Biochem Pharma Inc v Commissioner of Patents [1998] FCA 184

Biochem Pharma Inc v Commissioner of Patents [1998] FCA 184

The Deputy Commissioner had power to permit the United States attorneys to make limited oral submissions because, under Australian counsel's control and the Deputy Commissioner's supervision, they would not be conducting the opposition proceedings within s 200 of the Patents Act 1990 (Cth) and would not be carrying on business, practising or acting as patent attorneys within s 201. With ss 200 and 201 not infringed, the Deputy Commissioner could regulate the opposition proceedings and her discretion was not shown to have miscarried.

Jurisdiction
Australia
Judgment Date
11 March 1998
Procedural Posture
Application for Judicial Review of a Deputy Commissioner of Patents Decision Under the Administrative Decisions (judicial Review) Act 1977 (cth) / Hearing of Application Challenging Leave for United States Attorneys to Make Oral Submissions in Patent Opposition Proceedings
Outcome
Application dismissed.
Legal Topics
['patent Opposition Proceedings' 'rights of Patent Attorneys' 'representation Before the Commissioner of Patents' 'conduct of Proceedings' 'jurisdiction and Discretion of Administrative Tribunals']
['patents' 'administrative Law' 'practice and Procedure'] ['patent Opposition Proceedings' 'rights of Patent Attorneys' 'representation Before the Commissioner of Patents' 'conduct of Proceedings' 'jurisdiction and Discretion of Administrative Tribunals']

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Procedural Posture

Application for Judicial Review of a Deputy Commissioner of Patents Decision Under the Administrative Decisions (judicial Review) Act 1977 (cth) / Hearing of Application Challenging Leave for United States Attorneys to Make Oral Submissions in Patent Opposition Proceedings

Legal Issues

  1. 1 ['Whether the Deputy Commissioner of Patents had power to permit United States attorneys who were not Australian legal practitioners or registered patent attorneys to make oral submissions in opposition proceedings under the supervision of Australian counsel.' 'Whether making the permitted submissions would amount to conducting proceedings for the purposes of s 200 of the Patents Act 1990 (Cth).' 'Whether the United States attorneys would commit an offence by carrying on business, practising or acting as patent attorneys under s 201 of the Patents Act 1990 (Cth).' "Whether the Deputy Commissioner's discretion miscarried by taking into account irrelevant considerations or otherwise."]

Ratio Decidendi

The Deputy Commissioner had power to permit the United States attorneys to make limited oral submissions because, under Australian counsel's control and the Deputy Commissioner's supervision, they would not be conducting the opposition proceedings within s 200 of the Patents Act 1990 (Cth) and would not be carrying on business, practising or acting as patent attorneys within s 201. With ss 200 and 201 not infringed, the Deputy Commissioner could regulate the opposition proceedings and her discretion was not shown to have miscarried.

Court Disposition

Application dismissed.

Orders

  • ['The application be dismissed.' "The applicant to pay the respondents' costs."]