Statens Serum Institut v Octapharma AG - [2004] APO 23

OFFICIAL NOTICE
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No. 753468 in the name of Statens Serum Institut

Title: Process for producing immunoglobulins for intravenous administration and other immunoglobulin products

Action: Request for an extension of time to serve evidence in support of an opposition by Octapharma AG

Decision: Issued 26 August 2004 .
Abstract

Extension of time allowed.
The parties disagreed as to whether negotiations for settlement were still taking place. The opponent had a reasonable belief that negotiations were still continuing, so an explanation of the delay had been provided.
In deciding the award of costs, it was noted that the opponent had not confirmed that negotiations were continuing before making the application, and that the applicant had not directly communicated that it had terminated negotiations. No award of costs.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No. 753468 by Statens Serum Institut, and an extension of time to serve evidence in support of an opposition by Octapharma AG

BACKGROUND

Patent application number 753468 in the name of Statens Serum Institut (hereafter referred to as SSI) was advertised accepted on 17 October 2002. A notice of opposition was filed by Octapharma AG (hereafter referred to as Octapharma), and a statement of grounds and particulars was served within time. Several extensions of time to serve evidence in support have been allowed. On 16 July 2004 Octapharma requested a further extension of time from 17 July 2004 to 17 October 2004. SSI objected to the extension, and the matter was heard by telephone on 17 August 2004. Octapharma was represented by Mark Roberts, patent attorney from Davies Collison Cave. SSI did not appear, and filed written submissions.
The application for extension of time
The application gives the reason for the extension of time as:
“Further time is required in which to finalise and serve the balance of evidence-in-support of this opposition in view of ongoing settlement discussions between the parties. The settlement discussions offer a prospect of enabling this opposition to be withdrawn without the need for the balance of the evidence-in-support to be served.”
In a letter dated 3 August 2004, the patent attorney for Octapharma informed the Commissioner that settlement discussions between the parties had now broken down.
Submissions by the parties
Both parties provided lengthy submissions prior to the hearing. Copies of numerous letters and emails were attached as exhibits. The essence of the disagreement is whether negotiations had come to an end by the time that the extension of time was made. SSI accept that negotiations commenced in January 2004, but contend that the negotiations finished in May 2004. Octapharma argued that they reasonably believed negotiations were still underway, and it was not until August 2004 that they were aware that negotiations had terminated. Details of the reasons for these beliefs will be discussed below.
DECISION
The chronology of events in this case is easily summarised from the material on the file.

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.

Keep reading for free

Create a free CaseChat account to read Statens Serum Institut v Octapharma AG and more:

Read every judgment in full
Ask AI and get answers linked to paragraphs
See how each paragraph was cited in later cases
Download judgments as PDF or Word

Continue with Google

One click creates your free account or signs you in.

By continuing you agree to the Terms and Privacy Policy.

Details

Case: [2004] APO 23
Decision Date: 26 August 2004

CaseChat Overview and Summary

The case of Statens Serum Institut v Octapharma AG involves a dispute over an extension of time for Octapharma AG to serve evidence in support of an opposition to a patent application held by Statens Serum Institut. The application, numbered 753468, was for a process for producing immunoglobulins for intravenous administration and other immunoglobulin products. Octapharma requested an extension of time from 17 July 2004 to 17 October 2004, which Statens Serum Institut opposed. The dispute before the court was whether the extension should be granted and whether costs should be awarded to either party.

The central legal issue was whether Octapharma had a satisfactory explanation for the delay in serving the evidence in support of the opposition, and if so, whether an extension of time should be granted. The court considered the timeline of events, the communications between the parties, and the significance of the evidence that would be served. It also examined whether the extension would be in the public interest and whether it would unduly disadvantage Statens Serum Institut.

The court found that Octapharma reasonably believed that negotiations were still ongoing, even though Statens Serum Institut had concluded that the negotiations had ended in May 2004. This reasonable belief provided a satisfactory explanation for the delay. The court also noted that the evidence that Octapharma intended to serve was of high significance to the opposition. Considering the balance of interests and the public interest in determining the opposition on its merits, the court decided to grant the extension of time to Octapharma.

In determining the award of costs, the court considered that neither party had acted entirely appropriately in communicating the status of the negotiations. Octapharma did not confirm with Statens Serum Institut that negotiations were continuing before making the application for an extension of time, and Statens Serum Institut did not directly communicate that negotiations had terminated. As a result, the court decided not to award costs to either party.

The final order of the court was to allow the extension of time for Octapharma to serve evidence in support of the opposition until 17 October 2004. The court also emphasized the importance of clear communication between the parties in future proceedings to avoid similar disputes.

Orders