Sunesis Pharmaceuticals, Inc - [2013] APO 34

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Sunesis Pharmaceuticals, Inc [2013] APO 34

Patent Application: 2010303567

Title:Heterocyclic compounds useful as PDK1 inhibitors

Patent Applicants: Sunesis Pharmaceuticals, Inc. and Millennium Pharmaceuticals, Inc.

Delegate: P M Spann – Deputy Commissioner of Patents

Decision Date: 30 May 2013

Catchwords: PATENTS - section 223 – request for extension of time to file a request for examination – request based on the application provisions of Intellectual Property Laws Amendment (Raising the Bar) Act 2012 – no requirement or period to which section 223 can apply – extension refused.

Representation: Patent Applicant: M Roberts, Davis Collison Cave

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application: 2010303567

Title:Heterocyclic compounds useful as PDK1 inhibitors

Patent Applicants: Sunesis Pharmaceuticals, Inc. and Millennium Pharmaceuticals, Inc.

Date of Decision: 30 May 2013

DECISION

I refuse the application for an extension of time under subsection 223(2)(a).

REASONS FOR DECISION

This matter concerns an application for an extension of time under subsection 223(2)(a) of the Patents Act for filing a request for examination of the patent application. As will become apparent, the application is unusual in that it seeks, in effect, to have a request for examination filed after the commencement of certain provisions of the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (RTB Act), treated as if it was filed before that date. The intended consequence is that, because of the application and savings provisions of the RTB Act, certain provisions of the amended Patents Act would therefore not apply to the patent application.

Background

Patent application 2010303567 was filed as a PCT application on 5 October 2010. It entered the national phase on 5 April 2012. Examination of the application is not automatic but, being a standard patent application, was required to be requested either in a period following a direction of the Commissioner or voluntarily within 5 years from the filing date (see ss 44(1) and r 3.15). If examination was not requested within the statutory period, the application would have lapsed (ss 141(2)). In this case no direction issued so, subject to a future direction, the final date for requesting examination was 5 October 2015.

The RTB Act received the Royal Assent on 15 April 2012. As indicated in Section 2, Schedules 1 and 3 to 6 (other than Sch. 6 Item 87) commenced 12 months from Royal Assent, that is, 15 April 2013. The RTB Act addresses a number of issues however, as the title suggests, it substantially concerns raising the standards for the grant of patents. Schedule 1 particularly involves substantive requirements and, as an example, Item 8 amends subsection 40(2)(a) of the Patents Act to require a more thorough description of the invention than was previously the case.

Part 3 Item 55 of Schedule 1 sets out application provisions for the Schedule. As can be seen from subitems 55(1), (4), (6), (8), (9), (10) and (12), where a patent application was filed (or an innovation patent was granted) before commencement, the application of…

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: [2013] APO 34
Decision Date: 30 May 2013

CaseChat Overview and Summary

The parties involved in the case were Sunesis Pharmaceuticals, Inc., and Millennium Pharmaceuticals, Inc., who were patent applicants for a patent application numbered 2010303567, titled "Heterocyclic Compounds Useful as PDK1 Inhibitors." The dispute was about the application for an extension of time under subsection 223(2)(a) of the Patents Act for filing a request for examination of the patent application. The application was to be heard by the Australian Patent Office, with P M Spann serving as the Deputy Commissioner of Patents.

The primary legal issue the court had to decide was whether the application provisions of the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (RTB Act) constituted a "certain time" within which a relevant act, in this case, the requesting of examination, was "required to be done." If so, the court needed to determine if it represented a "time for doing an act" that the Commissioner had the power to extend under section 223. This case required an interpretation of the scope and context of section 223 of the Patents Act, as well as an understanding of the transitional provisions of the RTB Act.

The Deputy Commissioner of Patents, P M Spann, found that the application for an extension of time did not concern a requirement or time period to which section 223 applied. The court considered the relevant authorities and concluded that the power conferred by section 223 is specific rather than general and is necessarily restricted to requirements and periods expressed in the provisions of the Patents Act. As a result, section 223 could not be used in relation to requirements and periods arising outside of the provisions of the Patents Act, including a period or requirement inferred from the RTB Act, even if the step involved was a request for examination. The Deputy Commissioner refused the application for an extension of time under subsection 223(2)(a) of the Patents Act.

No final orders were made in this case as the application for an extension of time was refused. However, the applicant indicated that any decision to refuse would be appealed or subject to an application for review.

Orders