Genetics Institute Inc v Kirin-Amgen Inc (No. 3) [1998] FCA 740

Genetics Institute Inc v Kirin-Amgen Inc (No. 3) [1998] FCA 740

The disclosed DNA coding sequence and associated information in the patent enabled the invention to be performed across the scope of the claims, such that the claims that relied on this disclosure were fairly based, enabling, and sufficiently clear for a skilled addressee at the priority date. Claim 39 and...

Source-derived case information.

Parties
Applicant: Genetics Institute, Inc; Respondent: Kirin-Amgen, Inc; Cross Applicant: Kirin-Amgen, Inc; Cross Respondent: Genetics Institute, Inc
Jurisdiction
Australia
Judgment Date
25 June 1998
Procedural Posture
Patent Appeal / Appeal From Commissioner of Patents and Cross Appeal
Outcome
Patent application partly allowed with amendments; appeal and cross-appeal otherwise dismissed.
Legal Topics
Fair Basing, Clarity, Recombinant Protein Patents, Genetic Engineering, Claim Construction, Amendment of Patent Claims
Intellectual Property Patents Fair Basing Clarity Recombinant Protein Patents Genetic Engineering Claim Construction Amendment of Patent Claims

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Parties

Genetics Institute, Inc

Applicant

Kirin-Amgen, Inc

Respondent

Kirin-Amgen, Inc

Cross Applicant

Genetics Institute, Inc

Cross Respondent

Procedural Posture

Patent Appeal / Appeal From Commissioner of Patents and Cross Appeal

Legal Issues

  1. 1 Whether claims are fairly based on the matter disclosed in the specification (s 40(2))
  2. 2 Whether the invention is fully described (s 40(2)(a))
  3. 3 Whether claims are clear and succinct and clearly define the invention (s 40(2))

Ratio Decidendi

The disclosed DNA coding sequence and associated information in the patent enabled the invention to be performed across the scope of the claims, such that the claims that relied on this disclosure were fairly based, enabling, and sufficiently clear for a skilled addressee at the priority date. Claim 39 and associated specification passage lacked clarity and utility and were ordered deleted. Amendments to clarify 'biological properties' terminology were warranted.

Court Disposition

Patent application partly allowed with amendments; appeal and cross-appeal otherwise dismissed.

Orders

  • Patent Application No. 600650 be amended as per proposed amendments of 21 May 1988.
  • Delete passage commencing 'A preliminary attempt ...' on page 64 and concluding with '... naturally occurring erythropoietin' on page 65.