In Sunesis Pharmaceuticals Inc and Anor and Commissioner of Patents  AATA 858 the Administrative Appeals Tribunal (AAT) has upheld a Patent Office decision to refuse an extension of time to enable an examination request filed after 15 April 2013 to be considered under the law which applied prior to sweeping patent reforms which commenced earlier this year.
The decision is a further blow not only to the applicants in this particular case, but also to others who may have unintentionally missed the opportunity to have their applications assessed under the former law. As a result of the reforms, patents granted under the revised law may be restricted to a narrower scope, or be more vulnerable to challenges, than had previously been the case.
Background - 'Raising the Bar' Reforms
On 15 April 2013, the Australian Intellectual Property Laws Amendment (Raising the Bar) Act 2012 commenced. Among other reforms, the Act raised a number of the standards which apply to Australian patents, including the level of inventiveness required to support a valid patent, and the quality and extent of the disclosure required to justify broad patent claims.
The new provisions apply to all applications for which a request for examination had not been filed prior to 15 April 2013. There was therefore some potential benefit for applicants to request examination prior to commencement of the reforms, so that the former lower standards would continue to apply to their applications, and the resulting granted patents.
This led to a 'rush' on new applications and examination requests in the weeks leading up to commencement. Inevitably there were some applicants who, for one reason or another, failed to get their examination requests in on time.
One such case was an application filed by Sunesis Pharmaceuticals Inc and Millennium Pharmaceuticals Inc, in which the date was inadvertently missed, and an examination request was not filed until 23 April 2013. The applicants sought to 'extend' the time for filing the request under the old law, using the provisions of section 223(2) of the Patents Act 1990. These provide that when 'a relevant act that is required to be done within a certain time is not, or cannot be, done within that time' as a result of an error or omission by the applicant or their agent, the Commissioner of Patents may extend the time.
The Patent Office denied the extension request, reasoning that there was no requirement under the Patents Act for an examination request to be filed prior to 15 April 2013 even if, in the circumstances, there may have been some benefit to the applicant in doing so.
The applicants appealed the refusal to the Administrative Appeals Tribunal (AAT), which has upheld the Patent Office decision.
There was no dispute that an 'error or omission' had occurred. However the Tribunal agreed with the Commissioner that filing a request for examination prior to 15 April 2013 was not 'a relevant act that is required to be done within a certain time' within the meaning of section 223. Furthermore, the Tribunal found that:
What the Applicants are really seeking is that the Tribunal change the date on which Schedule 1 commences in relation to their application to the Commissioner. In effect they are asking the Tribunal to amend the provisions of the amending Act. This the Tribunal does not have the power to do. To attempt to do so would be an attempt to exercise legislative power.
The AAT decision is not especially surprising, in view of existing practice and court decisions relating to the scope of section 223. However, the consequences of missing the 'deadline' in this case, and others like it, are potentially significant, and many would regard the outcome as somewhat unjust considering that many lesser errors or omissions can be corrected by the extension of time provisions. The applicants have the option of taking the matter further, by appealing to the Federal Court. If the invention covered by the application is of high commercial value, it is entirely possible that they will do so.