CTHFCA

Suntory Holdings Ltd v Commissioner of Patents

[2013] FCA 999

Federal Court of Australia|2013-10-02|Before: Davies J

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Source facts

Court

Federal Court of Australia

Decision date

2013-10-02

Before

Davies J

Source

Original judgment source is linked above.

Judgment (10 paragraphs)

[1]

introduction 1 The applicant ("Suntory") has appealed the decision of the Commissioner of Patents ("the Commissioner") to refuse Suntory's request for leave to amend a complete specification ("the Request") made under s 104 of the Patents Act 1990 (Cth) ("the Act") ("the Decision"). The appeal is brought under s 104(7) of the Act. The Commissioner refused leave on the basis that she had no power to amend the complete specification in consequence of the enactment of s 112A of the Act. Section 112A came into effect on 15 April 2013 and applies to the amendment request "if the Commissioner had not dealt with the request" on or before 15 April 2013: Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth) ("the Amendment Act"), Sch 3, Part 2, Item 32(1)(b). If s 112A applies to the amendment request, the Commissioner must not amend the patent specification during the currency of an appeal to the Court by the Intervener ("DSM") against the Commissioner's decision in opposition proceedings to Suntory's patent application. 2 Four principle issues are raised by the appeal: 1. The proper construction of the transitional provisions relating to s 112A of the Act. 2. Whether the Commissioner "dealt with" the request before 15 April 2013. 3. The competency of the appeal. 4. The nature of the appeal pursuant to section 104(7) of the Act.

[2]

Factual background 3 On 4 August 2000, Suntory filed Patent Application Number 759623 "Process for Producing Unsaturated Fatty Acid-Containing Oils" as a divisional application ("the Patent Application"). The Patent Application was advertised as accepted on 17 April 2003 and a notice of opposition was filed by Martek Biosciences Corporation ("Martek") on 17 July 2003. Martek's interest in the opposition was subsequently taken over by DSM. 4 On 16 November 2012, the opposition was determined by a delegate of the Commissioner. The opposition was partially successful in that most of the claims were held to be valid but certain claims were held prima facie to lack novelty and a fair basis. Suntory was given 60 days to propose amendments to address the deficiencies with these claims. 5 On 7 December 2012, DSM appealed to the Federal Court under s 51 and/or s 60(4) of the Act against the Commissioner's decision ("the appeal"). The appeal is yet to be heard. 6 On 15 January 2013, Suntory applied to the Commissioner pursuant to s 104 of the Act to amend the complete specification by deleting the invalid claims. On 17 January 2013, the Commissioner sent a copy of the amendment request to DSM's patent attorneys and, in accordance with reg 10.2(6A) of the Patents Regulations 1991 (Cth) ("the Regulations") invited DSM to comment on the amendment request within 21 days of the date of that letter. That date was extended by agreement to 21 February 2013 and DSM responded by letter dated 21 February 2013. DSM's view was that Suntory's request application should be stayed until the appeal is determined "consistently with ordinary practice of the Patent Office". By letter dated 25 February 2013, Suntory put the view that a stay was not consistent with the ordinary practice of the Patent Office and requested that the Commissioner process the amendments "in the ordinary manner" and as soon as possible. 7 By letter dated 7 March 2013, the Commissioner notified Suntory that while Suntory's submissions "in relation to the normal practice of the Commissioner in such circumstances are correct at the present time", this practice would change as of 15 April 2013 when changes to the Act came into effect and in particular s 112A became operative which "clearly prohibits the Commissioner from amending any complete specification that is the subject of an appeal against a decision of the Commissioner". The letter informed Suntory that "in practice, this will mean that the Commissioner will refuse such amendments". The Commissioner notified Suntory that there was insufficient time for the amendment request to be processed before 15 April 2013 and "hence" that the Commissioner did not intend to process those amendments and was likely to refuse those amendments after 15 April 2013 if they had not been withdrawn in the meantime. The Commissioner informed Suntory that the options available to it were: to withdraw the proposed amendments and refile them after the appeal had been finally determined; or, to apply to the Court after 15 April 2013 for an order directing that the amendments be made under the provisions of s 105 of the Act. 8 On 12 March 2013, Suntory wrote to the Commissioner contending that s 112A of the Act would not apply to the amendment request by reason that the section would only apply to amendment requests that fell within the scope of Item 32 of Part 2 to Schedule 3 of the Amendment Act - that is, to requests for amendment that had not been "dealt with" by the Commissioner before 15 April 2013. It was put that the phrase "dealt with" was confined to the Commissioner's role set out in regs 10.1 to 10.5 of the Regulations. The Commissioner responded on 21 March 2013 explaining her understanding that s 112A would apply to the amendment request because, in her view, the phrase "dealt with" in the transitional provision referred to when the amendments had been finally dealt with, which included allowance of the amendment after the opposition period as specified in reg 10.6. The Commissioner repeated that there was insufficient time for the amendments to be examined, granted leave to amend, advertised for opposition and then allowed before 15 April 2013 and, accordingly, that she did not intend to process those amendments and was likely to refuse those amendments after 15 April 2013 if they had not been withdrawn in the meantime. 9 Suntory did not dispute that there would be insufficient time before 15 April 2013 for the Commissioner to process its request but remained of the view that s 112A, when it came into effect on 15 April 2013, would not prevent the Commissioner from considering its amendment request. 10 In response to a further letter from Suntory, the Commissioner on 3 April 2013 explained her understanding of how the transitional provisions operated and why s 112A would apply to the amendment request, notwithstanding that the request was initiated before s 112A came into effect. The Commissioner gave notice that she intended to write to Suntory on 15 April 2013 advising it that she intended to refuse the amendment and giving Suntory 7 days to be heard. 11 On 5 April 2013, Suntory wrote to the Commissioner declining the opportunity to be heard, and noting the Commissioner's intention to refuse the amendment request. Suntory identified that it had three options available, namely: appeal the Commissioner's refusal to allow the amendment request; apply to the Court for permission to amend the complete specification under s 105(1A) once that section came into force; or make a fresh amendment request once DSM's appeal had been finally determined. On 8 April 2013, the Commissioner responded that she agreed with the options identified by Suntory. 12 On 12 April 2013, Suntory initiated these proceedings. As foreshadowed, on 15 April 2013 the Commissioner wrote to Suntory advising it of her intention to refuse the amendment request and allowing 7 days for Suntory to file a request for a hearing, failing which she would refuse the amendment request. Suntory did not request a hearing and on 23 April 2013 the Commissioner wrote to Suntory advising it that the amendment request had been refused.

Issue 1: Meaning of "dealt with" in Item 32(1) 28 Suntory contends that s 112A of the Act is not operative in relation to its amendment request because the Commissioner had dealt with its amendment request before 15 April 2013. The basis for the contention was the step that the Commissioner had taken as required by reg 10.2(6A) to give a copy of Suntory's application request to DSM and to invite comments from DSM. The Commissioner, on the other hand, contended that she had not "dealt with" the request by 15 April 2013 because the request was not "dealt with" until it was refused, which was later. 29 On Suntory's construction, s 112A of the Act will only apply to extant applications made prior to 15 April 2013 if the Commissioner had not commenced to deal with the request in accordance with the Regulations by 15 April 2013 by taking one or more of the steps that she is required to take under the Regulations. Suntory argued that Item 32(1)(b) of Part 2 to Sch 3 should be read together with s 104(2) of the Act. It was put that s 104(2) draws a distinction between "considering" and "dealing with" a request and that the dichotomy supports the words "deal with" in s 104(2) as meaning to "take action with respect to". It was submitted that the actions required to be taken by s 104(2) are the steps mandated in the Regulations as part of the process by which the Commissioner ultimately considers whether to grant or to refuse the amendment request, and that where the Commissioner has commenced to deal with the request in accordance with the Regulations by completing one or more of the steps required of the Commissioner, it was no longer possible to say that the Commissioner has not dealt with the request in accordance with the Regulations. Suntory reasoned that reading s 104(2) and Item 32(1)(b) consistently, s 112A will only apply to extant applications where the Commissioner has not taken a step required by her under the Regulations. Suntory supported its construction by a claim that the transition provision gives effect to the principle lying behind s 8 of the Acts Interpretation Act 1901 (Cth) (now repealed) that statutory amendments should not take away existing rights without an express or clear contrary intention. 30 I accept the submission that the meaning to be assigned to the phrase "dealt with" in Item 32(1)(b) should be considered in the context of, and in conjunction with, s 104(2) of the Act. In my opinion however, the Commissioner has not "dealt with the request" within the meaning of that phrase as it appears in Item 32(1)(b) until the Commissioner either grants leave to amend, or refuses the request for leave to amend. 31 First, Suntory's construction does not give due regard to the statutory language. Section 104(2) of the Act and Item 32(1)(b) of Part 2 to Sch 3 of the Amendment Act have a textual difference. The language of s 104(2) requires the Commissioner to consider and "deal with" with the amendment request but the expression which appears in Item (1)(b) is the past tense of "deal with" - the words that appear are "dealt with", not "is dealing with". The use of the past tense in Item 32(1)(b) conveys, as a matter of ordinary meaning, something which has been done whereas the language of s 104(2) is the present tense. The Commissioner "deals with" the amendment request by taking the steps directed by the Regulations. The use of the past tense in Item 32(1)(b) is in contrast to the language of s 104(2). 32 In this context, the use of the past tense in Item 32(1)(b) can, and in my view should, be understood in the sense of a past act. The phrase "dealt with" in Item 32(1)(b) is used in juxtaposition to the language of s 104(2) of the Act which requires the Commissioner to consider and "deal with" the request "in accordance with the regulations". The Commissioner deals with a request "in accordance with the regulations" by following the process directed by the Regulations and either allowing or refusing the amendment. It is consistent with s 104(2) that "dealt with" in Item 32(1)(b) should be understood as the past tense of that which the Commissioner must do "in accordance with the regulations". The Regulations set out when the Commissioner must allow, and when the Commissioner must refuse to allow, an amendment. "Dealing with" the request involves, as a step, allowing the amendment or refusing to allow the amendment. 33 Thus, a request has not been "dealt with" by the Commissioner until the Commissioner has followed the process prescribed by the Regulations and has allowed, or refused to allow, the amendment. This construction does not involve imputing the word "finally" into the text, as Suntory contended would be necessary. In Euroceltique S.A. [2013] APO 30 Deputy Commissioner Spann succinctly reasoned as follows: 16. Consequently it can be seen that Chapter 10 of the Patents Regulations sets out as a whole how the Commissioner is to "deal" with a request to amend and dealing with the request includes, as appropriate, examination of the request (10.2), refusing requests to amend (10.4), granting of leave to amend and advertisement (10.5) and allowing the amendments (10.6). 17. In its submissions (including its earlier submissions of 27 March 2013) Euroceltique argues that Item 32(1) of Schedule 3 should not be read to apply where the Commissioner had not "finally" dealt with the amendment (suggesting that the delegate had impermissibly read in the word "finally") and that, as the amendments had "been dealt with (albeit not finally) by the commencement date", then the provisions of section 112A did not apply. It follows that it is the applicant's submission that "dealt with" includes any dealing with the amendments, including any consideration of the amendment by the delegate that occurred before 15 April. 18. In my view it is not necessary to read any additional words into Item 32(1) nor are the words unclear in the context of the Act. I consider that the words "dealt with" in Item 32(1) of Schedule 3 have a clear connection with the requirement for the Commissioner to "deal with" the request under subsection 104(2). As I have found above, Chapter 10 of the Regulations sets out how the Commissioner is to "deal" with requests to amend. "dealt" is simply the past tense of "deal" (Macquarie dictionary) so, accordingly, I consider that on the plain meaning the Commissioner has not dealt with an amendment if the Commissioner has started but not completed the processing of the amendments as required by all relevant provisions of Chapter 10 of the Regulations. In this case, she is still "dealing" with the amendment as required by the Regulations.I agree with those reasons. There is both textual and contextual warrant for giving the words the ordinary signification they have, when considered in juxtaposition with s 104(2) of the Act. I agree with, and adopt, the reasoning in this passage. 34 Secondly, I do not accept Suntory's argument that an "evident purpose" of Item 32(1)(b) was to preserve the Commissioner's power to amend under s 104 in respect of extant applications as at 15 April 2013 which the Commissioner had commenced to deal with, so as to avoid wastage of costs and resources. There are two short answers to this argument. First, that "evident purpose" is not apparent from the text nor does it emerge from the extrinsic materials and secondly, the purpose of the provision is elucidated by the clear meaning of the text considered in the context of s 104(2): Alcan (NT) Alumina Pty Ltd v Commissioner of Territory Revenue (NT) (2009) 239 CLR 27 at [47]; Commissioner of Taxation v Consolidated Media Holdings Ltd (2012) 293 ALR 257 at [39]. 35 Thirdly, I do not accept Suntory's argument that Item 32(1)(b) has no work to do on the Commissioner's construction because s 112A would have no application, in any case, to amendment requests which the Commissioner had allowed or refused prior to 15 April 2013. In my view, the work of Item 32(1)(b) is evident from its terms, which is to apply s 112A to requests for amendment made under the earlier legislation which the Commissioner was still "dealing with" when the new provisions were enacted. This construction both reflects the evident purpose for which s 112A and 105(1A) were enacted - that is, to streamline the amendment process - and gives full effect to the statutory language of Item 32(1)(b).