Les Laboratoires Servier v Lupin Limited (Corrected Version) - [2007] APO 4

ABSTRACTS OF DECISIONS
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No. 2001276418 in the name of Les Laboratoires Servier

Title: A crystalline form of perindopril tert-butylamine salt

Action: Request for an extension of time to serve evidence in support by Lupin Limited and an objection there to by Les Laboratoires Servier

Decision: Issued 17 January 2007 .
Abstract

Extension granted.
The public interest clearly supports granting an extension. The experimental data will be very important to the considerations of this opposition. Its inclusion would lead to a better and/or more just opposition outcome. It would allow a serious opposition to be treated on its merits.
On balance, the parties’ interests supported an extension of time. The interests of Lupin Limited clearly favour the allowance of further time so that they have a real opportunity to put their case to the Commissioner, and to ensure that all relevant evidence can be considered at the opposition. To not allow the extension would be to shut them out of presenting a full case. There was no practical disadvantage to Les Laboratoires Servier.
The explanation did not justify an extension of time. In particular there was no explanation as to why evidence from Dr Philip Marshall was delayed. The other explanations offered did not explain the delay.
Costs awarded against Lupin Limited.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No. 2001276418 by Les Laboratoires Servier and a request for an extension of time to serve evidence in support by Lupin Limited and an objection there to by Les Laboratoires Servier

BACKGROUND

Patent application 2001276418 in the name of Les Laboratoires Servier (hereafter referred to as Servier) was advertised accepted on 28 July 2005. A notice of opposition was filed by Lupin Limited (hereafter referred to as Lupin) on 28 October 2005. A statement of grounds and particulars was served on 30 January 2006 and evidence in support was due by 30 April 2006. On 1 May 2006 Lupin requested (and was granted) an extension to 30 July 2006 to serve evidence in support. Another three–month extension to file evidence in support until 30 October 2006 was requested by Lupin on 31 July 2006 and was granted. Partial evidence in support comprising a statutory declaration by patent attorney Helen Kyriacou (the “Kyriacou declaration”) with a number of exhibits was served on 3 August 2006. On 30 October 2006 Lupin filed partial evidence in support comprising a statutory declaration by Dr Philip Marshall with exhibits and another request for an extension of time to file evidence in support. Servier objected to this extension of time.
The matter was heard in Melbourne on 7 December 2006. Ms Elspeth Strong of counsel, assisted by Ms Carolyn Harris and Mr Mark Summerfield, patent attorneys of Watermark Patent & Trademark Attorneys, Melbourne, appeared for Servier. Mr Ben Fitzpatrick of counsel, assisted by Dr Helen Golias and Mr Paul Kilborn, patent attorneys of F B Rice &…

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 Les Laboratoires Servier v Lupin Limited (Corrected Version)

Details

AGLC: Les Laboratoires Servier v Lupin Limited (Corrected Version) [2007] APO 4
Case: [2007] APO 4
Decision Date: 17 January 2007

CaseChat Overview and Summary

Les Laboratoires Servier was the applicant of a patent application for a crystalline form of perindopril tert-butylamine salt. Lupin Limited opposed the application. Lupin sought an extension of time to file experimental data as part of the evidence in support of the opposition. Servier objected to the extension. The Delegate of the Commissioner of Patents had to decide whether to grant the extension of time. The Delegate found that while there was no satisfactory explanation for the delay, the extension should be granted. The Delegate considered that the experimental data would be important to the considerations of the opposition and would lead to a better and/or more just opposition outcome. The Delegate also considered that the interests of Lupin clearly favoured the allowance of further time so that they had a real opportunity to put their case to the Commissioner, and to ensure that all relevant evidence could be considered at the opposition. The Delegate awarded costs against Lupin Limited for the delay in serving evidence in support.

Orders