FEDERAL COURT OF AUSTRALIA

Nufarm Australia Limited v Advanta Seeds Pty Ltd [2023] FCA 109

ORDERS

THE COURT ORDERS THAT:

1.    The decision of the Administrative Appeals Tribunal in file number 2020/8517 and dated 6 May 2022 is affirmed.

2.    The applicant pay the respondents’ costs of the appeal to be taxed, if not agreed.

Note:    Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

REASONS FOR JUDGMENT

DOWNES J:

OVERVIEW

1    The first respondent (Advanta) is a broadacre seed company which, under its brand Pacific Seeds, supplies seeds for crops including sorghum, corn, forage, canola and wheat. With its related companies, it holds more than 2,300 patents relating to agricultural chemicals, seeds and seed technologies.

2    On 7 January 2016, Australian Patent 2009304572 (Patent) was granted, following an application by Advanta which was filed on 6 October 2009.

3    A standard patent ceases if the patentee does not pay a renewal fee for the patent within the prescribed period: s 143(a) Patents Act 1990 (Cth). The period for payment is taken to be extended if the renewal fee is paid within the “grace period”, that is, six months after the relevant renewal fee is due: reg 13.6(2) Patents Regulations 1991 (Cth).

4    A renewal fee for the Patent, which was due on 6 October 2017 (2017 renewal fee), was not paid, either by the due date or within the grace period.

5    On 24 November 2020, a delegate of the Commissioner of Patents refused an application by Advanta, brought pursuant to s 223(2) of the Patents Act, for an extension of time to pay the 2017 renewal fee. The application was opposed by the applicant in this proceeding (Nufarm), which is a commercial competitor of Advanta.

6    Advanta applied to the Administrative Appeals Tribunal to have the delegate’s decision set aside and for an extension of time to pay the 2017 renewal fee. The application was again opposed by Nufarm.

7    On 6 May 2022, the delegate’s decision was set aside by the Tribunal and Advanta was granted an extension of 28 days from the date of the Tribunal’s decision to pay the 2017 renewal fee.

8    This is an appeal by Nufarm pursuant to s 44(1) of the Administrative Appeals Tribunal Act 1975 (Cth) (AAT Act) from the decision of the Tribunal.

9    For the reasons which follow, the decision of the Tribunal will be affirmed, with costs following the event.

RELEVANT LEGISLATION

10    Section 223(2) of the Patents Act relevantly provides:

(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.

11    To engage s 223(2), there are two threshold requirements, namely:

(1)    the event for which an extension of time is sought must be a “relevant act”. In this case, it was common ground that the payment of a renewal fee is a “relevant act” within the meaning of the legislation; and

(2)    the failure to do the relevant act by the prescribed time must be “because of … an error or omission by the person concerned or by his or her agent or attorney”.

12    The discretion to grant an extension of time under s 223(2)(a) arises only if these two threshold conditions are met.

FACTUAL FINDINGS

13    The following is a summary of key factual findings by the Tribunal. All paragraph references are to the Tribunal’s decision, unless stated otherwise.

14    The application for the Patent was filed on 6 October 2009 and it was granted on 7 January 2016: [3]. The Patent relates to a hybrid plant cell and is of considerable commercial value to Advanta: [3], [7]–[8].

15    The initial filing of the Patent application was managed by Mr Andrew Easton and Ms Jocelyn Davey, both Advanta employees: [36]. Mr Easton was generally responsible for the management of the Patent application including renewals: [36].

16    CPA Global Limited was appointed by Advanta’s (then) patent attorneys, Griffith Hack, to handle the payment of renewal fees during the application process and after the grant: [37]–[38]. The fees were described as annuities in the letter cited by the Tribunal in [38] of the reasons. This description appears intended to capture both continuation fees which were payable prior to grant (s 142(2)(d) Patents Act) and renewal fees which were payable after grant (s 143(a)). In this appeal, the parties repeatedly described both types of fees as renewal fees, and the Tribunal adopted that terminology in its reasons. I will take the same approach.

17    In July 2013, CPA was advised that Ms Amos, an employee of Advanta, was a contact in relation to the Patent: [44].

18    The first renewal fee for the Patent was due on 6 October 2013: [4].

19    Advanta’s system for payment of renewal fees was as follows ([43]):

(1)    CPA would monitor the due date;

(2)    CPA would send a notice to Advanta seeking its authorisation to pay the renewal fee;

(3)    Advanta would authorise payment;

(4)    CPA would pay the fee and seek reimbursement from Advanta by issuing an invoice or statement.

20    In October 2013, Dr David Stalker, Advanta’s Global Technology Lead based in the United States, engaged Spruson & Ferguson (Sprusons), another firm of patent attorneys, to review a notice that had been issued in respect of the Patent application: [39].

21    On 1 September 2014, Mr Easton advised Griffith Hack that management of the Patent application was being transferred to Sprusons: [39].

22    On 5 November 2014, Mr Easton advised Sprusons that all accounts-related information in respect of the Patent should be sent to him and Sprusons advised, shortly thereafter, that it had updated its records accordingly: [40].

23    The renewal fees due in 2013, 2014 and 2015 were all paid by the relevant due dates: [6] and [43]. Advanta’s system for paying the renewal fees “operated adequately during these years”: [43].

24    On 19 April 2016, Sprusons wrote to Dr Stalker, copied to Mr Easton, advising that the Patent had been granted. This letter noted Advanta’s “special agreement” with CPA in relation to the management of renewal fees: [41].

25    There were “several relevant changes in personnel [at] Advanta in 2016”, including the departures of Ms Amos, Dr Stalker and Mr Easton: [42], [44].

26    There was a system in place for the payment of renewal fees which “worked satisfactorily until it started to falter in late 2016”: [49].

27    There was a delay in payment of the fourth renewal fee, due on 6 October 2016. It was ultimately paid by CPA, within the permitted grace period, in January 2017, on the approval of Dr Hossain, a canola breeder employed by Advanta, after the request for authorisation had been raised with him by Ms Hamblin, an administrative officer: [45].

28    When CPA sought reimbursement for this payment, there was “uncertainty as to what the fee statement dated 20 February 2017 related to”. Advanta obtained a copy of the original invoice. Once that was provided, it became apparent that it related to CPA’s payment of the fourth renewal fee and that it had been addressed to Dr Stalker (who had left Advanta 13 months prior): [46].

29    This confusion was “consistent with Dr Stalker and Mr Easton having been responsible for the Patent, including renewal payments, and both having recently left Advanta, no-one having been allocated with clear responsibility for ensuring payments were made”: [47] and [50].

30    The Advanta employees who arranged the reimbursement payment to CPA in relation to the fourth renewal fee and who “had at least a brief acquaintance with the need to make renewal fee payments in relation to the Patent”, being Ms Hamblin and Dr Hossain, “left Advanta shortly thereafter”: [47] and [48].

31    No one replaced Mr Easton as the person mainly responsible for the Patent until Dr David Tabah commenced employment with Advanta in January 2017: [42].

32    A handover report provided to Dr Tabah in January 2017 made no reference to the role of CPA in relation to the payment of renewal fees for the Patent: [59].

33    In August 2017, Sprusons was instructed that Dr Tabah was the person responsible for the management of the Patent, and Dr Tabah expressly advised them that he was the Advanta contact person in relation to the Patent: [58] and [64(e)].

34    Advanta always intended to maintain the Patent: [10], [81]. Indeed, shortly before the 2017 renewal fee was due to be paid, Advanta entered into a licensing agreement in relation to the technology protected by the Patent which was intended to run for a further thirteen years: [9].

35    In relation to the 2017 renewal fee, due 6 October 2017, renewal notices were created by CPA and sent, in hard copy only, via post, addressed to “the long-departed Dr Stalker” in June, August and October 2017 and February 2018: [52]–[53]. These renewal notices either “did not arrive, or they were delivered to Advanta’s office, in Toowoomba, and were subsequently lost”. None of these notices, or any associated record, was located in Advanta’s records: [54].

36    CPA did not follow up with email correspondence to Advanta. It did, however, make contact with Sprusons: [55]. Sprusons, having been contacted by CPA in relation to the 2017 renewal fee, sent an email to Advanta in February 2018, but no one at Advanta received it because it was incorrectly addressed to info@pacseeds.com.au, a “defunct address for marketing support purposes that had not operated since 2016”, and copied to Dr Stalker and Mr Easton: [56]–[61].

37    Dr Stalker’s email account was shut and the email bounced back to Sprusons. Had Advanta re-directed emails from Dr Stalker’s address to Dr Tabah, as the person at Advanta then responsible for the management of the Patent, payment could have been made before the Patent ceased: [57].

38    Mr Easton’s email account was still open, and continued to receive emails after his departure from Advanta, but was not checked by any Advanta employee. Advanta erred in not closing Mr Easton’s account and/or re-directing email traffic to the relevant employee, instead leaving it open and unmonitored for more than four years: [61]–[62].

39    Had Sprusons directed its email to Dr Tabah, whom it had been instructed in August 2017 was the person responsible for the management of the Patent, then payment could have been made: [58].

40    Although Dr Tabah was the person at Advanta responsible for the management of the Patent from January 2017, he was not then aware of the need to pay renewal fees for the Patent: [58], [60]. Had he been aware, he would have immediately alerted the administrative staff to pay them: [60].

41    Ultimately, the 2017 renewal fee was not paid by the due date, or by the end of the grace period six months later, and the Patent ceased.

42    Advanta became aware that the Patent had lapsed on 1 April 2019 and Mr Barry Croker, Advanta’s then managing director, immediately instigated an investigation to determine the reason for it. Having ascertained what he then understood to be the reasons for the failure to pay, Mr Croker caused an application for an extension of time pursuant to s 223 of the Patents Act to be prepared and filed. That application was filed on 8 April 2019: [78]–[79].

HEARING BEFORE DELEGATE

43    Before the delegate, Advanta relied on certain errors or omissions as contributing to the failure to pay the 2017 renewal fee. One of the errors which it relied upon was its failure to enter the details of the Patent into new portfolio management software known as Anaqua.

44    The reasons of the delegate of the Commissioner stated this:

It has been established that the patent was not entered into this system, and this satisfies the requirements of an error. Mr Croker states that sometime around 2017-2018, i.e. after amalgamation, the two teams start working together. They seek approval for and purchase a system. Then they were faced with an immense task of manually entering all the Patent family members into that system. I consider that if the patent had been correctly entered into this system before the due date, then the renewal fees would have been paid. However, there are questions as to whether this process of entering the portfolio into the system occurred or even began to occur before the due date of 6 October 2017. If the error occurred after the due date, then it cannot have caused the failure to pay the renewal fees.

The Applicant does not have a burden of proof to make their case; however, they must set out the circumstances enough for the tribunal to be able to make a decision. In this case, the full events have not been provided. It would be known to the Applicant when this system was purchased, and it would be known when the task of entering the patent portfolio into it began, however, those dates have not been provided. I cannot determine if the error caused the failure to pay the renewal fees.

(emphasis added)

45    That is, although the delegate was satisfied that there was an error, the delegate found that there was insufficient information to conclude that this error had caused the failure to pay the 2017 renewal fee, having regard to the evidence adduced by Advanta.

HEARING BEFORE TRIBUNAL

46    Before the Tribunal, Advanta did not seek to rely on the error relating to the failure to enter the details of the Patent into Anaqua. This change of position (and an associated attack on the sufficiency of Advanta’s evidence explaining the change of position) was the subject of considerable criticism by Nufarm, which contended that these matters bore upon the exercise of the discretion under s 223(2) Patents Act.

47    The Tribunal found that Advanta’s reliance on this error, and the inaccuracies in the evidence before the delegate, were explained adequately, and made credit findings which are not sought to be impugned: see [25], [26], [27], [29], [30] and [33].

48    At [34], the Tribunal concluded that:

I am not satisfied that any conduct on the part of Advanta in respect of the application before the delegate, including any shortcomings or flaws in its evidence, should have any impact on the exercise of the discretion under s 223(2) of the Act in this de novo hearing of Advanta’s application for an extension.

49    At [83], the Tribunal reiterated its earlier position, stating that:

Nufarm refers to Advanta’s disclosure before the Tribunal, and to its case before the delegate, as matters going to the exercise of the discretion. I refer to what I have said above. Neither matter weighs against the exercise of the discretion in favour of Advanta.

50    In reaching these conclusions, the Tribunal considered the statutory declarations which had been placed before the delegate, the affidavit evidence of Mr Croker (Advanta’s managing director since May 2018) and Mr Nicholas Gardner (former managing director of Advanta) filed in the Tribunal, their oral evidence under cross-examination in the Tribunal (and their general credit) as well as the affidavit evidence of five other Advanta witnesses filed in the Tribunal (who were not cross-examined). The Tribunal accepted the evidence of these five additional witnesses expressly: [35]. Not all of the evidence which was before the Tribunal is before me.

APPEAL ON A QUESTION OF LAW

51    The jurisdiction of the Federal Court to hear and determine appeals from the Tribunal is conferred by s 44(1) of the AAT Act which is in the following terms:

A party to a proceeding before the Tribunal may appeal to the Federal Court of Australia, on a question of law, from any decision of the Tribunal in that proceeding.

52    In Aspen Pharma Pty Ltd v H Lundbeck A/S (2013) 216 FCR 508; [2013] FCAFC 129, Yates J (with whom Jessup and Jagot JJ agreed), stated at [43]–[44]:

It is trite that an appeal “on” a question of law is more confined than an appeal that “involves” a question of law: TNT Skypak International (Aust) Pty Ltd v Federal Commissioner of Taxation (1988) 19 ATR 1067 at 1069-1070; 82 ALR 175 at 178; Comcare v Etheridge (2006) 149 FCR 522 at [13]. In Etheridge, Branson J said (at [14]):

14     The legislature, by creating a statutory right of appeal to a party to a proceeding before the Tribunal in the narrow terms of s 44(1), disclosed an intention to limit the capacity of the Court on an appeal under s 44(1) to review factual findings of the Tribunal. An appeal pursuant to s 44(1) is thus quite different from an appeal from a judicial body under s 24 of the Federal Court Act. An appeal under s 24 is an appeal by way of rehearing (see, Poulet Frais Pty Ltd v Silver Fox Company Pty Ltd (2005) 220 ALR 211 at [35]-[47]). The subject matter of an appeal under s 44(1) of the AAT Act is (shorn of the requirement to determine what, if any, entitlement to relief flows from the answer to the question or questions of law) of the same character as the subject matter of a reference of a question of law to the Court made under s 45 of the AAT Act.

The subject matter of an appeal under s 44(1) of the AAT Act is the precise question or questions of law stated in the notice of appeal as required by r 33.12(2) of the Federal Court Rules 2011 (Cth): see Birdseye v Australian Securities and Investments Commission (2003) 38 AAR 55; Etheridge at [13]; HBF Health Funds Inc v Minister for Health and Ageing (2006) 149 FCR 291 at [5].

53    In Haritos v Federal Commissioner of Taxation (2015) 233 FCR 315; [2015] FCAFC 92 (Allsop CJ, Kenny, Besanko, Robertson and Mortimer JJ), the Full Court expressed certain conclusions at [62], including that:

(1)    The subject matter of the Court’s jurisdiction under s 44 of the AAT Act is confined to a question or questions of law. The ambit of the appeal is confined to a question or questions of law.

(2)    The statement of the question of law with sufficient precision is a matter of great importance to the efficient and effective hearing and determination of appeals from the Tribunal.

54    The Court in Haritos continued at [91]–[92]:

It is of great importance that the question or questions of law should be stated with precision. That is the point of r 33.12 of the Federal Court Rules, and of its predecessor, O 53 r 3(2). We have set out the present rule above at [3]. But the end sought to be achieved by the rule is to have the question of law stated with sufficient precision.

We agree with Ryan J in Lambroglou that merely to assert that the Tribunal erred in law in making a particular finding is not to state a question of law. We also agree with the later statement by Ryan J, at 527, that: “[I]t simply begs the question of law to commence it with the words ‘whether the Tribunal erred in law’. If the question, properly analysed, is not a question of law no amount of formulary like ‘erred in law’ or ‘was open as a matter of law’ can make it into a question of law.” (emphasis added).

THIS APPEAL

55    By the Notice of Appeal, the following questions were identified as being the questions of law which arise in this appeal (as required to be articulated by reason of r 33.12(2)(b) of the Federal Court Rules 2011 (Cth)):

1.    Can a failure by the First Respondent to authorise CPA Global Ltd (CPA) to pay the Renewal Fee constitute the relevant error or omission or does this failure form part of the relevant act?

2.    Did the Tribunal allow extraneous or irrelevant matter to guide it and therefore erred in identifying the error or omissions which led to the failure to pay the Renewal Fee?

3.    Whether, and the extent to which, the disclosure of the processes by which the error came to be committed provided by the First Respondent in the proceeding before the Second Respondent, including the accuracy of the evidence it relied upon in that proceeding, is relevant to the exercise of the discretion under section 223 (2) of the Act in a de novo appeal from that proceeding.

4.    If the First Respondent’s disclosure of the processes by which the error came to be committed in the proceeding before the Second Respondent is relevant to the exercise of the discretion in a de novo appeal from that proceeding, then is it only relevant if it is established that the evidence adduced before the Second Respondent was ‘deliberately misleading’ or ‘deliberately confined’?

5.    Whether the broadly protective and remedial operation of section 223 of the Act (as noted by the High Court in Alphapharm Pty Ltd v H Lundbeck A/S [2014] HCA at [64]) is relevant to the determination as to whether the discretion conferred by s 223 (2) (a) is enlivened or is limited to the exercise of the discretion once enlivened.

56    Nine grounds of appeal were advanced in the Notice of Appeal. Instead of addressing those grounds by reference to the questions of law in the Notice of Appeal, Nufarm recast these grounds by its written submissions, describing them as appeal grounds 1, 2, 3 and 4, which differed from the numbering in the Notice of Appeal.

57    While such an approach had the appearance of simplifying the issues, the end result was that, as well as complicating matters, Nufarm strayed outside the bounds of the Notice of Appeal, including during oral submissions. In particular, Nufarm sought to raise additional questions of law which, in addition to not being stated in the Notice of Appeal, lacked the precision required by the Full Court in Haritos.

58    This appeal has been approached on the basis that its subject matter is the precise question or questions of law stated in the Notice of Appeal as required by r 33.12(2)(b) of the Federal Court Rules: Aspen Pharma at [44].

59    As to the four appeal grounds identified in Nufarm’s submissions, Advanta submitted that, of those four, only one raised any question of law (being ground 2). Advanta submitted that the other grounds did not identify with precision any question of law to be considered by this Court and are therefore incompetent. The issue of competency of grounds 1, 3 and 4 will be addressed as part of consideration of those grounds.

Ground 1

The alleged errors

60    Appeal ground 1 is described in Nufarm’s opening submissions as follows:

Having accepted that the evidence provided by Advanta in the proceedings before the Commissioner was flawed and inaccurate, the Tribunal erred in finding that the accuracy and truthfulness of the disclosure of the processes by which the error came to be committed provided by Advanta to the Commissioner were irrelevant to the exercise of the discretion under section 223(2) of the Act in a de novo appeal from that proceeding (Decision at [34]). As a result, the Tribunal erred in finding that Advanta had made a comprehensive and frank disclosure of all the relevant circumstances and had laid out all of the relevant facts and circumstances (Decision at [72]).

Relatedly, the Tribunal erred in finding that Advanta’s disclosure of the processes by which the error came to be committed in the proceeding before the Commissioner was only relevant to the exercise of the discretion in a de novo appeal from that proceeding, if it is established that the evidence adduced before the Commissioner was ‘deliberately misleading’ or ‘deliberately confined’ (Decision at [31]).

61    The alleged errors identified in the first paragraph of “appeal ground 1” are referable to grounds 6, 7 and 8 of the Notice of Appeal. However, the alleged error identified in the second paragraph above, relating to [31] of the Tribunal’s decision, is not referable to any ground of appeal. It does, however, appear to be linked to the third and fourth questions of law identified in the Notice of Appeal. That this is so is reinforced by Nufarm’s submissions in reply, which state:

[The] relevant question of law is whether the Tribunal erred in law by fettering the exercise of the discretion to exclude consideration of evidence adduced and relied on, by Advanta to the Commissioner, including by imposing a requirement that only evidence dishonestly or fraudulently advanced could be relevant to the exercise of the discretion.

[It] is apparent from the Decision at [34] that the Tribunal enunciated the (incorrect) principle that the accuracy and truthfulness of Advanta’s disclosure to the Commissioner was irrelevant to the exercise of the discretion “including any shortcomings or flaws in its evidence”. That error was compounded by the Tribunal finding that it could only possibly be relevant if it were established that the evidence was advanced fraudulently or dishonestly…

(footnotes omitted)

62    Contrary to Advanta’s submissions, the third and fourth questions of law in the Notice of Appeal constitute questions of law within the meaning of s 44(1) of the AAT Act as they relate to the issue of whether the Tribunal applied the correct legal principles associated with an application under s 223(2) Patents Act. For that reason, I do not agree that the appeal is incompetent in relation to appeal ground 1.

Relevant background

63    This ground of appeal arises from the difference in the way Advanta put its case before the Commissioner, on the one hand, and the way it put its case in the de novo hearing before the Tribunal, on the other (as described above).

64    The reasons of the Tribunal which relate to ground 1 are as follows:

[24]    Mr Gardner and Mr Croker [witnesses for Advanta] were each cross-examined. Dr Tabah was available, but ultimately, together with Advanta’s other witnesses, was not required for cross-examination.

…

[26]    I also accept Advanta’s submission that Mr Croker was a reliable and candid witness. He acknowledged that he did not remember particular events. He made appropriate and considered concessions. Mr Croker accepted, for instance, that his recollection of who was responsible or involved in the management of the Patent, as recounted in his evidence before the delegate, and subsequently corrected, was “flawed”.

[27]    Mr Croker explained to my satisfaction that when he referred to making enquiries, as managing director, he relied on information sought from others in the Advanta organisation and did not intend to convey that he personally undertook every enquiry.

[28]    Nufarm did not suggest, either in cross-examination or submissions, that Mr Gardner’s or Mr Croker’s evidence was dishonest. Considerable criticism, however, was directed at the discrepancies between the evidence presented to the delegate and the evidence before the Tribunal.

[29]    I am satisfied, however, that the inaccuracies in the evidence before the delegate, acknowledged and corrected before the Tribunal, were adequately explained.

[30]    The substantive difference was that before the delegate Advanta erroneously advanced its new management database (Anaqua) was causative of error or omission. As I have said, I think this was adequately explained.

[31]    I am satisfied that Advanta’s evidence before the delegate was not deliberately misleading and that the searches it conducted prior to the filing of its evidence before the delegate were reasonable in the circumstances and were not deliberately confined.

[32]    Nufarm contends that Advanta’s case, as presented to the delegate, containing what Nufarm chose to describe as misrepresentations, should bear on the exercise of the discretion under s 223(2) of the Act.

[33]    Nufarm goes so far as to submit that Mr Croker’s alleged failure to properly explain the basis of his evidence before the Commissioner’s delegate “should, in itself, disentitle Advanta from the indulgence of being granted an extension of time pursuant to s 223(2)(a) of the Patents Act.” I disagree. I am satisfied that Mr Croker has given a proper explanation.

[34]    I am not satisfied that any conduct on the part of Advanta in respect of the application before the delegate, including any shortcomings or flaws in its evidence, should have any impact on the exercise of the discretion under s 223(2) of the Act in this de novo hearing of Advanta’s application for an extension.

[35]    As I have said, the other Advanta witnesses, Dr Tabah, Mr Grundon, Mr Burchmann, Ms Savage and Mr Gouldson, were not cross-examined. None of their evidence was or could be described as far-fetched or fanciful, and in the circumstances, I accept their evidence.

Whether error demonstrated

65    The first error is said to be based on a “finding” by the Tribunal that “the accuracy and truthfulness of the disclosure of the processes by which the error came to be committed provided by Advanta to the Commissioner were irrelevant to the exercise of the discretion under section 223(2) of the Act in a de novo appeal from that proceeding”, and reference is made to [34] of the reasons.

66    However, no such finding is made in [34] which contains, instead, a finding (in effect) that Advanta’s conduct before the delegate, including any shortcomings or flaws in its evidence, did not as a matter of fact have any impact on the exercise of discretion under s 223(2) Patents Act in the de novo hearing before the Tribunal. This finding was made in the context of the preceding findings of fact, including that the inaccuracies in the evidence before the delegate were “adequately explained” (at [29]).

67    This means that, contrary to the asserted error, the Tribunal considered that the accuracy and truthfulness of the disclosure of the processes by which the error came to be committed before the Commissioner was relevant to the exercise of the discretion under s 223(2) of the Patents Act. Not only was consideration given to this issue (including the evidence relevant to that issue), but the Tribunal then decided that it had no impact on the exercise of discretion. It restated that position at [83] in finding that it did not weigh against the exercise of the discretion in favour of Advanta.

68    The second error is said to arise from the first error in that it is said that, as a result of the first error, the Tribunal erred in “finding that Advanta had made a comprehensive and frank disclosure of all the relevant circumstances and had laid out all of the relevant facts and circumstances”. Reference is made to [72] of the reasons.

69    As the first error was not established and rests upon a mischaracterisation of the reasons of the Tribunal, the second error has not been demonstrated.

70    The final error is said to be based on a finding by the Tribunal that Advanta’s disclosure of the processes by which the error came to be committed in the proceeding before the Commissioner was only relevant to the exercise of the discretion in a de novo appeal from that proceeding, if it is established that the evidence adduced before the Commissioner was “deliberately misleading” or “deliberately confined”. Reference is given to [31] of the reasons of the Tribunal’s decision.

71    Counsel for Nufarm elaborated in oral submissions, stating that the Tribunal had imposed a “requirement that [Nufarm] needed to establish that the evidence advanced by Advanta before the Commissioner was deliberately misleading or deliberately confined before that could be relevant in the exercise of the discretion”.

72    However, [31] contains no such finding, and the Tribunal imposed no such “requirement”. Instead, [31] contains one of a number of reasons given by the Tribunal in relation to the issue of whether the conduct of Advanta in this case should have any impact on the exercise of discretion under s 223(2). Further, it was common ground at the hearing before me that [31] addressed a particular submission made by Advanta to the Tribunal that the evidence adduced before the Commissioner was not “deliberately misleading” or “deliberately confined”.

73    As this asserted error rests upon a mischaracterisation of the reasons of the Tribunal, it has not been demonstrated.

74    For these reasons, appeal ground 1 must fail.

Ground 2

The alleged error

75    Appeal ground 2 is described in Nufarm’s opening submissions as follows:

The Tribunal acted on a wrong principle and erred in law in finding that the broadly protective and remedial operation of section 223 of the Act was relevant to the determination as to whether the discretion conferred by s 223(2)(a) was enlivened rather than being limited to the exercise of the discretion once enlivened (Decision at [68]).

76    The alleged error identified in “appeal ground 2” correlates to the fifth question of law in the Notice of Appeal.

Whether error demonstrated

77    Paragraph 68 of the Tribunal’s reasons stated:

The failure to pay the renewal fee by the due date, or by the end of the grace period, was caused by identifiable errors or omissions, and ultimately the failure to authorize CPA to pay the renewal fee, which in my view can be properly regarded as being within the “broadly protective and remedial operation” of s 223 of the Act.

(citations omitted; emphasis omitted)

78    The reference to “broadly protective and remedial operation” in the Tribunal’s reasons contained a footnote to Alphapharm Pty Ltd v H Lundbeck A/S (2014) 254 CLR 247; [2014] HCA 42 at [64] in which Crennan, Bell and Gageler JJ stated:

… It can be observed generally that, subject to reg 22.11, there is no reason to suppose that s 223 of the Act lacks the broadly protective and remedial operation accorded to its immediate predecessor by numerous courts, including this Court.

(footnote omitted)

79    The statement by the Tribunal is therefore consistent with, and adopts, the approach taken by the plurality of the High Court in Alphapharm which proceeded, at [65], to describe s 223 as “a general remedial provision” and noted that “the real purpose of s 223(2)(a) [is] to confer a general remedial power to extend time”.

80    It is also consistent with the statement by Kiefel J (as her Honour then was) and Keane J at [115] of Alphapharm that, “It may be accepted that s 223(2) is remedial in nature and should therefore be given a wide operation”.

81    Such an approach is not unique to Alphapharm. Similar statements have been made in decisions of this Court. For example, in G S Technology Pty Ltd v Commissioner of Patents (2004) 63 IPR 9; [2004] FCA 1017, Spender J stated at [50] that:

Section 223 of the Act is a remedial section designed to advance the purposes of the Act and, to that end, permitting the forgiving of error or mistake where it is appropriate to do so.

82    G S Technology was cited by the Full Court with approval in Sunesis Pharmaceuticals Inc v Commissioner of Patents (2015) 228 FCR 448; [2015] FCAFC 29 (Bennett, Greenwood and Middleton JJ). In that case, the Court stated at [27] that:

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…

…

In the absence of “quite compelling contextual or other considerations”, the section must apply to permit or empower the granting of extensions…

(footnotes omitted)

83    Contrary to the submissions by Nufarm, the statutory requirement for an error or omission to enliven s 223(2) should not be read down and nor should the “broadly protective and remedial operation” of s 223 of the Act only be considered if and when the discretion is enlivened.

84    This has the consequence that no error has been shown in the approach taken by the Tribunal.

85    For these reasons, appeal ground 2 must fail.

Ground 3

The alleged error

86    By appeal ground 3, Nufarm contends that the Tribunal “acted on a wrong principle and/or allowed irrelevant material to guide it and therefore erred in law” by identifying the failure by Advanta to authorise CPA to pay the renewal fee “as constituting the error or omission which led to the failure to do the relevant act”. It contends that the Tribunal ought to have found that authorising CPA to pay the renewal fee was the relevant act, or an integral part of payment of the renewal fee, and therefore cannot be the relevant error or omission for the purposes of s 223.

87    The “wrong principle” which Nufarm contends was acted upon by the Tribunal was not identified by it, and the reformulated ground (and the stated first question of law in the Notice of Appeal) is directed at the characterisation by the Tribunal of the facts as found by it and the application of the legal principles to the facts as found, rather than being an appeal on a question of law, as required. It is therefore incompetent.

88    As to the second question of law stated in the Notice of Appeal, there was no articulation of the “extraneous or irrelevant matter” which Nufarm complains that the Tribunal took into account. This complaint falls at the first hurdle, and is also incompetent as no question of law has been identified with precision.

89    In any event, for the following reasons, no error has been demonstrated.

Whether error demonstrated

90    Before the Tribunal, as in this Court, Nufarm submitted that the failure to authorise CPA was “not an error causing a failure, but [was] the failure itself”. In rejecting that submission, the Tribunal acknowledged the distinction between the relevant act and the relevant error or omission, and accepted that the “act or omission cannot be the relevant act itself”. That statement of principle was correct: see Aspen Pharma at [60]. Nufarm did not submit to the contrary, either in this Court or below.

91    The Tribunal also referred to Nufarm’s acceptance that there can be more than one contributing error or omission (which Nufarm did not challenge in this appeal). The Tribunal observed that the phrase “error or omission” has a broad scope and includes a series of errors and breakdowns in procedure, a failure to exercise due diligence, negligence, incompetence and a breakdown of a system that lacks sophistication. The Tribunal also stated that it is sufficient if the error or omission “contributed to” the failure to do the act or if there is “some link between” them. This adopts the words used by Jenkinson J in the oft-cited decision of Kimberly-Clark Ltd v Commissioner of Patents (1988) 84 ALR 685 at 696; 13 IPR 569 at 581, namely:

All that is required is once an error or omission has been established that there be some link between that error or omission and the failure to [do the relevant act].

92    After identifying these principles, the Tribunal then found that the failure to authorise CPA to pay the 2017 renewal fee, “and the other contributing errors or omissions” were “all at least one step earlier in the chain, and [are] properly seen as causing or contributing to the failure to pay” (at [71]).

93    Contrary to Nufarm’s submission in this appeal and as is apparent from its reasons, the Tribunal did not rely solely on the failure to authorise CPA as the causative error. Further, Nufarm’s submission that, “At its highest, the evidence did not identify any relevant ‘error or omission’ except the non-payment of [the] renewal fee, which is the failure to do the relevant act” cannot be accepted when one has regard to the Tribunal’s decision at [64] and [65] which stated:

64.    The direct cause of the failure to pay the fifth renewal was Advanta’s error or omission in failing to authorize CPA to make the payment. That error had several contributing causes including the following:

(a)    Advanta either not receiving the CPA Global notices or, if they were received, failing to forward them to the relevant person and to act upon them;

(b)    The failure to advise CPA of Dr Stalker’s (and Ms Amos’s) departure from Advanta, potentially combined with the failure to arrange for Dr Stalker’s hard copy correspondence (assuming it was ever received from CPA) to be forwarded to another Advanta employee;

(c)    The failure to refer to CPA’s role in relation to the payment of fees in the January 2017 handover report provided to Dr Tabah;

(d)    Advanta’s failure to provide advice (prior to August 2017) to Sprusons that both Dr Stalker and Mr Easton had ceased their employment with Advanta and to provide updated contact details in relation to correspondence regarding the Patent;

(e)    Sprusons’ failure to send the email of 5 February 2018 to Dr Tabah in circumstances where he had expressly advised them that he was the Advanta contact person in relation to the Patent; and

(f)     Advanta’s failure to close Mr Easton’s email account at the time of his departure from the company and instead Advanta leaving it open and unmonitored.

65.    These errors or omissions directly resulted in the missed CPA Global notices and the missed Sprusons email not coming to the attention of Advanta and thereby caused the failure to authorize CPA to make the fifth renewal payment.

94    These paragraphs of the Tribunal’s decision were preceded by detailed findings of fact as to the events leading up to the non-payment of the 2017 renewal fee, which included references to the evidence adduced by Advanta.

95    It was in the context of identifying the relevant events by reference to the evidence before it that the Tribunal made its finding that the direct cause of the failure to pay the 2017 renewal fee was Advanta’s error or omission in failing to authorise CPA to make the payment, which itself had “several contributing causes” including those listed in [64]. Those causes in [64] were themselves identified as “errors or omissions” in [65], and they were found to have caused certain documents not coming to the attention of Advanta which in turn caused the failure to authorise CPA to make the renewal payment, and which in turn caused the 2017 renewal fee to not be paid within time.

96    Therefore, consistently with the reasoning of the Tribunal, including at [68] and [71], the failure to pay the 2017 renewal fee within time was caused by errors or omissions within the meaning of s 223(2) which included, ultimately, the failure to authorise CPA to pay the renewal fee, all of which are “at least one step earlier in the chain”.

97    It follows that it is incorrect to conflate the failure to authorise CPA to pay the 2017 renewal fee with the failure to pay the renewal fee by the due date, as Nufarm seeks to do. This has the consequence that no error has been shown in the approach taken by the Tribunal.

98    For these reasons, appeal ground 3 must fail.

Ground 4

The alleged error

99    At the heart of this reformulated ground of appeal is the proposition (albeit put in various ways) that, unless Nufarm established that it had a system in place for the payment of renewal fees at the relevant time, “there could be no error or omission in such a procedure or system that led to the failure to do the relevant act” and that, as a consequence, “the jurisdictional fact of a relevant error or omission” was not established.

100    The contention that Advanta needed to demonstrate that it had a system to pay renewal fees was raised by Nufarm to overcome the attack by Advanta on the competency of this ground of appeal. Advanta’s contention, with which I agree, is that this appeal ground is, in substance, an attack on the factual findings of the Tribunal, and not an appeal on a question of law. So much is made plain by ground 4 of the Notice of Appeal which complains that “the Tribunal mistook the facts and erred in finding that at the relevant time, [Advanta] had in place a system for the payment of renewal fees”.

101    As observed in Aspen Pharma at [151]:

It is not the task of the Court when undertaking judicial review to supplant the Tribunal’s view of the facts simply because another, even contrary, view might have been open on the evidence.

102    Although it might be said that the alleged error asserted by Nufarm raises a question of law as to the proper construction of s 223(2) Patents Act, no such question of law is stated in the Notice of Appeal, contrary to r 33.12(2)(b) Federal Court Rules, and it is not otherwise apparent from the grounds of appeal. This is a critical deficiency: see Haritos at [85] and [91].

103    Had any such question been articulated, and depending on the precise wording of the question, it is likely to have been deficient if it did no more than invite the Court to embark on a broad and hypothetical enquiry as to the construction and operation of the legislation: see Haritos at [93] citing Screen Australia v EME Productions No 1 Pty Ltd (2012) 200 FCR 282; [2012] FCAFC 19 at [24] (Keane CJ, Finn and Gilmour JJ).

104    For all of these reasons, appeal ground 4 is incompetent.

Whether error demonstrated

105    The legal proposition sought to be advanced by Nufarm is, in any event, wrong as it seeks to limit the circumstances in which an error can arise within the meaning of s 223(2), in a manner which is not found in or supported by the terms of the legislation. In Aspen Pharma, Yates J (with whom Jessup and Jagot JJ agreed) implicitly rejected an approach of the kind posited by Nufarm, stating at [71]:

In Kimberly Clark, Jenkinson J considered the scope to be given to the word “error” in the context of s 160(2) of the Patents Act 1952 (Cth), which was in closely similar terms to s 223(2) of the Act. His Honour observed (at 694) in that context, that:

… the word “error” is not easily assigned a clear meaning restricted by reference to one or several particular categories of flawed mental function. The attempt is likely to lead to the drawing of fine and often unrealistic distinctions. …

106    Similarly, in G S Technology at [69], Spender J regarded the “reference to a failure to have a reminder system, or a failure to place an incorrect date in the reminder system is truly a red herring on the question of the existence of an error or omission”. I agree with this observation: that is, the proposition that an applicant for an extension of time under s 223(2) must have a system in place before an error or omission can be shown to have occurred is an irrelevant distraction, without any proper justification having regard to the subject matter, scope and purpose of the legislation: cf Australian Broadcasting Tribunal v Bond Corporation Holdings Ltd (1989) 86 ALR 424 at 432 (Burchett J, with whom Sheppard and Beaumont JJ agreed).

107    For these reasons, Nufarm has failed to demonstrate a proper basis to interfere with the Tribunal’s finding that there had been an error or omission within the meaning of s 223(2) of the Patents Act.

108    Appeal ground 4 must therefore fail.

DISPOSITION

109    For the preceding reasons, the decision of the Tribunal will be affirmed. Costs will follow the event.

Associate:    

Dated:    20 February 2023