QIP Nominees Pty Ltd v CureVac AG
[2022] APO 51
•13 July 2022
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
QIP Nominees Pty Ltd v CureVac AG [2022] APO 51
Patent Application: 2018241156
Title:Combination of vaccination and inhibition of the PD-1 pathway
Patent Applicant: CureVac AG
Prospective opponent: QIP Nominees Pty Ltd
Delegate:Dr S. J. Smith
Decision Date: 13 July 2022
Hearing Date: 22 June 2021 by videoconference
Catchwords: PATENTS – section 223 – extension of time to file notice of opposition – discretionary considerations – lack of full and frank disclosure – extension of time refused – costs awarded
Representation: Counsel for the prospective opponent: Ben Fitzpatrick
Patent attorney for the prospective opponent: Mathew Lucas & Kian Hoe Khoo of Davies Collison Cave
Patent attorney for the patent applicant: Linda Govenlock & Ida Widnersson of Allens Patent & Trade Mark Attorneys
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2018241156
Title:Combination of vaccination and inhibition of the PD-1 pathway
Patent Applicant: CureVac AG
Date of Decision: 13 July 2022
DECISION
I refuse this request for an extension of time.
I award costs according to Schedule 8 against QIP Nominees.
REASONS FOR DECISION
Background
Patent application 2018241156 (the application) in the name of CureVac AG (CureVac) was filed on 5 October 2018 as a divisional application of application 2014220957 (the parent application). The parent application was a national phase application of international application PCT/EP2014/000461 claiming priority from PCT/EP2013/000526 which was filed on 22 February 2013.
Examination was requested on 22 November 2018 and acceptance advertised on 21 May 2020. Pursuant to regulation 5.4(1) the time for filing a notice of opposition to grant of a patent expired 3 months later on 21 August 2020.
On 27 August 2020 QIP Nominees Pty Ltd (QIP Nominees) filed a notice of opposition to grant of a standard patent together with an application for an extension of time under section 223(2)(a) in which to file the notice. Declarations in support of the application for an extension of time were filed on 8 September 2020, 9 September 2020 and, following a request by a delegate of the Commissioner for further information, 23 November 2020.
On 2 December 2020 the parties were advised of the Commissioner’s intention to grant the extension of time, and pursuant to the requirements of regulation 22.22, CureVac was provided with an opportunity to be heard on the extension of time request.
CureVac objected to the extension of time being allowed on 7 December 2020 and requested to be heard.
Alongside the processing of the application for an extension of time, QIP Nominees filed a statement of grounds and particulars on 23 November 2020 and evidence in support on 23 February 2021. Pursuant to regulation 5.8(2)(b), the period to file evidence in answer does not begin until the Commissioner notifies the applicant that all the evidence in support has been filed. A delegate of the Commissioner has directed that such notification will not be given until two weeks after QIP Nominee’s application for an extension of time has been determined and allowed.
The law
Section 223 of the Patents Act 1990 relevantly provides:
(2) Where, because of:
(a) an error or omission by the person concerned or by his or her agent or attorney; or
(b) …
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.
The meaning of the term “relevant act” is defined by section 223(11) and regulation 22.11(4), and encompasses the act of filing of a notice of opposition to the grant of a patent under regulation 5.4. Section 59 provides that the grant of a patent may be opposed by “[t]he Minister or any other person” – that is, there is no standing requirement – and regulation 5.4 provides that a notice of opposition may be filed within 3 months from the acceptance is advertised.
The following principles for applying the provisions of section 223 are derived from decided cases:
(i) the provision to extend time is beneficial in nature and should be applied beneficially;[1]
(ii) while the applicant has the burden of placing before the tribunal the circumstances it claims will justify the grant of an extension of time, that does not amount to a burden of proof and it is not appropriate that it be so described;[2]
(iii) it must be shown that an error or omission had contributed to cause the failure to perform the relevant act, that is, there must be a causal connection between the error or omission and the relevant act that is required to be done within the specified time;[3]
(iv) the applicants for an extension of time must demonstrate that they had an intention to do the relevant act within the time prescribed, and that an error or omission on their, or their agent’s, behalf reasonably could be said to have frustrated that intention;[4]
(v) in exceptional circumstances the relevant error may preclude the formation of a specific intention, and in such cases the required causal connection will be present if the error contributed to the failure to form the intention to perform the relevant act;[5]
(vi) the phrase “error or omission” has a broad scope and encompasses accidental slips, inadvertences and errors caused by faulty reflection,[6] unexpected failures to exercise due diligence, flaws in mental function in carrying out an intention,[7] and breakdowns in procedures for effecting an intention;[8]
(vii) the failure to perform the relevant act cannot itself be the “error or omission” by which the failure occurred[9] and an error or omission does not include a deliberate policy or decision that leads to the failure to perform the relevant act,[10] a change of mind with the benefit of hindsight,[11] or misapprehension or ignorance of the law by itself;[12] and
(viii) an applicant for an extension of time must provide a full and frank disclosure of the circumstances surrounding the failure to do the relevant act:
“to make out the ‘proper case … justifying an extension’ … an applicant would … have to go beyond a disclosure of the processes by which an agent’s errors came to be committed and would have to expose frankly, inter alia, all the conduct, knowledge, beliefs and mental processes of the applicant … relevant to an understanding of the way the failure to do the act or take the step occurred, or relevant to an evaluation of the reasonableness of that conduct.”[13]
[1] ReSanyo Electric Co Ltd and Commissioner of Patents [1996] AATA 832; (1996) 36 IPR 470 at 479 [16] (‘Sanyo’).
[2] Ibid.
[3] Kimberly-Clark Ltd vCommissioner of Patents (No 3) [1988] FCA 421; (1988) 13 IPR 569 at 579 [9], 582 [15] (‘Kimberly-Clark’); Re Lazer Safe Pty Ltd and Commissioner of Patents [2001] AATA 967 at [11].
[4] Kimberly-Clark at 579 [9]; Re Lazer Safe Pty Ltd and Commissioner of Patents [2001] AATA 967 at [11].
[5] Re Apotex Pty Limited and Commissioner of Patents [2008] AATA 226 at [21].
[6] Kimberly-Clark at 579 [9].
[7] Total Peripherals Pty Ltd v Commissioner of Patents [1998] AATA 784 at [14].
[8] Oz Technology, Inc v Boral Energy Ltd [1999] APO 8.
[9] Kimberly-Clark at 580 [11].
[10] Re Weir Pumps Ltd and Commissioner of Patents and Stork Pompen BV [1988] AATA 331; (1988) 13 IPR 163 at 166-167 [9] (‘Weir Pumps’).
[11] Amicus Therapeutics, Inc. [2020] APO 4 at [34].
[12] Kmart Australia Limited [2011] ADO 2 at [25].
[13] Kimberly-Clark at 583-584 [17].
While, as noted above, the applicant for extension does not bear a burden of proof, I agree with the delegate in Generic Partners Pty Ltd v Neurim Pharmaceuticals Ltd. that I must be satisfied on the balance of probabilities that a proper case for extension has been made out.[14]
[14] [2022] APO 2 at [28], [78].
The evidence
The evidence in this matter consists of two declarations by Dr Mathew Lucas, a patent attorney of Davies Collison Cave (DCC), dated 9 September 2020 (Lucas 1) and 23 November 2020 (Lucas 2) and a declaration by Dr Friederike Stolzenburg, a patent attorney of Vossius & Partner (Vossius, a firm of European patent attorneys), dated 7 September 2020 (Stolzenburg).
Dr Lucas explained in his declarations that QIP Nominees, like DCC, is owned by Qantm Intellectual Property Limited and is used to oppose patent applications for DCC clients.[15] He also described a program recently established by DCC to monitor Australian patents/applications in which the corresponding European application is being opposed.[16] This program was initially derived though discussions with European associates to better serve mutual clients, including Vossius and the client responsible for the present opposition (the interested party).[17] At the date of Dr Lucas’ declaration, the program involved manually reviewing EPO opposition data and correlating this with IP Australia data and/or DCC client information. The process was in the early stages of being automated, but this had not yet occurred due to the COVID-19 pandemic.[18]
[15] Lucas 1 at [4].
[16] Lucas 1 at [5]-[6].
[17] Lucas 2 at [4].
[18] Lucas 1 at [6]-[7].
Dr Lucas explained that during a manual review on the weekend of 22-23 August 2020 h noted that EP 2958588 to CureVac was “under opposition by Vossius & Partner”,[19] that the corresponding Australian application had been accepted, and that the deadline for filing a notice of opposition had expired on 21 August 2020.[20] On 24 August 2020 Dr Lucas advised Vossius of the details concerning the Australian application and the possibility of filing an opposition on behalf of the interested party responsible for the European opposition. On 27 August 2020 he was instructed to file the notice of opposition and corresponding request for an extension of time.[21]
[19] I note that Vossius represents Strawman Limited in the European opposition proceeding.
[20] Lucas 1 at [8]-[9].
[21] Lucas 1 at [10]-[11].
Dr Lucas declared that:
“On 7 September 2020 during a telephone call with counsel of the interested party I was advised that it was always their intention to oppose the Australian application but they had mistakenly believed the Australian application was being monitored by another party.”[22]
[22] Lucas 1 at [12].
This is elaborated on in a partially redacted email from the interested party to Dr Lucas dated 20 November 2020, which reads:
“As you are aware, we initiated opposition proceedings against two European patents in the name of CureVac AG (EP2958588 and EP3292873) generally directed to methods of treatment using a combination of an RNA vaccine and an anti-PD-1 or an anti-PDL-1 antibody. As we discussed on our telephone call on 7 September, 2020, it was always our intention to also initiate similar opposition proceedings against any equivalent patent applications that may grant in commercially relevant jurisdictions such as Australia.
To this end, I was under the impression that the relevant equivalent patent applications, including AU2018241156, were actively being monitor [sic] by our collaborator. This impression was based on past experience between the parties. However, I realized that my impression or expectation was not correct when I received an email on August 24, 2020 from … our counsel responsible for the European Oppositions noted above, informing me that AU2018241156 was near grant.”[23]
[23] Exhibit MAL-1 to Lucas 2.
The specific responsibilities of the author of the email are not identified, but given the content of the email and Dr Lucas’ reference to “counsel of the interested party”, I assume that they are a person with at least some responsibility for decision making concerning global patent oppositions within the interested party.
Dr Stolzenburg declared that Vossius was engaged by the interested party to file oppositions to European patents EP 2958588 and EP 33292873 to CureVac, as the interested party wishes to remain anonymous in these proceedings.[24] He confirmed that Vossius received advice from DCC regarding the acceptance of this application on 24 August 2020, and stated that he was instructed by the interested party to advise DCC to initiate the opposition process in Australia anonymously.[25] Dr Stolzenburg also confirmed that neither Vossius nor the interested party had been monitoring the progress of the application, but stated that “[h]ad we been informed earlier of the acceptance of this application, steps would have been taken to file the Notice of Opposition before the expiration of the opposition deadline.”[26]
[24] Stolzenburg at [4].
[25] Stolzenburg at [5]-[6].
[26] Stolzenburg at [7].
Error or omission
CureVac’s Submissions
CureVac submitted that QIP Nominees has not (i) established to the requisite standard that an actual intention to oppose the application existed before the opposition deadline or (ii) credibly established through evidence an error or omission by the person concerned or their agent or attorney:
“no detail or information about the relationship between the Interested Party and the unnamed ‘collaborator’ is provided. Nor is any detail or explanation provided as to how or why the Interested Party had formulated (or was even entitled to formulate) the ‘belief’ or ‘impression’ or ‘expectation’ that its collaborator was responsible for, and indeed undertaking, the task of monitoring the status of the Patent Application. Instead, the Interested Party blandly indicates that their ‘impression’ was based on ‘past experiences between [them]’ without further explanation. …
The complete absence of any corroborating evidence is significant. It is of no consequence that the Interested Party prefers to remain anonymous: the Interested Party is seeking the indulgence of the Commissioner and it is incumbent upon them to place all relevant information before the Commissioner as part of a full and frank disclosure of all the circumstances (Kimberly-Clark at 698-699). To the extent necessary or appropriate, evidence could have been submitted in redacted form, or under a confidentiality order.”[27]
[27] CureVac’s written submissions at [32]-[33].
CureVac also emphasised that there is no corroborating evidence that the interested party had an intention to oppose the application before the opposition deadline and submitted that:
“The Hearing Officer should not accept the Interested Party’s claim to have formed the requisite intention in circumstances where that claim is not supported by any evidence (although such evidence – if it existed – would have been available to the Interested Party), and has not been made in a declaration by the Interested Party themselves, despite being given several opportunities to provide such evidence.”[28]
[28] CureVac’s written submissions at [43].
CureVac clarified in this regard that there was no doubt cast on the veracity of Dr Lucas’ and Dr Stolzenburg’s evidence with respect to what they had been told by the interested party, but that there was nothing to make good the presence of an intention on the part of the interested party before the relevant date to a standard of balance of probabilities. In this regard CureVac colourfully submitted:
“the unsubstantiated statements of ‘intent’ that have been put before the Commissioner in this case are the metaphorical equivalent of saying ‘the dog ate my homework’, but without even producing a snapshot of the family pet.”[29]
[29] CureVac’s written submissions at [48].
CureVac also submitted that the brevity of the extension sought does not obviate the need to establish the existence of an error through appropriate evidence, and pointed to several issues going to the evidentiary value of the email from the interested party in this regard. In particular, CureVac noted that it is not in an email chain and in particular is not the reply to the original email from Dr Stolzenburg advising of the acceptance of the application, but instead was sent on 20 November 2020, shortly before the period provided by the delegate for additional information in support of the extension of time expired. CureVac suggested that better evidence, which would have been in the possession of the interested party, might have included the original reply email, emails between the collaborator and the interested party, evidence of contact with the collaborator, an explanation of the past experience with the collaborator, or evidence from the collaborator. As it stands CureVac submitted that there is no information about what led to the interested party’s erroneous belief that the collaborator was monitoring the application, and no basis to assess whether there has been a causative error or omission. CureVac highlighted that a party seeking an extension of time must show a causative error or omission, and submitted that a mere statement that a party had an intention to oppose an application alone is not sufficient to enliven the provisions of section 223, as this would render the requirement for an error or omission otiose.
QIP Nominees’ Submissions
QIP Nominees submitted that a causal error has been identified: the interested party’s mistaken belief regarding the collaborator’s actions. In this regard, it was said that the email correspondence of 20 November 2020 and reproduced above evidences that (a) there was an intention to “initiate similar oppositions proceedings against any equivalent patent application that may grant in commercial relevant jurisdictions such as Australia” and (b) the error occurred because there was a mistaken belief the application was being actively monitored by a collaborator, and that belief arose because of past experience between the interested party and the collaborator.[30] At the hearing QIP Nominees emphasised that the sworn evidence from practitioners corroborated by an email from the interested party, which is uncontradicted by any other evidence, should be accepted, and clearly indicates the existence of a relevant intention to oppose the application. In these circumstances, QIP Nominees submitted it is not open to me to find that there is no evidence of a causative error or omission, and that the remaining consideration is whether the discretion should be exercised. As such, QIP Nominees’ submissions focused largely on the discretionary aspects of section 223, rather than the requirement for an error to enliven the provision.
[30] QIP Nominees’ written submissions at [20]-[21].
With respect to CureVac’s criticisms of the evidence filed, QIP Nominees responded that even if there is a deficiency in the evidence, that deficiency should be weighed up in considering discretionary factors, not imported into the anterior question of whether there is actually an error.
In addition, QIP Nominees submitted that it would be an error of law (that is, taking into account an irrelevant consideration) to conclude it is necessary for the identity of the interested party to be disclosed in circumstances where there is no requirement under the Act for standing; oppositions by “straw persons” are permitted.
I note that it was accepted by QIP Nominees that there was no error in DCC’s program to monitor Australian applications. The evidence as to this program simply forms part of the explanation of the circumstances surrounding the late filing of the notice of opposition. For completeness, I also observe that QIP Nominees also did not suggest that there had been any error or omission by the collaborator.
Consideration
It was common ground between both parties that the named opponent, QIP Nominees, is not responsible for any error or omission leading to the failure to file the notice of opposition, and that the relevant person concerned is the interested party.
QIP Nominees has clearly articulated the asserted error as the interested party’s mistaken belief (or, as it was put in the email of 20 November 2020, “impression or expectation”) regarding the collaborator’s responsibilities, that error being causal because if the interested party had been informed of the acceptance of the application earlier it would have filed a notice of opposition in time. The question is whether the evidence is sufficient to support that proposition.
There is no declaratory evidence from a person with direct knowledge of the purported error(i.e. the relevant person within the interested party), which is generally the “best” evidence in matters of this sort. I consider it highly likely that, as CureVac has pointed out, “better” evidence could have been adduced, for example, declaratory evidence from the interested party, emails between the interested party and the collaborator, or evidence of the nature of the “past experience” between the third party and the collaborator that gave rise to the interested party’s expectations. However, that better evidence might have been provided is not an answer to whether the evidence that has been filed is sufficient, and I note that the Commissioner is not bound by the rules of evidence applicable in a court proceeding and may act on any material that is logically probative of the issues at hand.[31]
[31] See, e.g. T.A. Miller Ltd. v Minister for Housing and Local Government (1968) 1 WLR 992; [1969] RPC 91.
There is no evidence put against the evidence filed by QIP Nominees, and I note that the presentation of indirect evidence in this case is due to the interested party’s desire to remain anonymous in this proceeding, rather than an inexplicable unwillingness to provide direct evidence. It would appear, however, that a desire by a party behind an opposition to remain anonymous may well place a prospective opponent in the unenviable position of being unable to readily present the best possible case for an extension of time.
The evidence from both attorneys is, as discussed above, in declaratory form and supported by the redacted email originating from the interested party. The promptness with which the application for an extension of time and notice of opposition were filed is consistent with the evidence that had the interested party been aware of the acceptance of the application earlier, a notice of opposition would have been timely filed. That is not to say that prompt action after a missed deadline is in itself evidence of an error, but, in this case, it lends credibility to the evidence.
Consistent with this, while I accept that parties may well adopt different strategies in different jurisdictions, it is inherently plausible that a party who opposed an application in Europe would wish to do so in Australia as well (indeed this would seem to be the rationale for the DCC initiative that led to the identification of the present application). I will say here that I do not view this as inconsistent with the comments of the Deputy Commissioner in Mount Sinai School of Medicine referred to by CureVac that “the obtaining of equivalent rights elsewhere may be suggestive that a decision to seek extension might have been made but there may also be reasons why the decision would have been different” and
“[w]hile the obtaining of extensions in the US and Europe may possibly be an indicator of a general intention, the ability … to act in those jurisdictions but not in the case of Australia may also suggest a decision was made not to proceed here or at least there was an indifference that by default amounted to the same thing.” [32]
As noted by QIP Nominees, the situation being considered by the Deputy Commissioner was quite different to that at hand, with the patentee seeking an extension of close to ten years to apply for an extension of patent term and a delay of four months between the patentee becoming aware of the missed deadline and applying for an extension of time. In those circumstances he was “left with significant unanswered doubt that [the patentee] in the relevant period intended to obtain a term extension in Australia and failed to do so due to an error or omission…”.[33] In the present context of a short extension and minimal delay before applying for an extension, I consider the interested party’s actions in Europe, while not determinative, tend to support the evidence filed.
[32] [2013] APO 52 at [30].
[33] Ibid at [33].
While the asserted reliance on the collaborator is not satisfactorily explained, the interested party has provided an explanation, albeit not in declaratory form or fully elaborated upon, indicating that they had expected to be alerted to the acceptance of the application by the collaborator. In view of this, it might reasonably be inferred that had the interested party been aware that the collaborator was not monitoring the application, they would have requested that the collaborator monitor the application or made alternative arrangements such that but for the identified misunderstanding, the notice of opposition would have been filed in time.
I will say here that I do not consider the fact that the evidence as to any intention to oppose the application all post-dates the deadline to be fatal to the application for extension. Indeed, it seems to me entirely plausible for a concluded intent to oppose an application to not be formed until a party is faced with the form of the application as accepted and the deadline by which an opposition must be filed – that is, the absence of advice concerning the acceptance of an application can prevent formation of a specific intention.[34] Certainly, however, it would be preferable for a party in the present circumstances to put some material before the Commissioner establishing an interest in at least monitoring an (Australian) application that predates the opposition deadline.
[34] See, e.g. Re Apotex Pty Limited and Commissioner of Patents [2008] AATA 226 at [20]-[21].
In some circumstances hearsay evidence from an attorney will be insufficient to satisfy the Commissioner of a fact (for example, in iCeutica Pty Ltd[35] the Deputy Commissioner was not persuaded by a statement from an Australian attorney that “[w]e are instructed that [the pharmaceutical substance defined by the claims] is contained or comprised in [the listed goods]” in the context of an application for an extension of term). However, while finely balanced, I consider that the evidence in this case is sufficient, for the reasons set out above, to establish that it is more likely than not that had the interested party been aware of the acceptance of the application prior to the expiration of the opposition period, a notice of opposition would have been timely filed, and I am prepared to accept that it is more likely than not that an error prevented that from happening. That acceptance is, however, qualified by my discussion of whether there is a full and frank disclosure of the relevant circumstances below – while the existence of an error is an anterior consideration to the exercise of discretion, a full and frank disclosure is necessary to a proper understanding of the nature and existence of an error.
[35] [2018] APO 78 at [43]-[46].
Discretionary considerations
The power provided by section 223(2) is discretionary – “the Commissioner may … extend the time for doing the act”. That is, even when an error enlivening the section 223 provision is identified, it is necessary to consider whether the Commissioner’s discretion should be exercised. Relevant factors to be considered were summarised in Vangedal-Nielsen v Smith (Commissioner of Patents)[36] as follows:
(i) whether the Commissioner is satisfied that a proper case has been made out justifying an extension;
(ii) whether a serious opposition has been foreshadowed;
(iii) whether there has been undue delay in seeking an extension of time;
(iv) the interests of the parties in refusing or granting an extension;
(v) the public interest.
[36] [1980] FCA 163; 1A IPR 731 at 736.
Both parties made submissions directed to these factors.
Has a proper case been made out?
As I will discuss further below, I do not consider that a proper case as described in Kimberly-Clark – the provision of a “full and frank” disclosure – has been made out. That is, as noted previously, what is required is “beyond a disclosure of how the processes by which an agent’s error came to be committed”, and rather a frank exposure of “all the conduct, knowledge, beliefs and mental processes of the applicant” relevant to understanding how the failure to do the relevant act came about or evaluating the reasonableness of that conduct. Jenkinson J elaborated:
“Whether or not the error or omission of the agent which enlivened the power occurred without moral fault on his part, the applicant’s claim to the exercise of the power cannot be judged without the means of evaluating the applicant’s moral claim to an indulgence which will, to some extent at least, work a prejudice to the efficient operation of … ‘the system’, even if no prejudice to the applicant for a patent.”[37]
While Jenkinson J’s references are to the errors or omissions of an agent, I understand them to apply equally to an applicant for extension, and by extension to the interested party in the present matter.
[37] Kimberly-Clark at 584 [17].
As made clear in GS Technology Pty Ltd v Commissioner of Patents, this is not because moral fault precludes the granting of an extension. It is, however, necessary to have a means to evaluate the applicant for extension’s moral claim to an indulgence; in the absence of a full and frank disclosure such a means will be lacking.[38]
[38] [2004] FCA 1017; 63 IPR 9 at 26 [82].
While submitting that there has been a sufficient disclosure of the circumstances, QIP Nominees accepted that it could always be said that further information could be provided, but submitted that even if I were to form the view that more detail could have been added, that still was only one matter to be weighed in the balance with the other discretionary considerations, and in particular the public interest.
In CureVac’s submission a full and frank disclosure has not been provided and this is the key discretionary factor in this case, weighing heavily against allowing the extension.
Having considered the evidence I agree with CureVac to the extent that I am left with many questions as to the “conduct, knowledge, beliefs and mental processes” of the interested party which are relevant to an understanding of how the failure to file the notice of opposition came about and to evaluating the reasonableness of the conduct. In particular, the “past experience” with the collaborator upon which the interested party’s mistaken impression is based is entirely opaque:
· Had the collaborator alerted the interested party to the status of the corresponding European patents or other applications in the present patent family, or other patent families?
· Had the collaborator ever alerted the interested party to the acceptance of Australian applications in the past?
· Had the collaborator and the interested party discussed jurisdictions of interest, and was the collaborator monitoring any jurisdictions in relation to the present patent family?
· What is the nature of the relationship between the collaborator and the interested party – do they routinely collaborate in relation to patent matters?
· Had there been any communication between the collaborator and the interested party in relation to the present patent family prior to August 2020? For example, was the collaborator privy to the decision to oppose the corresponding European patents?
Relatedly, it is unclear how the interested party came to be aware of the grant of the corresponding European patents, and while it may be that this would shed no light on how the interested party came to have the relevant misunderstanding, that it is entirely unclear whether it would or would not assist in understanding serves to highlight the dearth of information that has been provided.
There is also a lack of evidence as to the decision making within the interested party – was there a policy with respect to opposing applications in multiple jurisdictions, or with respect to which jurisdictions were of interest, or with respect to how such matters were to be monitored?
In view of the absence of sufficient evidence to evaluate the reasonableness of the conduct that led to the requirement for an extension of time as indicated above, I conclude that a full and frank disclosure has not been provided. For completeness, I will say that I believe it would have been possible for a more fulsome disclosure of the relevant circumstances to have been provided without the interested party divulging their, or their collaborator’s, identity, and my conclusion as to the fullness and frankness of the disclosure is not predicated on the decision of the interested party to preserve their anonymity.
I agree with CureVac that this factor weighs against allowing the extension, and this is a significant consideration. It cannot, however, be the sole determinant of whether an extension should be granted.
Has a serious opposition been foreshadowed?
I understand this consideration in the same way as I took it to be broadly characterised by QIP Nominees at the hearing, that is, as distinguishing between an opposition which is deployed for a tactical reason or without a considered basis and an opposition that is a serious challenge to the validity of the claims. As such, I am not persuaded by CureVac’s submission that this consideration does not weigh in favour of granting the extension on the basis that a serious opposition was not foreshadowed before the deadline for filing a notice of opposition.
QIP Nominees has complied with the due dates for filing the statement of grounds and particulars and the evidence in support. The interested person has opposed corresponding applications in Europe. QIP Nominees submitted that a serious opposition is foreshadowed, and I have no reason to doubt that this is the case.
Has there been undue delay in seeking the extension of time?
On 24 August 2020 Dr Lucas advised Vossius of the acceptance of the Australian application and the possibility of filing an opposition. Instructions to file a notice of opposition and extension of time were given on 27 August 2020. Supporting declarations in relation to the extension of time was filed shortly thereafter. Further information was furnished within the time limit provided by the delegate of the Commissioner. There has been no undue delay in seeking (or prosecuting) the extension of time.
The interests of the parties
QIP Nominees’ interests lie in the extension being granted and the opposition being allowed to proceed in circumstances where it has already taken significant steps in that regard. While QIP Nominees suggested that no prejudice to CureVac would arise by the granting of the extension of time, noting that there will be no delay in the progress of the opposition proceeding since the evidence in support has already been filed, and that scrutiny of the application cannot be characterised as legitimate prejudice, I consider that CureVac’s interests lie in the application proceeding to grant without a potentially lengthy opposition process. As such, I consider the interests of the parties to be largely offsetting.
The public interest
The public interest lies in the efficient and orderly processing of matters before the Patent Office, and in ensuring invalid patents are not granted because insufficient opportunity has been afforded to oppose the grant.
Granting the extension will mean that the opposition will proceed, protecting the public interest in the granting of robust patents. In QIP Nominees’ submission the public interest in allowing the validity of the application to be tested via a pre-grant opposition process is the most critical of the discretionary considerations.
Refusing to grant the extension will deprive QIP Nominees of the opportunity to mount a substantive opposition to the grant of a patent in respect of application 2018241156. However, it is relevant here to consider more broadly the consequence of refusing to grant the extension, which is, in itself, a relevant consideration.[39] Notably, there are avenues available for challenging the validity of a patent post-grant, namely re-examination and revocation proceedings. QIP Nominees submitted, however, that these remedies are not a replacement for the pre-grant opposition process, given that re-examination is an ex parte proceeding which affords less stringent scrutiny than an opposition process and revocation is more costly and time-consuming than a relatively efficient and inexpensive pre-grant opposition. While I accept that pre-grant opposition serves a function separate and distinct from re-examination and revocation, to the extent that QIP Nominees suggests that this means the availability of alternate remedies does not bear on the exercise of discretion, I do not agree. There are means, albeit non-preferred by the prospective opponent, to challenge the validity of the patent that remain available if the extension is not granted. This is relevant to the protection of the public interest, and to the overall context in which the discretion is exercised (as compared, for example, with a situation in which the consequence of refusing to grant an extension of time is irrevocable loss of patent rights[40]).
[39] See, e.g., Sanyo at 479 [16], quoting Davies J in Chalk v Commissioner for Superannuation (1994) 50 FCR 150.
[40] I note that in Sanyo at 479 [16] the Deputy President observed that Jenkinson J’s comments in Kimberly-Clark, made in the context of a request for an extension of time to file a notice of opposition, were not relevant in the context of a request for an extension of time to pay a renewal fee. See also Weir Pumps at [8].
While I consider the public interest to favour granting the extension of time in order for the validity of the application to be interrogated prior to grant, this is at least partly offset to my mind by the Commissioner’s usual practice in circumstances such as these, of assessing the statement of grounds and particulars and evidence that has been filed with the Commissioner with a view to possibly undertaking a re-examination of the application of her own volition prior to grant.
Conclusion on discretion
Clearly there are discretionary factors weighing in both directions. The existence of a serious opposition in train, the public interest and QIP Nominees’ alacrity in seeking the extension of time weigh in favour of granting the extension, the interests of the parties are balanced, and the lack of a full and frank disclosure weighs against it. However, as the delegate said in Generic Partners Pty Ltd v Neurim Pharmaceuticals Ltd., “[i]t is not… a matter of simply calculating how many considerations necessarily fall one way or the other, but understanding the material import of each consideration to whether the discretion should be exercised or not.”[41]
[41] [2022] APO 2 at [168].
After weighing up the discretionary considerations, and mindful of the context in which this request arises, on balance I consider, to echo Jenkinson J, that “what may just suffice to enliven the power cannot in this case justify its exercise”.[42] The degree to which the disclosure of the relevant circumstances that has been provided is not full or frank is, as discussed previously, significant, and I therefore attach substantial weight to this consideration. In view of this, and mindful of the capacity for the public interest to be protected by the Commissioner’s consideration of whether the application should be re-examined in light of the information already on file, on balance I consider that, the beneficial nature of section 223 notwithstanding, the lack of a full and frank disclosure in this case is such that it outweighs the considerations in favour of the exercise of discretion and I do not consider it appropriate to exercise the discretion to grant QIP Nominees an extension of time to file a notice of opposition.
[42] Kimberly-Clark at 583 [17].
Conclusion
I refuse QIP Nominees’ application for an extension of time to file a notice of opposition.
Costs
It is usual in matters before the Commissioner that costs follow the event. I see no reason to depart from this approach, and accordingly I will award costs according to Schedule 8 against QIP Nominees.
Dr S. J. Smith
Delegate of the Commissioner of Patents
0
13
1