QIP Nominees Pty Ltd v CureVac AG - [2022] APO 51

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…

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: [2022] APO 51
Decision Date: 13 July 2022

CaseChat Overview and Summary

The case of QIP Nominees Pty Ltd v CureVac AG, heard by the Federal Court of Australia, involved a dispute concerning the extension of time to file a notice of opposition against the grant of a patent. QIP Nominees Pty Ltd sought an extension of time under section 223 of the Patents Act 1990 to file its notice of opposition to the grant of a patent to CureVac AG. The application for an extension was opposed by CureVac AG, which argued that QIP had not made full and frank disclosure and had acted in bad faith. The court was tasked with determining whether QIP's application should be granted and, if so, whether any costs should be awarded.

The primary legal issue before the court was whether QIP's application for an extension of time should be granted under section 223 of the Patents Act 1990. The court needed to assess whether QIP had provided full and frank disclosure and whether it had acted in good faith. Additionally, the court had to consider the impact of QIP's conduct on CureVac AG and whether QIP's delay in filing its notice of opposition was reasonable.

The court found that QIP had not made full and frank disclosure and had acted in bad faith, primarily due to the late disclosure of critical evidence that would have supported its opposition. The court held that QIP's conduct had caused significant prejudice to CureVac AG, which would have been unable to effectively respond to the notice of opposition if it had been filed on time. Given these findings, the court exercised its discretion under section 223 and refused QIP's application for an extension of time. The court also awarded costs to CureVac AG, reflecting the prejudice caused by QIP's conduct.

The court's final orders were that QIP's application for an extension of time to file a notice of opposition was refused. Furthermore, QIP was ordered to pay CureVac AG's costs associated with the application. This decision underscores the importance of full and frank disclosure and acting in good faith when seeking extensions of time in patent opposition proceedings.

Orders