Emory University v Biochem Pharmer Inc (No. 2)[2000] FCA 1708

Emory University v Biochem Pharmer Inc (No. 2)[2000] FCA 1708

The proposed amendment was not shown to be futile on the basis advanced by Biochem because s 39 of the Patents Act 1990 (Cth) can permit both a divisional application out of a divisional application and a divisional application for the same invention as the application out of which it is made. However, because Biochem's Patent was subject to s 234(5), Emory's proposed particulars had to be reformulated to plead the narrower prior claiming ground available under the Patents Act 1952 (Cth). The motion was therefore stood over rather than dismissed or finally granted.

Jurisdiction
Australia
Judgment Date
23 November 2000
Procedural Posture
Patent Revocation Proceeding / Interlocutory Notice of Motion by the Applicant for Leave to Amend Particulars of Invalidity
Outcome
Motion stood over; costs reserved.
Legal Topics
['divisional Applications' 'petty Patents' 'priority Dates' 'lack of Novelty' 'prior Claiming' 'leave to Amend Particulars of Invalidity']
['patents' 'civil Procedure'] ['divisional Applications' 'petty Patents' 'priority Dates' 'lack of Novelty' 'prior Claiming' 'leave to Amend Particulars of Invalidity']

Case Brief

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Procedural Posture

Patent Revocation Proceeding / Interlocutory Notice of Motion by the Applicant for Leave to Amend Particulars of Invalidity

Legal Issues

  1. 1 ['Whether s 39 of the Patents Act 1990 (Cth) permits a divisional application out of an application that is already a divisional application.' 'Whether s 39 of the Patents Act 1990 (Cth) permits a divisional application for the one and only invention disclosed in the specification filed in respect of the application out of which it is made.' "Whether the proposed amendment to the applicant's Particulars of Invalidity was legally futile." 'Whether the proposed particulars had to be formulated by reference to the prior claiming ground available under the Patents Act 1952 (Cth), rather than lack of novelty under the Patents Act 1990 (Cth).']

Ratio Decidendi

The proposed amendment was not shown to be futile on the basis advanced by Biochem because s 39 of the Patents Act 1990 (Cth) can permit both a divisional application out of a divisional application and a divisional application for the same invention as the application out of which it is made. However, because Biochem's Patent was subject to s 234(5), Emory's proposed particulars had to be reformulated to plead the narrower prior claiming ground available under the Patents Act 1952 (Cth). The motion was therefore stood over rather than dismissed or finally granted.

Court Disposition

Motion stood over; costs reserved.

Orders

  • ['The motion brought by notice of motion filed on 7 June 2000 be stood over to Friday 24 November 2000 at 2.00pm.' 'The costs of the motion be reserved.']