Section 42 of the Act provides for any interested person to apply to the Commissioner of Patents for an order to revoke a patent on any one of the grounds upon which the grant of the patent could have been opposed. Such an application is made by filing a Patents Form 45. However, in launching such an action the applicant for revocation must not have previously opposed the grant of the patent; must file “the application” for revocation within 12 months from the sealing of the patent; and finally under Regulation 104(1) must also file a statement setting out fully the nature of the applicant’s interest, the facts upon which the applicant relies and the relief which is sought. In this case Merial filed its application for revocation of Bomac’s patent within the prescribed time however it sought an extension of time of two months to file its Statement of Case.
Bomac opposed the granting of the extension request and sought a hearing. At the Hearing the Patentee argued that the New Zealand Patents Act and Regulations make it clear that an application for revocation under section 42 must be filed with 12 months of the sealing of the patent and, according to regulation 104, shall (not “may”) include a Statement of Case. They also argued that Regulation 168 has no application in these circumstances because the timeframe for filing the information required under regulation 104(1) is governed by section 42 of the Act rather than by the regulations.
The question to be determined was whether Regulation 168 permitted the Commissioner of Patents to extend the time for Merial to file its Statement of Case under Regulation 104. Following the High Court decision in Ancare New Zealand Limited v Ciba-Geigy New Zealand Limited, AP55/95, 6 June 1996 the Assistant Commissioner considered the views expressed by Elias J. In that decision her Honour Justice Elias noted that the answer to this question turned on whether the limitation of time for filing that statement of case is derived from the regulations or whether it is imposed by statute. Her Honour considered the following questions.
(a) Whether the time limit is imposed by statute only i.e. whether the “application” required by s 42 includes the statement of the case. If so then the time limit imposed by the section applies and the power under Regulation 168 cannot be used to waive it; and
(b) Whether Regulation 104(1) imposes a time limit at all upon which Regulation 168 can be used.
In dealing with the second question first, Elias J held that the reference in Regulation 104(1) to the need for an application to be “accompanied by” a statement imposed a time limit that was within the ambit of the extension provisions provided for in Regulation 168.
In respect of the first question her Honour held that a construction whereby the application for revocation of a patent is only “made” under section 42 by filing the Patents Form 45 and the statement of case would be inconsistent with the clear statutory scheme provided for under the Act. Her Honour reached this view for the following reasons.
- Section 42 does not provide any definition of “application”. This section simply provides that any person interested may “apply” and that if such an application is made the Commissioner will notify the patentee.
- The specification of the procedure and the prescription of form required for an action for revocation under section 42 is left to the Regulations under the “regulation making” power and not the Patents Act.
- The language of Regulation 104(1) makes it clear that two different documents are required. First the application is made in form 45 and accompanied not only by a copy of the application, but by the statement (in duplicate).
Following this decision in Ancare [supra] Assistant Commissioner Popplewell concluded that Bomac’s arguments must be rejected. The section 42 requirement of “the application” is complied with by filing the form prescribed by the regulations i.e. form 45 only and the provisions of Regulation 168 can be used to extend the time to file a Statement of Case. That is the need for a statement and time for its filing was governed by the Patent Regulations and not the Act and as such within the provisions of Regulation 168.
The Assistant Commissioner took solace from the wider scheme of the statute and Elias J’s statements on page 9 of the High Court judgment where he noted that “if the statute intended to prescribe the content of the statement and require its simultaneous filing as part of the application, it could have said so as it has done in the analogous provisions at section 9(2). Similarly, if Regulation 168 was not intended to apply to Regulation 104(1), it could have been excluded along with other regulations specifically excluded.”
In considering this decision it is important to note that while the New Zealand Intellectual Property Office (“IPONZ”) has strict Guidelines in place to regulate proceedings before the Office, it appears that the public interest to ensure that a hearing officer is in possession of all the information and evidence necessary to make a properly considered decision is paramount. On this basis it is likely that the party seeking further time will be given some latitude if it can demonstrate that there is a serious opposition on foot and that it has been acting diligently to meet the regulated deadline.