LIMITED DISTRIBUTENDGMENT No. SSO Sorc IN THE FEDERAL COURT OF AUSTRALIA } } VICTORIA DISTRICT REGISTRY } VoNo. G 132 of 1989 } ) GENERAL DIVISION A Petition pursuant ta Section 90 of the Patants Act 1952 by BRISTOL-MYERS COMPANY the proprietor of Australian Letters Patent No. 462, 357 to axtend the term of Australian Lettars Patent No. 462, 657 for a further term of ten years. COURT: NORTHROP J. DATE: 1 JUL? 1988 PLACE: MELBOURNE REASONS FOR JUDGMENT Ac the conclusion of the hearing ar this application on 17 June 1388, tne Cours made an order that the time within which the applicant, Sristol-Myers Company, could lodge a petition under 5.30 af the Patents Ach 1352 for an extension of the term of the Australian Letters Patent 462, 657 be extended to 24 Jume 1338 and ordered that the applicant pay the costs of the Commissioner of Patents and of the objector David Bull Laboratories Pty. Ltd. At the same time the Court announced that it would publish 1ts raasons for so doing at a later time. These ara those raasons. The applicant is a corporation organised and existing under the laws of the State of Delaware and has its principal place of business at 345 Park Avenue, New York. It is the registered proprietor of Australian Letters Patent Number 462, o57 (the Patent) dated as from 7 July 1372. Unless extended, the term of the Patent 15 due to axpire sn July 198d¢ being the expiration of the normal 16 year period. Under sub-section 30(1) of the Patants Act:- "30(1) A patentee of a standard patent who considers that he has been inadequately remunerated by his patent may, after advertising, as prescribed, his intentionm to ito 350, présent to a prascribed court, at Least 6 months before tne axpiration af the term of She patent, or within such further period as a prescribed court allows, a petition praying thas his patent be axtended for a Further term'. The applicant desires co gresent a petition to ehis Court, Seeing 4 sr@scribed court, graying that che factent be extended for a further term sf ten yaacs; see 5.34, cut did V@rCtlss, as prascribed, Lbs sntantion to do s0 wrethin fi a cr no the time mentioned in sub-section 90\l, go as to anaole it to present 1t5 petition betsre the expiration of tha term of the Patent on 7 July 1388. In order to comply with che cequirsments of sub-section 30(1) the applicant should have advertised 165 intention to petition no later than 7 December 1987 and prasented 1t5 setition no later than 7 January 1939839. In fact, it advertised, as prescribed, 1ts intention to petition in the Australian Official Journal of Patents on 1+ January 1383. By application dated 15 Aprit 1323 1b sought an order under sub-section 390(1, that the time within which 1t could petition for an extension of term oF the Patent bea extended. At the first directions hearing, in accordance with che normal practice, the applicant was directed to give notice of its application for an axtenmsion of time. The applicant did this. At the hearing of the application the Commissioner of Patents appearad to assist the Court and David Bull Laborator1as Pty. Ltd. ("the objector") appeared to oppose the granting of the éxtansion of time. It must be rememberad shat this application ralates to an application for axtension si time within which '9 present a petition for axtension of term of the Patent. The application does not relate to any other question relevant to a petition For eaxteansicn of term of the fatent. The discretion confarrad on the Court by sub-saction 30\1; ta grant an extension of time is unfettered. The power to grant an extension of 'time continues even though the term of the patent has eaxpiréd before an applicatiscn for axtension of Gime 15 made; s@e Sanofi v7 Parka Davis Pty Std CNo. 2] (1983) 152 c.0.R. 1. In that case, in discussing tne natura of the discretion conferred by sub-section 3011) to grant an bb extensicn of time, Mason A.c.d. and Wilson and Dawson JJ said ab p.lS:- "The existence of a wide discesation in the Court does mot mean that 1t should, or would, ever he exercised lightly un favour of a sgeatitioner and never in the absenca of circumstances which persuade che Court that notwithstanding tne delay .n seeking the extension of the tearm of a patent that delay 1s suffircientiy axplained and ought to be excused". In the present case, 1t should be noted that the advertising of the intention to petition for an axtension af term was given just 38 days too late to avoid the need to make application for the extension of time to advertise. The request that the advertisement be published in the Official + cements ove Journal was made in December 1987. This short period of time was relevant in the exercise of the discretion to grant the application for the extension of time. The invention the subject of the Patent i5s a pharmaceutical compound for therapeutic use. The applicant ls a large organisaticn engaged in wide ranging activities involving pharmaceuticals for therapeutic use. It holds a large numer of patents throughout the world. Por many @ars, the apolicant mad employed the firm Fhzliiss Jrenonde & at} Fitzpatrick, a3 105 Patent Attorneys with ressact to vsatent matters in Australia. My Maicoim John Royal 215 a savtenct attorney and a member of that Firm. It had acted for the applicant in respect of the oayment oF ranewal fees for patents held by che applicant in Australia but in 1381+ the applicant transferred the fae payment work with respect to 1ts patents to Computer Patent Annurties, a firm located un Jersey, the Channel Islands. Since tnen that firm has handled the payment of ranewal fees with raspect £o the = Patent. Me Royal had adopted the oractice of advising 2 behalf' he pald canewal fees, of the wu clients on who possibility of vbtaining an extension of term under 5.30 6 the Parents Acc. This ceamindeér was given normally cowards the and of the TFafteentnh year of a patanc. In about October 1987, the Government, by press-release, announced its intention to amend the Patents Act by removing the provisions relating to the extension of teem of up to 10 years and to include provisions to allow for un an e2xtension or + yaars for patants calatad ta pharmaceuticals For human use. The details of the oroposad amendments were not given but 1t was apparent that che new provisions authorised the Commissioner of Patents to extend the term under proceduras more simple and less axpensive than the existing procedures. By letcer dated 3 October roy ww "4 and received on 15 October 1387, Mr Royal wrote to the apolicant in general terms drawing the attention of the applicant to the announcement of the Government with respect the extension of term of patents for pharmaceuticals for numan use. The letter anclosed ai copy of the prass-relaase, out made no eaterance to the Patent. The letter contained the Fsllowing paragraph: - "To 1s not clear wnen tha Act will be amended. However, -L0 d025 nOC appear tnac changes will come into frorce until at Laast mid-1388. ae beliave tnat the provisions will allow for the processing of petitions for extension chat nave been made already. AS a rasult, 1f£ jou are contemplating a petition you should give consideration to fuiling this bersre the legislation comes into force. In the case of pharmaceutical unventions you will need co determine whether the extra cost and ris under the old Act where a ten year extension is available 13 justif:ed given che new Drovisions which will allow Four year axtensions cheaply". In a telephone conversation on 10 Decamber 1387, Mr Samuel DuBoff, a patent attorney employed by che applicant in New York as Lbs patent counsel, [International Group, sought Further aiunformation from Mr Royal concerning a petition for extension of term of the Patent. He was told that 1¢ was too Late to give the notice sf intantion to petition for an extension of term in accordance with 5.30 of the Patents Act but that an application for an extension of time could be made. General advice was given by Mr Royal. On 15 December 1587 Mr DuBoff instructed Mr Royal to prepare a petition for an extension of term of the Patent and to make application for an axtansion of time within which the petition for extension could be presented. On the same tay Mr Royal requestaad the Commissioner of Patents to place the eequirad advertisement in the official Journal as soon as bla. The advertisement appeared in thea Journal on 1+ oy a January 1338. On the advice of Mr Royal, the application for extension of Filme was not filed until c-he petition for extension of term had been prépared. I am satisfied that there was no undue delay in the preparation af the petition and that in the circumstances there was no undue delay in Waiting until 15 April 1328 before the application for extension of time was Filed. The secition Far extensicn of fa fa ba e cr a ry = La wo Q bat] fu Ee la a G ny a H =] term 13 exhibited to che art uw c 'a a] a ny arh cr or ci) fu ba] Ry ra bw ti fu a Pe a a bay is) Le] i) tH ct i is} bi # iy) a QO A, or rey FS] Ib The application came on for hsaring befor2 me on 7 June 1988. In support of the application, the applicant relied upon an affidavit sworn by Mr DuBoftl in New York on 15 April 1988. That affidavit contained the following Paragraph:- "a "2. Ihave bean aware for many years that ub 15 possible to apply for an extension of term of an Australian patent. Furthermore, I have heen aware for a number of years that any Application or Petition for extension of term of a patent ain Australia must be filed before the axpiry of tha term of that patent. However, at all relevant times and certainly during the period October 1987 until December 1987 [ was unaware of the Specific time requirements contained in the relevant Australian legislation that govern che procedure for applying for an extension of term of an Australian patent". It was impracticable to require Mr DuBorf to attend for cross-examination on his affidavit and this led to some practical difficulties for the objector. In September 1332, on the application arf the applicant as an exclusive licensee of a patent; se@ 5.36 of tha Patants ac ct , the Supreme court of Vicctorra had extended the period undar sub-secricen JO0(1, of the aAct to a@naple the applicant to petition for an axtension of tarm of another patent. dJudgmert was given SF Brooking J. on 2 September 1982 but 15 not reported. A copy of the judgment was before me. The applicant did not proceed with 1ts petition for extension of term of that patent. Mr Duboff was involvad in those proceedings on behalf of the applicant. It was contested by counsel for the objector that the contents of paragraph 2 of the affidavit of Mr DuBoff was of doubtful veracity having regard to che earlier proceedings. The hearing of the application proceaded on 7 June 1988 and was adjourned to enable the applicant oursuant bo an order of the Court to produce documents both from Australia and from the United States of America. The hearing resumed on 17 June 1988 when the applicant and Mr Royal claimed privilege, successfully, with respect to some si those documents, s5@@ sub-section 1L34(1A) of the Patants Act. 2 an n The bill foreshadowed by the orass-ralea the Occober 1387 was presented in Parliament and read fo first ¢ime on 3 June 1388. That was the first time that the ct details of the alterations to Part IX sf the Patants Ac , being the Part providing for extension of terms of patents, became known. Reference will be made later to the terms of that bill. Counsel for the objector contended that the Court Should not grant the axtension of time for a number of reasons. He contended that che applicant had fazrled to prove that ut had not made a deliberate decision not €9 saek an extension of term of patent. He suomitted tnat che authoritias showed chat if a decision had been made not toa seek an extension, and subsequently a change of mind had occurred, the Court should be lcathe to grant an axtension of time in which to petition. He submitted further that even during the adjournment of the hearing, Mr Royal, knowing of this submission, had not sought iunst¢euctisns from the applicant as to whether 21t had ever decided mot £5 petition for an extension of term of the Patent. He contended further that in seeking an order for axtension of time, the authorities disclosed that an applicant was under a duty to make full disclosure of all relevant facts, that in this case the applicant had not disclosed the proceedings for axtensicn of time made in 1982 and that this should be a factor against the granting of an axtension of time since Mr DuBort must have known of the Lagal requirements applicable in Australia. He contended further that the intention to petition was not genuine since the application was being made by the applicant ko praserve its rights ¢9 proceed under the proposed amendments to the Patents Act. accepting for the sursose of this apolication that the authorities show thak a decision not to 588k an axtension fo heart and a failur2 to maxa a arm Followed by a cnange ar or ib fa} H a cr a » i n a c full disclosure ara ca@lavyant factors co be tak In tne a@xercise of a discre@sicn to grant an axtansion of ail Ene material darors me, thas A fa) a time, I am not satisfie elther of those matters have been made out. It is true that a reasonably prudent business man should adopt pracedurss to @nsurs that time limits applicable to an important part of the business should be brought to the attention of management to ansure those time limits are observed. Mr Royal has adopted such procedures with respect to axtension of terms of patents held Sy his cliancts. At the same time rt is noted that not all countrias make provision for axtension of tarms of patents. Having regard to the size fal +) of the applicant s business, 14 cannot be axpected that Mr DuBof& should know Che details of all time requirements in respect of all patents in all countrias. The contents of Paragraph 2 of his affidavit appear reasonable and I accept the contents as true. The fact that no reference is made to the 1982 decisiom does not detract from the acceptance of chat paragraph. There is no basis for any inference that the applicant aver made a decision not Eo petition For an extension of tearm of the Patant. I can see nothing wrong with the applicant a protecting its rights by petitioning for an extension of tear of the Patent before deciding whether to proceed with the petition or to take action under proposed legislation the Serms of which were not known. A consideration of the orovisions of the bill indicates that difficult questions of construction and application could arise. For present purposes 1t 213 sufficient to say that the proposed provisions apgear +o eanabla the applicant to maka a claim 'for an Fockarm of che fFataent, or, alctarnatively ts h its petition. It appears that for the purpos a) axtensiron er 1) continue wl of the transitional provisions, the apolicant commenced its proceedings under the existing legislation on 15 December 1387, see cl.7 of the bill, and thus has thea right toa comtinue with the petition under sub-cl. 3(L). These are matters which do not nead to be decided in this application. For the purposes of bhis application 1216 15 sufficient to say that in my opinion nothing has been shown to justify a refusal to grant the extension of time. If tha applicant had advertised on or before 7 December 1987 its intention to petition for an extension of term of the Patent, none of the praesent difficulties would nave occurrad. tt wanted to extend the term. It was at fault in not having a +e *% system to ansure it gave notice within the required time. I could see no way in which, om the facts of this application, the public interest would be adversely affected by the granting of the extension of time. The applicant was seeking and was granted an indulgences From the Court. It was at fault. The objactor was entitled ts appear and sopose the application. The Commissioner was, according ts normal practice, antitlad ts his costs. halt + cea che ten (ic) "A205 Maro: are a tive copy of the ide Bt wd. gutgment heen cf tie Ns abel Tusuce R MY) Northap aye rs Po anone Ter treds (aN tan — Sharm F acu TSNTIALS Fated: | Tuy IF2R Se See,