Merial Ltd v Norbrook Laboratories - [2012] APO 115

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE
Merial Ltd v Norbrook Laboratories 2012 APO 115

Patent Application: 2006207326

Title:Anthelmintic composition

Patent Applicant:  Norbrook Laboratories Limited
Opponent:  Merial Ltd
Delegate:  Dr S. D. Barker
Decision Date:  31 October 2012
Hearing Date:  Written submissions completed on 5 September 2012
Catchwords:  PATENTS – request for an extension of time serve evidence in support – inadequate explanation of the delay – nature and significance of evidence supports the extension – extension allowed – no award of costs

Representation: Patent applicant: Davies Collison Cave
Opponent:FB Rice

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE

Patent Application: 2006207326

Title:Anthelmintic composition

Patent Applicant: Norbrook Laboratories Limited
Date of Decision: 31 October 2012
DECISION
I allow an extension of time until 14 October 2012 to serve evidence in support.
I make no award of costs.
I direct that the time for serving evidence in answer shall be three months from the date of this decision.
REASONS FOR DECISION

Patent application 2006207326 in the name of Norbrook Laboratories Limited (‘Norbrook’) was advertised as accepted on 14 April 2011. On 14 July 2011, Merial Ltd (‘Merial’) filed a notice of opposition to grant of a patent. The statement of grounds and particulars was served on 14 October 2011.
Following two extensions of time, evidence in support was due to be served by 14 July 2012. On 12 July 2012 Merial applied for an extension of time until 14 October 2012 to serve their evidence. Norbrook objected to the extension of time on 30 July 2012 and requested a hearing.
The parties were advised that in the circumstances an oral hearing was not required. Both parties were invited to provide written submissions on whether the extension of time should be allowed.
Written submissions were filed by Merial on 15 August 2012. On the same date Norbrook advised the Office that their submissions dated 30 July 2012 were to form the basis of their submissions. The parties then provided a response to these submissions dated 22 August 2012 (Norbrook) and 5 September 2012 (Merial).
Partial evidence in support was filed on 13 August 2012, and then the evidence in support was finalised on 12 October 2012.
Relevant law
Extensions of time are granted at the discretion of the Commissioner and the onus rests with the party requesting the Commissioner to exercise her discretion under regulation 5.10(2):
(2)       The Commissioner may:
(a)       on the application of a party in the approved form; and
(b)       on such reasonable terms (if any) as the Commissioner specifies:
extend the time within which the party may take a step prescribed in this Chapter, not being a step that is taken under regulation 5.3 or paragraph 5.4(1)(a).
This provision must be read in conjunction with regulation 5.10(5):
(5) The Commissioner must not give a direction under subregulation (1) or grant an application under subregulation (2) or (4) unless the Commissioner:
(a) if he or she proposes to grant an application by a party - is reasonably satisfied that the other party has been…

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.

Keep reading for free

Create a free CaseChat account to read Merial Ltd v Norbrook Laboratories and more:

Read every judgment in full
Ask AI and get answers linked to paragraphs
See how each paragraph was cited in later cases
Download judgments as PDF or Word

Continue with Google

One click creates your free account or signs you in.

By continuing you agree to the Terms and Privacy Policy.

Details

Case: [2012] APO 115
Decision Date: 31 October 2012

CaseChat Overview and Summary

In the case of Merial Ltd v Norbrook Laboratories, the dispute involved a patent application for an anthelmintic composition filed by Norbrook Laboratories Limited, which was opposed by Merial Ltd. The matter was heard before Dr. S. D. Barker, a delegate of the Commissioner of Patents. The central issue before the court was whether Merial Ltd should be granted an extension of time to serve their evidence in support of their opposition to the patent application. The court had to consider whether the extension request was justified and whether it would serve the public interest.

The court evaluated the application based on several factors. Firstly, the explanation for the delay in submitting the evidence was not deemed satisfactory. Although Merial adopted a staged approach to prepare their expert evidence, this did not sufficiently justify the delay. Secondly, the court examined the nature and significance of the evidence that Merial intended to present. The evidence, which was eventually filed within the requested timeframe, pertained to the common general knowledge in the field, the approach to formulating a combination pour-on product for veterinary use, and an analysis of the opposed application and priority documents. The court found this evidence to be potentially important for the opposition proceedings.

Taking into account the public interest, which favored allowing the extension to ensure a just and correct outcome, and the largely offsetting interests of the parties, the court concluded that it was appropriate to grant the extension of time. The court also directed that the time for serving evidence in answer would commence from the date of the decision to account for uncertainties caused by the extension request. Regarding costs, the court decided that neither party should bear the costs of the other, as Merial's inadequate explanation and the late emergence of the significance of their evidence justified Norbrook's initial objection to the extension request.

Orders