Alza Corporation - [2012] APO 70

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Alza Corporation [2012] APO 70

Patent:774594

Title:Transparent transdermal nicotine delivery devices

Patentee:  Alza Corporation
Delegate:  Dr S.D.Barker
Decision Date:  21 June 2012
Hearing Date:  29 March 2012 in Canberra
Catchwords:  PATENTS – re-examination of patent on the ground of lack of novelty – inherency – features of opacity index, stability of nicotine and visibility of skin colour considered – certain claims found to lack novelty – patent revoked in relation to certain claims

Representation: Patentee: Shelston IP

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent:774594

Title:Transparent transdermal nicotine delivery devices

Patentee: Alza Corporation
Date of Decision: 21 June 2012
DECISION
Claims 1, 6 and 7 lack novelty in the light of the WO 1991/09592.
I revoke patent 774594 so far as it relates to claims 1, 6 and 7.
REASONS FOR DECISION

Alza Corporation is the patentee in respect of Australian patent 774594. The patent has an earliest priority date of 18 December 1998. A request for re-examination was filed by LTS Lohman Therapie-Systeme AG. The request identifies two documents that are asserted to be relevant to novelty and inventive step. The Commissioner issued three adverse re-examination reports. The last report indicated that in view of the fact that the issues had not been overcome, the Commissioner considered that the best way to progress the re-examination was by way of a hearing. The matter was heard in Canberra on 29 March 2012. The patentee appeared by telephone.
The law on re-examination
Section 97(2) of the Patents Act 1990 empowers the Commissioner to carry out re-examination:
(2) Subject to this section and the regulations, where a patent has been granted, the Commissioner may, and must if asked to do so by the patentee or any other person, re-examine the complete specification."
The manner in which re-examination occurs is governed by section 98:
"(1) On re-examining a complete specification, the Commissioner must ascertain and report whether, to the best of his or her knowledge, the invention, so far as claimed in any claim and when compared with the prior art base as it existed before the priority date of that claim:
(a) is not novel; and
(b) does not involve an inventive step.
(2) For the purposes of subsection (1), the prior art base is to be taken not to include information made publicly available only through the doing of an act (whether in or out of the patent area)."
The way in which re-examination is carried out was considered by the Full Court of the Federal Court in Commissioner of Patents v Emperor Sports Pty Ltd [2006] FCAFC 26 at [24], (2006) 67 IPR 488 at 493:
“The Commissioner is an administrative decision-maker equipped with technical expertise. Subject to the rules of natural justice both common law and statutory (see e.g. s 101(2)), he or she is entitled to make use of that expertise, and draw inferences that may be rationally drawn from technical knowledge, including how skilled persons of various descriptions may act in their respective occupations:

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

Continue reading Alza Corporation

Details

AGLC: Alza Corporation [2012] APO 70
Case: [2012] APO 70
Decision Date: 21 June 2012

CaseChat Overview and Summary

Alza Corporation, the patentee of Australian patent 774594 for a transparent transdermal nicotine delivery device, faced a re-examination request from LTS Lohman Therapie-Systeme AG, alleging that certain claims of the patent lacked novelty. The dispute was heard on 29 March 2012, and the Delegate, Dr. S.D. Barker, issued a decision on 21 June 2012. The key issue was whether claims 1, 6, and 7 of the patent were anticipated by prior art, specifically the international patent application WO 1991/09592. The Delegate concluded that the devices described in the citation possessed all the features of the claimed invention, thereby lacking novelty. The Delegate found that the opacity index of the devices in the citation was less than 48.6%, the nicotine was substantially stable, and the skin colour of the wearer was visible through the device. Consequently, the Delegate revoked the patent in relation to claims 1, 6, and 7. The patentee has the right to appeal this decision to the Federal Court.

Orders