Sunesis Pharmaceuticals, Inc
[2013] APO 34
•30 May 2013
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 the specified items is determined on the basis of the request for examination being filed on or after the commencement date. Items in Schedule 6 and in the Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (No. 1) apply on the same basis. In relation to subitem 55(1) the Explanatory Memorandum states at page 65 that:
“This means that the changes will only apply to applications and patents where, at commencement, the applicant has not yet asked for examination of whether the application meets the substantive requirements of the Act. This strikes a balance between implementing the changes as soon as possible, addressing the need to raise patentability standards, and giving applicants control and certainty over whether the old or new rules apply to them. If an applicant wishes to avoid the new higher standards they can request examination before the commencement: the old rules will apply for the life of the application and any subsequent patent. Additionally, the fixed 12 month commencement period (see clause 2 above) will give applicants time to consider their business needs and decide whether to request examination under the old or new rules.”
It is as a consequence of this that patent attorneys generally advised clients to seek early examination of their applications and patents, and a very large number of requests for examination were in fact filed prior to the commencement of the related items on 15 April 2013.
In relation to the present application, a request for examination was filed only on 30 April 2013 but was accompanied by the present application for “an extension of time of 1 month from 12 April 2013 to 12 May 2013”. On 1 May 2013 a delegate of the Commissioner of Patents wrote to the applicant’s attorney giving reasons why, in her view, the extension application was not tenable and unless a hearing was requested the application would be refused.
The applicant on 9 May 2013 filed two statutory declarations in support of the extension together with a request that the matter be set down for hearing. Subsequently the applicant indicated that it did not wish to be heard but required a written decision. This is not to be taken as a lack of interest of behalf of the applicant as it is understood that any decision to refuse will be appealed or subject to an application for review. Nevertheless I do not have the benefit of any submissions that may have assisted in understanding the applicant’s position.
The evidence
The evidence filed in support of the request includes declarations by Mr Mark Roberts and Mr Leon Allen, both patent attorneys of the firm Davies Collison Cave. Mr Allen is the Managing Partner.
Mr Robert’s provides evidence concerning his dealings with the request for examination exhibiting instructions received by his firm on 10 April 2013 to “Please proceed to request examination in this case … prior to the upcoming rules change” but instructing that examination not be requested on another application. Mr Robert’s indicates that he responded to the applicant acknowledging the instructions to request examination but he cited the wrong application number. This error was identified by his firm’s “Administrative Operations Team” however he says they did not identify the instructions in the client’s correspondence concerning the present application. Consequently he says that the failure to file the request for examination by 12 April 2013 (the last working day before the commencement date) was “a direct result of clerical and/or administrative errors that occurred within my firm”.
Mr Allen’s declaration addresses the operation of the “Administrative Operations Team” in more detail. He provides evidence that the instructions to request examination of the present application had in fact been entered into the firms computerised practice management system on 10 April 2013. He outlines the practice of processing requests for examination once the system is updated including changes that occurred due to the large number of requests being processed by his firm up to 13 April 2013. However Mr Allen does not indicate or suggest any reason why the request for examination may then not have been filed. The remainder of his declaration outlines the extensive steps taken by his firm to inform clients of the legislative changes and to advise them to file requests for examination before the commencement of the amended legislation. These steps, beginning in February 2012, included mail outs, website information, and presentations both in Australia and overseas.
Law
11.Subsection 223(2) provides:
“Where, because of:
(a) an error or omission by the person concerned or by his or her agent or attorney; or
(b) circumstances beyond the control of the person concerned;
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.”12.A “relevant” act for the purposes of section 223 is defined in subsection 223(11) and means:
“an action (other than a prescribed action) in relation to a patent or patent application, or any proceedings under this Act (other than court proceedings), and includes the making of a Convention application within the time allowed for making such applications.”
13.Though not relevant in this case, subregulation 22.11(4) then prescribes the following actions as being excluded for the purposes of subsection 223(11):
“(4) For the definition of relevant act in subsection 223 (11) of the Act, each of the following actions is prescribed:
(a) an action or step prescribed in Chapter 5, other than an action or step taken under regulation 5.3 or 5.3AA, paragraph 5.4 (a), subparagraph 5.8 (1) (a) (i) or regulation 5.9A;
(b) filing, during the term of a standard patent as required by subsection 71 (2) of the Act, an application under subsection 70 (1) of the Act for an extension of the term of the patent;
(c) an action or step prescribed in Chapter 20.”Discussion
14.The crucial point is this matter is whether within the correct construction of subsection 223(2) the application provisions of the RTB Act represent a “certain time” within which a relevant act, the requesting of examination, is “required to be done”. If so, it would also beg the question whether it represents a “time for doing an act” that the Commissioner has the power to extend.
15.A similar request came before a Deputy Commissioner of Patents in Dey, L.P [2002] APO 50 concerning the filing of an application that was subject to changes brought about by the Patents Amendment Act 2001. That Act expanded the prior art base to include ‘prior use’ outside of Australia with effect for applications filed from 1 April 2002. Having filed its application after that date and wishing to avoid invalidity on the basis of the changed legislation, the applicant sought an extension of time. However the Deputy Commissioner found that section 223 only enabled an extension of time to be granted to enable the timely doing of an action. It could not operate to backdate the actual filing date of the application. He considered that what was being requested was an extension of the operation of the Patents Act as it existed before amendment and that this was not a “relevant act” such that any extension would have been ultra vires.
16.The Deputy Commissioner also considered the effect of section 8(c) of the Acts Interpretation Act as it was then (now subsection 7(2)(c)) finding that the applicant had not accrued any rights under the Act pre-amendment and that parliament had made explicit in the transitional provision how the legislation was to be applied.
17.A similar case does not appear to have been argued before the Courts or the Administrative Appeals Tribunal however the scope of section 223 and the equivalent section 160 of the Patents Act 1952 have been considered. For example, a majority of a full bench of the High Court in Australian Paper Manufacturers Ltd. v. C.I.L. Inc. [1981] HCA 64 decided that a period for filing a convention application provided under section 141 of the 1952 Act was extendable. The majority took the view that this question could be analysed by asking whether such lodgement involves an act or step:
(a) which is “in relation to an application for a patent”,
(b) which can be described as to be done or taken “within a certain time”, and
(c) which can be said to be “required to be done or taken” within that time.18.Stephen J said at [8]:
“Whenever the doing of some act is linked with a period within which it is to be done it can with perfect accuracy be described as being required to be done within that period; the particular consequence attaching to a failure to do the act within the specified period is irrelevant to the aptness and propriety of the use of the word "required" to link and explain the connextion [sic] between the act and the time-limit. Legislation may provide that an act may only be done, if at all, within some prescribed period, the doing of it later being either prohibited or being declared to be ineffective and a nullity; or again, where the provision in question confers a benefit, the doing of the act within the period may be a condition of obtaining the benefit. But in either case the word "required" will aptly describe the nature of the link between the doing of the act and the time for the doing of it. In the case of provisions of a quite different nature, prohibiting the doing of a particular act within a given time, the concept of affirmative requirement may be inapt; but so long as the provision is either permissive of the doing of an act or else confers a benefit or right as a result of doing it, being in either case linked with a period within which it is to be done, "required" can aptly be used.”
19.Following this and an earlier decision of the Federal Court in Re Ab Scaniainventor v the Commissioner of Patents [1981] FCA 84, a majority of the Federal Court stated in Lehtovaara v Commissioner of Patents [1981] FCA 218 that:
“In our opinion, the real test, in construing such provisions, is whether they contain a clear indication that s.160 should not apply. This is by no means an easy question to determine because the Act contains so many sections which have extension provisions within them (e.g. ss.59 and 66, but in the latter section the words "in accordance with section 160" were added to the end of sub-section (1) by s.69 of Act No. 19 of 1979). However, an important matter to bear in mind, in our view, in construing sections such as these is that s.160 is in part mandatory and is intended on its face to deal with extensions needed in special cases, i.e. where there is an error or omission on the part of the office, the agent or attorney, or the person concerned, or where there are circumstances beyond that person's control. It does not confer a general discretion to extend and is careful to ensure protection to those who might be affected.”
20.In Re Neville William Lyons and Carmel Mary Dwyer (Carrying On Business As Mitty'S Authorised Newsagency v the Registrar of Trade Marks; Stamford Hill Pty Ltd [1983] FCA 236) Beaumont J, in considering the similar provisions of section 131 of the Trade Marks Act 1955, cited Lehtovaara and stated that:
“In my opinion, this reasoning should be applied in the present case and s.131 should be read as a gloss upon the operation of s.49 in the form of a force majeure provision. Although s.131 is capable of general application to any provision of that Act, it should not be regarded as a mere "general" provision of the kind found in s.130 to which may be applied the rule of construction that where there is a conflict between "general" and "specific" provisions, the "specific" provisions prevail on the ground of repugnancy (see Refrigerated Express Lines (A/asia) Pty. Limited v. Australian Meat and Live-Stock Corporation [1980] FCA 38; (1980) 29 A.L.R. 333 at p.347; Pearce, Statutory Interpretation in Australia 2nd ed. at p.46). Section 131 is not a merely general power in any abstract sense: it is limited in its application to quite special situations. Further, the history of the legislation and its remedial character support the conclusion that parliament intended that, in a limited class of case, time could be extended beyond the period specified in, inter alia, s.49 (cf. TCN Channel Nine Pty. Limited v. Australian Mutual Provident Society [1982] FCA 169; (1982) 42 A.L.R. 496).”
Subsequently he further stated that:
“In my opinion, an "error or action" within the meaning of s.131(1)(b) must be confined to things done or omitted to be done under the Act”.
21.Applying the authorities above, the Tribunal in considering the original filing of a complete application in Re Norman Stibbard and the Commissioner of Patents [1986] AATA 249 found that while a benefit might arise for the applicant in the extension sought, it was not in that case linked to a period provided for in the legislation. B J McMahon (Senior Member) in agreeing with the majority stated that:
“The present application turns on the ambiguity of meaning inherent in the phrases “required to be done or taken” and “within a certain time”. Although it must be now accepted that the word “required” is to be broadly interpreted to mean “requisite or needed” in order to secure an advantage or to avoid a disadvantage, I agree that such an interpretation must be restricted to requirements within the scope or structure of the Act.”
and
“Wide as the Commissioner's power is under the section, extending as it does from steps necessary for the validity of an application to steps necessary for the obtaining of an additional benefit, it cannot be said to extend to steps taken or steps that should have been taken outside the structure of the Act.”
22.These decisions support a view that when considered in the scope, context and purpose of the Patents Act, the power conferred by section 223 is specific rather than general and is necessarily restricted to requirements, and the extending of time limits, that are expressed in the provisions of that Act. Consequently section 223 cannot be used in relation to requirements and periods arising outside of the provisions of the Patents Act, including a period or requirement that may be inferred from the RTB Act, even if the step involved is a request for examination. As I have noted above, the only relevant requirement in relation to requesting examination of the present application up to its actual filing was that set out in section 44(1). That is, that the request for examination be filed by 5 October 2015. As the request was filed within that time, section 223 clearly cannot apply.
23.To the extent that it might otherwise be argued that the RTB Act provided a benefit to applicants where examination requests were filed before 15 April 2013 and that one objective of the application provisions was to give “applicants control and certainty over whether the old or new rules apply to them”, it does not mean that section 223 can or should apply. In principle there is no difference to the situation in Stibbard (and in Dey) where a clear benefit lay in the backdating of the application but an extension was nevertheless not available. Parliament clearly expressed its intention for the commencement of the legislation in the transitional provisions of the Act. It could, but did not, legislate to account for errors or omissions in an applicant not requesting examination before the commencement of the amended legislation nor is it to be supposed that Parliament intended the RTB Act to be subject to section 223 of the Patents Act. Consequently I believe there are clear indications that section 223 should not apply. However, more fundamentally, I do not believe the power in section 223 could be used, in the absence of explicit enablement, to extend the commencement periods of the RTB Act. Accordingly, the Deputy Commissioner in Dey was correct to find that the granting of such an extension would be ultra vires.
24.Consequently, while the present circumstances might well reflect the loss of a potential benefit as a result of an error or omission, it is not a matter that can, or is intended to be, remedied by section 223 because there is no relevant requirement or time period. This should not be seen as remarkable given that it has been found that a range of circumstances exist where that provision does not apply, no matter how serious the effect or unfortunate the applicant’s failure is. As indicated by the Tribunal in Beckswift Limited and Commissioner of Patents [1998] AATA 915 it is not a matter of discretion but the correct construction of the Patents Act.
25.It follows that I am not required to consider whether the circumstances referred to in the evidence actually constitute a causative error or omission within the meaning of section 223.
Conclusion
26.I have found that the application for an extension of time under subsection 223(2)(a) does not concern a requirement or time period to which section 223 applies and consequently I refuse the application for an extension of time.
P M Spann
Deputy Commissioner of Patents
0
7
0