-—————* JUDGMENT No. Te. Be. IN THE FEDERAL COURT OF AUSTRALIA ) ) NEW SOUTH WALES DISTRICT REGISTRY ) No. G.482 of 1987 ) GENERAL DIVISION ) The Application of RHONE~POULENC SA and RHONE-POULENC AGROCHIMIE i 28 JANI988 \ FEDERAL COURT OF AUSTRALIA PRINCIPAL REGISTRY Applicants EX TEMPORE REASONS FOR JUDGMENT "ys BURCHETT J. This is an application under s.90 of the Patents Act 1952 for an order extending the time within which the applicants may file a petition for an extension of the term of 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 1n itself provide a bar, since it 1s even possible for an application for an extension of time, to file a petition for the extension of a patent, to be filed after the patent has expired: Sanofi v. Parke Davis Proprietary Limited (1983) 152 C.L.R. 1. In that case, as appears from the dissenting judgment of Deane J. in 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 eight * months after the expiry of the patent. The present application 1s made by the applicant Rhone Poulenc SA as the patentee whose name appears on the register, and by Rhone Poulenc Agrochimie 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 relating to chemicals of this sort that there may be a long waiting period, after their invention, before regulations designed to protect the public from possibly harmful compounds can be satisfied, so as to permit exploitation 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 provided: "1. The Applicants file and serve on the Commissioner of Patents on or before 23 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 opinion 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 within the scope of the claims of Letters Patent 456312 ('the Patent') are known to be used; 3. (b) an 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 application for an extension of time within which to present a petition for an extension of the term of the Patent to all persons referred to in 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 Rhone-Poulenc SA and Rhone-Poulenc Agrochimie have applied to the Federal Court' of Australia for an extension of time within which to present to the said Court an application seeking an order 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. Copies of the affidavits 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 application, and the Commissioner of Patents has appeared by counsel to assist the Court. That assistance 1s important in cases of this kind, and I propose to make an order that the applicant pay the Commissioner'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, 1s a factor which 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 reliance is placed on the affidavit of Francois 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, T 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 which to do so, since the latest date for advertising such a petition would have been 5 March 1987. In all the circumstances, I do not think any unreasonable delay occurred between May 1987 and the filing of the application on 2 October. The overlooking of the matter prior 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 5. the filing of the necessary petition under Australian law. There are in fact very few countries in the world where an extension of a patent is possible, and it is not possible in France. Accordingly, some degree of confusion or lack of knowledge on this subject 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 responsibilities in relation to patents in British Commonwealth countries, but nevertheless the applicants were not advised of the position in relation to this particular patent. The law in relation to such applications has been considered in a number of cases, and it 1s clear that the Court has a very wide discretion. It has been held that a distinction 1s 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. Tn the former type of case the Court will be less likely to grant an extension of time, but in the latter it has been said 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 failure to proceed diligently was unintentional and should fairly be attributed to inadvertence would normally be accepted as sufficient." See also Re Lister & Company Limited's Patent (1974) RPC 462; In the Matter of Petersen's Patent (1921) 38 RPC 267; Re Bulk Materials (Coal Handling) Services Pty Ltd v. Enviro-Clear Company Inc. (Cohen J., unreported 11 June 1986); In the matter of Sandoz Patents Limited (supra). However, the decisions to which I have referred are simply examples of the exercise of discretion in particular contexts. They cannot limit the broad discretion conferred on the Court by the words of s.90(1): "or within such further period as a prescribed Court allows". Those words are unconfined by any rigid rule. In the Sanofi case (supra, at 15) the joint judgment of Mason A.C.J., Wilson and Dawson JJ. contains the following 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 which 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." 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) which gives effect to its natural and ordinary 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 applicants 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 Commissioner 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. Wie Associate Dated: 18 DecenBer, 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 Solicitor for the Commissioner Australian Government of Patents: Solicitor Date of hearing: 18 December 1987.