Nufarm Australia Limited and Commissioner of Patents (Practice and Procedure) - [2025] ARTA 40

Nufarm Australia Limited and Commissioner of Patents (Practice and Procedure) [2025] ARTA 40 (17 January 2025)
Applicant/s:  Nufarm Australia Limited
Respondent:  Commissioner of Patents
Other Parties:  Advanta Seeds Pty Ltd

Tribunal Number: 2023/7814

Tribunal:General Member S. Fenwick
Place:Melbourne
Date:17 January 2025

Decision:The Tribunal affirms the decision under review.

..............................[SGD]..........................................
General Member S. Fenwick
Catchwords
INTELLECTUAL PROPERTY – PATENTS – failure to pay continuation fee – lapse of patent – application for extension of time – opposition to grant of extension of time – whether error or omission by representative of Commissioner – error or omission by person concerned – evidence of intention to maintain patent – decision affirmed
Legislation
Administrative Appeals Tribunal Act 1975 (Cth)
Administrative Review Tribunal (Consequential and Transitional Provisions No. 1) Act 2024 (Cth)
Patents Act 1990 (Cth)
Cases
Advanta Seeds Pty Ltd and Commissioner of Patents [2022] AATA 1157
Advanta Seeds Pty Ltd and Commissioner of Patents [2022] AATA 1366
Alphapharm Pty Ltd v H Lundbeck A/S [2014] HCA 42
Aspen Pharma Pty Ltd v H Lundbeck A/S [2013] FCAFC 129
Ferocem Pty Ltd v Commissioner of Patents [1994] FCA 981
G S Technology Pty Ltd v Commissioner of Patents (2004) 63 IPR 9; [2004] FCA 1017
G S Technology v Commissioner of Patents [2004] AATA 1391
Kimberly-Clark Ltd v Commissioner of Patents & Another (No 3) (1988) 13 IPR 569, [1988] FA 421
Nufarm Australia Ltd v Advanta Seeds Pty Ltd [2023] FCA 109
Re Sanyo Electric Co Ltd and Commissioner of Patents (1996) 36 IPR 470, [1996] AATA 832
Vangedal Nielsen and Others v Smith (Commissioner of Patents) and Another 1A IPR 731, [1980] FCA 163
Water Conservation and Irrigation Commission (NSW) v Browning (1947) 74 CLR 492
Statement of Reasons
On 14 October 2024, the Administrative Appeals Tribunal (AAT) became the Administrative Review Tribunal (the Tribunal). Under the transitional provisions in the Administrative Review Tribunal (Consequential and Transitional Provisions No. 1) Act 2024 (the Transitional Act), applications for review to the AAT that were not finalised before 14 October 2024 are taken to be an application for review to the Tribunal. The Transitional Act gives the Tribunal the authority to continue and finalise any aspect of the review not already completed by the AAT. This decision and statement of reasons is made by the Tribunal.
BACKGROUND

The Applicant (Nufarm) applied on 20 October 2023 for review of a decision of a delegate of the Respondent Commissioner dated 5 October 2023 to exercise a statutory discretion in favour of the Other Party (Advanta). This decision granted Advanta an extension of time in which to pay a renewal fee on a patent.
This matter has a relatively complex commercial and legal background, not all of which has direct bearing on the outcome here. Briefly, Advanta holds over 2,000 patents in the agricultural field, including that in dispute which is in respect of a lucrative hybrid canola plant cell resistant to herbicides. The application for this patent was lodged on 6 October 2009 and it was granted on 7 January 2016. It has been the subject of a licensing agreement permitting Nufarm to produce seeds that express the relevant genetic trait. Litigation is now on foot between Advanta and Nufarm with respect to the terms of this agreement, including its duration and an alleged failure to pay royalties.
This litigation is relevant to the extent that common to both that action and this matter is the fact that on more than one occasion Advanta has failed to pay the patent fee on time. The modest renewal fee was paid in the first four years of the life of the patent, however the fifth payment due in October 2017 was missed. An extension of time to make this payment was denied by the Commissioner in 2020 and Advanta applied to the Tribunal for review of this decision.
Nufarm unsuccessfully resisted this application, and the Tribunal found in May 2022 that Advanta provided full disclosure of the circumstances leading to an error or omission on its part, including how the failure to pay the fee occurred (Advanta Seeds Pty Ltd and Commissioner of Patents [2022] AATA 1157) (Advanta). Orders were subsequently made by the Tribunal affording dates by which payment was to have been made (Advanta Seeds Pty Ltd and Commissioner of Patents [2022] AATA 1366). The substantive decision was upheld in turn by the Federal Court of Australia (Nufarm Australia Ltd v Advanta Seeds Pty Ltd [2023] FCA 109) (Nufarm).
The facts and circumstances relating to payment and non-payment of fees is particularly complex. As might be inferred from dates above, the failure to pay the 2017 fee was not discovered until 2019. Noting that aspects of the facts are in dispute, what is not in dispute is that Advanta caused payment to be made in April 2019 with the intention of covering the fifth and sixth renewals. It is also not in dispute that subsequent renewal payments were made, however at the time Tribunal orders were being considered in May 2022 it became apparent that an error was made in calculating the fees arising. The shortfall in question was $400, the difference between the amount of $2,600 actually paid and the required $3,000.
It is this shortfall that is the subject of this application. Advanta initially applied to the Commissioner on 1 June 2022 for an extension of time under s 223 of the Patents Act 1990 (Cth) (the Act). This provision affords a discretion in cases of error or omission in a relevant act. In opposing an extension, Nufarm argued that Advanta had failed to properly account for the miscalculation, and that simply failing to pay the correct amount could not amount to a requisite error or omission. Advanta acknowledged that the evidence did not demonstrate who in fact was responsible for the miscalculation but there was a causative error or, in the alternative, information provided by staff of IP Australia for the Commissioner contributed to the mistake.
The Commissioner did not participate in the proceeding before the Tribunal, but documents were lodged pursuant to s 37 of the Administrative Appeals Tribunal Act 1975 (Cth) (T). Nufarm lodged a Statement of Facts, Issues and Contentions (NSFIC), a Reply (Reply), and Closing Submissions (NCS). Advanta lodged a SFIC (ASFIC), Closing Submissions (ACS), and a bundle of authorities. A Hearing Bundle was also provided (HB). During the course of evidence Advanta produced a bundle of documents being lodgements in a matter currently before the Federal Court of Australia (Exhibit A1).
Evidence was given at the hearing by Ms Samantha Davidson, a former lawyer for Advanta’s IP representatives, Ms Nicola Hayden, former law clerk and now senior law clerk at Advanta’s IP representatives, and Mr Andrew Short, Managing Director for Advanta.
LEGISLATION
The relevant provisions are found in Chapter 22 – Miscellaneous of the Act. Relevantly, s 223 provides:
Extensions of time
(1)The Commissioner must extend the time for doing a relevant act that is required to be done within a certain time if the act is not, or cannot be, done within that time because of an error or omission by:
(a)       the Commissioner or a Deputy Commissioner; or
(b)       an employee; or
(c)a person providing, or proposing to provide, services for the benefit of the Patent Office; or
(d)       the receiving Office; or
(e)the International Bureau of the World Intellectual Property Organization.
(2)            Where, because of:
(a)an error or omission by the person concerned or by his or her agent or attorney; or
(b)       circumstances beyond the control of the person concerned;
a relevant act that is required to be done within a certain time is not, or cannot be, done within that time, the Commissioner may, on application made by the person concerned in accordance with the regulations, extend the time for doing the act.
…
(6)  Subject to subsection (6A), a person may, as prescribed, oppose the granting under subsection (2) or (2A) of the application.
(7)            Where:
(a)a patent application lapses, or a patent ceases, because of a failure to do one or more relevant acts within the time allowed; and
(b)       the time for doing that act or those acts is extended;
the application or patent must be treated as having been restored.
…
“relevant act” means an action (other than a prescribed action) in relation to a patent, a patent application, or any proceedings under this Act (other than court proceedings), and includes the making of a Convention application within the time allowed for making such applications.
The Act affords a patent holder exclusive rights to exploit the invention (s 13(1)) and a patent ceases in circumstances where the patentee does not pay a renewal fee within the prescribed period (s 143)).
The Patents Regulations 1991 (Cth) (the Regulations) provide for payment of renewal fees at the last moment of the anniversary (reg 13.6(1)). They also provide for a six-month ‘grace’ period within which renewal fees may be paid, along with additional fees as scheduled (reg 13.6(2)). Under Schedule 7 to the Regulations, a renewal fee is not required to be first paid until the fourth anniversary of an application (Item 211).
ISSUES
There are two issues to be determined. First, whether there an error or omission by an employee of the Commissioner with a relevant causative relationship to the failure to pay, in which case the Act mandates an extension of time. If not, second, whether there an error or omission by Advanta or its agent(s) and, if so, should the discretion be exercised to extend time.
EVIDENCE
Ms Samantha Davidson
In her declaration dated 1 June 2022 (HB3), Ms Davidson states that for several years until early May 2019 she was head of the IP section of a firm that assisted Advanta with matters relating to the patent in question [2],[3], [7]. She states that in the course of a contract review in or around March 2019 she discovered that the patent had ceased because a renewal fee had not been paid by the due date in October 2017 [7]. Ms Davidson provided an account of her findings in an email to then Managing Director of Advanta, Mr Barry Croker, on 1 April 2019 (HB3, SD-1).
Ms Davidson states that because she had no familiarity with Patents, she contacted IP Australia by telephone. She has limited recall of the events, and her declaration annexes a file note of a conversation on 3 April 2019 (HB3, SD-2) [9]. It was her usual practice to make handwritten notes and then type up a formal file note [10]. The note reports a call with ‘Jordan’ who advised the need to file an extension of time request for the renewal fee due on 6 October 2017 [11].
The second page of the file note reports fees associated with the renewal, which read as follows [12]-[13]:
$100 per month or part thereof since the due date, and also need to include the renewal fees that were initially missed and every renewal fee since then
$300 paid online for year it was missed
$300 fee for 25.01.2019
$300 for 25.01.2020
Total of Renewal Fees before they will consider the request
Extension Fees $100 x 19 months missed - 20 months for the fee. Do an extra month on top to allow that to be considered.
Based on this, Ms Davidson states that she understood the payment to total $2,900 made up of $300 x 3 representing renewal fees for three years and $100 x 20, representing 19 months the fee had been outstanding plus an additional month [14]. Consistent with the note, she understood that should there be any issue with the payment it would be raised with her firm prior to handling the extension.
Ms Davidson states that she did conduct some preliminary research into fees and as she found it ambiguous, called IP Australia to clarify [15]. She does not recall reading Schedule 7 to the Regulations, and states that she relied upon the advice of IP Australia [16]. After confirming in an email to Mr Croker the need to pay $2,900 [17], Ms Davidson recalls largely delegating the task of applying for an extension of time to Ms Hayden [18]. Ms Davidson acknowledges a receipt from IP Australia for a payment made 8 April 2019 for an amount of $2,600, and does not know who decided upon this figure [19].
In an email to Mr Croker dated 3 April 2019 (HB3, SD-4), Ms Davidson sets out her interpretation of circumstances relating to the failure to pay the renewal fee. This information appears to be provided in part due to her perception of a need to categorise the error as being with the patent applicant, or their agent. The email records that the final payment was made by one representative firm, and the notice of cessation of the patent was sent to a second representative firm, which had subsequently come on the record as the agent for Advanta. Ms Davidson reports that somewhere in communications between Advanta and its different representatives, ‘things have gone awry’.
In a related piece of correspondence (also HB3, SD-4) dated 1 April 2019, Ms Davidson informs Mr Croker that a renewal advice was sent to a representative firm for Advanta in January 2017.
In cross-examination at the hearing, Ms Davidson stated that she was anxious not to be wrong in respect of fees and asked for it to be spelled out, and wrote it down. She explicitly denied, despite being pressed on this, that the file note represented her own workings. Ms Davidson also reiterated that she was unsure prior to speaking to IP Australia what the total payment was. It was put to her that the information concerning payments in January 2019 and 2020 could not have been correct, and Ms Davidson again stated that this is what she was told. Ms Davidson stated that she did not recall having an initial conversation with Ms Hayden about the follow-up work and denied that page two of her file note were instructions to Ms Hayden.
Ms Davidson confirmed during her evidence in response to a question from myself that she was mainly familiar with Trade Mark applications.
Ms Nicola Hayden
In her declaration, dated 1 June 2022 (HB2), Ms Hayden states that she received instructions from Ms Davidson on 4 April 2019 to prepare the extension of time application [5]. Ms Hayden states it was her practice to review file material including emails to Mr Croker and Ms Davidson’s file note [6]-[7].
Ms Hayden describes further preparation and inquiries undertaken [8]-[11]. She then states that, consistent with an annexed email, Ms Hayden made arrangements for Mr Croker’s personal assistant, Ms Lesleigh Trinder, to change the agent on the record to Advanta, and file the extension of time application and pay the fee [12]. Ms Hayden also describes a phone call on 8 April 2019 during which she believes Ms Trinder lodged the application and paid the fees, which is documented in annexed notes and correspondence [17]-[19].
Ms Hayden refers to the receipt issued by IP Australia (HB2, NH-13) which records a payment of $2,600 made by Ms Trinder [20]. In respect of this, Ms Hayden states that she accepts it is $300 less than the amount anticipated, but understands that it represents $600 for 2017 and 2018 renewal fees, and $2,000 in late fees being $100 for each of 20 months of the extension [23]. She does not know who determined that this amount be paid [24].
Ms Hayden relates further administration undertaken by her in respect of the patent following the time her firm took over representation of Advanta in October 2019 [25]. Matters she dealt with include making further inquiries about outstanding fees, paying a tenth year renewal fee of $550 upon advice provided by IP Australia, and later advice from IP Australia that an additional $600 late fees should have been paid [27]-[31]. Ms Hayden also addresses the payment of the eleventh year renewal fee in September 2020, for a purported due date of 6 October 2020 [32]-[35]. Similarly, she handled the twelfth renewal fee in September 2021 [36]-[39].
Following the decision in Advanta in May 2022, Ms Hayden states she made inquiries of IP Australia and was informed that no fees were outstanding [40]-[42]. Ms Hayden also received a renewal payment history from IP Australia in May 2022 (HB2-NH32) [43]. Finally, Ms Hayden states that she was surprised to learn on 19 May 2022 of an allegation that the renewal fee due on 6 October 2018 (being the ninth anniversary) was not paid on time [44]. She learned that this was in fact a shortfall in the fee, and Ms Hayden states her belief that at all times ‘I had attempted to ensure that full and proper payments were made to IP Australia … At no time was it my intention to withhold any amounts owing …’ [46].
Ms Hayden confirmed in her evidence, in response to a question from myself, that her main experience was with Trade Mark applications. She also stated, consistent with her statement, that she had been asked by Ms Davidson to undertake a search of the record with respect to this patent.
Ms Hayden also confirmed in cross-examination that she took a range of matters into account when working, including emails and the file note made by Ms Davidson. Ms Hayden was unable to explain why $2,900 was not paid, and stated that she did not consider the Schedule to the Regulations until the later preparation of her declaration. She described a very clear visual recollection of a drop-down menu in the IP Australia system and considered it likely that she advised Ms Trinder to select from the menu ‘20’ as per the file note. Ms Hayden could not explain why 20 was the number proposed. Ms Hayden recalled that Ms Davidson had said an additional month on top was required, and could not recall discussion of the grace period.
Mr Andrew Short
Mr Short states in his affidavit, dated 28 November 2023 (HB15), that he has been Managing Director and interim Managing Director of Advanta since September 2022 [3]. He explains the nature and significance of the patent, in particular the release of canola hybrids involving use of the technology in the patent [8]-[11]. Mr Short confirms the licensing of the technology to a subsidiary of Nufarm, and that it is currently not paying fees under this agreement [12]-[14].
Mr Short confirmed his statements in evidence, and that litigation is currently on foot in respect of the licensing agreement. Reference was made here to Exhibit A1.
Other material
In a declaration dated 1 June 2022, (HB4), Ms Trinder confirms that she completed the actions described in the wider evidence, and that she was on the phone with Ms Hayden while using the IP Australia online system [5]-[8]. Ms Trinder also states that she conducted no other investigation or calculation about the fees [9].
Ms Helen Macpherson, a partner of Advanta’s legal advisers Baker McKenzie, prepared a declaration dated 1 June 2022 (HB5). She states that legal representatives of Nufarm informed her in correspondence dated 19 May 2022 that no extension of time could be granted for the sixth renewal fee in the Advanta decision as a renewal fee due on 6 October 2018 and had not been paid; the decision was considered to be solely in respect of the fifth payment, and therefore the patent could not be restored [3]-[5]. Ms Macpherson states her belief that, until this point, the patent had ‘ceased’ due to the unpaid fifth renewal fee.
Ms Macpherson states that she reviewed the receipt from IP Australia in respect of the payment of $2,600 [6]. In doing so, Ms Macpherson formed the view that there was a shortfall and noted that the grace period for the 2018 renewal fee ended on 6 April 2019, and the payment in respect of outstanding fees was made the next business day, being 8 April 2019. In her opinion the shortfall was $400.
An affidavit from Ms Macpherson, dated 29 November 2023 (HB13), annexes correspondence from IP Australia produced in respect of the present application for extension of time, dated 9 September 2022 (HB13, HM-14). This material states, relevantly:
(a)the decision in Advanta provided an extension of time for the eighth anniversary;
(b)no extension was granted for the ninth anniversary, the last day of payment for which was 8 April 2019, being the end of the grace period established under the Regulations;
(c)payments for anniversaries in the grace period must include the fees at item 211 in the Schedule to the Regulations, and $900 was due for payment of the ninth anniversary; and
(d)when the fees paid on the eighth anniversary ($300) and its extension ($1,800) are subtracted from the $2,600 paid on 8 April 2019, the remaining $500 is $400 short of the amount required to satisfy the ninth anniversary.

The correspondence from IP Australia was generated with a view to confirming the precise nature of the extension of time request from Advanta. It proposes that two possible ‘acts’ for which an extension may be sought had arisen on consideration of the request, being payment within the grace period, or payment by the ninth anniversary on 6 October 2018 (HB13, HM-14).
In his declaration dated 31 May 2022 (HB6), Mr Croker confirms the wider evidence given with respect to administration and actions surrounding the fee payment [15]-[18]. He annexes correspondence concerning what appear to be the first four renewal payments, noting that IP Australia correspondence dated 25 January 2017 refers to a renewal payment made on that day, being within the applicable grace period (HB6, BJC-4). Mr Croker also states that at all times Advanta intended to maintain the patent due to its commercial value [18]-[21].
The Application for an Extension of Time Under Section 223 (T4) seeks an extension of time for 44 months from 6 October 2018. This is understood as covering the time from the last day of the grace period in respect of the sixth renewal (ninth year payment) which is 8 April 2019 to the date of the application, being 1 June 2022 (T2 [4]-[5]; NCS [8]-[10]).
CONSIDERATION
Nufarm submitted in closing that there is fundamentally no disagreement that an underpayment was made in respect of outstanding fees, and the amount for the sixth renewal was missed. It was contended that the relevant test is found in the decision of Kimberly-Clark Ltd v Commissioner of Patents & Another (No 3) (1988) 13 IPR 569, [1988] FA 421 (Kimberly-Clark). This is, in summary, that full and frank disclosure was required of all the surrounding circumstances that led to an error or omission, beyond disclosure (only) of processes by which an agent’s errors were committed (at 583).
It is submitted that the error in question is the failure to consider the Regulations and allow for a fee for the grace period. It is specifically contended that the error was made by Ms Davidson and acted upon by Ms Hayden and Ms Trinder (NCS [40]). Nufarm contends that it is untenable that the error was made by the IP Australia representative to whom Ms Davidson spoke (NCS [41]). In support it is submitted that the file note of this conversation is inherently unreliable due to inconsistencies including the reference to a payment due in January when the patent anniversary is October (NCS [42]). The evidence of this conversation is so flawed, Nufarm argues, that a finding cannot be made as to any relevant error by IP Australia (NCS [45]).
Advanta submitted that the authorities support the view that there may be multiple causative errors or omissions that contribute to the relevant failure, and this may include the contribution by IP Australia argued for (ACS [39]-[40]). Reliance is placed here upon Kimberly-Clark, Re Sanyo Electric Co Ltd and Commissioner of Patents (1996) 36 IPR 470, [1996] AATA 832, and Nufarm [91]. It is also contended that certain submissions of Nufarm with respect to the issue arising under s 233(1) of the Act are misplaced, and that this matter is squarely before the Tribunal (ACS [44]-[50]). Advanta also argues, generally, that a beneficial construction of the legislation is required, and a narrow interpretation of error or omission should be avoided (ACS [23]-[25]).
With respect to the evidence put forward by Advanta, it is contended that all witnesses were credible and that all uncontested evidence should be accepted. Advanta contends in particular that it cannot be argued that it has failed to identify the relevant error; the error lies in the failure to calculate the relevant fee, an error made solely by Advanta or its agents, and contributed to by IP Australia (ACS [72]). It is acknowledged that the person who made the miscalculation cannot be identified but as it could have been Ms Trinder, Ms Hayden or Ms Davidson, it is tolerably clear the error was made by Advanta or its agent (ACS [75]).
Advanta submits that a number of factors support the exercise of the discretion in s 223(2) of the Act in its favour: Advanta always intended to maintain the patent; took immediate steps to remedy the error when identified; and, will suffer serious commercial consequences should time not be extended (ACS [77]). Advanta contests the lack of full disclosure and contends that the inability of witnesses to remember how the reduction in the quantum of the payment to IP Australia occurred does not bear on this question (ACS [85]-[88]). It is also contended that there is a broad public interest in favour of exercising the discretion (ACS [91]).
Finally, Advanta submits that, at the least, the information said to have been provided by IP Australia contributed to the error. The late fees owing were $2,400 not the $1,900 recorded in the file note (ACS [95]-[96]). In short, there is, it is argued, a clear causal link between advice provided by IP Australia and the actions of Ms Hayden and Ms Trinder, and the best evidence is to the effect that the total was reduced by $300 because the 2019 renewal fee was not yet due (ACS [103]-[104]). As contribution to the error is sufficient, a finding can be made under s 223(1) of the Act (ACS [106]).
There was some discussion arising in both Advanta’s closing submissions and Nufarm’s reply at the hearing about the significance of the date 25 January 2017. Simply put, Advanta contended that this was not a random date inserted by Ms Davidson into her file note, but was likely to reflect reference by IP Australia in her phone conversation to the payment that was made on that date. Nufarm contended that a more likely interpretation is that the date was top of mind for Ms Davidson, rather than being mentioned by IP Australia.
Some further reference to authorities is necessary before addressing the issues, and it is helpful to commence with Advanta due to the broad overlap with this matter. In his reasons, Deputy President Molloy sets out the arrangements by which an offshore agent had responsibility at the relevant times for paying fees. Ultimately, a combination of errors including changes of key personnel and missing and misaddressed correspondence led to a failure to pay. The direct cause of the failure to pay was found to be Advanta’s error or omission in failing to authorise payment, and this had several contributing causes [64].
In his reasons, Deputy President Molloy identifies several propositions from the authorities:
(a)the provision has a remedial purpose permitting the forgiving of error or mistake when appropriate (G S Technology Pty Ltd v Commissioner of Patents (2004) 63 IPR 9; [2004] FCA 1017) (G S Technology) [14];
(b)failure to take a step due to error or omission can be contrasted with a deliberate decision not to do the act or take the step (G S Technology) [15]; and
(c)the combination of an applicant intending to pay fees when due and the failure to do so is suggestive of the possibility of lapses of memory and accidental slips (G S Technology v Commissioner of Patents [2004] AATA 1391) [16] (in effect a reference to Kimberly-Clark).
On appeal in Nufarm, and in upholding the Tribunal’s decision, Downes J adopts in turn a number of propositions:
(a)the legislation is remedial as found by the High Court in Alphapharm Pty Ltd v H Lundbeck A/S [2014] HCA 42, which held that the predecessor provision had consistently been accepted as having been broadly protective and remedial in operation [78]-[80];
(b)the failure to do the relevant act is distinct from the error or omission that causes that failure (Aspen Pharma Pty Ltd v H Lundbeck A/S [2013] FCAFC 129 at [60]) [90] (and Kimberly-Clark at 580);
(c)it is sufficient that an error or omission made a contribution to the failure, or that there is some link between them, following Kimberly-Clark at 581 [91]; and
(d)limiting the circumstances in which an error or omissions may arise in a manner inconsistent with the Act should be avoided, citing Yates J in Aspen Pharma (at [71]), who cited in support Kimberly-Clark (at 694) where it was said that ‘the word “error” is not easily assigned a clear meaning restricted by reference to one or several particular categories of lawed mental function’, as this is likely to lead to fine and unrealistic distinctions [105].
I note, further, that in Kimberly-Clark, Jenkinson J observed that ‘error or omission’ should not be restricted to ‘that which is unintended or which has been produced by accident or inadvertence’ (at 579). His Honour also observed that while cause and effect is implied by the phrase ‘by reason of’ (which was then the causal test in the relevant provision), the relationship may be indirect (at 580).
The particular circumstances arising in Kimberly-Clark are also worth brief mention, given its prominence as an authority. The case involved two parties with competing claims to an invention based on prior registrations in two other countries, and the underlying issue was a desire to oppose registration in Australia. Further, the legislation then in operation contained a discretion to extend time to oppose registration, and a more general extension of time discretion, which was the power in issue. It appears that not only did His Honour consider the material raised in support of the exercise of the general discretion inadequate, it was insufficient in the context of the facts overall which required some insight into the ‘moral claim to the indulgence’ being sought (at 583-584).
It is relevant to take as the starting point the circumstances pertaining to the decisions in Advanta and Nufarm. These decisions express background to the facts before me and were summed up, in the evidence of Ms Davidson, as things ‘going awry’. It is important however to identify what the relevant failure is, in circumstances where efforts were clearly made to make certain payments in respect of the patent.
The Macpherson material and IP Australia correspondence set out above demonstrate that there was a shortfall of $400 in the payment made on 8 April 2019 in respect of the ninth anniversary (the sixth payment overall). This figure is not attributable to any single scheduled item, and without itemising the various fees, clearly enough to show the amounts owing (whether for the eighth or ninth anniversaries) are composites made up of several elements. It follows, nonetheless, that the relevant act in this matter is the failure to include $400 in the 8 April payment.
This amount is, of course, just one part of the $2,600 payment made by Ms Trinder. What is particularly problematic is that this figure varies from the figure of $2,900 calculated by Ms Davidson, and that this figure is itself erroneous, being short by $100 of the total amount due. Therefore, whether or not Ms Trinder herself made an identifiable error, which is not a finding that can be made on the evidence, the ninth payment would still have been inadequate.
It is for these reasons that both Nufarm and Advanta contend that the error or omission lies in the calculation of the payment due. Otherwise, the parties disagree about the degree of disclosure and the role, if any, of IP Australia.
I do not consider that Nufarm has made good its contention that the evidence put forward in respect of the actions or omissions by Advanta or its agents (meaning, specifically, Ms Trinder, Ms Davidson and Ms Hayden) is in some way inadequate. Both Ms Davidson and Ms Hayden presented as honest and credible witnesses who through their written and oral evidence were doing their best to clarify events that took place some time ago. I might add that given the significance of this matter and the repeated mistakes over time in managing the patent, there was considerable pressure on them to be as accurate as possible.
A good deal of attention was paid to Ms Davidson’s file note. This arises in no small part from its potential to irrevocably tie IP Australia into the chain of acts or omissions, with the further potential to trigger the operation of s 223(1) of the Act. I was not persuaded, however, by any of the challenges made in cross-examination to the way in which the note was prepared or its format generally. I accept that Ms Davidson has recorded what she was told in a phone conversation with a representative of IP Australia. The more important question is what to make of the note.
Characteristics of the second page of this note are the absence of a total amount payable and the inclusion, twice, of the date of 25 January. Further, while the specified amounts might be considered generally referable to the scheduled fees, there is no explicit cross-referencing. It is not clear how or why reference was made to 25 January. It might be inferred from the materials that this relates to either or both a document, or the payment made on that date in 2017, but the matter could not be definitely assessed without further evidence.
I consider that Ms Davidson’s evidence alone is not sufficient to form the basis of a finding that there was an identifiable error or omission on the part of her interlocutor at IP Australia. What we have is only her account of what she was told, and this is an important consideration when seeking to attribute particular weight to this kind of record. As I have noted, there are several particular characteristics of the notes concerning fees. What is lacking is any cogent evidence that these notes demonstrate an error or omission by her interlocutor.
As already noted, neither the total calculated by Ms Davidson nor the final payment made were correct. What I take from the evidence overall therefore is that there were multiple errors in the calculation of the payment made and/or the processing of the payment. The persons responsible for these actions were, individually or collectively, Ms Davidson, Ms Hayden, or Ms Trinder. Not only am I unable to make a definitive finding about an act or omission by IP Australia, the evidence supports a finding that in any event the acts or omissions of Advanta or its agents were causative of the relevant act. I would consider it challenging to determine, on the material before me, how any act or omission by IP Australia, if found, contributed to the relevant act.
For the reasons given above, I am unable to make a finding that an extension of time must be granted under s 223(1) of the Act.
The reasoning in the authorities demonstrate that having identified a causative act or omission, I must then determine whether or not to exercise the discretion in s 223(2) of the Act (Advanta [76]-[77]; Kimberly-Clark at 583). This follows from the fact that the provision grants the decision-maker a discretionary power.
Reference is made by the Tribunal in Advanta and in Advanta’s submissions here to Ferocem Pty Ltd v Commissioner of Patents [1994] FCA 981 (Ferocem), said to stand for the proposition that all the relevant circumstances should be taken into account when exercising the discretion. This appears to be because the specific regulation being applied in that case required the Commissioner to be ‘reasonably satisfied that a direction, an extension of time or the serving of further evidence is appropriate in all the circumstances’ (Ferocem [1]). The reasoning in Ferocem is also tempered by the acknowledgement that a broad discretion cannot be subject to particular requirements [8].
This is consistent with the decision of Chief Justice Bowen in Vangedal Nielsen and Others v Smith (Commissioner of Patents) and Another 1A IPR 731, [1980] FCA 163. His Honour observed that no express guidance is afforded in the provision in the legislation (which as in Kimberly-Clark dealt with opposition to registration) on the basis on which an extension of time is to be allowed (at 736). In which case, he held, the purpose and scope of the provision would help in determining relevant considerations (citing Water Conservation and Irrigation Commission (NSW) v Browning (1947) 74 CLR 492) (being guidance concerning the exercise of an unfettered discretion). Among factors identified are the public interest, the interests of the opponent to registration, and whether a proper case has been made out justifying an extension of time (at 736).
Finally, I note the observation in Alphapharm that s 223(2) of the Act is a remedial provision concerned only with extension of time [65].
In this context, I consider the matters raised by Advanta in support of the favourable exercise of the discretion to be relevant considerations. I also consider that they support a decision that the extension be granted. In particular, the evidence demonstrates that Advanta has always held the intention to maintain the registration. It is the original registering party, and there are significant commercial benefits at stake. There has also been adequate exposure of the circumstances behind the error or omission. The fact that evidence does not permit the identification of the precise moment an individual committed the operative error or omission does not undermine Advanta’s position in requesting an extension.
I consider it to be of particular relevance overall that this matter arises in circumstances where an error was made in the course of remedial action subsequent to a previous instance of error or omission. This only reinforces that the wider context reveals a patent holder acting in its own best interests, notwithstanding such errors or omissions, in pursuit of the benefits arising under the Act, and for which the Act exists.
DECISION
For the reasons given above, the Tribunal affirms the decision under review.

67. I certify that the preceding sixty-six (66) paragraphs are a true copy of the written reasons for the decision herein of General Member S. Fenwick

...............................[SGD].................................
Associate
Dated: 17 January 2025

Date of hearing: 7 and 8 October 2024

Counsel for the Applicant:

Solicitors for the Applicant:

Counsel for the Other Party:

Adrian Ryan SC

Phillips Ormonde Fitzpatrick

Ben Gardiner KC

Solicitors for the Other Party: Pearce IP