RE MERCK SHARP & DOHME LTD

HCMP 1626/2001

IN THE HIGH COURT OF THE

HONG KONG SPECIAL ADMINISTRATIVE REGION

COURT OF FIRST INSTANCE

MISCELLANEOUS PROCEEDINGS NO. 1626 OF 2001

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D E C I S I O N

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1. The applicant Merck Sharp and Dohme Ltd seeks an extension of time under Order 3 rule 5 of the Rules of the High Court, alternatively under the inherent jurisdiction of the Court, that the time for filing all necessary documentation at the Patents Registry to give effect to the order of the court made on 10 October 2001 be extended up to and including 12 November 2001, so that rule 39(1) of the Patents (General) Rules, Cap. 514C shall be deemed to have been complied with in all respects.

2. At the first hearing of this application, I raised with Mr Paul Stephenson, who appeared for the applicant, whether I have jurisdiction to extend time in this instance. As jurisdiction is an important matter, I have adjourned the application for Mr Stephenson to make further submissions after research.

3. The background of the application may be given as follows. By an originating motion issued on 23 March 2001, the applicant sought an order under section 46(1) of the Patents Ordinance, Cap. 514, to amend the specification of its Patent No. 81 of 1997 so that the Hong Kong patent shall correspond with the amendments made to the European (UK) Patent No. 0 411 668 arising as a result of opposition proceedings filed against the European patent.

4. The relevant provisions of section 46 in Cap. 514 read as follows:

"(1) Subject to section 103, the proprietor of a patent granted under this Ordinance may apply to the court to amend the specification of the patent and the court may by order allow any such amendment subject to such conditions as it thinks fit.

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(5) Upon receipt of the court order and supporting documents filed in the prescribed manner, the Registrar [of Patents] shall record the amendments to the specification of the patent and shall publish this and advertise the fact by notice in the Gazette.

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(7) Rules of court may provide for the notification of any application under this section to the Registrar and for his appearance on the application and for giving effect to any order of the court on the application."

5. Notice of application by the originating motion was given in the Gazette on 6 April 2001 and the notice was re-advertised on 14 September 2001 when the proposed amendment sought in the originating motion was amended. On 10 October 2001, Yuen J ordered that the Registrar of Patents shall amend the specification of Patent No. 81 of 1997 in the manner as provided in the order. The order of the court was sealed on 29 October 2001.

6. Under rule 39 of the Patents (General) Rules, it is provided inter alia as follows:

"(1) The proprietor of a patent in respect of which the specification has been amended by court order under section 46 of the Ordinance shall, within one month of the making of such a court order, file with the Registrar notice of such amendment.

(2) A notice under subsection (1) shall be in the specified form and shall be accompanied by a verified copy of the court order together with any supporting documents." (emphasis supplied)

7. Because the sealed order was obtained on 29 October 2001, and there were delays in postage as the agents responsible for instructing the solicitors in Hong Kong are in the Channel Islands, the necessary documentation was not filed with the Registrar of Patents until 12 November 2001, when the applicant was two days out of time.

8. If it were within the jurisdiction of the court to extend time, I would have exercised my power to extend time in this instance, having regard to the reasons for delay and the short period of the delay. The question is whether I have jurisdiction to do so.

9. The first basis for counsel's submission that the court does have jurisdiction is Order 3 rule 5 of the Rules of the High Court and this provides as follows:

"(1) The Court may, on such terms as it thinks just, by order extend or abridge the period within which a person is required or authorised by these rules, or by any judgement, order or direction, to do any act in any proceedings."

10. The time within which the applicant is required to file the necessary documentation with the Registrar of Patents is not fixed by the Rules of the High Court but by the Patents (General) Rules. Mr Stephenson submitted that the applicant is still within the scope of Order 3 rule 5 because the relevant words are :

"The court may ..... by order extend ..... the period within which a person is required or authorised by ..... any ..... order ..... to do any act in any proceedings."

11. He submitted that the time limit within which the applicant should file the necessary documentation with the Registrar is triggered by the order of the court made on 10 October 2001. I have no quarrel with that. I do not, however, accept the submission that the time limit in rule 39(1) of the Patents (General) Rules is effectively imported by statute into the court order so that the time within which the documents must be filed could be regarded as a time limit ordered or required by the court. The fact remains that it is not part of the order of the court on 10 October 2001 that the applicant was required to file the necessary documentation with the Registrar within one month of the making of the order. The requirement and obligation to do so was imposed by statute, not by an order of the court.

12. For the above reasons, I do not accept that Order 3 rule 5 would have given the court jurisdiction to extend time in this instance. I turn to consider the alternative basis for the court's jurisdiction, being the inherent jurisdiction of the court.

13. If the time limit to file the necessary documents were ordered by the court, and not imposed by statute, it is clear that the court would have jurisdiction to extend time in an appropriate case (see R v Bloomsbury and Marylebone County Court, ex p. Villerwest Ltd [1976] 1 WLR 362). Here, the period within which that obligation is to be performed is imposed by rule 39(1) of the Patents (General) Rules. There is nothing in the Patents Ordinance or the subsidiary legislation to give the court the power to extend time in this situation, notwithstanding that it is provided in section 149(2)(g) of the Ordinance that rules may make provision :

"prescribing time limits for doing anything required to be done in connection with any such proceeding by this Ordinance or the rules and providing for the alteration of any period of time specified in this Ordinance or the rules". (emphasis supplied)

14. Mr Stephenson submitted that there are two alternative ways of approaching the question whether the court should have inherent jurisdiction to extend time. The first approach is that the court can extend time unless it is expressly prohibited by legislation from doing so. The alternative approach is that the court can only extend time if it is especially authorized by statute to do so. He has urged me to adopt the first approach. He also referred me to a passage in the Supreme Court Practice 1999, Vol. 1, paragraph 29/1A/10 on inherent jurisdiction in interlocutory injunctions containing the dictum of Jessel M R in Smith v Peters (1875) LR 20 Eq 511 in which his lordship stated at 513:

"I have no hesitation in saying that there is no limit to the practice of the Court with regard to interlocutory applications so far as they are necessary and reasonable applications ancillary to the due performance of its functions, namely the administration of justice at the hearing of the cause."

15. I do not consider the above dictum to be of assistance in the present situation. Further, I do not think it is a matter of no significance that there is no provision in the Patents (General) Rules empowering the court to extend time in this instance, notwithstanding that it is specifically envisaged in section 149(2)(g) that rules may make provision for the alteration of any period of time specified in the Rules.

16. It is also pertinent to note rule 100(1) of the Patents (General) Rules which relates to the alteration of time limit and is as follows:

"(1) The times or periods prescribed by these Rules for doing any act or taking any proceeding under the Rules, other than times or periods prescribed in the provisions mentioned in subsection (2), may be extended by the Registrar [of Patents] if he thinks fit, upon such notice to the parties and upon such terms as he may direct; and such extension may be granted even though the time or period for doing such act or taking such proceeding has expired." (emphasis supplied)

17. Rule 39(1) is one of the provisions referred to in rule 100(2) and is thus not within the power of the Registrar of Patents to extend the time limit. Mr Stephenson submitted that rule 100 should not affect the court's power to extend time and that it is unnecessary to specially provide for the power of the court to extend time because of the provisions of Order 3 rule 5 in the Rules of the High Court and the court's inherent powers. I do not accept his submission here.

18. I have also noted the provision in section 132 of the Ordinance which reads as follows:

"132. General powers of the court

(1) The court may, for the purpose of determining any question in the exercise of its original or appellate jurisdiction under this Ordinance, make any order or exercise any other power which the Registrar could have made or exercised for the purpose of determining that question."

19. In view of rule 100, the effect of which is that the Registrar is not empowered to extend time under rule 39(1), I have grave reservations whether the court, in the exercise of its original jurisdiction under the Ordinance, may make an order to extend time, which is something that the Registrar of Patents is not empowered to do.

20. In view of the statutory provisions referred to above, what would be the basis for saying that the court should have power to dispense with the time limit provided in the statute? Mr Stephenson submitted that the statutory provisions should be interpreted purposively not restrictively because it is desirable for the Hong Kong patent to be amended in this instance so that it should fall in line with the European patent and that it is in the public interest that the public should not be misled as to the scope of the Hong Kong patent. I accept that it is desirable and it is in the public interest that the specification of the Hong Kong patent should be amended, that is why an order for amendment of the specification was made by the court on 10 October 2001. Nevertheless, the requirement and the time limit for giving effect to that court order as laid down by statute must be complied with. As stated by Millett LJ in Petch v Gurney (Inspector of Taxes) [1994] 3 All ER 731 at 738,

"Where statute requires an act to be done in a particular manner, it may be possible to regard the requirement that the act be done as mandatory but the requirement that it be done in a particular manner as merely directory. In such a case the statutory requirement can be treated as substantially complied with if the act is done in a manner which is not less satisfactory having regard to the purpose of the legislature in imposing the requirement. But that is not the case with a stipulation as to time. If the only time limit which is prescribed is not obligatory, there is no time limit at all. Doing an act late is not the equivalent of doing it in time. That is why Grove J said in Barker v Palmer (1881) 8 QBD 9 at 10 - 'provisions with respect to time are always obligatory, unless a power of extending the time is given to the court'. This probably cannot be laid down as a universal rule, but in my judgment it must be the normal one. Unless the court is given a power to extend the time, or some other and final mandatory time limit can be spelt out of the statute, a time limit cannot be relaxed without being dispensed with altogether, and it cannot be dispensed with altogether unless the substantive requirement itself can be dispensed with."

21. The above dicta were approved and adopted by the House of Lords in R v Weir [2001] 2 All ER 216 and Lord Bingham had this to say at 222:

"Where a time limit is laid down and no power is given to extend it, the ordinary rule is that the time limit must be strictly observed."

22. The statutory time limit with which the English Court of Appeal was concerned with in Petch v Gurney was the time limit within which a taxpayer was required to transmit the case stated by the special commissioner to the High Court in the context of a taxpayer's appeal against the commissioner's decision. The time limit that the House of Lords was concerned with in Weir was in the context of the Director of Public Prosecutions' application for leave to appeal to the House of Lords. These statutory provisions are of course very different. Nevertheless, it seems to me that the general observations in those two cases are applicable to the present situation. The court is not laying down a universal rule but in the normal situation, where a time limit is laid down by statute and no power is given to extend it, the time limit should be strictly observed without being dispensed with, unless the substantive requirement itself can be dispensed with altogether. If there is harshness in the statutory regime which gives no discretionary jurisdiction to the court to extend a time limit under any circumstances, the redress lies in amendment of legislation.

23. As I am not persuaded that it is within the inherent jurisdiction of the court to extend time in this situation, I must dismiss this application. I make an order nisi that there be no order as to costs.