Max-Planck-Gesellschaft Zur Forderung Der Wissenschaften E.V. and Regeneron Pharmaceuticals, Inc v Amgen, Inc

[1997] APO 69

official notice

decision of a deputy commissioner of patents

Patent Application               :          67402/90 in the name of Max-Planck-Gesellschaft Zur Forderung Der Wissenschaften E.V. and Regeneron Pharmaceuticals, Inc

Title:          Ciliary Neurotrophic Factor

Action:          Objection by the patent applicants to requests by Amgen Inc under s.223(1) and 223(2)(b) for an extension of time to file a notice of opposition. The notice of opposition is in respect of a request under s.223 by the patent applicants, for an extension of time to pay a continuation fee.

Decision:          Issued            .

Abstract

The potential opponent to a s.223 request sought copies of the material in support of the s.223 request, from the Patent Office. That material was not provided until after the opposition period had expired. The potential opponent did not file an opposition until it after it had received the material.

It is totally inappropriate for an opposition to be initiated either speculatively or in ignorance. In situations where an opponent’s ignorance of what is to be opposed, is of their own making, the opponent has to suffer the consequences of their own (in)actions. However where an opponent is unable to ascertain from the Patent Office any material fact concerning that which might be opposed, it is not reasonable (let alone desirable) to expect the opponent to file what must be (in such circumstances) a speculative opposition. Denial of access to that which is subject to opposition can reasonably be said to be a circumstance beyond their control that prevents the (responsible) filing of an opposition by the due date.

An extension of time to file the notice of opposition was granted on the basis of an omission of the Commissioner; and could also have been granted on the basis of circumstances beyond the opponent’s control.

patents act 1990

decision of a deputy commissioner of patents

Re:Patent application 67402/90 in the name of Max-Planck-Gesellschaft Zur Forderung Der Wissenschaften E.V. and Regeneron Pharmaceuticals, Inc, a request for an extension of time by Amgen Inc, and an objection thereto.

background

Patent application 67402/90 by Max-Planck-Gesellschaft Zur Forderung Der Wissenschaften E.V. and Regeneron Pharmaceuticals, Inc (the applicants) was examined on 3 Dec 1992. Objection was taken that the application was prior claimed by patent application 48381/90, and on 3 Dec 1993 acceptance of the application was postponed pursuant to regulation 23.16 – to a date 3 months after the sealing, lapsing, refusal or withdrawal of 48381/90. Application 48381/90 was advertised accepted on 4 Nov 1993 as 642858, and is currently the subject of opposition – inter alia on the ground of prior claiming by the present application – with the postponement of acceptance of the present application continuing.

The continuation fee for 67402/90 falls due on 14 September each year. The fee due in 1995 was not paid. On 4 September 1996 the applicant paid the relevant fees, and requested a corresponding s.223 extension of time. A delegate of the Commissioner had some concerns with the s.223 request, which led to my hearing the applicant ex parte on 4 Aug 1997. At the date of that hearing the request had not been advertised pursuant to s.223(4); I concluded that on the facts of the case it was preferable for the s.223 request to be so advertised, before drawing any conclusions about whether the extension should be granted. That advertisement appeared in the AOJP of 4 Sep 1997, and thus the opposition period expired on Saturday 4 October [Reg 5.3(5)].

On Thursday 25 Sept, the attorney for Amgen Inc (Amgen) faxed to the Commissioner a request for ‘copies of all documents and correspondence of the Patent Office file in connection with this application for extension of time’. This was in excess of one week before the end of the period for filing notice of opposition to the s.223 request.

On Tuesday 7th October (the last day of the effective end of the opposition period, which otherwise expired on the preceding Saturday, and the Monday being a public holiday) a staff member of the Patent Office advised the attorney for Amgen that the material could not be supplied because it was not OPI (the application not having been accepted). The attorney queried this on the basis that the application had been advertised for the purpose of third party opposition. On 9th October the attorney was advised that the documents would be made available, and they were faxed to the attorney on Friday 10th October at around 12.14pm. It appears that the documents faxed were not all the relevant documents, and further documents were faxed at 4.45pm that day. It appears that there was then some correspondence between the attorney and his client, resulting in a notice of opposition being filed on 16 October.

On filing the notice of opposition, the attorney requested an extension of time under s.223(1) – asserting that the failure to timely provide him with copies of the documents relating to the extension of time was an error or omission on the part of the Commissioner; and that this error or omission prevented him from filing the notice of opposition. Subsequently the attorney filed a request under s.223(2)(b), on the basis that the non-availability of the documents resulted in the failure to file a notice of opposition being beyond their control. I note that no request under s.223(2)(a) – error or omission on the part of the person concerned – has been filed.

Thereafter, and having regard to reg 22.22, the Commissioner advised the applicants that a request for an extension of time to file a notice of opposition, had been filed. The applicants advised that they objected to the grant of any extension, and sought copies of the documents filed by Amgen in support. Those documents were not provided – on the basis that they were not OPI – but on 17 November the attorney for the applicant inspected the documents pursuant to s.56(1)(b).

A hearing was held in Melbourne on 16 December. The hearing covered both the s.223(1), and 223(2)(b) requests for extensions of time. The applicants were represented by Mr M Royal (patent attorney of Phillips Ormonde & Fitzpatrick); Amgen was represented by Mr J Slattery (patent attorney of Davies Collison Cave).

submissions

The essence of the submissions of Mr Slattery was that, in order for Amgen to decide to oppose they needed to have access to the basis of the s.223 request of the applicants; Amgen sought to obtain copies of those documents a week before the end of the opposition period; the Patent Office did not supply copies until after the end of the opposition period; and therefore the reason why the notice of opposition was not timely filed was due to either an error or omission of the Commissioner (through not responding promptly to the request for copies of documents) or otherwise to circumstances beyond the control of the applicant (through being unable to obtain copies of the documents).

The essence of the submissions of Mr Royal was that the unavailability of the documents did not prevent Amgen from filing a notice of opposition; that there had been a deliberate decision by Amgen not to file a notice of opposition by the due date, which meant that s.223 had no application; and that there was a lack of candour in the material put forward on behalf of Amgen – specifically, in relation to when they first became aware of when the applicant’s s.223 request would be advertised, and to the lack of explanation of why there were no follow-up enquiries of the Patent Office in the period between when the request for documents were filed, and the end of the opposition period.

Decision

The public availability of a s.223 request and its supporting documents is governed by the operation of sections 55 and 56, and reg 4.3. Such documents are filed, but they are not referred to in r4.3 – so they are only publicly available upon acceptance of the application. Clearly, when an inter parte dispute arises concerning the allowability of a s.223 request, procedural fairness mandates that all interested parties have access to the relevant documents. But this is not always possible under the OPI provisions, and access would then need to be granted under s.56(1)(b).

The key issue in this matter is whether, in the absence of being able to obtain the material in support of the applicants’ s.223 request, Amgen should have nevertheless filed a notice of opposition. If that was an appropriate action to follow, Amgen’s failure to file the notice of opposition could not (on the evidence provided) be due to either a circumstance beyond its control, or to an error or omission of the Commissioner – and the present action must fail.

I was referred to a number of decisions concerning the application of s.223. A common theme of s.223 decisions is that an intentional decision not to do something by the due date will exclude the application of s.223. And (it is suggested) there was clearly a decision in the present case not to file the notice of opposition by the due date. However I think some care must be exercised to have regard to the context of the application of s.223, lest contextual issues are inappropriately carried over into a different context. See, for example, para 16 in Sanyo Electric Co Ltd v Commissioner of Patents 36 IPR 470, (1996) AIPC ¶91-283; also Ferocem v Commissioner of Patents 28 IPR 243, (1994) AIPC ¶91-057.

In particular I think that most (if not all) decisions concerning the application of s.223 in the environment of a notice of opposition are distinguished from the present circumstances on one important matter – viz the opponent knew, or ought to have known, the case to be challenged. For example, when an application is advertised accepted, it is necessarily publicly available – and the potential opponent is able to ascertain the case to be opposed. The parallel of the present situation  (as put by Amgen) would be to expect a s.59 opponent to oppose the grant of a patent without being able to have access to the specification.

I think that as a general principle it is inappropriate for an opposition to be initiated either speculatively or in ignorance. In situations where an opponent’s ignorance of what is to be opposed, is of their own making (as by failing to institute adequate watches, failing to conduct their investigations in a timely manner, failing to make reasonable efforts to become appraised of relevant information, etc), I think the opponent has to suffer the consequences of their own (in)actions – as is manifest in the case law. However it cannot be in the public interest, let alone the interests of either party, for there to be any expectation that an opponent must file an opposition in ignorance, where their ignorance of what is to be opposed is beyond their control. Thus in cases where an opponent is unable to ascertain from the Patent Office any material fact concerning that which might be opposed, I do not consider it reasonable (let alone desirable) to expect the opponent to file what must be (in such circumstances) a speculative opposition. I think denial of access to that which is subject to opposition can reasonably be said to be a circumstance beyond their control that prevents the (responsible) filing of an opposition by the due date.

In the present case, Amgen sought copies of the relevant documents some 10 days before the end of the opposition period. The question I need to resolve is whether they were denied access, or whether the non-supply of the documents was attributable to factors of which they had control. Relevant issues are:

• How much time was available for the documents to be supplied? If the period to supply the documents is reasonable, I think a failure of the Commissioner to supply the documents in that period is denial of access to those documents. On the other hand, failure to supply by the end of the opposition period when the request is made ‘at the last minute’ is not a denial of access to those documents – rather the responsibility for the documents not being supplied lies with the person leaving the request for copies of the documents to the last minute.
  
  In the present case, the request was made over a week before the end of the opposition period, 3 weeks after the matter had been advertised. While I do not understand why Amgen didn’t request copies of the material earlier, I think the request was made in sufficient time for it to be responded to well before the end of the opposition period.

• Amgen were advised of denial of access to the documents under provisions of the Patents Act some time on the last day of the opposition period. That is, they were not aware that access was going to be denied until it was too late to do anything about it. Amgen immediately queried the refusal of access, but the Commissioner did not respond for another 2 days – when Amgen was advised that the documents would be provided. Consequently they were denied access to the documents by reason of delays by the Commissioner in dealing with their request.

• It was suggested by Mr Royal that Amgen should have sought access under s.56(1)(b). In the present case I consider it inappropriate to impute that expectation. It was only at the very end of the opposition period that Amgen was advised that they could not be given a copy of the documents. And as I understand past practice of the Commissioner, documents like those sought by Amgen were treated as though they were OPI – and made available. Accordingly I do not think it reasonable to have expected Amgen to have sought access under s.56(1)(b) in the first instance. Indeed it is noteworthy that on being advised of the s.223 request by Amgen, Mr Royal sought to be provided with copies of those documents; he himself did not seek access under s56(1)(b) until advised of the issue.

  As further illustration of this point, I note that the power to allow inspection under s.56(1)(b) has not to my knowledge been the subject of any general delegation by the Commissioner, and in the last 15 years or more the only requests for access to documents under s.56(1)(b) that I am aware of have been:

  i)     for non-OPI documents relevant to determining whether the Commissioner had made errors or omissions [Thomas & Garnham v Jiejing 29 IPR 441, (1994) AIPC ¶91-070], and

  ii)   two requests for access to non-OPI provisional specifications [Magee v Farrell 7 IPR 288, (1986) AIPC ¶90-269, and Brisalebe v Searle (1994) AIPC ¶91-088, 30 IPR 91].

Having regard to all these factors, I am of the view that in the present case Amgen was effectively denied access to the documents; that it was thereby prevented from making any responsible decision as to whether they should file an opposition (and therefore prevented from filing a notice of opposition); and that the denial of access was in all the circumstances outside of its control. I therefore consider Amgen is entitled to an extension of time under s.223(2)(b) to file the notice of opposition.

Further, the primary causative issue in the present case was the failure of the Commissioner to timely respond to the request for copies of documents. I do not know why the Commissioner took as long as he did to respond, and can only conclude that there was an omission on his part. Accordingly I am of the opinion that, on the facts of this case, the failure of the Commissioner to timely respond to the request for information was an omission that prevented Amgen from making any responsible decision as to whether they should file an opposition, and therefore prevented it from filing a notice of opposition. Accordingly I am satisfied that Amgen is entitled to an extension of time under s.223(1) to file the notice of opposition.

Having come to this conclusion, there remain two peripheral issues which deserve some comment:

• given the urgency of the matter, it seems most surprising that Amgen did not initiate any enquiries regarding the status of their request, close to the opposition date; and

• similarly, it is not apparent why Amgen did not file a s.223 extension of time request before the end of the opposition period, based on the unavailability of the documents.

I do not think either issue detracts from there being a circumstance beyond the control of the applicant that prevented the filing of the notice of opposition in the present case. However I observe that by not doing these things the opponent incurred the risk that the Commissioner might have proceeded to deal with the matter forthwith at the end of the opposition period. In that event there would have been no opposition, and the opportunity to file a notice of opposition with an extension of time may have been lost.

Conclusion

I have found that the failure by Amgen to file a notice of opposition by the due date was due to an omission by the Commissioner, which was also a circumstance beyond the control of Amgen. Accordingly I grant the requested extension of time under s.223(1) to file the notice of opposition, and note that if it were necessary I would grant the extension under the provisions of s.223(2)(b).

At the hearing the issue of when the time for serving the Statement of Grounds and Particulars would commence – the three month period from when the notice of opposition was filed expiring in the very near future. Both parties agreed that should I grant the extension, the period should commence from the date of this decision – and I so direct.

Costs

Both parties submitted that they were entitled to costs. Mr Royal also argued that, should the decision not be in his favour, costs should not be awarded against him because of reliance by Mr Slattery of material not available prior to the hearing.

Subsequent to Mr Royal’s inspection of documents on the 19 November, the only material filed by Amgen was a statutory declaration by Mr Slattery. In my view that declaration did not disclose anything materially different from the information contained in the inspected documents. Accordingly, I consider it appropriate for costs to follow the event, and award costs against the applicants (Max-Planck-Gesellschaft Zur Forderung Der Wissenschaften E.V., and Regeneron Pharmaceuticals, Inc).

D Herald
Deputy Commissioner of Patents

Patent attorneys for the patent applicants     :  Phillips Ormonde & Fitzpatrick

Patent attorneys for Amgen Inc             :  Davies Collison Cave