Emory University v The Commissioner of Patents & Anor [1997] FCA 1465

Emory University v The Commissioner of Patents & Anor [1997] FCA 1465

The Federal Court does not have power under the Patents Act 1990 (Cth) or the Patents Regulations to grant a confidentiality order solely for the purpose of converting documents into 'prescribed documents' under s 55(2); the regulation presupposes an order made under authority existing independently of those provisions.

Parties
Applicant: Emory University; First Respondent: The Commissioner of Patents; Second Respondent: Biochem Pharma Inc
Jurisdiction
Australia
Judgment Date
19 December 1997
Procedural Posture
Patents Opposition/confidentiality Order / Application to Federal Court for Confidentiality Order; Dismissal at Interlocutory Stage
Outcome
Application dismissed for lack of jurisdiction.
Legal Topics
Confidentiality of Documents, Public Access to Patent Files, Jurisdictional Limitations, Regulations Under Patents Act
Intellectual Property Patents Confidentiality of Documents Public Access to Patent Files Jurisdictional Limitations Regulations Under Patents Act

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Parties

Emory University

Applicant

The Commissioner of Patents

First Respondent

Biochem Pharma Inc

Second Respondent

Procedural Posture

Patents Opposition/confidentiality Order / Application to Federal Court for Confidentiality Order; Dismissal at Interlocutory Stage

Legal Issues

  1. 1 Does the Federal Court have power under the Patents Act 1990 (Cth) or Patents Regulations to make a confidentiality order for documents filed in a patent opposition proceeding for the purpose of s 55(2)?

Ratio Decidendi

The Federal Court does not have power under the Patents Act 1990 (Cth) or the Patents Regulations to grant a confidentiality order solely for the purpose of converting documents into 'prescribed documents' under s 55(2); the regulation presupposes an order made under authority existing independently of those provisions.

Court Disposition

Application dismissed for lack of jurisdiction.

Orders

  • The application be dismissed.
  • The applicant pay the respondents' costs of the proceeding, including their costs of the second respondent's motion brought by amended notice of motion filed on 9 December 1997.