GloFish, LLC - [2022] APO 52

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

GloFish, LLC [2022] APO 52

Patent Application: 2019378844

Title:Transgenic betta

Patent Applicant: GloFish, LLC

Delegate:Felix White

Decision Date: 14 July 2022

Hearing Date: 2 May 2022, by videoconference
Catchwords: PATENTS – extension of time – Budapest Treaty deposits – request for extension of time under s223(2) to satisfy requirements of s6(a), (c) and (d) – fulfilling the requirements of s6(a) and (d) are not “relevant acts required to be done within a certain time” – extension of time to satisfy s6(c) would serve no useful purpose – request refused.

Representation: Counsel for the applicant: Benjamin Fitzpatrick
Patent attorney for the applicant: David Longmuir & Scott Whitmore, Phillips Ormonde Fitzpatrick

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE

Patent Application: 2019378844

Title:Transgenic betta

Patent Applicant: GloFish, LLC
Date of Decision: 14 July 2022
DECISION
I refuse GloFish’s request for extension of time under s223(2) for satisfying the requirements of s6(a) and s6(d), because making a microorganism deposit is not a “relevant act required to be done within a certain time” within the meaning of s223. I also decline the request for extension of time for satisfying the requirements of s6(c) as it would serve no useful purpose.
REASONS FOR DECISION

This decision relates to whether the requirements for satisfying the microorganism deposit provisions of section 6 of the Patents Act 1990 (“The Act”) are amenable to the extension of time provisions of section 223 of the Act.
I will commence this decision with a short history of the Budapest Treaty and will then set out my understanding of the events in this case, before proceeding to the task of statutory construction and consideration of the applicability of s223. I will refer to GloFish’s submissions throughout the decision as appropriate.

Microorganism deposit requirements

The Budapest Treaty, concluded in 1977, provides that contracting States, which allow or require the deposit of micro-organisms for the purpose of patent protection, must recognise deposits with any “international depositary authority”. While the Treaty does not place any requirements on how the contracting states make use of deposits for their national patent law, it sets out an international framework for mutual recognition of, and access to, deposits made under the Treaty.
Australia, while not an original signatory, acceded to the treaty on 7 April 1987[1] and it entered into force some three months later. Australia had amended its national laws to reflect the provisions of the Budapest Treaty with the Patents Amendments Bill 1984 (“The 1984 Bill”). The 1984 Bill amended the Patents Act 1952 (then in force – “The 1952 Act”) to introduce the concept that disclosure requirements could be satisfied by a micro-organism deposit under the Budapest Treaty. Prior to the 1984 Bill, there had been no provision in Australian law for satisfying the description requirements in any other way than in the specification, in writing.
[1] See >
In the Explanatory Memorandum to the 1984 Bill, then Science Minister the Hon. Barry Jones set out that its…

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.

Keep reading for free

Create a free CaseChat account to read GloFish, LLC and more:

Read every judgment in full
Ask AI and get answers linked to paragraphs
See how each paragraph was cited in later cases
Download judgments as PDF or Word

Continue with Google

One click creates your free account or signs you in.

By continuing you agree to the Terms and Privacy Policy.

Details

Case: [2022] APO 52
Decision Date: 14 July 2022

CaseChat Overview and Summary

GloFish, LLC sought an extension of time to comply with certain patent application requirements under the Patents Act 1990. The primary issue before the court was whether the time to satisfy these requirements could be extended, specifically under section 223(2). The requirements in question were to make a Budapest Treaty deposit, to provide a translation of the application in English, and to pay the required fees. The court had to determine if these acts fell under the category of "relevant acts required to be done within a certain time" for which an extension might be granted.

The court examined the nature of each requirement. It found that fulfilling the requirements to make a Budapest Treaty deposit and to provide an English translation were not considered "relevant acts required to be done within a certain time" as defined by section 223(2). These acts were deemed to be procedural in nature and not time-critical for the grant of a patent. Furthermore, the court concluded that granting an extension for the payment of fees would serve no useful purpose, as payment of fees is not inherently linked to the substantive aspects of patentability. The request for an extension was therefore refused.

Given the court's findings, GloFish, LLC was not granted an extension of time to satisfy the requirements of sections 6(a), (c), and (d). The court's decision was based on the interpretation that the acts in question did not fit the criteria for an extension under section 223(2) of the Patents Act 1990. This conclusion left the applicant without an extension, reinforcing the importance of timely compliance with patent application requirements.

Orders