Amgen, Inc. v Genentech, Inc - [2016] APO 15

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Amgen, Inc. v Genentech, Inc [2016] APO 15

Patent Application: 2007325316

Title:IL-17A/F heterodimeric polypeptides and therapeutic uses thereof

Patent Applicant:  Genentech, Inc.
Opponent:  Amgen, Inc.
Delegate:  Dr N.R. Madsen
Decision Date:  16 March 2016
Hearing Date:  Written submissions completed on 29 January 2016
Catchwords:  PATENTS – opposition to the grant of a patent under section 59 – award of costs – applicant requests withdrawal of opposed application while a divisional application is pending – Commissioner refusal to consent to withdrawal under the operation of paragraph 141(1)(b) – application and divisional application withdrawn shortly before hearing – Schedule 8 costs awarded against the applicant – opponent requests variation of scale to incorporate actual costs due to actions of applicant – actual costs awarded at a reduction of 50% of total costs incurred in relevant period in recognition of particular circumstances

Representation: Patent attorney for the applicant: Griffith Hack
Patent attorney for the opponent: Wrays

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2007325316

Title:IL-17A/F heterodimeric polypeptides and therapeutic uses thereof

Patent Applicant: Genentech, Inc.
Date of Decision: 16 March 2016
DECISION
I award costs according to Schedule 8 against Genentech, Inc.
I apply a variation to the scale of costs for actual costs occurred by the opponent in the period 18 June 2015 to 23 October 2015, to the value of 50% of the total of those actual costs.
REASONS FOR DECISION
Background

Patent application 2007325316 was filed as an application under the Patent Cooperation Treaty on 20 November 2007. The applicant is Genentech, Inc. (the applicant). The application was examined and accepted and subsequently opposed by Amgen, Inc. (the opponent).
During the opposition proceedings, evidence in support was filed after which time the applicant amended the specification. These amendments were allowed on 6 November 2014. On 5 December 2014 the applicant again amended the specification. This later request to amend was withdrawn on 9 February 2015. No evidence in answer was filed and subsequently there was also no evidence in reply filed.
The opponent sought that the matter be heard at which time the applicant sought to withdraw the opposed application. Consent of the Commissioner in accordance with section 141 of the Patents Act was not provided for this withdrawal for reasons related to a pending divisional application. The applicant was provided an opportunity to withdraw the opposed application and divisional application or to provide undertakings as to the prosecution of the divisional application. No response was received from the applicant until three days after the opponent filed their written summary of submissions in preparation for the substantive hearing. At this point the applicant withdrew both the opposed application and the divisional application.
The law
Awarding of Costs
The power of the Commissioner to award costs is a discretionary power arising from section 210 of the Patents Act and regulation 22.8 of the Patents Regulations. Being discretionary it follows that in executing the power, one must determine and take into account…

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 Amgen, Inc. v Genentech, Inc

Details

AGLC: Amgen, Inc. v Genentech, Inc [2016] APO 15
Case: [2016] APO 15
Decision Date: 16 March 2016

CaseChat Overview and Summary

In the case of Amgen, Inc. v Genentech, Inc., the Australian Patent Office addressed an opposition to the grant of a patent for IL-17A/F heterodimeric polypeptides and therapeutic uses thereof. The applicant, Genentech, Inc., sought to withdraw the opposed application, a request that was denied by the Commissioner of Patents, Dr. N.R. Madsen, on the basis of a pending divisional application. The applicant subsequently withdrew both the opposed application and the divisional application, leading to a request from Amgen, Inc. for costs incurred in preparation for the hearing. The Commissioner awarded costs according to Schedule 8, which covers routine matters, but also varied the scale to account for the applicant's conduct, awarding 50% of the actual costs incurred by the opponent from 18 June 2015 to the date of withdrawal, 23 October 2015.

The legal issues addressed by the Commissioner revolved around the discretionary power to award costs in patent opposition matters, the principles guiding variations to the scale of costs under Schedule 8, and the specific circumstances surrounding the applicant's conduct during the opposition process. The Commissioner considered whether the applicant's actions, particularly the delay in withdrawing the opposed application until shortly before the hearing, warranted a departure from the standard cost award. The applicant's conduct was scrutinized for any misconduct or unreasonable behaviour that might justify an indemnity basis for costs.

The Commissioner's reasoning concluded that the applicant's conduct, while within their legislative rights, was unreasonable and resulted in unnecessary costs for the opponent. The decision highlighted the importance of efficient opposition proceedings and the public interest in avoiding unnecessary expense. The Commissioner awarded costs according to Schedule 8 but varied the scale to account for the actual costs incurred by the opponent, resulting in a 50% award of those costs. The decision emphasized that while the applicant's conduct did not amount to misconduct, it was unreasonable and led to wasted resources, justifying a variation to the standard cost award.

Orders