Nuseed Pty Ltd v Pacific Seeds Pty Ltd - [2015] APO 79

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Nuseed Pty Ltd v Pacific Seeds Pty Ltd [2015] APO 79

Patent Application: 2009304572

Title:Hybrid plant cell

Patent Applicant:                   Pacific Seeds Pty Ltd
Opponent:  Nuseed Pty Ltd
Delegate:  O L Haggar
Decision Date:  27 November 2015
Hearing Date:  Written submissions filed on 25 September 2015
Catchwords:  PATENTS – section 223(2) – application for an extension of time in which to file a notice of opposition – whether the failure to file a notice of opposition in time was because of a relevant error or omission – whether there was a causal link between the error and omission and the failure to file the notice of opposition in time – whether the discretion conferred by section 223(2) favoured the grant of the extension of time sought – extension of time granted – no award of costs in the circumstances

Representation: Patent applicant: Spruson & Ferguson
Opponent:Phillips Ormonde Fitzpatrick

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2009304572

Title:Hybrid plant cell

Patent Applicant: Pacific Seeds Pty Ltd
Date of Decision: 27 November 2015
DECISION
I grant Nuseed Pty Ltd an extension of time until 23 July 2015 in which to file a notice of opposition. I make no award of costs.
REASONS FOR DECISION
Background

Application 2009304572 was filed by Pacific Seeds Pty Ltd (Pacseeds) on 6 October 2009 under the provisions of the Patent Cooperation Treaty. The application was advertised as accepted on 9 April 2015 which meant that the period prescribed by regulation 5.4(1) for filing a notice of opposition to the grant of a patent expired on 9 July 2015.
A notice of opposition was filed by Michael Houlihan on the final day of the prescribed period (the first opposition). On 23 July 2015 Nuseed Pty Ltd (Nuseed) filed a notice of opposition together with an application under section 223 to extend the time for filing the notice of opposition by two weeks. The application for an extension of time was accompanied by a declaration made on the same date by Stuart John Bradshaw with Annexures A to C (the Bradshaw declaration). On 6 August 2015 Pacseeds recorded its objection to the grant of the extension sought. On 10 August 2015 Nuseed was afforded the opportunity to provide additional evidence to address a matter of concern raised in correspondence from a delegate of the Commissioner, “or any other issues that it considers relevant to the extension of time”. In response Nuseed filed declarations dated 21 August 2015 by each of Matthew Gallagher (the Gallagher declaration) and Raymond Lewis Evans with Exhibits RLE-1 and RLE-2 (the Evans declaration).
On 11 September 2015 the parties were informed by the Office that the matter was to be heard by written submissions. Pacseeds filed written submissions on 25 September 2015. Nuseed advised that it would not be making written submissions and instead intended to rely solely on the declarations that it had filed pursuant to its application under…

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: [2015] APO 79
Decision Date: 27 November 2015

CaseChat Overview and Summary

The case of Nuseed Pty Ltd v Pacific Seeds Pty Ltd involved a dispute over the grant of a patent for a hybrid plant cell. Nuseed Pty Ltd sought an extension of time to file a notice of opposition against the patent application lodged by Pacific Seeds Pty Ltd. The matter was heard by a Delegate of the Commissioner of Patents who was required to determine whether the failure to file a notice of opposition within the prescribed period was due to an error or omission, and if so, whether there was a causal link between the error or omission and the late filing. The Delegate found that there was a relevant error or omission on the part of Nuseed, in that its IP Manager had failed to instruct its patent attorney firm to file the notice of opposition within the prescribed period. The Delegate considered the discretion conferred by section 223(2) of the Act and found that it was appropriate to exercise the discretion in favour of Nuseed and grant the extension of time sought. The Delegate made no award of costs as each party had borne its own costs in the proceedings.

The key legal issues that the court had to decide in this case were whether there had been a relevant error or omission on the part of Nuseed or its patent attorney firm, whether there was a causal link between the error or omission and the failure to file the notice of opposition in time, and whether the discretion conferred by section 223(2) should be exercised in favour of Nuseed. The court found that there had been a relevant error or omission on the part of Nuseed's IP Manager in failing to instruct the patent attorney firm to file the notice of opposition within the prescribed period, and that this error or omission had caused the late filing. The court also found that the discretion conferred by section 223(2) should be exercised in favour of Nuseed and grant the extension of time sought. The court considered the interests of the parties and the public interest in making this decision, and ultimately found that allowing Nuseed the opportunity to mount an opposition was in the public interest and would not cause undue delay.

Orders