Sunesis Pharmaceuticals Inc v Commissioner of Patents

In the case of Sunesis Pharmaceuticals Inc v Commissioner of Patents, the appellant, Sunesis Pharmaceuticals Inc, sought an extension of time under section 223 of the Patents Act 1990 (Cth) for the examination of its patent application. The central issue was whether the less onerous standards of examination that existed prior to the commencement of the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth) should apply in the examination of the appellant's patent application. The case was heard in the Federal Court of Australia.

The legal issues before the court involved interpreting the scope and application of section 223 of the Patents Act 1990 (Cth), which provides for the extension of time for certain acts required to be done within a certain time. The court had to determine whether the request for examination of a patent application before the commencement of the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth) constituted a 'relevant act' that was required to be done within a certain time, thereby making the applicant eligible for an extension under section 223. Additionally, the court needed to consider whether the Tribunal had the power to grant such an extension.

The court found that the request for examination of the patent application was not a 'relevant act' within the meaning of section 223, as it was not an act required to be done within a certain time but rather a state of affairs determined by the commencement date of the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth). The court held that section 223 does not empower the Tribunal to change the date of commencement of the Amendment Act in relation to a specific patent application. The court also noted that the request did not seek an extension of time but rather an amendment to the date of commencement of the Amendment Act, which the Tribunal lacks the authority to do.

The court dismissed the appeal and ordered that the appellants pay the respondent’s costs. The reasoning of the court hinged on the interpretation of section 223 and its applicability to the facts of the case, as well as the limitations of the Tribunal's powers in amending legislative provisions.