Fina Research SA v Halliburton Energy Services Inc [2003] FCA 251

Fina Research SA v Halliburton Energy Services Inc [2003] FCA 251

The alleged mistranslation was not proved to be a clerical error or an obvious mistake because the translator was not called and the repeated omission suggested a chosen translation rather than inadvertent omission; the English translation was the relevant specification before amendment; the amendment to claim 1 allowing non-significant quantities of strong hydrophilic bases would make matter infringe that would not previously have infringed and was precluded by s 102(2)(a); the addition of "thickeners" to claim 1 was allowable; and the montan wax exclusions were allowable disclaimers because the specification did not suggest montan wax should be used and the amendments were fairly based...

Jurisdiction
Australia
Judgment Date
26 March 2003
Procedural Posture
Appeal Under S 60 of the Patents Act 1990 (cth) Against Dismissal of an Opposition to the Grant of a Patent / Residual Issues Concerning Amendments to a Patent Specification After Fina Did Not Pursue Novelty, Obviousness or Manner of Manufacture Issues
Outcome
Appeal otherwise dismissed; certain amendments disallowed and others allowed; costs reserved.
Legal Topics
['opposition Proceedings' 'amendments to Patent Applications' 'pct Application Translated From German to English' 'clerical Error' 'obvious Mistake' 'fair Basis' 'scope of Claims' 'patent Specification Disclaimers']
['patents' 'intellectual Property' 'administrative Law'] ['opposition Proceedings' 'amendments to Patent Applications' 'pct Application Translated From German to English' 'clerical Error' 'obvious Mistake' 'fair Basis' 'scope of Claims' 'patent Specification Disclaimers']

Case Brief

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Procedural Posture

Appeal Under S 60 of the Patents Act 1990 (cth) Against Dismissal of an Opposition to the Grant of a Patent / Residual Issues Concerning Amendments to a Patent Specification After Fina Did Not Pursue Novelty, Obviousness or Manner of Manufacture Issues

Legal Issues

  1. 1 ['Whether an alleged error in translating the original German PCT application into English was a clerical error or obvious mistake for the purposes of ss 102 and 104 of the Patents Act 1990 (Cth).' 'Whether the English translation or the original German PCT application was the comparator for assessing amendments under s 102 of the Patents Act 1990 (Cth).' 'Whether amendments to claim 1 limiting the proviso concerning strong hydrophilic bases were allowable under s 102(2)(a) of the Patents Act 1990 (Cth).' 'Whether the addition of the word "thickeners" to claim 1 was allowable.' 'Whether amendments excluding the use of montan wax were allowable under s 102(1), s 102(2)(b) and s 40(3) of the Patents Act 1990 (Cth).']

Ratio Decidendi

The alleged mistranslation was not proved to be a clerical error or an obvious mistake because the translator was not called and the repeated omission suggested a chosen translation rather than inadvertent omission; the English translation was the relevant specification before amendment; the amendment to claim 1 allowing non-significant quantities of strong hydrophilic bases would make matter infringe that would not previously have infringed and was precluded by s 102(2)(a); the addition of "thickeners" to claim 1 was allowable; and the montan wax exclusions were allowable disclaimers because the specification did not suggest montan wax should be used and the amendments were fairly based...

Court Disposition

Appeal otherwise dismissed; certain amendments disallowed and others allowed; costs reserved.

Orders

  • ['Subject to further order and order 2, the amendments to claim 1 as allowed by the delegate in his decision of 5 May 2000, not be allowed so that claim 1 reads as set out in order 1.' 'The amendment to add the word "thickeners," after the word "emulsifiers," in claim 1 be allowed.' 'Subject to further order, the...