Suntory Holdings Ltd v Commissioner of Patents [2013] FCA 999

Suntory Holdings Ltd v Commissioner of Patents [2013] FCA 999

For the purposes of Item 32(1)(b) of Part 2 to Schedule 3 of the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth), the Commissioner had not "dealt with" Suntory's amendment request until the request was allowed or refused after the process prescribed by the Regulations. The steps taken before 15...

Source-derived case information.

Jurisdiction
Australia
Judgment Date
02 October 2013
Procedural Posture
Appeal From Commissioner's Decision to Refuse Leave to Amend Patent Application / Federal Court Appeal Under S 104(7) of the Patents Act 1990 (cth); Hearing De Novo
Outcome
Appeal dismissed.
Legal Topics
['amendment of Complete Specification' 'transitional Provisions' "commissioner's Power to Amend During Pending Appeal" 'meaning of "dealt With"' 'competency of Appeal Under S 104(7)' 'intervention']
['patents' 'administrative Law' 'statutory Interpretation'] ['amendment of Complete Specification' 'transitional Provisions' "commissioner's Power to Amend During Pending Appeal" 'meaning of "dealt With"' 'competency of Appeal Under S 104(7)' 'intervention']

Source-derived case record

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Procedural Posture

Appeal From Commissioner's Decision to Refuse Leave to Amend Patent Application / Federal Court Appeal Under S 104(7) of the Patents Act 1990 (cth); Hearing De Novo

Legal Issues

  1. 1 ['The proper construction of the transitional provisions relating to s 112A of the Patents Act 1990 (Cth).' 'Whether the Commissioner had "dealt with" Suntory\'s amendment request before 15 April 2013.' 'Whether the decision to refuse the request for leave to amend was an appealable decision under s 104(7).' 'The nature of an appeal pursuant to s 104(7) of the Patents Act 1990 (Cth).']

Ratio Decidendi

For the purposes of Item 32(1)(b) of Part 2 to Schedule 3 of the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth), the Commissioner had not "dealt with" Suntory's amendment request until the request was allowed or refused after the process prescribed by the Regulations. The steps taken before 15 April 2013 did not amount to dealing with the request, and the request was in fact refused on 23 April 2013. Accordingly, s 112A applied and prevented the Commissioner from amending the complete specification under s 104 while the pending Federal Court appeal concerning the specification remained undetermined. The appeal under s 104(7) was competent, but had to be dismissed...

Court Disposition

Appeal dismissed.

Orders

  • ['The appeal is dismissed.' "The applicant pay the respondent's costs of the appeal." 'There is no order as to costs in relation to the intervener.']