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Advanta succeeds again in second extension of time application opposed by Nufarm

by , | Oct 12, 2023

Nufarm Australia Ltd v Advanta Seeds Pty Ltd [2023] APO 51

Date:

Venue:

Delegate:

5 October 2023

Australian Patent Office

Neil Miller

Highlight

In this unappealed Patent Office decision Advanta’s second application for extension of time to pay renewal fees (this time relating to the 2018 renewal fees) was allowed, consistent with the approach taken by the Federal Court decision in parallel proceedings relating to the 2017 renewal fees.

Background

We previously reported on the decision of Justice Downes of the Federal Court in relation to Advanta’s first application for an extension of time (EOT) to pay the 2017 renewal fee for its patent AU 2009304572 (Patent) to a hybrid plant cell (Nufarm Australia Limited v Advanta Seeds Pty Ltd [2023] FCA 109) (2023 Court decision).

Advanta’s woes did not end with the grant of the EOT to pay the 2017 renewal fee.  Following the AAT decision, on 1 June 2022 Advanta filed a request for an EOT of 38 months to pay the next renewal fee (the 2018 renewal fee).  The deficiency in this case was not so much late payment, but rather underpayment of the necessary renewal fees and late fees to restore the patent.  This decision focusses on a shortfall between the fees paid by Advanta ($2600) and the actual fees payable for restoration of the patent ($3000).

Nufarm opposed Avanta’s second s223 application, the Patent Office rejecting the opposition.    

Key Issues

Advanta’s application for an EOT was based on an error or omission by either Advanta or its external lawyers (Clifford Gouldson) under s223(2) of the Patents Act 1990 (Cth) (Act), and of IP Australia under s223(1).  The fees for the 2018 renewal and restoration were calculated by Advanta’s agents following discussions with IP Australia, and the underpayment only came to light after the decision of the Administrative Appeals Tribunal in relation to Advanta’s EOT to pay the 2017 renewal fee (we report the Federal Court decision in Nufarm’s appeal from that decision, Nufarm Australia Ltd v Advanta Seeds Pty Ltd [2023] FCA 109 , here).

S223(2)

Nufarm argued that as Advanta failed to provide evidence as to the individual responsible for calculating the incorrect fee, it failed to establish that there was a relevant error or omission.  It pointed to an ‘evidentiary gap’ submitting that Advanta had not made full and frank disclosure of the circumstances surrounding the error, such that the Delegate’s discretion should not be exercised in Advanta’s favour.  Advanta submitted that the beneficial operation of s223 applies not only in the exercise of the discretion but whether it is enlivened in the first place, consistent with the decision of Downes J in the 2023 Court decision.  The Delegate found that the ‘gap’ was not indicative of a failure or unwillingness of Advanta to provide full and frank disclosure, but rather underscored the process breakdown.

Like the earlier proceedings, Nufarm submitted that a failure to do the relevant act cannot itself be the error by which the failure occurred.  The Delegate held this was not the case here, finding that the relevant error was the erroneous calculation of the amount payable, or failure to ensure that the amount of the fees entered during the lodgement of the extension of time request was correct and sufficient to restore the patent.  The Delegate found this error was sufficiently linked to the failure to pay the correct amount to satisfy the causal connection requirement under s223(2).

S223(1)

While there is no procedure to oppose applications under 223(1), the Delegate considered Nufarm’s position for completeness.  The Delegate found that because there was no evidence that the calculations made by the external lawyer who spoke to IP Australia actually factored into the calculation of the amount paid, no causal error or omission on the part of IP Australia was found.

Outcome

The Delegate was satisfied that the failure to pay the correct fee was the result of an error or omission enlivening the provisions of s223(2)(a) and exercise of discretion to grant the extension of time was appropriate.

About Pearce IP

Pearce IP is a boutique firm offering intellectual property specialist lawyers, patent attorneys and trade mark attorneys to the life sciences industries (in particular, pharmaceutical, biopharmaceutical, biotech, ag-tech and food tech).  Pearce IP is the 2021 ‘Intellectual Property Team of the Year’ (Lawyers Weekly Australian Law Awards) and was shortlisted for the same award in 2022.  Pearce IP is ranked in IAM Patent 1000 and Managing IP (MIP) IP Stars, in Australasian Lawyer 5 Star Awards as a ‘5 Star’ firm, and the Legal 500 APAC Guide for Intellectual Property.

Our leaders have been recognised in virtually every notable IP listing for their legal, patent and trade mark excellence including: IAM Patent 1000, IAM Strategy 300, MIP IP Stars, Doyles Guide, WIPR Leaders, 5 Star IP Lawyers, Best Lawyers, and Australasian Lawyer 5 Star Awards, and have been honoured with many awards including Australian Law Awards – IP Partner of the Year, Women in Law Awards – Partner of the Year, Women in Business Law Awards – Patent Lawyer of the Year (Asia Pacific), Most Influential Lawyers (Changemaker), among other awards.

Naomi Pearce

Naomi Pearce

CEO, Executive Lawyer (AU, NZ), Patent & Trade Mark Attorney (AU, NZ)

Naomi is the founder of Pearce IP, and is one of Australia’s leading IP practitioners.   Naomi is a market leading, strategic, commercially astute, patent lawyer, patent attorney and trade mark attorney, with over 25 years’ experience, and a background in molecular biology/biochemistry.  Ranked in virtually every notable legal directory, highly regarded by peers and clients, with a background in molecular biology, Naomi is renown for her successful and elegant IP/legal strategies.

Among other awards, Naomi is ranked in Chambers, IAM Patent 1000, IAM Strategy 300, is a MIP “Patent Star”, and is recognised as a WIPR Leader for patents and trade marks. Naomi is the 2023 Lawyers Weekly “IP Partner of the Year”, the 2022 Lexology client choice award recipient for Life Sciences, the 2022 Asia Pacific Women in Business Law “Patent Lawyer of the Year” and the 2021 Lawyers Weekly Women in Law SME “Partner of the Year”.  Naomi is the founder of Pearce IP, which commenced in 2017 and won 2021 “IP Team of the Year” at the Australian Law Awards.

Chris Vindurampulle PhD

Chris Vindurampulle PhD

Executive, Patent & Trade Mark Attorney

Chris is a senior Patent and Trade Mark Attorney who is registered to practice before the intellectual property offices of Australia and New Zealand.  He is experienced in patent drafting, patent and trade mark prosecution and opposition, and freedom to operate, opinion and due diligence work.  Through his experience and delivery of highly-regarded client service, Chris has been recognised as a leading patent practitioner having been listed in the IAM Patent 1000 as a recommended individual for patent prosecution, and a Rising Star in 2021, 2022 and 2023 by Managing IP.

Kate Legge

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Special Counsel, Lawyer

Kate is an experienced IP and patent lawyer, providing IP leadership for pharmaceutical product development and commercialisation in global markets – from initial scoping through to post-launch.

She has developed and implemented global IP strategies over more than 15 years at multi-national pharmaceutical companies. She is an Australian qualified and registered legal practitioner, and has a Master’s degree in IP Law and a BSc in biochemistry.

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