Cytec Industries Inc. v Nalco Company [2019] FCA 1800

Cytec Industries Inc. v Nalco Company [2019] FCA 1800

The proposed amendments were allowable because the application as filed disclosed each of the 47 small molecules and the relevant product mixture, and the amendments narrowed the accepted claims by replacing the broad Markush formula with specific identified molecules within a specified product mixture. The amendments therefore did not claim or disclose matter beyond the application as filed, fell within the scope of the accepted claims, and addressed the s 40 deficiencies identified by the delegate. It was appropriate to exercise the discretion under s 105(1A) because the amendments were sought to remove lawful grounds of objection and no discretionary reason to refuse leave was...

Jurisdiction
Australia
Judgment Date
04 November 2019
Procedural Posture
Patents Appeal From a Decision of a Delegate of the Commissioner of Patents; Interlocutory Application to Amend a Patent Application / Interlocutory Application Under S 105(1 A) of the Patents Act 1990 (cth) Decided
Outcome
Application to amend granted; Nalco ordered to pay Cytec's costs of the interlocutory application; proceedings listed for case management.
Legal Topics
['amendment of Patent Application' 'allowability of Amendments' 'section 102 of the Patents Act 1990 (cth)' 'section 105(1 A) of the Patents Act 1990 (cth)' 'bayer Process' 'aluminosilicate Scale Inhibition' 'costs of Amendment Application']
['patents' 'intellectual Property'] ['amendment of Patent Application' 'allowability of Amendments' 'section 102 of the Patents Act 1990 (cth)' 'section 105(1 A) of the Patents Act 1990 (cth)' 'bayer Process' 'aluminosilicate Scale Inhibition' 'costs of Amendment Application']

Case Brief

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Procedural Posture

Patents Appeal From a Decision of a Delegate of the Commissioner of Patents; Interlocutory Application to Amend a Patent Application / Interlocutory Application Under S 105(1 A) of the Patents Act 1990 (cth) Decided

Legal Issues

  1. 1 ['Whether the proposed amendments to Australian Patent Application No. 2012220990 were allowable under s 102 of the Patents Act 1990 (Cth).' 'Whether the Court should exercise its discretion under s 105(1A) of the Patents Act 1990 (Cth) to direct amendment of the patent application.' "Whether Nalco should bear Cytec's costs of the interlocutory amendment application."]

Ratio Decidendi

The proposed amendments were allowable because the application as filed disclosed each of the 47 small molecules and the relevant product mixture, and the amendments narrowed the accepted claims by replacing the broad Markush formula with specific identified molecules within a specified product mixture. The amendments therefore did not claim or disclose matter beyond the application as filed, fell within the scope of the accepted claims, and addressed the s 40 deficiencies identified by the delegate. It was appropriate to exercise the discretion under s 105(1A) because the amendments were sought to remove lawful grounds of objection and no discretionary reason to refuse leave was...

Court Disposition

Application to amend granted; Nalco ordered to pay Cytec's costs of the interlocutory application; proceedings listed for case management.

Orders

  • ['Pursuant to s 105(1A) of the Patents Act 1990 (Cth), the claims of Australian Patent Application No. 2012220990 be amended to take the form indicated in Annexure A to these orders.' "The respondent pay the appellant's costs of the respondent's interlocutory application filed on 29 March 2019." 'The proceedings be...