Biosys v Ecogen Australia Pty Ltd - [1993] APO 42

official notice

decision of a delegate of the commissioner of patents

Application : No. 620833 in the name of BIOSYS

Title: Mass production in liquid culture of insect-killing nematodes

Action: Request to amend a statement of grounds and particulars filed in respect of an opposition to the grant of a patent by ECOGEN AUSTRALIA PTY LTD

Decision: Issued . Request refused.

patents act 1990

decision of a delegate of the commissioner of patents

Re:Patent Application No. 620833 by BIOSYS, and a request to amend a statement of grounds and particulars filed in respect of an opposition to the grant of a patent by ECOGEN AUSTRALIA PTY LTD

background

Patent application number 620833 in the name of Biosys was advertised accepted on 27 February 1992. A notice of opposition to the grant of a patent was filed by Ecogen Australia Pty Ltd on 27 May 1992. A statement of grounds and particulars was filed on 29 June 1992 (the 27th being a Saturday). A request to amend the statement of grounds and particulars was filed on 3 November 1992, and the patent applicant indicated that it opposed the request.

Both parties filed written submissions.

the amendment

The amendment seeks to insert an extra ground of opposition, namely:

"The invention, so far as claimed in each of claims 1, 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 15 and 16 was not a new manner of manufacture within the meaning of section 6 of the Statute if Monopolies in Australia on or before the priority date of those claims."

Particulars of the ground are also included.

submissions

A letter dated 16 November 1992 from the patent attorneys for the opponent states in part:

"It had always been our intention to include this ground in the Statement of Grounds pertaining to the above identified opposition, but the fact that the ground had been omitted from the statement of grounds lodged on 29 June 1992 only came to our attention when the opponent's evidence in support was nearing completion.
When the Statement of Grounds and Particulars was being drafted, close to the deadline for serving the Statement of Grounds, we discovered that certain of the citations pertaining to references mentioned in the Statement of Grounds were incomplete, or details of the references which had been provided to us were in error. This discovery necessitated some hurried investigations by ourselves and our client in order to obtain correct and complete citations for each of the references which it was desired to include in the Statement of Grounds and Particulars. It appears that, in our hurry to correct the particulars pertaining to ground 3, we overlooked that ground 5, which we intended to include in the Statement, had been omitted."

The patent attorney for the patent applicant filed submissions in a letter dated 8 January 1993. This letter states in part:

"We have considered the letter from the attorney for the Opponent dated 16 November 1992 and it…

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 Biosys v Ecogen Australia Pty Ltd

Details

AGLC: Biosys v Ecogen Australia Pty Ltd [1993] APO 42
Case: [1993] APO 42
Decision Date: 27 May 1993

CaseChat Overview and Summary

In the matter of Biosys, the applicant for a patent, and Ecogen Australia Pty Ltd, the opponent to the grant of that patent, a request to amend a statement of grounds and particulars filed in respect of the opposition was refused. The dispute revolves around patent application number 620833, which was advertised and accepted on 27 February 1992. Ecogen Australia Pty Ltd filed a notice of opposition to the grant of a patent on 27 May 1992, followed by a statement of grounds and particulars on 29 June 1992. Subsequently, Ecogen requested to amend the statement of grounds and particulars, aiming to include an additional ground of opposition regarding the novelty of the invention under the Statute of Monopolies. However, Biosys opposed the request to amend.

The central legal issues were whether the amendment constituted a correction of an error or omission and if it was appropriate to allow the amendment under the Patents Regulations. The court examined the intentions of the opponent at the time of filing the original statement of grounds and particulars. The opponent argued that the omission was inadvertent and that the intended ground was implicitly present in the original statement. However, the court found the evidence insufficient to establish the opponent's intention to include the ground of manner of manufacture at the time of filing. Without clear evidence of an error or omission, the request to amend was deemed inappropriate.

The court concluded that the amendment sought by Ecogen did not correct an error or omission and that allowing the amendment would be unduly prejudicial. Consequently, the request to amend the statement of grounds and particulars was refused. The decision was made by S.D. Barker, a delegate of the Commissioner of Patents. The legal representatives for Biosys were F B Rice & Co from Sydney, and for Ecogen Australia Pty Ltd, the representatives were Spruson & Ferguson, also from Sydney.

Orders