Nufarm Australia Limited v Corteva Agriscience LLC - [2024] APO 12

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Nufarm Australia Limited v Corteva Agriscience LLC [2024] APO 12

Patent Application:             2017261483
Title:Compounds derived from herbicidal carboxylic acids and tetraalkylammonium or (arylalkyl) trialkylammonium hydroxides
Patent Applicant:                Corteva Agriscience LLC
Opponent:Nufarm Australia Limited
Delegate:Felix White
Decision Date:  7 March 2024
Hearing Date:  Written submissions received on 7 and 21 November 2023
Catchwords:  PATENTS – Request under reg 5.17 for dismissal of opposition to amendments under s104(4) – do grounds and particulars raised in the Statement of Grounds and Particulars raise real issues of amendment allowability – opposition dismissed – no award of costs.
Representation:                   Patent attorney for the applicant: FPA Patent Attorneys
Patent attorney for the opponent: Arcadia Intellectual Property

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE

Patent Application:             2017261483
Title:Compounds derived from herbicidal carboxylic acids and tetraalkylammonium or (arylalkyl) trialkylammonium hydroxides
Patent Applicant:                Corteva Agriscience LLC
Date of Decision:                7 March 2024
DECISION

The opposition to the amendments is dismissed. I make no award of costs.

REASONS FOR DECISION

Background

This decision relates to a request for dismissal of an opposition to amendments under s104(4) of the Patents Act 1990.[1]
[1] “The Act” – all references to legislation are either to this Act or the corresponding Patents Regulations 1991
Patent application 2017261483 (“the application”) in the name of Corteva Agriscience LLC (“Corteva” or “the Applicant”) was accepted on 5 July 2019. The accepted claims are reproduced in Annex A.
This application was subsequently opposed by Nufarm Australia Limited (“Nufarm” or “the Opponent”) under s59 and a decision issued on 6 July 2022 partially upholding the opposition and giving the applicant an opportunity to amend the application to remove the grounds of refusal.
Corteva filed a first request for leave to amend the application under s104 on 1 September 2022. After leave was granted by the Commissioner, Nufarm opposed allowance of the amendment. Corteva requested that opposition be dismissed but subsequently withdrew the first amendment and filed a second statement of proposed amendments on 23 March 2023. This is the set of amendments that is currently under consideration, and is reproduced in Annex B.
Leave to amend was granted by the Commissioner on 27 April 2023 and advertised on 11 May 2023. Nufarm duly filed another notice of opposition on 11 July 2023 as required by reg 5.10(1). A Statement of Grounds and Particulars (“SGP”) was duly filed on 10 August 2023 as required by reg 5.11(1).
Corteva, within the period prescribed by reg 5.17, requested that this second opposition be dismissed.
After some correspondence between the parties and the delegate (who had formed the initial view that the opposition should be dismissed) the dismissal was set for hearing by written submissions which were conducted concurrently.
Both parties’ submissions in chief were received on 7 November 2023 and submissions in answer were received on 21 November 2023. I then granted the Applicant an additional period of two months to address issues which were…

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.

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Details

Case: [2024] APO 12
Decision Date: 7 March 2024

CaseChat Overview and Summary

Nufarm Australia Limited opposed Corteva Agriscience LLC’s patent application 2017261483, which concerns compounds derived from herbicidal carboxylic acids and tetraalkylammonium or (arylalkyl) trialkylammonium hydroxides. The opposition was partially upheld by the Commissioner, granting the applicant an opportunity to amend the application. Corteva filed a request for leave to amend the application under s104 of the Patents Act 1990, which was granted. Nufarm then opposed the allowance of the amendment, and Corteva requested that the opposition be dismissed. The delegate considered whether the grounds and particulars raised in the Statement of Grounds and Particulars (SGP) raised real issues of amendment allowability. The delegate found that the opposition was not supported by the SGP and dismissed the opposition to the amendments, making no award of costs.

The delegate considered the legal principles governing the dismissal of oppositions to amendments under s104(4) and reg 5.17 of the Patents Regulations 1991. The standard for dismissal is whether the opposition has no reasonable prospect of success, which has been formulated as whether there is a real, rather than a fanciful, issue to be decided. The delegate also considered the legal tests for amendment allowability under s102 of the Patents Act 1990, which require a comparison of the text of the specification before and after amendment. The delegate noted that any issue which was preexisting in the description or claims prior to amendment could not form the basis for any findings under s102.

The delegate considered the grounds of opposition raised in the SGP, which were under s102(1) (the amended specification teaches the reader something new), s102(2)(b) (the amended specification does not disclose the invention clearly or completely enough) and s102(2)(b) (the amended claims are unclear). The delegate found that the grounds only addressed amended claims 2, 3 and 7, which were said by the applicant to reflect the rewriting of accepted claim 9 into independent form. The delegate found that the text of the claims as amended diverged from the text before amendment, but was not satisfied that the opponent had established a real case for proceeding to the evidentiary stage based on the particulars in the SGP. The delegate dismissed the opposition in toto. The delegate also noted that it was open to the applicant to file further amendments at any time through the usual process. The delegate considered the issue of costs and found it appropriate for the parties to bear their own costs.

Orders