Daiichi Sankyo Company, Limited v Alethia Biotherapeutics Inc. [2016] FCA 1540

Daiichi Sankyo Company, Limited v Alethia Biotherapeutics Inc. [2016] FCA 1540

Because the first respondent had effectively withdrawn, the Commissioner did not wish to take any active part in the proceeding, and there was no evidence before the Court capable of supporting any actual or potential ground of opposition, there was no basis on which the Court could uphold any ground of opposition; it was therefore appropriate to allow the appeal, set aside the delegate's decision, dismiss the opposition, and order that Australian Patent Application 2008311698 proceed to grant.

Jurisdiction
Australia
Judgment Date
19 December 2016
Procedural Posture
Appeal Under S 60(4) of the Patents Act 1990 (cth) From a Decision in a Patent Opposition / Determined on the Papers; Consent Orders Made Allowing the Appeal
Outcome
Appeal allowed; delegate's decision set aside; opposition dismissed; Australian Patent Application 2008311698 to proceed to grant; no order as to costs.
Legal Topics
['patent Opposition' 'appeal From Commissioner of Patents' 'inventive Step' 'hearing De Novo' 'consent Orders']
['intellectual Property' 'patents'] ['patent Opposition' 'appeal From Commissioner of Patents' 'inventive Step' 'hearing De Novo' 'consent Orders']

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Procedural Posture

Appeal Under S 60(4) of the Patents Act 1990 (cth) From a Decision in a Patent Opposition / Determined on the Papers; Consent Orders Made Allowing the Appeal

Legal Issues

  1. 1 ["Whether the appeal from the delegate's decision refusing to allow certain claims of Australian Patent Application 2008311698 to proceed to grant should be allowed where the opponent had effectively withdrawn, the Commissioner did not wish to take an active part, and there was no evidence supporting any ground of opposition." "Whether the Commissioner's delegate's decision should be set aside, the opposition dismissed, and the patent application proceed to grant."]

Ratio Decidendi

Because the first respondent had effectively withdrawn, the Commissioner did not wish to take any active part in the proceeding, and there was no evidence before the Court capable of supporting any actual or potential ground of opposition, there was no basis on which the Court could uphold any ground of opposition; it was therefore appropriate to allow the appeal, set aside the delegate's decision, dismiss the opposition, and order that Australian Patent Application 2008311698 proceed to grant.

Court Disposition

Appeal allowed; delegate's decision set aside; opposition dismissed; Australian Patent Application 2008311698 to proceed to grant; no order as to costs.

Orders

  • ['Pursuant to r 34.23 of the Federal Court Rules, the Commissioner of Patents (Commissioner) be joined as the second respondent.' 'The appeal be allowed.' 'The decision of the delegate of the Commissioner made on 9 September 2015 concerning opposed Australian Patent Application 2008311698 ([2015] APO 59) be set...