F. Hoffman-La Roche AG v Commissioner of Patents [2000] FCA 1845

F. Hoffman-La Roche AG v Commissioner of Patents [2000] FCA 1845

Because the proposed amendments had only recently been advertised and it would not be known for three months whether, and to what extent, they would be opposed, it was appropriate to defer making orders on the Applicant's appeal or on the notice of motion. The appeal and motion were adjourned to a date shortly after expiry of the period for notification of opposition to the amendments, with costs of the motion reserved.

Jurisdiction
Australia
Judgment Date
15 November 2000
Procedural Posture
Appeal From Decision of a Delegate of the Commissioner of Patents and Notice of Motion Under Patent Regulations 1991 (cth), Reg 6.2(1)(b) / Interlocutory Directions on Motion to Postpone Grant of Patent Pending Determination of Application to Amend Complete Specification
Outcome
Appeal and notice of motion stood over for directions; costs of the motion to date reserved.
Legal Topics
['patent Opposition' 'appeal From Commissioner of Patents' 'amendment of Patent Application' 'postponement of Grant of Patent' 'novelty' 'complete Specification' 'false Suggestion or Misrepresentation']
['patents' 'administrative Law'] ['patent Opposition' 'appeal From Commissioner of Patents' 'amendment of Patent Application' 'postponement of Grant of Patent' 'novelty' 'complete Specification' 'false Suggestion or Misrepresentation']

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Procedural Posture

Appeal From Decision of a Delegate of the Commissioner of Patents and Notice of Motion Under Patent Regulations 1991 (cth), Reg 6.2(1)(b) / Interlocutory Directions on Motion to Postpone Grant of Patent Pending Determination of Application to Amend Complete Specification

Legal Issues

  1. 1 ["Whether the Court should direct under Patent Regulations 1991 (Cth), reg 6.2(1)(b) that any grant of a patent pursuant to application number 632857 be postponed until the Applicant's request to amend the Complete Specification and any opposition have been finally determined." 'Whether amendments that may affect the validity of a patent should be made prior to grant.' 'Whether the appeal and motion should be adjourned pending the outcome or extent of opposition to the amendment proceedings.']

Ratio Decidendi

Because the proposed amendments had only recently been advertised and it would not be known for three months whether, and to what extent, they would be opposed, it was appropriate to defer making orders on the Applicant's appeal or on the notice of motion. The appeal and motion were adjourned to a date shortly after expiry of the period for notification of opposition to the amendments, with costs of the motion reserved.

Court Disposition

Appeal and notice of motion stood over for directions; costs of the motion to date reserved.

Orders

  • ['The proceeding be stood over for directions Friday 9 March 2001 at 9.30 am.' 'The notice of motion filed 30 October 2000 be stood over for directions on Friday, 9 March 2001 at 9.30 am.' 'Costs of the motion to date be reserved.']