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

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

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.

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