Bausch & Lomb Inc v Allergan, Inc - [1997] APO 42

official notice

decision of a delegate of the commissioner of patents

Application : No. 628926 in the name of Bausch & Lomb Incorporated

Title: Method and Composition for Cleaning and Disinfecting Contact Lenses

Action: Opposition by Allergan, Inc. under section 59 of the Patents Act 1952

Decision: Issued .
Abstract: Opposition is successful in relation to the grounds of lack of compliance with section 40, lack of novelty and obviousness.
An unparticularised document taken into account by the delegate because it may be determinative of the opposition. Claims found to be obvious even though a person skilled in the art would arrive at the claimed invention for different reasons to the inventor.

patents act 1990

decision of a delegate of the commissioner of patents

Re:Patent Application No. 628926 by Bausch & Lomb Incorporated and Opposition thereto by Allergan, Inc. under section 59 of the Patents Act 1952

background

Bausch & Lomb Incorporated filed patent application 49989/90 (628926) on 20 February 1990, which claims priority from US application 313643 which was filed on 21 February 1989.

Patent application 628926 was advertised accepted on 24 September 1992. Allergan, Inc. filed notice of opposition on 24 December 1992 and a statement of grounds and particulars on 25 January 1993.

The normal evidentiary cycle was completed on 7 October 1994. The applicant requested and was granted leave to serve further evidence. The serving of this further evidence and evidence in response by the opponent was completed on 7 April 1995.

The opposition was heard in Sydney on 16 and 17 November 1995. Bausch & Lomb were represented by Ms Julia Baird of counsel, assisted by Dr Colin Bodkin and Dr John McCann, patent attorneys of Spruson & Ferguson, Sydney. Allergan was represented by Mr Bruce Caine of counsel, assisted by Dr Peter Stearne, patent attorney of Davies Collison Cave, Sydney. Mr Martin Voet of Allergan also attended. Mr Mark O’Donnell of F B Rice & Co attended as an observer.

Subsequent to the hearing, I advised both parties that I would inform myself of a particular document included in evidence and referred to at the hearing but not particularised. Both parties served additional evidence in relation to this document which I refer to in this decision as the MIMS document.

A continuation of the hearing (the later hearing) was heard in Sydney on 4 June 1997 to consider the additional evidence filed in relation to the MIMS document. At this later hearing, Bausch & Lomb was represented by Ms Julia Baird of counsel, assisted by Dr Colin Bodkin, patent attorney of Spruson & Ferguson, Sydney. Allergan was represented by Dr Peter Stearne and Mr James Siely, patent attorneys of Davies Collison Cave, Sydney. Mr Mark O’Donnell of F B Rice & Co attended as an observer.

On 9 May 1997, Bausch & Lomb filed a statement of proposed amendments which includes a number of proposed changes to the claims. These amendments have not yet been allowed.

As the application was…

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.

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Details

Case: [1997] APO 42
Decision Date: 17 September 1997

CaseChat Overview and Summary

Bausch & Lomb Incorporated filed a patent application for a method and composition for cleaning and disinfecting contact lenses. Allergan, Inc. opposed the application on the grounds of lack of compliance with section 40, lack of novelty, and obviousness. The delegate found that the opposition was successful in relation to all three grounds. The claims were found to be unclear, lacking in fair basis, and not fully disclosing the invention as required by section 40. The claims were also found to lack novelty in light of the MIMS document, and were obvious in view of the common general knowledge in the art at the priority date. The proposed amended claims were also found to be obvious. The applicant was allowed 60 days to propose further amendments to overcome the defects found. Costs were awarded to the opponent in relation to the first hearing on 16 and 17 November 1995, and to the applicant in relation to the second hearing.

Orders