Sandoz Pty Ltd v Euro-Celtique S.A - [2014] APO 14

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Sandoz Pty Ltd v Euro-Celtique S.A. [2014] APO 14
Patent Application: 2009243527

Title:Controlled Release Formulation

Patent Applicant:  Euro-Celtique S.A.
Opponent:  Sandoz Pty Ltd
Delegate:  Matt Kraefft
Decision Date:  28 February 2014
Hearing Date:  Written Submissions, completed on 14 February 2014
Catchwords:  PATENTS – extension of time to file evidence in support – Patent Regulation 5.10 as in force immediately prior to 15 April 2013 – negotiations by parties – inadequate explanation of delay – public interest does not support extension – short period allowed for opponent to file any evidence readily to hand

Representation: Patent applicant: Spruson & Ferguson, Sydney.
Opponent:Shelston IP, Sydney.

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2009243527

Title:Controlled Release Formulation

Patent Applicant: Euro-Celtique S.A.
Date of Decision: 28 February 2014
DECISION
The circumstances of this case do not warrant the allowing of the requested extension of time.
The opponent is allowed a short period to file evidence that may be readily to hand.
The opponent is allowed until 12 March 2014 to file such evidence.
REASONS FOR DECISION
Background

Euro-Celtique S.A. (“the applicant”) filed patent application 2009243527 on 4 December 2009. The application was advertised accepted on 15 November 2012. Sandoz Pty Ltd (“the opponent”) subsequently filed a notice of opposition followed later by a statement of grounds and particulars in support of the opposition.
The opponent has been allowed several extensions of time to serve evidence in support. Evidence in support was due on 12 December 2013. On that date the opponent filed a further application for an extension of time until 12 March 2014 in which to serve evidence in support.
On 17 December 2013 a delegate of the Commissioner of Patents issued a letter to both parties indicating he was not satisfied an appropriate case had been made out to allow the extension of time. The opponent requested to be heard.
The hearing was conducted by means of written submissions. Both parties filed written submissions.
Applicable law
On 15 April 2013, the Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (No.1) commenced (“the RTB Regulation”). This regulation significantly amended the Patent Regulations 1991 as they apply to patent oppositions. The law governing extensions of time to file evidence in a patent opposition depends on the date on which the relevant evidentiary period commenced. Where the evidentiary period commenced on or after 15 April 2013 in any opposition commenced before 15 April 2013, or in a substantive opposition commenced after 15 April 2013, the extension is governed by regulation 5.9 of the Patent Regulations as in force on 15 April 2013. This follows from regulation 23.36(2), item 2, of the RTB Regulation. Where the evidentiary period commenced before 15 April 2013, the extension is governed by regulation 5.10 of the Patent Regulations as in force immediately prior to 15 April 2013.
The present evidentiary period, for filing evidence in support, commenced on 12 April 2013, that is, before 15 April 2013. Consequently the present extension of time is governed by regulation 5.10 of the Patent Regulations as in force before 15 April 2013.
Sub-regulation 5.10(2) gives the Commissioner of Patents the power to extend the time for filing evidence in support. The commissioner must not grant an extension unless satisfied that the parties have been notified of the application for extension (reg. 5.10(5) (b)), has given the parties a reasonable opportunity to be heard (reg. 5.10(5)(c)(i)), and is reasonably satisfied the extension is appropriate (reg. 5.10(5)(c)(ii)). In the present case the parties have been notified and have had an opportunity to be heard. The only remaining question is whether it is appropriate to extend the time.
This question has been considered several times by the Federal Court (Ferocem Pty Ltd v Commissioner of Patents [1994] FCA 981; 28 IPR 243, A Goninan & Co Ltd v Commissioner of Patents [1997] FCA 424; 38 IPR 213 and National Starch & Chemical Co v Commissioner of Patents [2001] FCA 33; 50 IPR 398). In summary, the power to extend time is discretionary, so it is necessary to give genuine and proper consideration to all relevant considerations. (Ferocem at 247-8, Goninan at 220). Relevant considerations include:
Application for Extension of Time
The opponent’s application for the extension of time notes that the parties are involved in settlement discussions. It is stated that nearly all of the terms of settlement have been agreed and there is one key aspect over which negotiations are continuing.
Explanation of Delay
The settlement discussions stated to be taking place between the parties have been used as reasons for seeking extensions of time to file evidence in support since July 2013. I note in the present case that the applicant supports the opponent’s application for the extension of time. On the other hand, very little if anything has been stated about the gathering of any evidence whatsoever to date. It appears the opponent’s efforts have principally been focused on the settlement discussions.
The present case is similar to the Innovia Security Pty Ltd v JDS Uniphase Corporation case, [2014] APO 5. In that case, prolonged settlement discussions appeared to be taking place at the expense of gathering evidence in the opposition. The delegate stated, at [14], that a decision to cease preparation of evidence while a settlement is negotiated is reasonable if settlement is achieved quickly. He also stated though that a lengthy delay with uncertain prospects of settlement is not reasonable. The delegate concluded the explanation of the delay was clearly inadequate.
In that case there were also indications that settlement negotiations were expected to be completed within the extension period sought by the opponent. While no such indications have been provided in the present case, it is clear that progress has been made to the point there is one key aspect remaining to be resolved in the present settlement discussions. On the other hand, the opponent merely states in its application for the extension that the settlement discussions are continuing to be productive and that it is optimistic. The certainty of a resolution is far from clear, let alone whether this would be achieved in a reasonable time frame.
Overall I consider the explanation of delay is inadequate. Nonetheless I accept a satisfactory explanation is not mandatory (Ferocem at 247).
Public Interest
The opponent’s submissions, as per its application for the extension, are silent in respect to considerations of the public interest. The applicant, in supporting the opponent’s application for the extension, submitted it was in the public interest to have these matters resolved by negotiation rather than by actions before the courts and the Patent Office.
I accept that, in some instances and at least for the parties, the resolution of matters by negotiation would be preferable to taking action through the courts or the Patent Office. On the other hand I think an emphasis on resolution, and moreover on timely resolution as mentioned above, is also important when the public interest is considered. The efficient and orderly administration of the Patents Office is a relevant consideration (Ferocem at 247, Goninan at 222).
The settlement discussions have been protracted for quite some time now. While the discussions seem to have progressed to the point of narrowing down to one key aspect, it is far from clear whether a resolution would be achieved. Moreover, in the present case, there have been little indications to date of any evidence being prepared in this opposition. One must wonder then whether there is a serious opposition being undertaken at all. It seems the opponent is not serious with its opposition. I also think it is against the public interest to have patent oppositions run secondary to settlement discussions for an indeterminate time period.
In the present case I conclude the public interest does not support the extension.
Interests of the Parties
This case is somewhat unusual in that both parties support the extension of time. The parties’ interests weigh towards allowing the extension.
Conclusion
I have concluded that the explanation of the delay is inadequate and that the public interest does not support the extension of time. On the other hand the interests of the parties favour the extension. The balance of these considerations lies against allowing the extension of time.
In such cases I must consider whether to allow a short period for the unsuccessful party to file evidence readily to hand. It is unclear whether any evidence exists. However I will allow a short period.
The expiry date of the presently requested period of extension is imminent. The short period I will allow is coincident with that expiry date.
I allow the opponent until 12 March 2014 to file any evidence that is to hand.
M G Kraefft
Delegate of the Commissioner of Patents