New England Biolabs Inc v Commissioner of Patents [2001] FCA 787

New England Biolabs Inc v Commissioner of Patents [2001] FCA 787

The Commissioner had no discretion under s 104 of the Patents Act 1990 and Chapter 10 of the Patents Regulations 1991 to refuse leave to amend, or to decline to allow amendments, on the basis of Roche's prior alleged inequitable conduct. The Commissioner's task at the reporting stage was administrative and confined to whether the proposed amendments were not allowable under the Act or Regulations. Although the internal document did not satisfy the reporting requirement in r 10.2(1), that procedural failure did not invalidate the grant of leave because the document showed the delegate had considered the request and was satisfied that the amendments were allowable, and no legislative...

Jurisdiction
Australia
Judgment Date
27 June 2001
Procedural Posture
Application for Judicial Review Concerning a Patent Amendment Request / Reasons for Judgment After Hearing; Matter Listed for Orders
Outcome
The Court concluded that the application should be dismissed with costs, but listed the proceeding to allow the parties to address the appropriate orders.
Legal Topics
['patent Application Amendments' 'commissioner of Patents' 'administrative Decisions (judicial Review) Act 1977' 'judiciary Act 1903 S 39 B' 'patents Act 1990 S 104' 'patents Regulations 1991 Rr 10.2, 10.4, 10.5' 'standing' 'invalidity for Procedural Non Compliance']
['administrative Law' 'patents'] ['patent Application Amendments' 'commissioner of Patents' 'administrative Decisions (judicial Review) Act 1977' 'judiciary Act 1903 S 39 B' 'patents Act 1990 S 104' 'patents Regulations 1991 Rr 10.2, 10.4, 10.5' 'standing' 'invalidity for Procedural Non Compliance']

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Procedural Posture

Application for Judicial Review Concerning a Patent Amendment Request / Reasons for Judgment After Hearing; Matter Listed for Orders

Legal Issues

  1. 1 ['Whether the Commissioner of Patents had a discretion to refuse leave to amend a patent application on the basis of alleged inequitable conduct by the patent applicant.' "Whether the Commissioner's delegate failed to take into account a relevant consideration, acted unreasonably, applied an inflexible policy, or made an error of law by declining to consider Roche's alleged inequitable conduct." 'Whether there was a valid report under r 10.2(1) of the Patents Regulations 1991 upon which leave to amend could be granted under r 10.5(1).' 'Whether failure to comply with r 10.2(1) rendered the grant of leave to amend invalid.' 'Whether NEB had standing to bring the proceeding.']

Ratio Decidendi

The Commissioner had no discretion under s 104 of the Patents Act 1990 and Chapter 10 of the Patents Regulations 1991 to refuse leave to amend, or to decline to allow amendments, on the basis of Roche's prior alleged inequitable conduct. The Commissioner's task at the reporting stage was administrative and confined to whether the proposed amendments were not allowable under the Act or Regulations. Although the internal document did not satisfy the reporting requirement in r 10.2(1), that procedural failure did not invalidate the grant of leave because the document showed the delegate had considered the request and was satisfied that the amendments were allowable, and no legislative...

Court Disposition

The Court concluded that the application should be dismissed with costs, but listed the proceeding to allow the parties to address the appropriate orders.

Orders

  • ['The proceeding be listed on 27 July 2001 for the purpose of making orders.']