Pronova BioPharma Norge As v Naturalis S.A - [2016] APO 2

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Pronova BioPharma Norge AS v Naturalis S.A. [2016] APO 2

Patent Application: 2012364221

Title:Carrier Fluid Composition Comprising Fatty Acids Ethyl Esters and Process for Reducing the Concentration of Persistent Organic Pollutants in Fish Oil.

Patent Applicant:  Naturalis S.A.
Opponent:  Pronova BioPharma Norge AS
Delegate:  M. G. Kraefft
Decision Date:  13 January 2016
Hearing Date:  Written submissions completed on 25 November 2015

Catchwords: PATENTS – extension of time to file evidence in support – Regulation 5.9 – all reasonable efforts were made – actions were prompt and diligent at all times - exceptional circumstances not established – extension of time granted.

Representation: Patent applicant: Spruson & Ferguson.
Opponent:Ashurst Australia

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2012364221

Title:Carrier Fluid Composition Comprising Fatty Acids Ethyl Esters and Process for Reducing the Concentration of Persistent Organic Pollutants in Fish Oil.

Patent Applicant: Naturalis S.A.
Date of Decision: 13 January 2016
DECISION
The opponent has met the requirements of paragraph 5.9(2)(a) of the Patent Regulations. An extension of time is appropriate.
Extension of time granted to 19 November 2015 for the opponent to complete the filing of evidence in support. Evidence in support was completed on that date.
Under sub-regulation 5.8(2), the time period for the applicant to file evidence in answer commences from the date of this decision.
REASONS FOR DECISION

This matter concerns whether an extension of time should be allowed to complete evidence in support.
BACKGROUND
Naturalis S.A. (“the applicant”) filed patent application 2012364221 on 9 October 2012. The application was advertised as accepted on 22 January 2015. Pronova BioPharma Norge AS (“the opponent”) filed a notice of opposition to the grant of a patent on 22 April 2015.
The opponent was due to complete its evidence in support by 22 October 2015. Shortly before that date the opponent made an application for an extension of time of 4 weeks up to 19 November 2015. A delegate of the Commissioner of Patents considered the request and advised of an intention to grant the extension of time. The applicant objected to the grant of the extension of time and requested to be heard. The hearing was conducted by way of written submissions.
APPLICABLE LAW
The present matter is governed by Regulation 5.9 of the Patent Regulations, which follows from the commencement of the Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (No. 1) (“the Amendment Regulation”).
Sub-regulation 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 sub-regulation (5):
In this regulation:
“exceptional circumstances” includes the following:
(a) a circumstance beyond the control of a…

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 Pronova BioPharma Norge As v Naturalis S.A

Details

AGLC: Pronova BioPharma Norge As v Naturalis S.A [2016] APO 2
Case: [2016] APO 2
Decision Date: 13 January 2016

CaseChat Overview and Summary

The case involved a dispute between Pronova BioPharma Norge AS and Naturalis S.A. over a patent application for a carrier fluid composition comprising fatty acids ethyl esters and a process for reducing the concentration of persistent organic pollutants in fish oil. The opponent, Pronova BioPharma Norge AS, sought an extension of time to complete evidence in support, which was initially due by 22 October 2015. The applicant, Naturalis S.A., objected to the extension and requested a hearing, which was conducted via written submissions.

The legal issues that the court had to decide were whether the opponent had made all reasonable efforts to comply with the filing requirements, whether the opponent had acted promptly and diligently, and whether there were any exceptional circumstances that warranted an extension of time. The court considered Regulation 5.9 of the Patent Regulations, which governs the extension of time for filing evidence in support. The court also considered previous decisions such as TRED Design Pty Ltd v Julie-Anne McCarthy and Bradley McCarthy and Merial Limited v Novartis AG.

The court found that the opponent had made all reasonable efforts to comply with the filing requirements and had acted promptly and diligently. The court also found that there were no exceptional circumstances that warranted an extension of time. However, the court granted the extension of time as it was appropriate in the circumstances. The court granted the extension until 19 November 2015 for the opponent to complete the filing of evidence in support. The court also awarded costs to the applicant in accordance with Schedule 8.

In conclusion, the court granted the extension of time sought by the opponent as it was appropriate in the circumstances. The court found that the opponent had made all reasonable efforts to comply with the filing requirements and had acted promptly and diligently. The court also found that there were no exceptional circumstances that warranted an extension of time. The court awarded costs to the applicant in accordance with Schedule 8.

Orders