The Application of Rhone-Poulenc SA

[1987] FCA 767

IN THE FEDERAL COURT OF AUSTRALIA )

)

NEW SOUTH WALES DISTRICT REGISTRY ) NO. G.482 Of 1987

)

GENERAL DIVISION )

The Applicatlon of
RHONE-POULENC SA and

RHONE-POULENC AGROCHIMIE

2 8 JAN1988 Applicants

' FEDERAL COURT OF

AUSTRALIA

PRINCIPAL

~ REGISTRY

EX TEMPORE REASONS FOR JUDGMENT

-._	.
EURCHETT J.

This is an application under s.90 of the Patents Act

1952 for an order extending the time within which the appllcants may file a petition for an extenslon of the term oE Letters Patent No. 456312.

The present application was filed only a few days before

the expiry of the patent, and is now being heard some two months later. However, that situation does not In Itself provide a bar, since it is even possible for an application for an extension of time, to file a petitlon for the extension of a patent, to be

9	months after the expiry of the patent.
filed after the patent has expired: Sanofi	v.	Parke Davls
Proprietary Limited (1983) 152	C.L.R. 1.	In that case, as

appears from the dissenting judgment of Deane J. ln the Federal Court (Parke Davis Pty Ltd v . Sanofi (1982) 43 A.L.R. 487 at

501), the application for extension of the time within which a

petition might be presented was not filed until nearly elght

The present appllcation is made by the appllcant Rhone Poulenc SA as the patentee whose name appears on the register, and by Rhone Poulenc Agrochlmle as an assignee whose assignment could not be registered because of the subsequent expiry of the

patent. Rhone Poulenc Agrochimie	is a subsidiary of Rhone
Poulenc SA.

Both the applicants are French corporations. The patent

relates to a fungicide, referred to as iprodione, used in

connection with agriculture and viticulture. It is, of course, a feature of patents relatlng to chemicals of this sort that there may be a long waiting period, after their ~nventlon, before regulations designed to protect the public from possibly harmful compounds can be satisfied, so as to permit exploitatlon of the patentee's patent rights.

The application was advertised pursuant to orders In a form which has become a standard form of order in such cases. By those orders it was provlded:

"1. The Applicants file and serve on the

Commissioner of Patents on or before 2 3

October 1987 a copy of the Application

filed in these proceedings and an affidavit setting forth the names and addresses of all persons in Australia

who to the knowledge or in the oplnlon
of the Applicants are or are proposing

to be concerned in Australia:

(a) in the manufacture or sale of
compounds used for those purposes
for which the compounds w~thln the

scope of the claims of Letters

Patent 456312 ('the Patent'	) are
known to be used:

(b) in the carrying out of those

processes within the scope of the

claims of the Patent: or

(c) are for any other reason likely to wish to oppose an application for an extension of the term of the

Patent.

2.     The Applicants give notice in writing by AR registered mail of their appllcation for an extension of time within which to

present a petitlon for an extension of
the term of the Patent to all persons

referred to 1n Order 1 hereof on or

before 30 October 1987.

3.    The Applicants cause an advertisement in the form of Annexure "A" hereto to be published on or before 30 October 1987

in the Official Journal of Patents.

4.    The Applicants have leave to file on or before 18 December 1987 such further affidavits upon which they propose to rely.

5.	That the further hearing of the
Application be stood over to 18 December 1987."

Annexure A to those orders was in the following terms:

"PROCEEDINGS UNDER SECTION 90

Re:	Australian Letters Patent No. 456312
have applied to the Federal Court of	Rhone-Poulenc SA and Rhone-Poulenc Agrochimie
Australia for an extension of time within which to present to the said Court an application seeking anorder for the extension of the term of the above patent on the grounds specified in Section 90(1) of the Patents Act, 1952 and the said application has been listed for hearing before the said Court at Law Courts Building, Queens Square, Sydney, at 9-30 am on 18 December 1987.
Coples of the affidavlts to be relied upon by Rhone-Poulenc SA and Rhone-Poulenc Agrochimie may be obtained upon request to Williams
Niblett,  Solicitors, Level 32, 31 Market
Street, Sydney, New  South Wales."
NO person has  appeared to oppose the appllcatlon, and

the Commissioner of Patents has appeared by counsel to assist the Court. That assistance is important in cases of this kind, and I propose to make an order that the applicant pay the Commlssioner's costs, an order which is not opposed.

I note that the fact that no one has appeared to oppose the application, following its advertisement, is a factor whlch was regarded as relevant in In the matter of Sandoz Patents Limited (Brooking J, unreported, 2 September 1982).

So far as the facts are concerned, primary re liance is

placed on the affidavlt of Francols Chretien, a chemical engineer

employed in the Department of Industrial Property of Rhone

Poulenc Agrochimie, which is responsible for the agrochemical

patents owned by both applicants. That department is, of course, located in France. Having regard to M. Chretien's evidence, 1 am satisfied that the question of seeking an extension of the patent was simply overlooked until May 1987. It was then too late to

petition, without an extension of time within whlch to do so,	since the latest date for advertising such a petitlon would have
been 5 March 1987. In all the circumstances, I do not thlnk any
unreasonable delay occurred between May 1987 and the filing of
the application on 2 October. The overlooking of the matter prlor to May resulted from a combination of factors. No advice was received from the applicants' agents in Australia, and M. Chretien was himself unaware of the particular limitations upon the filing of the necessary petition under Australlan law. There are in fact very few countries in the world where an extenslon of a patent is possible, and it is not possible in France.
Accordingly, some degree of confusion or lack of knowledge on
this s u b ~ e c t is understandable. At the same time, a large company owning many patents might be expected to maintain a system designed to avoid the very sort of failure which occurred here. But as against that, account must be taken of the distance between Australia and France, the difference of language, and the difference between the legal systems, as all tending to lead to problems.

The evidence is that M. Chretien was in fact not aware

of the true nature of the discretion possessed by the Court in

Australia, nor, as I have said, was he aware of the applicable

time limit. There was a subsidiary company with responslbillties

in relation to patents in British Commonwealth countries, but nevertheless the applicants were not advised of the positlon in

relation to this particular patent.

The law in relation to such applications has been

considered in a number of cases, and it is clear that the Court has a very wide discretion. It has been held that a distinction

is to be drawn between those cases where a patentee has made a

mistaken, but deliberate, decision not to petition for an

extension, and those cases where	time for petitioning has been
allowed to elapse unintentionally or inadvertently.	I n the

former type of case the Court will be less likely to grant an

extension of time, but in the latter it has been sald an

. 6.

extension may be granted. In Cossa (A.C.) Ltd's Patent (1960)
RPC 232 at 234 Lloyd-Jacob J. said:

"In the case of a petition presented out of time, an extension which shows that fallure to proceed dlligently was unintentional and should falrly be attributed to inadvertence would normally be accepted as sufficient."

See also Re Lister L Company Limited's Patent (1974) RPC 462; g the Matter of Petersen's Patent (1921) 38 RPC 267; Re B u l k Materials (Coal Handling) Services Pty Ltd v. Enviro-Clear Company Inc. (Cohen J., unreported 11 June 1986); In the matter of Sandoz Patents Limlted (supra).

However, the decisions to whlch I have referred are simply examples of the exercise of discretlon	in particular
contexts. They cannot limit	the broad discretion conferred on

the Court	by the words of s.90(1):	"or withln such further
perlod as a prescribed Court allows". Those	words	are
unconfined by any rigid rule.

In the Sanofi case (supra, at 15) the ~ o i n t judgment of

Mason A.C.J.,	Wilson and Dawson	JJ. contains the followlng
passage:

"However, we would want to say this. The
existence of a wide discretion in the Court
does not mean that it should, or would, ever
be exercised lightly in favour of a
petitioner and never In the absence of
circumstances whlch persuade the Court that
notwithstanding the delay in seeking the

extension of the term of a patent that delay

is sufficiently explained and ought to be

excused. "

.

, 7.

They added at 16:

"If in its exercise the Court 1s sensitive to the particular circumstances then we can see no reason to feel that the public interest is threatened by a construction of s.90(1) whlch gives effect to its natural and ordlnary

meaning. In our opinion, there is no warrant for implying a limitation on the words 'or within such further period as a prescribed

court allows' ."

In all the circumstances of this case, I think I should exercise my discretion in favour of the applicants. I order that the time for presenting a petition by the appllcants for the extension of the abovementioned Letters Patent be extended to the end of the period ending upon and Including 31 March 1988. I order that the applicants pay the costs of the Commlssloner of Patents.

I certify that this and the

preceding	six	( 6 ) pages are a
true	copy	of the Reasons for

Judgment herein of his Honour

Mr. Justice Burchett.

Associate

Dated:	18 D e c e x r , 1987.
Counsel for the Applicants:	Mr D.M. Yates
Solicitors for the Applicants:	Williams Niblett
Counsel for the Commissioner
of Patents:	Mr. D.K.  Catterns
Sollcltor for the Commissioner	Australian Government
of Patents:	Solicitor
Date of hearing:	18 December 1987.