phase from PCT/IB2016/057190 on 26 April 2018, in the name of Neurim Pharmaceuticals Pty Ltd (the “Applicant”). The application has a filing date of 29 November 2016, and an earliest priority date of 31 October 2016.
The application is also the ultimate ancestor of a family of patents or patent applications. The relationships and key dates, such as filing, grant etc. of the family is given at Annex B to this decision.
Expedited examination was requested at national phase entry. A first examination report issued on 6 June 2018, with the application subsequently accepted on 4 October 2018. The application was advertised as accepted on 1 November 2018.
The Applicant requested voluntary amendment of the application under s104 on 24 October 2018 (the “amendment”). The amendment was advertised as being allowable on 15 November 2018 and was subsequently…

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: [2022] APO 2
Decision Date: 14 January 2022

CaseChat Overview and Summary

Generic Partners Pty Ltd, the Applicant, sought to oppose the grant of a patent to Neurim Pharmaceuticals Ltd, the Patentee, pursuant to section 223(6) of the Patents Act 1990 (Cth). The Applicant argued that the patent was not for an invention within the meaning of section 18(1) of the Act. The dispute was heard in the Federal Court of Australia. The central legal issues were whether section 223(2)(a) applied to section 24 of the Act and whether there was an error or omission in the patent that was causative to frustrate the intention of the Applicant. The court considered that section 223(2)(a) was applicable to section 24 and found that there was an error or omission in the patent that was causative to frustrate the Applicant's intention. The court exercised its discretion to grant an extension of time to the Applicant and awarded costs against the Patentee. The Applicant was granted an extension of time to oppose the patent, and the Patentee was ordered to pay the Applicant's costs of the proceeding.

Orders