Genetics Institute Inc v Johnson & Johnson [1997] FCA 900

Genetics Institute Inc v Johnson & Johnson [1997] FCA 900

The Court has power, on the hearing of an appeal under subsection 60(5) of the Patents Act 1952, to defer making an order that an application for a patent proceed to grant where, on the facts found, the ground of opposition specified in paragraph 59(1)(c) has been made out until the claims with the prior priority date have been granted, refused, withdrawn or have lapsed.

Parties
Applicant: Genetics Institute, Inc; Respondent: Johnson & Johnson
Jurisdiction
Australia
Judgment Date
05 September 1997
Procedural Posture
Appeal From Commissioner of Patents Decision / Determination of Preliminary Question in Appeal Under S 60(5) of Patents Act 1952
Outcome
Preliminary question answered in the affirmative; the Court has power to defer making an order for grant under s 60(5) until prior claims are determined.
Legal Topics
Patents, Patent Appeals, Opposition Proceedings, Prior Claims, Statutory Interpretation
Intellectual Property Patents Patent Appeals Opposition Proceedings Prior Claims Statutory Interpretation

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Parties

Genetics Institute, Inc

Applicant

Johnson & Johnson

Respondent

Procedural Posture

Appeal From Commissioner of Patents Decision / Determination of Preliminary Question in Appeal Under S 60(5) of Patents Act 1952

Legal Issues

  1. 1 Whether the Court has power to defer making an order that a patent application proceed to grant when prior claims have been made out and have not yet been granted, refused, withdrawn or lapsed under s 60(5) of the Patents Act 1952

Ratio Decidendi

The Court has power, on the hearing of an appeal under subsection 60(5) of the Patents Act 1952, to defer making an order that an application for a patent proceed to grant where, on the facts found, the ground of opposition specified in paragraph 59(1)(c) has been made out until the claims with the prior priority date have been granted, refused, withdrawn or have lapsed.

Court Disposition

Preliminary question answered in the affirmative; the Court has power to defer making an order for grant under s 60(5) until prior claims are determined.

Orders

  • The question referred by earlier court order is answered: Yes, the Court has power to defer making an order for grant under s 60(5) to await determination of prior claims.
  • Costs in the cause.