INTERPHARMA (NZ) LIMITED V COMMISSIONER OF PATENTS HC AK CIV-2010-485-000506

INTERPHARMA (NZ) LIMITED V COMMISSIONER OF PATENTS HC AK CIV-2010-485-000506

The amended specification (new claim 2 to include 'perfusion' with <2% ethanol) enlarged the scope beyond the original disclosure (which, viewed by a skilled addressee, was directed to stock solutions), so the Commissioner lacked jurisdiction under s 40(1); the Commissioner also erred in exercising his discretion without being provided full particulars of the reasons/prior art as required by s 38(2); s 40(2) does not preclude judicial review of such jurisdictional error; accordingly the decision allowing the amendments was quashed.

Citation
openlaw-39f7d65f_da1d_46c0_85e2_d1f8c7ce345d.pdf
Parties
Plaintiff: InterPharma (NZ) Limited; First Defendant: Commissioner of Patents; Second Defendant: Aventis Pharma SA; Third Defendant: Sanofi-Aventis New Zealand Limited
Court
High Court
Jurisdiction
New Zealand
Judgment Date
7 October 2011
Procedural Posture
Judicial Review (patent Amendment) / Judgment (high Court)
Outcome
Commissioner's decision allowing amendments quashed.
Legal Topics
Patent Amendment, Scope of Patent Claims, Privative Clause, Procedural Fairness, Opposition Procedure
Patent Law Administrative Law Intellectual Property Judicial Review Patent Amendment Scope of Patent Claims Privative Clause Procedural Fairness +1 more

Case Brief

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Parties

InterPharma (NZ) Limited

Plaintiff

Commissioner of Patents

First Defendant

Aventis Pharma SA

Second Defendant

Sanofi-Aventis New Zealand Limited

Third Defendant

Procedural Posture

Judicial Review (patent Amendment) / Judgment (high Court)

Legal Issues

  1. 1 Whether the amendments enlarged the scope of the patent
  2. 2 Whether decisions allowing amendments under s 40(2) are subject to judicial review
  3. 3 Whether the Commissioner erred by exercising discretion without full particulars of reasons/prior art

Ratio Decidendi

The amended specification (new claim 2 to include 'perfusion' with <2% ethanol) enlarged the scope beyond the original disclosure (which, viewed by a skilled addressee, was directed to stock solutions), so the Commissioner lacked jurisdiction under s 40(1); the Commissioner also erred in exercising his discretion without being provided full particulars of the reasons/prior art as required by s 38(2); s 40(2) does not preclude judicial review of such jurisdictional error; accordingly the decision allowing the amendments was quashed.

Court Disposition

Commissioner's decision allowing amendments quashed.

Orders

  • Commissioner's decision allowing the amendments quashed
  • InterPharma may apply for costs by memorandum filed by 21 October 2011