Alcon Laboratories (Australia) Pty Ltd v Trustees of Columbia University in the City of New York [2002] FCA 1314

Alcon Laboratories (Australia) Pty Ltd v Trustees of Columbia University in the City of New York [2002] FCA 1314

The Court directed amendment of the Patent because the notice and advertising requirements had been complied with, the Commissioner had been notified and was prima facie satisfied that the amendments were allowable under s 102 and did not intend to appear, no party opposed the amendments, the Court was satisfied that the proposed amendments would not claim matter not in substance disclosed in the Patent as granted, no amended claim would fall outside the scope of the claims before amendment, the amendments would not cause non-compliance with s 40, and the amendments were not contrary to the public interest.

Jurisdiction
Australia
Judgment Date
15 October 2002
Procedural Posture
Patent Amendment Application in Revocation Proceedings / Notice of Motion by Patentee Under S 105 of the Patents Act 1990 (cth)
Outcome
Application allowed; Australian Letters Patent No 625096 amended as ordered.
Legal Topics
['amendment of Patent' 'complete Specification' 'relevant Proceedings' 'allowability of Amendments' 'federal Court Rules Advertising Requirements']
['intellectual Property' 'patents' 'civil Procedure'] ['amendment of Patent' 'complete Specification' 'relevant Proceedings' 'allowability of Amendments' 'federal Court Rules Advertising Requirements']

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Procedural Posture

Patent Amendment Application in Revocation Proceedings / Notice of Motion by Patentee Under S 105 of the Patents Act 1990 (cth)

Legal Issues

  1. 1 ['Whether the Court should direct amendment of Australian Letters Patent No 625096 under s 105 of the Patents Act 1990 (Cth).' 'Whether the proposed amendments were allowable under s 102 of the Patents Act 1990 (Cth).' 'Whether the procedural requirements for notice and advertising under O 58 r 10 of the Federal Court Rules had been complied with.' 'Whether the amendments would be contrary to the public interest.']

Ratio Decidendi

The Court directed amendment of the Patent because the notice and advertising requirements had been complied with, the Commissioner had been notified and was prima facie satisfied that the amendments were allowable under s 102 and did not intend to appear, no party opposed the amendments, the Court was satisfied that the proposed amendments would not claim matter not in substance disclosed in the Patent as granted, no amended claim would fall outside the scope of the claims before amendment, the amendments would not cause non-compliance with s 40, and the amendments were not contrary to the public interest.

Court Disposition

Application allowed; Australian Letters Patent No 625096 amended as ordered.

Orders

  • ['Australian Letters Patent No 625096 be amended by deleting claims 1 to 43 of the Patent.' 'Australian Letters Patent No 625096 be amended by inserting claims 1 to 71 as set out in pages 1 to 11 of the Schedule to the orders.' 'Australian Letters Patent No 625096 be amended by cancelling page 5 of the Specification...