Les Laboratoires Servier v GenRx Pty Ltd - [2007] APO 29

ABSTRACTS OF DECISIONS

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Patent Application : 2001276418 in the name of Les Laboratoires Servier

Title : A crystalline form of perindopril tert-butylamine salt

Action: An application under section 223 for an extension of time to file a notice of opposition by GenRx Pty Ltd

Decision : Issued 4 September 2007.

Abstract

The opponent has not provided enough evidence to establish that there was a real intention to oppose the application at the relevant date. As a consequence, there is no link between the original error in failing to identify the patent application and missing the deadline to file a notice of opposition. Hence there is no causative error which would enliven section 223. There may be other material available which the opponent could provide to establish this link. However, even if there were such material, there are other discretionary considerations which weigh heavily against allowing the extension.

The opposition case likely to be presented by the opponent is based on experimental evidence which a UK decision has indicated is subjective. Such disputes often benefit from cross examination which is better suited to a full scale Court trial rather than opposition.

There are on-going revocation/infringement proceedings in the Federal Court involving a related patent. The applicant confirmed that if the current application were to proceed to sealing, they were intending to amend the pleadings to include the current application. This appears to be a more appropriate environment to consider the invalidity of the patent. In addition, any opposition before the Commissioner is likely to delay the Court proceedings. Given that there has already been a 17 month delay in the filing of the opposition, any further delays in this opposition are not in the public interest.

The public interest is strongly in favour of refusing the extension so that the matter can proceed properly in the court environment where it is best suited. The section 223 application was therefore refused.

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Patent Application No. 2001276418 in the name of Les Laboratoires Servier and an application under section 223 for an extension of time to file a notice of opposition by GenRx Pty Ltd.

BACKGROUND

Patent Application 2001276418 was filed in the name of Les Laboratoires Servier (Servier) on 6 July 2001 claiming priority from a French basic application (FR 00 08793) filed on 6 July 2000. The application was advertised accepted on 28 July 2005 and thus the prescribed period under regulation 5.3 for filing a notice of opposition to the grant of a patent expired on 28 October 2005. A first notice of opposition was filed by Lupin Limited by the due deadline. However they subsequently withdrew their opposition (on 5 February 2007) after a negotiated settlement with the applicant. Following Lupin’s withdrawal, a second opponent GenRx Pty Ltd (GenRx) filed a notice of opposition on 9 March 2007 (17 months after the original deadline) accompanied by a…

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: [2007] APO 29
Decision Date: 4 September 2007

CaseChat Overview and Summary

The delegate of the Commissioner of Patents was asked to determine whether to grant an extension of time for GenRx Pty Ltd to file a notice of opposition to patent application 2001276418 by Les Laboratoires Servier. GenRx sought the extension under section 223 of the Patents Act 1990 due to an alleged error or omission that caused it to miss the deadline for filing the notice of opposition. The key issues were whether there was a causative error that would enliven section 223 and whether, even if there was, the discretionary factors weighed in favour of granting the extension.

The delegate found that while there was an error in GenRx's search firm failing to identify the patent application, there was insufficient evidence to establish that GenRx had a real intention to oppose the application at the relevant time. As a result, there was no causative link between the error and missing the deadline. Even if there were such evidence, the delegate found that other discretionary factors weighed heavily against granting the extension. The dispute involved experimental evidence that was better suited to a full scale court trial with cross-examination. In addition, there were ongoing court proceedings involving a related patent that provided a more appropriate environment to consider the invalidity of the patent. The delegate concluded that refusing the extension was in the public interest to avoid further delays.

Accordingly, the delegate refused GenRx's application for an extension of time to file a notice of opposition. The delegate awarded costs to Les Laboratoires Servier.

Orders