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Reut ROSENBLUM; Mely ROSENBLOOM; Yedidya Yochai VAN DIJK [2023] APO 24 (8 May 2023)

Last Updated: 8 May 2023

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Reut ROSENBLUM; Mely ROSENBLOOM; Yedidya Yochai VAN DIJK [2023] APO 24

Patent Application: 2020204598

Title: Sterile Apparatus for Rapid Cooling of Hot Water

Patent Applicant: Reut ROSENBLUM; Mely ROSENBLOOM; Yedidya Yochai VAN DIJK

Delegate: Dr S. J. Smith

Decision Date: 8 May 2023

Hearing Date: Written submissions filed on 18 February 2022

Catchwords: PATENTS – section 223 – request for extension of time to amend patent request to convert application for a patent of addition into divisional application – no relevant act required to be done within a certain time identified – request refused

Representation: Patent attorney for the applicant: A.P.T. Patent and Trade Mark Attorneys

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application: 2020204598

Title: Sterile Apparatus for Rapid Cooling of Hot Water

Patent Applicant: Reut ROSENBLUM; Mely ROSENBLOOM; Yedidya Yochai VAN DIJK

Date of Decision: 8 May 2023

DECISION
I refuse the request for an extension of time under section 223 to amend the patent request to convert the application to a divisional application.

REASONS FOR DECISION

Background

1. Patent application 2020204598 (the application) in the name of Reut Rosenblum, Mely Rosenbloom and Yedidya Yochai Van Dijk (collectively, the applicant) was filed on 9 July 2020 claiming patent of addition status from 2016261596 (the parent application). I note in this regard that the present application defines a second embodiment of the invention absent in the parent application.

2. A first examination report issued in relation to the parent application on 17 July 2020. Pursuant to section 222A the final date to gain acceptance was 19 July 2021, being the first business day following 17 July 2021. No response to the examination report was filed, and accordingly the parent application lapsed for failure to gain acceptance.

3. On 20 July 2021, after the final date for acceptance of the parent application, a request to amend the application from an application for a patent of addition to a divisional application of the parent application was filed. On 2 August 2021 the applicant was advised that the request could not be processed because the parent application had lapsed.

4. An application for an extension of time under section 223 was filed on 3 August 2021, seeking to extend the time for making the request to convert the status of the application to a divisional of the parent application. The application was accompanied by a declaration by Paul Wyk dated 3 August 2021.

5. A delegate informed the applicant on 7 September 2021 that he did not consider section 223 applicable to the present circumstances. Having considered the applicant’s response of 7 October 2021, the delegate advised the applicant that he intended to refuse the request for extension. The applicant requested a hearing on 1 December 2021 and the matter was heard by way of written submissions filed on 18 February 2022. The submissions were accompanied by a second declaration by Paul Wyk dated 18 February 2022.

The law

6. Relevant to the applicant’s request to amend the status of the application, pursuant to section 102(2D) of the Patents Act 1990 (the Act) an amendment to a patent request is not allowable if it is of a kind prescribed by the regulations made for the purposes of section 102. Regulation 10.2B of the Patents Regulations 1991 (the Regulations) is made for section 102(2D), and regulation 10.2B(5) relates to amendments to patent requests to convert applications to divisional applications:

An amendment of a patent request is not allowable if:

(a) the amendment would convert the patent application into a further complete application within the meaning of section 78B of the Act; and

(b) the period allowed under subsection 79B(3) of the Act for making a further complete application has ended.

7. Subsection 79B(3) relevantly provides that the period for making a further application ends when the first application lapses.

8. Subsection 223(2) of the Act relevantly provides that:

(2) Where, because of:

(a) an error or omission by the person concerned or by his or her agent or attorney; or

(b) ...

a relevant act that is required to be done within a certain time is not, or cannot be, done within that time, the Commissioner may, on application made by the person concerned in accordance with the regulations, extend the time for doing the act.

9. The meaning of the term “relevant act” is defined by subsection 223(11):

relevant act means an action (other than a prescribed action) in relation to a patent, a patent application, or any proceedings under this Act (other than court proceedings), and includes the making of a Convention application within the time allowed for making such application.

10. The prescribed actions are defined by regulation 22.11(4), which, following the commencement of the Intellectual Property Laws Amendment (Productivity Commission Response Part 2 and Other Measures) Regulations 2020, states:

For the definition of relevant act in subsection 223(11) of the Act, the following are prescribed:

(aa) filing of a request for an amendment to convert an application from an application for a standard patent to an application for an innovation patent on a day that is on or after the day the term of the innovation patent, if granted, would have expired;

(ab) filing of a divisional application under section 79B of the Act for an innovation patent on a day that is on or after the day the term of the innovation patent, if granted, would have expired;

(a) an action mentioned in Chapter 5, other than an action or step taken under regulation 5.4, 5.5, 5.10 or 5.11;

(b) filing, during the term of a standard patent under subsection 71(2) of the Act, an application under subsection 70(1) of the Act for an extension of the term of the patent;

(c) an action mentioned in Chapter 20.

11. The Full Court in Sunesis Pharmaceuticals Inc v Commissioner of Patents^[1] articulated principles concerning the applicability of section 223:

“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] FCA 84; (1981) 36 ALR 101; GS Technology Pty Ltd v Commissioner of Patents [2004] FCA 1017; (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] HCA 64; (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] FCA 218; (1981) 39 ALR 103.” (italics in original)

The intention to refuse

12. Somewhat unusually, the present matter does not relate to the question of whether there has been an error or omission, but to the more fundamental question of whether the act in relation to which an extension of time is sought, being amendment of the patent request to convert the application to a divisional application, is a “relevant act that is required to be done within a certain time” such that the provisions of section 223 are engaged.

13. In the intention to refuse correspondence of 1 November 2021 a delegate expressed a view that the request for an extension of time should be refused for three reasons:

(i) there is no apparent legislative requirement to file an amendment request by a certain time and therefore this is not a relevant act;

(ii) to the extent that conversion to a divisional application is a relevant act, the act is effected by an amendment to the patent request being granted, rather than being filed, and there is no time period specified in which an amendment need be granted by the Commissioner; and

(iii) to the extent that there is a relevant action associated with the amendment request that could be the subject of an extension of time request, section 223 cannot achieve the outcome sought by the applicant. That is, section 223 can only extend the time to perform an act, rather than backdating when an action occurred, and therefore cannot change the state of affairs being that the period for making an application under section 79B had expired when the amendment request was filed.

The applicant’s submissions

14. The applicant’s submissions helpfully address each of the three bases for refusal identified in the intention to refuse in turn.

The requirement to file an amendment request by a certain time

15. The applicant first discussed the necessity for amending the patent request to effect a conversion. Specifically, in the usual course, pursuant to section 83, a patent of addition only remains in force so long as the patent for the main invention remains in force. Accordingly, at the time the parent application lapsed, the present application could no longer effectively claim to be an application for a patent of addition. The consequence of this is that the parent application may be taken as prior art for both novelty and inventive step in relation to the present application. In contrast, the applicant submitted that if conversion to divisional status is allowed, a priority claim for relevant matter can be made back to the date claimed by the parent application.^[2]

16. The applicant also identified the time limits for filing of divisional applications set out in section 79B(3) to which regulation 10.2B(5) refers, and submitted that regulation 10.2B(5) clearly sets out as a prescribed period (i.e. a certain time), that period ending when the period allowed under section 79B(3) ends – which, in this case, was when the parent application lapsed.^[3]

No time period applies to filing of the amendment (versus allowance of the amendment)

17. I understand the applicant to consider that any relevant time relates to the allowance of the amendment rather than the filing of the amendment. In this regard the applicant submitted that:

“there was an error in belief that the request for conversion of the subject application should have been filed by 19 July 2021, when in fact the request should have been filed with sufficient time for the conversion to be allowed.”^[4]

18. The applicant also noted that extensions of time to the period for gaining acceptance are, despite being contingent on actions by delegates of the Commissioner, allowed, with such requests made in view of an estimate of the time that will be required for an examiner to consider an examination response. The applicant submitted that it would be consistent to allow an extension in the present case,^[5] and that the requested extension of one month “would have been sufficient for the request to amend to be allowed.”^[6]

Section 223 cannot backdate when the action occurred

19. In relation to the question of the effect of section 223 the applicant submitted:

“the relevant action is the application to amend the patent request form. The effect of this action, if allowed, would convert the present application form [sic] an application for a patent of addition to a divisional application. The relevant act to achieve the conversion is the amendment to the request form under s102(2D). The prescribed period is set out in reg 10.2B(5). We respectfully emphasize that this action is distinct from the filing of the patent of addition – the present application has already been filed as a patent of addition application well before the deadline set out in subsection 79B(3). It is respectfully submitted that the present application for an extension of time is not attempting to backdate when an action has occurred.

We submit that regulation 10.2B(5) is not prescribed for the purposes of s223, and therefore the period set by regulation 10.2B(5) can be extended.”^[7]

20. The applicant referred to previous Patent Office decisions which in its submission allowed the filing date of an application to be considered earlier/backdated:

“Canva Pty Ltd [2021] APO 35 - was an extension of time to rely on the grace period prescribed in regulation 2.2C(3). Thus in paragraph 6 the delegate referred to Amicus Therapeutics, Inc. [2020] APO 4 where at [12] reference was made to Ashmont v American Home Products [2002] APO 24. ‘In that decision the Deputy Commissioner rejected submissions that section 223 could not be enlivened in respect of section 24(1) since it requires that information may be disregarded “only if a patent application for the invention is made within the prescribed period.” She considered that this did not alter the fact that there is a clear reference in section 24(1) to a prescribed period, and that there was no clear indication in the legislation to exclude section 24 from the provisions of section 223. I have no submissions or any other material before me that would lead me to depart from that approach.’

We submit that, should the delegate consider that the present case is a backdating, then the present case should be considered in a similar fashion to the grace period cases referred to in this paragraph, for at least the reason that there is a clear reference to a prescribed period in sub regulation 10.2B(5) ‘An amendment of a patent request is not allowable if .. the period allowed under subsection 79B(3) of the Act for making a further complete application has ended.’”^[8] (italics in original)

21. The applicant also referred to Magnum Magnetics Corporation,^[9] which it characterised as an extension of time “for conversion of a standard application to a divisional application”, and in which case no question was raised with respect to the existence of a relevant act.^[10]

22. In relation to Sunesis, where the application for extension related to an extension of time to file a request for examination such that the substantive amendments to the Patents Act 1990 made by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 would not apply, the applicant submitted:

“The prescribed period in Sunesis was not set from within the Patents Act, rather it was the time when the Raising the Bar amendments was to come into force by reason of legislative amendment. This prescribed period was external of the Patents Act.

To the extent that there was a particular requirement and time period within which the applicants could control whether the old or new rules applied to the application, these are to be found in the transitional provisions of the Raising the Bar Act, and not within the Patents Act.

It is respectfully submitted that the Sunesis case is a statement from the Court for patent applicants that extension of time provisions cannot delay the effects of a commencing legislative amendment.

The present extension request does not relate to a legislative amendment of the Patent Act. The relevant deadline is set within the Patent Act, and Patent Regulations and thus, it is respectfully submitted, can be distinguished from Sunesis.”^[11]

23. Finally, the applicant submitted that the action sought to be extended is the conversion of the application from an application for a patent of addition to a divisional application, “which act has not yet occurred, and therefore does not require backdating.”^[12]

Consideration

Prescribed acts

24. The applicant referred to acts prescribed pursuant to regulation 22.11(4) as set out above, noting that the present action, being conversion to a divisional application, is not specified as a prescribed action. I consider regulation 22.11(4)(aa), reproduced above, of potential relevance to the present matter to the extent it relates to conversion of an application via amendment of the patent request. In relation to this provision, the Explanatory Statement to the Intellectual Property Laws Amendment (Productivity Commission Response Part 2 and Other Measures) Regulations 2020 explains:

“New paragraph 22.11(4)(aa) provides that an extension of time will not be available for the filing of a request for an amendment to convert an application from a standard patent to an innovation patent on a day that is on or after the term of the innovation patent, if granted, would have expired.

...

This means that if a person attempts to convert a standard patent application to an innovation patent application (by filing a request to amend the patent request), and the conversion request is filed after the date the possible term of the innovation patent would have expired (and hence the innovation patent would fail the new formality check under new paragraph 3.2B(1)(i) inserted by item 1), the fact that the conversion request was made after that date and the failure to pass the formalities check cannot be rectified by an extension of time under section 223 of the Patents Act.”

25. Regulation 3.2B(1) referred to in the above passage relevantly reads:

For section 52 of the Act, a complete application for an innovation patent passes the formalities check only if the application meets all of the following requirements:

...

(i) if the application was converted from an application for a standard patent to an application for an innovation patent—the request to amend the patent request to convert the application was filed on a day that is before the day the term of the innovation patent, if granted, would have expired...

26. Prima facie the existence of regulation 22.11(4)(aa) implies that the act of filing a request for an amendment to a patent request converting an application from one type to another is amenable to extension under section 223 because otherwise the provision would be otiose. However, I note that regulation 3.2B(1)(i) provides a time limit that refers specifically to filing the request to amend a patent request. In this regard it would appear that it is only because of the reference in regulation 3.2B(1)(i) to an action (filing a request to amend a patent request) for which a time period is explicitly provided (before the expiration of the maximum term of the innovation patent) that the prescription of this action in regulation 22.11(4)(aa) is required. In contrast, regulation 10.2B does not refer to any time limit for filing an amendment to the patent request, but rather sets out a range of circumstances in which an amendment of a patent request is not allowable. In view of this I do not consider that the absence of a reference to regulation 10.2B(5) as a prescribed action in regulation 22.11(4) provides a strong basis to conclude that an extension of time must be available in this case.

Acts for which extensions of time are available

27. It is not controversial that the filing of a divisional application is one that is “required to be done within a certain time” – section 79B(3) specifies that a divisional application can only be made during a period having a specified end date; extensions of time to extend this period are routinely granted by the Commissioner. In this regard the applicant’s reference to Magnum Magnetics Corporation is inapposite. In that case the extension of time sought was not in relation to the conversion of a standard application to a divisional application by amendment, but rather the filing of a divisional application per se.^[13] Accordingly, it is unsurprising that no question as to the existence of a relevant act was raised in that case.

28. As noted by the applicant, extensions of time under section 223 are also available for gaining acceptance.^[14] As the AAT explained:

“Acceptance is ... an action or step required to be taken by the Commissioner if an application comes within sub-section 49(1) and provided section 51 is not applicable. It is also a relevant act within the meaning of sub-section 223(11) for it is an action in relation to a patent application and is not a ‘prescribed action’ within the meaning of sub-regulation 22.11(3).”^[15]

The AAT clearly identified the relevant act to which the extension applies as acceptance, rather than the filing of an examination response which puts an application in order for acceptance.

29. In contrast to section 49(1) which provides that, if satisfied of various matters, the Commissioner “must accept a patent request and complete specification” (and pursuant to regulation 13.4 this must occur within a prescribed period), section 104(2) requires the Commissioner to consider and deal with a request for leave to amend a patent request or specification in accordance with regulations. There is no time limit as such for the performance of any relevant act by the Commissioner or the applicant, only a requirement that, per section 104(5), the Commissioner must not allow an amendment that is not allowable under section 102. Indeed, while the Commissioner has not yet dealt with the presently proposed amendment in view of the pending request for an extension of time, the Commissioner will, even if the extension of time is refused, be able to consider the request for amendment.

30. While the applicant referred to the granting of extensions of time to file an application within the grace period referenced in section 24(1)^[16] as involving backdating, section 24(1) provides that information must be disregarded “if a complete application for the invention is made within the prescribed period.” Regulations 2.2-2.2D specify that, in most circumstances, the prescribed period for making a complete application is twelve months from the day the information was made publicly available. The granting of an extension of time to comply with the grace period does not have the effect of “backdating” the filing date of the application or deeming it to have been filed within time. Rather, the twelve-month period for filing a complete application is extended, such that the benefit of filing within that period attaches to the late-filed application.^[17] The concept of “backdating” has no relevance in this context.

31. As such, I do not view consideration of other acts for which extensions of time are available to which the applicant has referred as supporting the applicant’s position as to the availability of an extension of time in the present case.

Acts for which extensions of time are not available

32. The provisions of section 223 are broadly applicable to acts required to be done under the Act, with the exception of those set out in regulation 22.11(4). However, that is not to say that every action that an applicant might undertake is a “relevant act required to be done within a certain time” as required by section 223.

33. For example, in GloFish, LLC^[18] the delegate found that satisfaction of the requirements of sections 6(a) and 6(d) is not a relevant act that is required to be done within a certain time within the meaning of section 223 (put generally, these provisions specify that deposit requirements in relation to a micro-organism are only satisfied if the micro-organism was deposited on or before the date of filing the specification and that samples of the micro-organism have been obtainable at all times since the date of filing, respectively). In arriving at this view, the delegate considered the matter from a number of angles. Relevantly, in one of these lines of analysis the delegate observed that section 6(a) is a simple logical test: the disclosure requirements are only satisfied if a state of affairs was in place at the time the application was filed. In this circumstance there is no “within a certain time” to engage section 223.^[19]

34. While there were other lines of reasoning supporting the delegate’s ultimate conclusion in GloFish, to my mind regulation 10.2B(5) can reasonably be characterised as similarly defining a state of affairs: an amendment to the patent request to convert an application to a divisional application is not allowable if the time for filing a divisional has passed.

Is there an act required to be done within a certain time?

35. Section 79B provides that an applicant can make a further application (a divisional application) for an invention disclosed in the specification filed in relation to a first application. Section 79B(3) reads:

The further complete application can only be made during the period:

(a) starting on the day the first application is made; and

(b) ending when any of the following happens:

(i) the first application lapses;

(ii) the first application is refused;

(iii) the first application is withdrawn;

(iv) a period prescribed by the regulations for the purposes of this subparagraph ends.

36. As mentioned above, it is uncontroversial that the period allowed under section 79B(3) may be extended in relation to the making of a further application under section 79B.

37. Accordingly, to the extent that the present request may be viewed simply as a request to extend that time period to different effect, it could prima facie be amenable to extension. However, it cannot be overlooked that a relevant act that is required to be done within a certain time is required to engage section 223.

38. An amendment to a patent request converting an application to a divisional application is prohibited after the period set out in section 79B(3) by operation of the allowability requirement imposed by regulation 10.2B(5). Certainly it can be said that there is a benefit (i.e. an effective conversion of an application to a divisional application) attached to an earlier filing of an amendment request, the opportunity for which is lost after a certain point. However, to my mind this is not a scenario where there is an act required to be done within a certain time. Whether the amendment is allowable, or not, is contingent on a state of affairs; there is no prescribed period for the Commissioner to consider such an amendment.

39. Moreover, temporal limitations on the allowability of amendments are not unique within the scheme of the Act, and in considering the context in which regulation 10.2B(5) sits it is useful to consider other aspects of section 102 and regulation 10.2B.

40. Pursuant to sections 102(2) and 102(2A) different allowability criteria relate to amendment of a specification before and after acceptance. I am not aware of this period having been extended under section 223 (i.e. for the purpose of availing of different allowability criteria rather than gaining acceptance). Indeed, there are significant policy and public interest considerations (i.e. “compelling contextual considerations” as referred to in Sunesis) supporting an inability to make broadening amendments (other than those allowed by section 102(3)) to a patent or a patent application after it has been accepted, given that acceptance, and advertisement of acceptance, puts the public on notice of the scope of the monopoly intended to be granted, and triggers the opportunity for third parties to oppose the grant of a patent.

41. Similarly, regulation 10.2B(2) provides that an amendment to the patent request of an accepted standard application to convert it to an innovation patent application, and vice versa, is not allowable. Again, it is clear that this is not a situation to which section 223 should apply, because it would be inconsistent with the proper operation of the standard and innovation patent schemes, not least because of the different criteria for acceptance.

42. These scenarios fortify me in my view regarding the present matter. The provisions of section 102 and the corresponding regulations are not directed to relevant acts that are required to be done within a certain time, but to the allowability criteria for amendments, which are connected to certain states of affair. That those states of affair are connected to relevant acts that may be extended (i.e. acceptance of an application) does not, to my mind, alter the case that regulation 10.2B(5) simply provides an allowability criteria contingent on a state of affairs and relevant to the Commissioner’s consideration of an amendment.

Conclusion

43. I do not consider the amendment of a patent request to convert an application to a divisional application to be a relevant act that is required to be done with a certain time as required by section 223 (as compared with filing a new divisional application). Therefore, I refuse the request for an extension of time.

Dr S. J. Smith

Delegate of the Commissioner of Patents

^[1] [2015] FCAFC 29 at [27] (‘Sunesis’).
^[2] Applicant’s submissions at 9.1.2.
^[3] Applicant’s submissions at 9.1.2.
^[4] Applicant’s submissions at 9.2.1.
^[5] Applicant’s submissions at 9.2.2.
^[6] Applicant’s submissions at 9.2.1.
^[7] Applicant’s submissions at 9.3.1 - 9.3.2.
^[8] Applicant’s submissions at 9.3.2.
^[9] [2019] APO 3.
^[10] Applicant’s submissions at 9.3.3.
^[11] Applicant’s submissions at 9.3.4.
^[12] Applicant’s submissions at 9.3.4.
^[13] [2019] APO 3 at [4].
^[14] See, e.g. Lehtovaara v Acting Deputy Commissioner of Patents [1981] FCA 248, Jiejing Pty Ltd and Commissioner of Patents Ron Thomas and Allan Garnham [1995] AATA 100.
^[15] Jiejing Pty Ltd and Commissioner of Patents Ron Thomas and Allan Garnham [1995] AATA 100 at [93].
^[16] See, e.g. Canva Pty Ltd [2021] APO 35, Generic Partners Pty Ltd v Neurim Pharmaceuticals Ltd.  [2022] APO 2. 
^[17] As in Sunesis at [34]: “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."
^[18] [2022] APO 52 (‘GloFish’).
^[19] GloFish at [61].