Merial Limited v Norbrook Laboratories Limited - [2015] APO 56

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Merial Limited v Norbrook Laboratories Limited [2015] APO 56

Patent Application: 2010227340

Title:A topical parasiticide composition

Patent Applicant:  Norbrook Laboratories Limited
Opponent:  Merial Limited
Delegate:  Dr S.D. Barker
Decision Date:  24 August 2015
Hearing Date:  Written submissions completed on 23 July 2015
Catchwords:  PATENTS – extension of time to file evidence in answer – extension granted – the question of whether a party has been prompt and diligent at all times is assessed by looking at the behaviour of the party as a whole

Representation: Patent applicant: Baldwins Intellectual Property
Opponent:FB Rice

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2010227340

Title:A topical parasiticide composition

Patent Applicant: Norbrook Laboratories Limited
Date of Decision: 24 August 2015
DECISION
I grant an extension of time of two months to file evidence in answer.
REASONS FOR DECISION

This matter relates to patent application 2010227340 in the name of Norbrook Laboratories Limited (Norbrook). The application was advertised as accepted on 19 June 2014 and a notice of opposition to the grant of a patent was filed by Merial Limited (Merial) on 19 September 2014.
Evidence in answer was due to be completed by 23 June 2015, and Norbrook has requested a two month extension of time for filing evidence. The Commissioner advised on 19 June 2015 that she was satisfied with the reasons in support of the application, and Merial asked for a hearing.
The hearing was conducted by means of written submissions. Initial submissions were received on 16 and 17 July 2015. Responding submissions were filed on 23 July 2015.
The law
On 15 April 2013, the Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (No 1) (the Amendment Regulation) commenced. The Amendment Regulation significantly amended the Patents Regulations (the Regulations) as they apply to patent oppositions. Where the opposition commenced after 15 April 2013, the extension is governed by regulation 5.9 of the Regulations as in force on 15 April 2013. This is the situation in the present case.
Subregulation 5.9(2) states:
The Commissioner may extend the period only if the Commissioner is satisfied that:
(a) the party who intended to file evidence in the period:
(i)has made all reasonable efforts to comply with all relevant filing requirements under this Chapter; and
(ii)despite acting promptly and diligently at all times to ensure the appropriate evidence is filed within the period, is unable to do so, or
(b) there are exceptional circumstances that warrant the extension.
Exceptional circumstances are defined in subregulation (5):
In this regulation:
exceptional circumstances includes the following:
(a)    a circumstance beyond the control of a party that prevents the party from complying with a filing requirement under this Chapter;
(b)   an error or omission by the Commissioner that prevents a party from complying with a filing requirement under this Chapter;
(c)    an order of a court, or a direction by the Commissioner, that the opposition be stayed pending the completion of a related proceeding or action under the…

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 Merial Limited v Norbrook Laboratories Limited

Details

AGLC: Merial Limited v Norbrook Laboratories Limited [2015] APO 56
Case: [2015] APO 56
Decision Date: 24 August 2015

CaseChat Overview and Summary

This decision concerns an application by Norbrook Laboratories Limited to extend the time for filing evidence in answer to a patent opposition lodged by Merial Limited. The application was for a two-month extension of time. The decision was handed down by Dr S.D. Barker, a delegate of the Commissioner of Patents, on 24 August 2015. The decision followed written submissions completed on 23 July 2015. The main legal issue for the delegate was whether the extension of time was warranted under the relevant regulations. The delegate was required to consider whether Norbrook had made all reasonable efforts to comply with all relevant filing requirements, whether Norbrook had acted promptly and diligently at all times, and whether there were exceptional circumstances that warranted the extension.

The delegate found that Norbrook had made all reasonable efforts to comply with all relevant filing requirements. Although there had been a late amendment to the statement of grounds and particulars by Merial, Norbrook had begun considering the choice of experts about a month before evidence in support was filed, and had engaged experts within 10 days of the evidence in answer period commencing. Norbrook had relied on email communication with the expert, and the delays associated with the internet access were unpredictable and of limited duration. Norbrook were using a two-stage procedure to prepare their evidence, but this was being carried into effect in a manner that was prompt and diligent. Norbrook had commenced preparation of their evidence promptly, and had been pursuing the preparation of evidence from their experts in a reasonable way. The delegate found that the failure to file evidence in time was despite Norbrook acting reasonably, and promptly and diligently. The delegate also found that there were no exceptional circumstances that warranted the extension, as the circumstances identified by Norbrook were matters that related directly to the evidentiary process, and did not represent exceptional circumstances. The delegate found that the length of the extension requested was appropriate, and granted the extension.

Orders