Meaning of Exceptional Circumstances Clarified

In Merial Inc v Intervet International BV the Judge upheld the Assistant Commissioner’s finding that a request for an extension of time in which to file a counterstatement satisfied the relevant exceptional circumstances provisions in the Patents Regulations 2014...

On the final day for filing the counterstatement the Intervet’s attorney applied for an extension of time and the following day filed a minimal counterstatement, with a view to amending it to a fuller document. Regulation 103(3) allows the Commissioner to extend the time in which to file a counterstatement by up to 2-months upon being satisfied that there are exceptional circumstances that justify the extension. In line with Supreme Court precedent the Assistant Commissioner interpreted the phrase “exceptional circumstances” as “unusual, outside the common run”, and concluded that this was satisfied and so granted Intervet an extension of time.

In its appeal Merial argued for a more stringent meaning for “exceptional circumstances”. Firstly, the adoption of the phrase marks a departure from the previous Patents legislation and is inline with the overall purpose of improving the efficiency of the patents system. Secondly, it argued for adopting “quite out of the ordinary”, which is being applied to the equivalent phrase in the Trade Marks legislation, and that the higher standard is justified by the strong public interest in the appropriate conferment of monopolies.

The Judge, however, did not find these arguments compelling. While noting that exceptional circumstances is the higher of two standards for extensions in the Regulations, the Judge found that the purpose of the patents legislation was met by the meaning of “unusual, outside the common run” as a decision maker is still aware that extensions are not to be routine. The Judge also considered the High Court trade mark case which applied a higher standard to have little precedential value or legislative influence, finding that it was context dependant and seemingly made without consideration of the Supreme Court’s earlier construction of the phrase.

Regarding the Assistant Commissioner’s finding that exceptional circumstances were present, the Judge held that the Assistant Commissioner was right not to sharply distinguish between qualifying grounds and subsequent discretion. To do so can unduly limit consideration of factors relevant to the underlying policy of promoting speedy and efficient resolution of challenges to patents.

Author: Quinn Miller

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