Jones Tulloch Pty Ltd v Loam Bio Pty Ltd - [2024] APO 51

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Jones Tulloch Pty Ltd v Loam Bio Pty Ltd [2024] APO 51

Patent Application: 2023202250

Title:Methods for carbon capture and increasing yield of plants
Patent Applicant: Loam Bio Pty Ltd

Opponent:Jones Tulloch Pty Ltd

Delegate:Felix White

Decision Date: 17 December 2024

Hearing Date: 29 November 2024

Catchwords: PATENTS – extensions of time to file evidence in support – access to microorganisms deposited under Budapest Treaty required for evidence in support – whether Opponent has made reasonable efforts to comply with filing requirements – whether Opponent has acted promptly and diligently – standard for a reasonable plan does not require perfection – extension of time is not separable for different components of evidence in support – reasonableness of decision to obtain evidence is assessed a priori – extensions of time allowed – costs awarded

Representation: Counsel for the applicant: Gilbert Tsang
Patent Attorney for the applicant: Southern Cross Intellectual Property
Counsel for the opponent: Craig Smith SC

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE

Patent Application: 2023202250

Title:Methods for carbon capture and increasing yield of plants

Patent Applicant: Loam Bio Pty Ltd
Date of Decision: 17 December 2024
DECISION

I grant an extension of time for Jones Tulloch Pty Ltd to file its evidence in support until 23 November 2024. Jones Tulloch’s evidence in support is therefore filed in time and is complete. Loam Bio Pty Ltd’s evidence in answer is due three months from the date of this decision.

I award costs according to Schedule 8 against Loam Bio Pty Ltd.

REASONS

This decision relates to Australian Patent Application No. 2023202250 (“the Application”) in the name of Loam Bio Pty Ltd (“Loam”/“the Applicant”) and the s59 Opposition filed thereto by Jones Tulloch Pty Ltd (“Jones Tulloch”/“the Opponent”).
In particular this decision addresses whether Jones Tulloch’s requests under Regulation 5.9 to extend the period for filing evidence in support should be granted.
In their submissions for the hearing, both parties provided timelines of the events leading to the present hearing. There does not appear to be any controversy relating to the timelines, but I will summarise the relevant events below, starting with the timelines of events on record with IP Australia and then moving to events mentioned in the evidence filed in support of the extension of time.
Acceptance of the Application was advertised on 24 August 2023. Relevantly to this proceeding, the accepted claims include 15 claims of which two are independent. Both of the independent claims are methods which involve inoculation of soil with one of two fungal strains of Clonostachys rosea, as deposited under the provisions of the Budapest Treaty; one with the ATCC in the USA and the other with the NMI in Australia (hereinafter the “Loam strains”).
Jones Tulloch timely filed a Notice of Opposition on 24 November 2023, and duly filed their Statement of Grounds and Particulars (“SG&P”) on 23 February 2024. The grounds of opposition…

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 Jones Tulloch Pty Ltd v Loam Bio Pty Ltd

Details

AGLC: Jones Tulloch Pty Ltd v Loam Bio Pty Ltd [2024] APO 51
Case: [2024] APO 51
Decision Date: 17 December 2024

CaseChat Overview and Summary

The decision in Jones Tulloch Pty Ltd v Loam Bio Pty Ltd [2024] APO 51 concerns the patent application No. 2023202250 for methods of carbon capture and increasing plant yield by Loam Bio Pty Ltd. Jones Tulloch Pty Ltd opposed this application on grounds of lack of novelty and lack of inventive step. Jones Tulloch sought extensions of time to file evidence in support of the opposition, which Loam Bio Pty Ltd opposed. The central issue before the court was whether the Commissioner of Patents should grant Jones Tulloch's requests for extensions of time under Regulation 5.9 of the Patents Regulations 1991.

The court began by outlining the procedural history, noting that Jones Tulloch filed a Notice of Opposition on 24 November 2023 and their Statement of Grounds and Particulars on 23 February 2024. Jones Tulloch sought the release of the deposited fungal strains under the Budapest Treaty and requested extensions of time to file their evidence in support. The court found that Jones Tulloch had made reasonable efforts to obtain the necessary genomic sequence data despite delays, and their actions were consistent with the requirements of promptness and diligence under Regulation 5.9. The court concluded that the standard for a reasonable plan does not require perfection and that delays related to obtaining evidence do not preclude a finding of promptness and diligence. Furthermore, the court held that the extension of time is not separable for different components of evidence in support and that the reasonableness of the decision to obtain evidence is assessed a priori. The court granted the extensions of time and awarded costs according to Schedule 8 against Loam Bio Pty Ltd.

In summary, the court found that Jones Tulloch had acted reasonably, promptly, and diligently in seeking the necessary evidence, and thus granted the extensions of time. The court also found that Loam Bio Pty Ltd's arguments against the extensions were unconvincing and did not meet the threshold for exceptional circumstances. The court's decision was based on the principles of reasonableness, promptness, and diligence as interpreted in previous cases and regulatory materials.

Orders