Sunesis Pharmaceuticals Inc v Commissioner of Patents

The error or omission 4 There is no dispute that, by reason of an "error or omission" within the meaning of the section by Sunesis' patent attorney, Sunesis failed, despite its intention to do so, to apply for examination of the Patent Application. 5 The Patent Application had been filed on 5 October 2010. As the Tribunal noted, Sunesis is entitled to ask the Commissioner of Patents to examine the Patent Application at any time before 5 October 2015.

Chronology 6 The chronology of relevant events is as follows: Date Event 5 October 2010 The Patent Application filed 15 April 2012 The Amendment Act granted Royal Assent 15 April 2012 Commencement of sections 1 to 3 (both inclusive) of the Amendment Act 15 April 2013 Commencement of Schedule 1 of the Amendment Act 23 April 2013 The patent attorneys filed, on behalf of Sunesis, a request for examination of the Patent Application and of the complete specification lodged in respect of that application and an application for an extension of time of one month from 12 April 2013 to 12 May 2013 for the purpose of requesting examination of the Patent Application pursuant to s 223(2) of the Patents Act 1990 (Cth) (the Extension Application) 15 May 2013 In response to a direction by the Commissioner pursuant to reg 22.16 of the Patents Regulations 1991 (Cth) by letters dated 2 and 13 May 2013, Sunesis filed a request for examination of the patent request and specification relating to the Patent Application in the form prescribed since 15 April 2013 30 May 2013 The Deputy Commissioner of Patents refused the Extension Application

The Amendment Act 7 By s 2 of the Amendment Act, each provision of that Act commenced, or was taken to have commenced, in accordance with column 2 of the table included in s 2 (the Table). By the Table, ss 1 and 3 commenced on the day on which the Amendment Act received Royal Assent, namely 15 April 2012. 8 The Table also provided that Schedule 1 commenced the day after the end of the period of 12 months beginning on the day the Amendment Act received Royal Assent, that is, on 15 April 2013. The relevant provisions for this appeal are in Schedule 1, entitled "Raising the quality of granted patents". 9 Section 3 provided that each Act that is specified in a Schedule to the Amendment Act 'is amended or repealed as set out in the applicable items in the Schedule concerned, and any other item in a Schedule to this Act has effect according to its terms'. 10 Part 3 of Schedule 1 concerned "Application, savings and transitional provisions". Section 55(1) relevantly provided that amendments made by items 2, 3, 4, 6, 8, 9 and 10 of the Schedule apply in relation to: (e) complete applications for standard patents made before the day this Schedule commences, if the applicant had not asked for an examination of the patent request and specification for the application under section 44 of the Patents Act 1990 before that day. 11 Section 55(4) provided: The amendments made by items 12, 13, 14, 15 and 18 of this Schedule apply in relation to: (a) complete applications for standard patents made on or after the day this Schedule commences; and (b) complete applications for standard patents made before the day this Schedule commences, if the applicant had not asked for an examination of the patent request and specification for the application under section 44 of the Patents Act 1990 before that day. 12 That is, the Amendment Act provided a "grace period' of 12 months for a patent applicant to ask for examination under the Act prior to amendments but, if no request was made, the Amendment Act relevantly applied. 13 It is not in dispute between the parties that, for the purposes of this appeal, the Amendment Act generally introduced more onerous patentability requirements which, apparently, Sunesis did not wish to apply to the Patent Application. Sunesis seeks an extension of time under s 223(2) so that the Patent Application proceeds under the less onerous patentability requirements, which applied at the time of filing of the patent application. 14 The Explanatory Memorandum to the Amendment Act stated that the amendments there introduced would 'not unduly prejudice users of the system, particularly with respect to not affecting rights granted prior to implementation of the changes' and that they would 'give applicants control and certainty over whether the old or new rules apply to their patent application', such that an applicant could request examination before the commencement of the new regime, in which case the old rules would apply. 15 Accordingly, by means of transitional provisions, a 12 month period before the commencement of the new requirements was provided for, to enable applicants to decide whether to request examination under the old or new regime. 16 Sunesis asked for an examination of the Patent Application after the 12 month period from the date the Amendment Act was given the Royal Assent and sought an "extension of time" of 1 month for the purpose of requesting examination. 17 The parties have framed the appeal by reference to three questions. There is no dispute, and we are satisfied, that each concerns a question of law.

THE FIRST QUESTION 18 The first question is: Whether asking for an examination of a patent request and specification (as referred to in clauses 55(1)(e), 55(4)(b), 55(9)(e) and 55(10)(b) of the Schedule to the Amendment Act before the day on which the Schedule commenced is a 'relevant act that is required to be done within a certain time' within the meaning of, and subject to, s 223 of the Act?

The decision of the Tribunal 19 The Tribunal accepted that, while there was no requirement that Sunesis ask for examination before 15 April 2013 as it could make that request at any time before 5 October 2015, 'required' in the context of s 223 means 'requisite… in order to secure an advantage'. The advantage was the application of the less onerous patentability conditions. 20 However, the Tribunal determined that s 223 does not provide the Tribunal with the power to accede to Sunesis' request. 21 The Tribunal reasoned that s 55 of the Amendment Act did not 'require' anything to be done; it determined the patent applications to which the amendments to the Act, as set out in the Amendment Act, apply. No period of time was referred to but rather a state of affairs. The only reference to time or date was the day on which Schedule 1 commenced and there was nothing required to be done in the period between Royal Assent and commencement. Accordingly, the Tribunal concluded, there was no act 'required' to be done in the sense referred to in previous cases that considered s 223 and its predecessor, in that there was no definite or specified period of time in which an act was to be done or could have taken place and there was no period of time which could be extended. 22 It follows, the Tribunal concluded, that the power conferred in s 223 was not applicable to s 55 of the Amendment Act. 23 The Tribunal also considered that the request for an extension of time did not in fact seek an extension of time. It pointed out that no such extension was needed, as Sunesis has until 5 October 2015 to request the examination. Rather, as the Tribunal said, Sunesis was really seeking that the Tribunal change the date on which Schedule 1 commenced in relation to its application to the Commissioner. That is, Sunesis was asking the Tribunal to amend the provisions of the Amendment Act, which the Tribunal does not have power to do.

Sunesis' submissions 24 Sunesis contends that the Tribunal erred in these conclusions. It says that there was a relevant act that was required to be done because it was something that a patent applicant had to do in order to obtain a benefit, being the less onerous patentability regime; it had to be done within a certain time, being the day before the Amendment Act commenced. 25 Sunesis submits that s 223(2) of the Act is enlivened because: (i) a 'certain time' was fixed (15 April 2013); (ii) within which to do a 'relevant act' (ask for examination of the Patent Application); (iii) which was 'required to be done' (in order to maintain the benefit of the Patent Application being subject to the rules that were in force at the time the Patent Application was prepared and filed). 26 Sunesis also submits that its circumstances are 'the very mischief which a remedial provision such as s 223 was intended to address' and that there is no statutory or other consideration rendering the section inapplicable, confined or excluded.

Principles that apply to the application of s 223(2) of the Act 27 Previous consideration of this section and its predecessor has led to the following principles being established: Section 223 is a remedial section and one of general application and should be applied where it appears to be applicable unless there is some clear indication to the contrary (Scaniainventor v Commissioner of Patents (1981) 36 ALR 101; GS Technology Pty Ltd v Commissioner of Patents (2004) 63 IPR 9 at [50]). The critical question is whether there is an act or step required to be done or taken within a certain time, in the sense of Australian Paper Manufacturers Ltd v CIL Inc (1981) 148 CLR 551 at 555). The section will relevantly apply where there is an error or omission and the applicant has failed to take a step or act within a required time in relation to a patent application, thereby losing a benefit or advantage or suffering or failing to avoid a disadvantage. "required" describes the nature of the link between the doing of the act and the time for the doing of it. 'As long as the provision in question is either permissive of the doing of an act or else confers a benefit or right as a result of doing it, being in either case linked with a period within which it is to be done, "required" can aptly be used' (Australian Paper at 557 per Stephen J, considering the predecessor section, s 160 of the Patents Act 1952 (Cth) (the 1952 Act)). Before the section applies, 'there must be an act which is required to be done or a step which is required to be taken and a time specified within which the act is to be done or the step is to be taken' (per Brennan J at 560). An act is required to be done if the omission to do the act attracts, for example, the loss of a right or privilege, rather than merely resulting in the loss of an opportunity of gaining a right or privilege (per Brennan J at 560). 'Required', also used in s 160(2) of the 1952 Act, means 'requisite' or 'needed' in order to secure an advantage or avoid a disadvantage (Scaniainventor at 104). 'Whenever the doing of some act is linked with a period within which it is to be done it can with perfect accuracy be described as being required to be done within that period… where the provision in question confers a benefit, the doing of the act within the period may be a condition of obtaining the benefit… the word 'required' will aptly describe the nature of the link between the doing of the act and the time for the doing of it' (Australian Paper at 556). In the absence of 'quite compelling contextual or other considerations', the section must apply to permit or empower the granting of extensions: Australian Paper at 557; Scaniainventor at 105; Lehtovaara v Acting Deputy Commissioner of Patents (1981) 39 ALR 103. 28 There is no dispute that, as recently explained by Crennan, Bell and Gageler JJ in Alphapharm v Lundbeck (2014) 314 ALR 182 at [65] and by Keifel and Keane JJ at [106] and [115], s 223 is a general remedial provision which empowers the Commissioner to extend the time for doing a relevant act which has been required to be done within a certain time and has not been done because of an error or omission by the person concerned, or his or her agent or attorney. It is, however, concerned only with extensions of time (at [65]).

Consideration of question 1 29 Sunesis' application is misconceived. We agree with the reasons of the Tribunal. 30 A difference between previous authorities considering the application of s 223(2) or its predecessor, s 160(2) of the Patents Act 1952 (Cth), is that those cases, including Alphapharm, dealt with the application of the power of existing statutory and regulatory provisions with specific requirements as to action and timing established by the legislative scheme, as in force throughout the relevant time. This case is about the applicability of the power to extend in s 223 in circumstances where the requirement to act within a certain time is said to be derived from the commencement of a legislative amendment which was not in force when the relevant act, the request for examination, was said to have been "required". Here, Sunesis urges the exercise of the power in s 223 in order to maintain the application of the legislation in the form prior to the date of the request on the basis of a request made, or action taken, after amendment when the legislation was in a different form. 31 Section 223 does not apply, even accepting that the application for examination was a 'relevant act', as it was an action in relation to a patent application, and that a request for examination prior to the commencement of Schedule 1 to the Amendment Act was requisite, or needed, in order to secure the advantage of examination under the less onerous requirements for patentability under the Act. 32 Schedule 1 to the Amendment Act commenced on 15 April 2013. Providing an extension of time as requested, from 12 April 2013 to 15 May 2013, does not affect the operation of Schedule 1 as at 15 May 2013. Sunesis is really requesting the Commissioner to deem an application made on 15 May to have occurred on 12 April 2013. That is not the power granted in s 223(2) of the Act, which is to extend the time for doing an act. 33 Moreover, s 55(4) of the Amendment Act specifically provides for the state of affairs of a patent application for which no application for examination had been filed by 15 April 2013. That operates as a legal consequence determined by the facts that exist, the state of affairs, as at that date. The transitional provisions specifically provided for the application of the Schedule to the circumstances that existed on or after 15 April 2013, the time when the Schedule came into force. 34 In the present case, the application for examination could be made before or after 15 April. Before 15 April 2013 the Act applied, because the Amendment Act did not commence until that date. After 15 April 2013, including on 15 May 2013, the Amendment Act applied. An extension of time in which to make the application for examination of the patent application does not back date the request for examination, it extends the time in which an application can be made. Section 223(2) of the Act cannot prevent "the Sword of Damocles" from falling on that date. 35 The first question is answered: "No".

THE SECOND QUESTION 36 The second question is: Whether the Respondent has power under s 223 of the Act to extend the time for asking for an examination of the Patent Application where because of 'an error or omission by the person concerned or by his or her agent or attorney' (within the meaning of s 223(2) of the Act) the Applicants did not in fact ask for the examination before the day on which the Schedule commenced? 37 The parties agreed, and the Tribunal accepted, that the failure to request examination before 15 April 2013 occurred through an error or omission of Sunesis' agents or attorneys. Sunesis asks the Court to affirm the finding of the Tribunal. 38 In the light of the answer to the first question, there is no need for the court separately to consider the second question.

THE THIRD QUESTION 39 The third question is: Whether if the extension of time sought in this case were granted, the requirements of the Act, as they stood before the day on which the Schedule commenced, would therefore apply to the Patent Application? 40 This question is answered "Yes" for the reasons given for the answer to question 1. I certify that the preceding forty (40) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justices Bennett, Greenwood and Middleton.