Sunesis Pharmaceuticals Inc and and Commissioner of Patents
[2013] AATA 858
[2013] AATA 858
Division General Administrative Division File Number
2013/3090
Re
Sunesis Pharmaceuticals Inc
APPLICANT
And
Commissioner of Patents
RESPONDENT
File Number
2013/3091
Re
Millennium Pharmaceuticals Inc
APPLICANT
And
Commissioner of Patents
DECISION
Tribunal Deputy President J W Constance
Date 2 December 2013 Place Melbourne The decision of the Commissioner of Patents, made 30 May 2013, to refuse the application of the Applicants to extend the time for the purpose of requesting examination in relation to Application No. 2010303567, is affirmed.
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Deputy President J W Constance
CATCHWORDS
PATENTS – request for extension of time for asking for an examination of patent request - whether request for examination of patent request is a relevant act required to be done within a certain time – if extension of time granted, will the requirements of the Act, as they stood before the day on which amendments to the Act took effect, apply – decision under review affirmed.
LEGISLATION
Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth) s 2, sch 1, para 55
Patents Act 1952 (Cth) ss 54, 141, 160
Patents Act 1990 (Cth) ss 223, 227
Patents Regulations 1991 (Cth) reg 13.3
CASES
AB Scaniainventor v Commissioner of Patents (1981) 54 FLR 367
Australian Paper Manufacturers Limited v. C.I.L. Inc (1981) 148 CLR 551
GS Technology Pty Ltd v Commissioner of Patents [2004] FCA 1017
IW Applicant v. The City of Perth (1997) 191 CLR 1
Lehtovaara v Acting Deputy Commissioner of Patents (1981) 39 ALR 103
REASONS FOR DECISION
Deputy President J W Constance
BACKGROUND
The Applicants are the owners of Australian Patent Application No. 2010303567 which was filed on 5 October 2010. The Patent Application is a complete standard application for the purposes of the Patents Act 1990 (Cth) and the Regulations made under that Act.
As the application is complete, the Applicants are entitled to ask the Commissioner of Patents to examine the Patent Application. The request can be made at any time before 5 October 2015.
On 15 April 2012 the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth) received Royal Assent. This Act made amendments to the Patents Act by introducing more onerous patentability requirements to be applied by the Commissioner in examining standard patent applications. These amendments are contained in paragraphs set out in Schedule 1 of the amending Act. Under paragraph 55(1)(e) of Schedule 1 the relevant items of the Schedule apply in relation to:
complete applications for standard patents made before the day this Schedule commences, if the applicant had not asked for an examination of the patent request and specification for the application under section 44 of the Patents Act 1990 before that day…
Schedule 1 of the amending Act commenced on 15 April 2013, being the day after the period of 12 months beginning on the day the amending Act received Royal Assent.
Although they were entitled to do so, the Applicants did not ask for an examination of the patent request before 15 April 2013. They did not ask for such an examination until 23 April 2013.
On 23 April 2013 the Applicants asked for an examination of the patent request and applied for an extension of the time in which to do so until 12 May 2013. The relevant wording of the application is as follows:
We, [the Applicants] apply for an extension of time of 1 month from 12 April 2013 to 12 May 2013 for the purpose of requesting examination in relation to Application No. 2010303567.
The circumstances in which, and the grounds upon which, this application is made will be set out in evidence to be filed.[1]
[1] Exhibit T1 p.183.
LEGISLATION
Subsection 223(2) of the Patents Act provides:
(2) 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.
ISSUES
The parties have identified the following issues which are in dispute between them. I agree that the issues raised are those which require determination.
(1) Is asking for an examination of a patent request a “relevant act that is required to be done within a certain time”, within the meaning of and subject to s 223 of the Act?
(2) Does the Tribunal have power under s 223 of the Act to extend the time for asking for an examination from 12 April 2013 to 12 May 2013, where because of an “an error or omission by the person concerned or by his or her agent or attorney” (within the meaning of s 223(2) of the Act), the Applicants did not in fact ask for the examination before the day on which the Schedule commenced?
(3) If the extension of time sought in this case ought be granted, will the requirements of the Act, as they stood before the day on which the Schedule commenced, therefore apply to the Patent Application?
The parties agree the examination was not asked for because of an error or omission of the Applicants’ agents within the meaning of subsection 223(2) of the Patents Act. I am satisfied that this agreement is appropriate.
THE APPLICANTS’ ARGUMENT
The Applicants commenced with the proposition that section 223 is a beneficial provision and should be interpreted liberally. Such a provision is to be given “a fair, large and liberal’ [2]interpretation rather than one which is ‘literal or technical’”. I accept that this is so.
[2] IW Applicant v. The City of Perth (1997) 191 CLR 1, 12.
The next step in the Applicants’ argument was that:
… the section will relevantly apply where there is an error or omission and the applicant has failed to take a step or act within a required time under or in relation to the Act, thereby losing a benefit or advantage or suffering or failing to avoid a disadvantage …[3]
The Applicants referred to three decisions which interpreted the provisions of section 160 of the Patents Act 1952 (Cth), which is in substantially the same terms as section 223.[4]
[3] Applicants’ Statement of Facts and Contentions para.52.
[4] Section 160 provides:
160. (1) Where, by reason of an error or omission on the part of an officer or person employed in the Patent Office, an act or step in relation to an application for a patent or in proceedings under this Act (not being proceedings in a court) required to be done or taken within a certain time has not been so done or taken, the Commissioner shall extend the time for doing the act or taking the step.
(2) Where, by reason of-
(a) an error or omission on the part of the person concerned or of his agent or attorney; or
(b) circumstances beyond the control of the person concerned, an act or step in relation to an application for a patent or in proceedings under this Act (not being proceedings in a court) required to be done or taken within a certain time has not been so done or taken, the Commissioner may, upon application by the person concerned, but subject to this section, extend the time for doing the act or taking the step.
(3) The time for the doing of an act or the taking of a step may be extended under sub-section (1) or (2) although that time has expired.
(4) Where an application is made under sub-section (2) for an extension of time for more than 3 months, the Commissioner shall advertise the application in the Official Journal.
(5) A person may, as prescribed, oppose the granting of the application.
(6) Where an extension of time is granted under this section, such provisions as are prescribed have effect for the protection or compensation of persons who availed themselves, or took definite steps by way of contract or otherwise to avail themselves, of the invention the subject of the application for the patent concerned by reason of the act or step in relation to which the extension was granted not having been done or taken within the time allowed.
(8) This section does not apply in relation to the doing of an act or the taking of a step under section 47, section 47A, section 47B, section 47C or sub-section 52B (1).
In Australian Paper Manufacturers Limited v. C.I.L. Inc.[5] the respondent to the appeal had applied for a patent in an overseas Convention country. In this situation it was entitled to have the priority date of its claim for a patent in Australia backdated to the date of the overseas application, if it made its Australian application “within 12 months after the date on which the [overseas] application was made”[6]. The respondent applied for an extension of the time in which it could apply in Australia and still have the benefit of the priority date being backdated.
[5] (1981) 148 CLR 551.
[6] Patents Act 1952 s.141(1).
The High Court said:
The critical question is whether s. 141(1) involves what s. 160(2) describes as “an act or step in relation to an application for a patent … required to be done or taken within a certain time.”[7]
[7] (1981) 148 CLR 551, 555.
The Full Court of the Federal Court adopted the same approach in AB Scaniainventor v Commissioner of Patents.[8] The Court described section 160 of the 1952 Act as “a remedial section and should be applied where it appears to be applicable unless there is some clear indication to the contrary.”[9]
[8] (1981) 54 FLR 367.
[9] (1981) 54 FLR 367, 372.
In Lehtovaara v Acting Deputy Commissioner of Patents[10] the Full Federal Court applied the principles set out above. In that case the appellant had sought an extension of time under section 160(2) in which to make an application for a standard patent. The time limit in question was imposed by section 54(1) which read, in part:
Subject to this section, the period within which an application for a standard patent and complete specification may be accepted is 12 months after the date on which the first report of the Examiner … was sent to the applicant …
[10] (1981) 39 ALR 103.
Section 223(2) of the Patents Act 1990 was considered by the Federal Court in GS Technology Pty Ltd v Commissioner of Patents[11]. Spender J. referred to section 223 as “a remedial section designed to advance the purposes of the Act and, to that end, permitting the forgiving of error or mistake where it is appropriate to do so.[12] The error under consideration was the failure of the company to pay a continuation fee in respect to the patent within the time required by the Act. The company was required to pay the fee by section 227 which relevantly provided:
(1) The prescribed fees are payable in accordance with the regulations.
(2) Without limiting subsection (1), different fees may be prescribed in respect of the doing of an act according to the time when the act is done.
(3) The regulations may provide for the consequences (for the purposes of this Act) of failing to pay a fee in accordance with the regulations.
[11] [2004] FCA 1017.
[12] [2004] FCA 1017, [50].
Regulation 13.3 of the Patents Regulations 1991 provides:
Prescribed period: continuation fees
(1) For paragraph 142(2)(d) of the Act:
(a) a continuation fee for an application for a standard patent is payable for a relevant anniversary at the last moment of the anniversary; and
(b) the period in which the fee must be paid is the period ending at the last moment of the anniversary.
In this application the Applicants argue that the asking for an examination of the patent request was a “relevant act” which the Applicants had to do in order to obtain the benefit of the application being examined under the less onerous patentability scheme. It was argued further that the relevant act was required to be done “within a certain time” as it had to be done before the day on which the Schedule came into effect.
CONSIDERATION
A first reading of section 223(2) suggests that, as the Applicants may ask for an examination of the patent request at any time before 5 October 2015, there was no relevant act which was required to be done before 15 April 2013 and that as a result the section did not apply to the circumstances of the application before me. However I am bound by the authorities cited to interpret “required” to mean “requisite … in order to secure an advantage.” This is the basis for the Applicants’ argument that the act of asking for an examination of the patent application was “requisite” in order to secure the advantage of having the less onerous patentability conditions applied.
However a careful consideration of the provisions of sections 2 and Schedule 1, paragraph 55 of the Intellectual Property Laws Amendment (Raising the Bar) Act and section 223 of the Patents Act leads me to conclude that section 223 does not give the Tribunal the power the Applicants seek to have it exercise.
Paragraph 55 does not “require”, in any sense of that word, that anything be done. Paragraph 55 determines those applications for patents to which the amendments to the Act apply. The applications specified in subparagraph 55(1)(e) are those which meet the following relevant descriptions:
(i)they were made before the day the Schedule 1 commenced;
(ii)the applicants had not asked for an examination of the patent request before that day.
No period of time is referred to. The only reference to time is to a specific date, namely the day on which Schedule 1 commenced.
In order to determine the day on which the Schedule commenced it is necessary to look to section 2 of the amending Act. Item 2 of subsection (1) of that section provides that Schedule 1 is to commence “[t]he day after the end of the period of 12 months beginning on the day this Act receives the Royal Assent.” Although there is a reference to a period of time, that period does no more than determine the date on which the Schedule is to commence. Again, there is nothing required to be done in this period.
It is noted in section 2 that the date in column 3 (15 April 2013) is not part of the Act. That information could only be inserted after the Act was passed by Parliament once the date of the Royal Assent was known.
On the basis of this analysis there is no act “required” to be done in the sense referred to in the decisions to which the Applicants have referred me; there is no period of time in which an act is to be done and there is no period of time which can be extended. It follows that the power conferred by section 223 is not applicable to section 55 of the amending Act.
Consideration of the Applicants’ request for an extension of time indicates that in fact they are not seeking an extension of time. As I have previously noted, the Applicants have applied for “an extension of time of 1 month from 12 April 2103 to 12 May 2013 for the purpose of requesting examination in relation to Application No. 2010303567”. It is clear that the Applicants do not need the extension they seek. By law they have until 5 October 2015 to request the examination.
What the Applicants are really seeking is that the Tribunal change the date on which Schedule 1 commences in relation to their application to the Commissioner. In effect they are asking the Tribunal to amend the provisions of the amending Act. This the Tribunal does not have the power to do. To attempt to do so would be an attempt to exercise legislative power.
The matter before me is to be distinguished from the situations considered by the High Court and the Federal Court in the decisions upon which the Applicants rely. In each of those matters there was a period of time in which an action could have taken place. In each case this enlivened the power given in section 223.
In the Australian Paper Manufacturers and the Scaniainventor cases there was a period of 12 months in which an Australian application could be made. In Lehtovaara there was a specified period in which an application for a standard patent could be accepted. In GS Technology there was a defined period in which a fee was to be paid. In all of these decisions there was a definite period of time in which an act was required to be done and which therefore enlivened the power to extend time provided by section 223. These situations are to be contrasted with the situation before me.
THE QUESTIONS FOR DETERMINATION
Is asking for an examination of a patent request and specification as referred to in the relevant clauses of the Schedule before the day on which the Schedule commenced a “relevant act that is required to be done within a certain time” within the meaning of and subject to s 223 of the Act?
For the reasons set out above, the answer is “no”.
Does the Commissioner therefore have power under s 223 of the Act to extend the time for asking for an examination from 12 April 2013 to 12 May 2013, where because of an “error or omission by the person concerned or by his or her agent or attorney” (within the meaning of s 223(2) of the Act), the Applicants did not in fact ask for the examination before the day on which the Schedule commenced?
No.
If the extension of time sought in this case ought be granted, will the requirements of the Act, as they stood before the day on which the Schedule commenced, therefore apply to the Patent Application?
The grant of the extension of time sought by the Applicants is unnecessary as the Applicants have until 5 October 2015 to ask for an examination of their Patent Application. The requirements of the Act as amended by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth) apply to the application.
CONCLUSION
The decision of the Commissioner of Patents, made 30 May 2013, to refuse the application of the Applicants to extend the time for the purpose of requesting examination in relation to Application No. 2010303567, will be affirmed.
32. I certify that the preceding 31 (thirty-one) paragraphs are a true copy of the reasons for the decision herein of Deputy President J W Constance
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Associate
Dated 2 December 2013
Date(s) of hearing 21 October 2013 Counsel for the Applicant Mr D Shavin QC
Mr G FitzgeraldSolicitors for the Applicant Davies Collison Cave Counsel for the Respondent Mr P Gray SC Solicitors for the Respondent Australian Government Solicitor
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