30 September 2010

Proceedings in Other Jurisdictions No Excuse for Delay

Wyeth v The Kennedy Institute of Rheumatology [2010] APO 20 (21 September 2010)

Opposition – request for extension of time to serve evidence in answer – whether waiting for decision from the European Patent Office constitutes a satisfactory explanation of delay.

Current practices relating to the grant of extensions of time in Australian patent opposition proceedings are relatively generous, although IP Australia has clearly indicated its desire and intention to introduce a stricter regulatory regime in order to improve the speed and efficiency of an often drawn-out process.

Nonetheless, there are limits to the reasons that  may be considered acceptable excuses for delay, as this decision from Delegate Dr Steven Barker demonstrates.  Although the patent applicant in this case was granted the requested extension of time on other grounds (not least the fact that by the time the hearing took place the evidence had already been served), it is clear from this decision that waiting for an outcome in related proceedings in other jurisdictions is not, in itself, an adequate excuse.


After the commencement of the Patents Act 1990 the Patent Office initially sought to limit the ability of parties in oppositions to obtain extensions of time for preparation of evidence in an effort to prevent proceedings from becoming excessively protracted.  Over time, however, the Federal Court eroded the power of the Patent Office to refuse extension requests, in cases such as Ferocem Pty Ltd v Commissioner of Patents [1994] FCA 981, A Goninan & Co Ltd v Commissioner of Patents [1997] FCA 424 and National Starch & Chemical Co v Commissioner of Patents [2001] FCA 33.

The principles established by these decisions may be summarised as follows:
  1. the power to grant extensions under Regulation 5.10 is discretionary and cannot be reduced to imperative compliance with particular requirements, such that it is necessary to give genuine and proper consideration to all relevant factors;
  2. the reasons why the evidence was not served earlier are a relevant consideration, but a satisfactory explanation is not a mandatory requirement;
  3. the public interest in determining a serious opposition on its merits is a relevant consideration;
  4. it is necessary to form a view as to the nature and significance of the evidence that the party requesting the extension is seeking to adduce; 
  5. the significance of the evidence must be assessed having regard to any relevant material available, not just the evidence itself;
  6. the public interest is not protected merely because some evidence has already been served;
  7. the interest of the party seeking the exercise of discretion are a relevant consideration; and
  8. it is also relevant to consider the disadvantage to the other party of delays in determining the opposition, and the effect of delays on the efficient and orderly administration of the Patent Office.
These principles have made it generally difficult for the Patent Office to refuse extension requests, even in the face of objection by the other party, except in the most clear-cut cases of inaction or delay by the requester.

In most cases, the interests of the parties are opposed, and cancel each other out, while the public interest in ensuring that invalid patents are not granted typically outweighs the benefits of resolving the opposition more rapidly.  As a result, the majority of extension requests are granted.

We note, in passing, that IP Australia is concerned about the impact of this upon the speed and efficiency with which opposition proceedings can be resolved, and is therefore seeking to address the issue as part of its current IP Reform agenda.

In this case, the patent applicant The Kennedy Institute of Rheumatology ("the Institute") was seeking an extension of time within which to serve its evidence in answer to Wyeth's evidence in support of an opposition to patent application no. 2003264629.
The Institute's evidence was initially due on 5 February 2010, but had already been extended until 5 July 2010, on which date the Institute filed partial evidence along with a request for a further extension until 5 October 2010.  Wyeth objected, and both parties made written submissions in support of their respective positions on 11 August 2010.  However, before the Delegate could issue a decision on the extension request, the Institute completed its evidence (on 2 September 2010).
The Institute gave two reasons for requiring additional time, the first of which was to enable finalisation of the evidence of one particular expert.  The Delegate considered that this reason was supported by a satisfactory explanation (at [8] and [10]), presumably also in view of the fact that in the meantime the evidence had actually been completed and served.  After briefly weighing up the other considerations, an extension was granted until 2 September 2010 (at [11]-[14]).
The second reason given by the Institute was in order to await the outcome of related opposition proceedings taking place before the European Patent Office (EPO).  The Delegate was unimpressed by this reason (at [9]):
I need to say something about the second reason for the delay. I can see no reason why evidence in answer cannot be completed before the decision of the EPO issues. The decision of the EPO will not constitute evidence that is relevant to this opposition. The decision of the EPO may highlight deficiencies in the applicant’s case (or the opponent’s case), and indicate that further evidence is needed. However, that can be addressed through further evidence (by either party). There may be efficiencies to the parties in delaying the hearing of the present opposition until after the EPO has made a decision, but that is different to extending the time for service of evidence in answer. I believe that the European opposition does not represent a reason that supports the extension of time.


Particularly in the case of companies operating internationally, it is not uncommon for parallel related proceedings to be taking place in multiple jurisdictions.

As a practical matter, eg due to commercial considerations, an outcome in one forum (especially in a major market such as Europe or the US) may influence the parties' strategies in other territories.  One or both parties to an opposition in Australia may therefore have an interest in delaying proceedings in order to reassess their position in view of decisions elsewhere.

In this case, the Delegate made it very clear that the Patent Office will not allow itself to be swayed by interests of the parties that are not relevant to the particular purpose for which an extension is sought.  The evidentiary stages of Australian opposition proceedings are independent of legal or administrative decisions that might be made elsewhere.

Of course, the outcome might well be different if the foreign proceedings were also at an evidentiary stage, and an extension was requested in order to enable the completion of parallel evidence, for example by the same expert(s).


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