Facts

AbbVie Inc is a US-based pharmaceutical company.  On 15 October 2021 it requested that the Commissioner examine its patent application 781297 relating to a chemical compound used in an oral extended-release tablet for treating rheumatoid arthritis [1].

Following a series of examination reports, finding that the application was not in order (and responses to those reports), the deadline to place the application in order (specified in s 71 Patents Act 2013 (NZ)) was extended to 19 February 2025 [37]. 

On 17 February 2025 AbbVie filed an application requesting to be heard at a hearing before an Assistant Commissioner.  The hearing was heard on 22 May 2025 ie after the s 71 deadline [32].

In written submissions before the Assistant Commissioner, AbbVie requested deferral of a final decision on the patent application or an extension of time to allow the application to be put in order, in the event that the amended claims it was putting forward at the hearing were allowable or that further amendments might mean that the patent was accepted [33].

The Assistant Commissioner held that AbbVie’s application had not been put in order for acceptance within the section 71 period.  That period had expired on 19 February 2025.  In accordance with s 71, the Assistant Commissioner considered that the patent application was void [37].

AbbVie appealed against that decision on the basis that the Assistant Commissioner had erred in fact and law.

First, AbbVie argued that section 72(3) Patents Act 2013 (NZ) automatically extended the section 71 deadline where a hearing has been sought within the prescribed period but no decision has issued before expiry. It contended that the extension was to a date 20 working days from the date when the decision ultimately issued.

Secondly, the Assistant Commissioner had erred in not granting a discretionary extension to the s 71 period under section 230.

Held, allowing the appeal,

Section 72

(1)    On a plain reading, section 72 applied in only two circumstances – where “at the expiry of the prescribed period” an appeal to the High Court was pending under s 214 or the 20 working day period, within which an appeal be brought under s 214(2)(b)(i), had not expired.  In each case, section 72 only applied where a decision of the Commissioner had issued before the expiry of the prescribed period [57].

(2)    Various statutory indicia, the purpose of the Act and its legislative history all reinforced that the prescribed period in s 71, and time limits in general, were a significant part of the statutory regime in the Patents Act 2013 (NZ) [62]-[68].  In the absence of an extension under s 230, the Act imposed a hard time limit.  The clear intention was that the applicant would put its application “in order” within the prescribed period and that included responding to examination reports. It was relevant that s 71(1) stated in the clearest terms that a patent application was void unless the applicant “ensures” that the matters listed in s 71 have been attended to [70].

Section 230

(3)    Section 230 conferred on the Commissioner a broad discretion. The Commissioner “may” extend a time frame within which “anything” must be done under the Act or Regulations.  An extension might be granted retrospectively [70].

(4)    The discretion conferred by s 230 is subject to at least two limitations.  First, it may only be exercised if the thing to which the extension is applied “is not or will not be done in time because of “a delay” by the Commissioner.  Secondly, on orthodox principles, the discretion must be exercised in a manner consistent with the purposes and objectives of the Act.

(5)    The application here was in a strict sense not in order before the expiry of the s 71 deadline.  The issue was whether this failure was “because of a delay by the Commissioner”. In this case, in putting it application in order, AbbVie was entitled to rely on what it had been told in the third examination report was the appropriate next step.  The Commissioner had stated “You have the right to request a hearing” and “You can request a hearing on any objections in this report.” This effectively conveyed to AbbVie that the appropriate response was to request a hearing at which any objections would be considered. There was no suggestion that AbbVie should lodge a substantive report before requesting a hearing.  The third examination did not set a date for a response to the objections [81] – [82]. AbbVie acted on the Commissioner’s notice and requested a hearing before expiry of the prescribed period. The fact that the hearing was unable to be held within the prescribed period (by 19 February 2025) was a delay due to the Commissioner [83].

(6)    In the somewhat unusual circumstances of this case, the Commissioner erred in not granting an extension to the prescribed period under s 230 [84].

Appeal

This was an appeal from a decision of an Assistant Commissioner of Patents in which he determined that the patent application in issue had not been put in order for acceptance  within the period prescribed by s 71 and was therefore void.

 

GF Arthur KC and SZY Ting instructed by AJ Park for appellant, Abbvie Inc

AWM Britton and SM Perera instructed by Crown Law for respondent, the Commissioner of Patents