Bristol-Myers Company v Commissioner of Patents

[1989] FCA 167

JUDGMENT Na . ..- I b 7 I, S9

IN THE FEDERAL COURT OF AUSTRALIA )

)

VICTORIA DISTRICT REGISTRY	) V.	No.	G.132 of 1988
1
GENERAL DIVISION	1

A Petition pursuant to Section 90 of the Patents Act

1952 by Bristol-Myers Company the proprietor of Australian Letters Patent No. 462,657 to extend

the term of Australian Letters Patent No. 462,657

for a further term of ten years

BETWEEN:

!

BRISTOL-MYERS COMPANY

Petitioner

and

COMMISSIONER OF PAFENTS

Caveator

COURT: NORTHROP J.

- DATE: 20 APRIL 1989

PLACE: MELBOURNE

this matter.

EX-TEMPORE REASONS FOR JUDGMENT

The matters relevant to this motion have been

discussed in the course of submisslons, and I do not propose to set out at any length my reasons for granting or making

the orders sought by the motion.	I merely want to hlghlight
one or two of the factors that do affect	my discretion on

From material before me, I have formed the view

that, to some extent, the petitioner is seeking	the benefit
of the proposed legislation for the more limited	4 year term

rather than undertake the expensive course of preparing evidence for the application for an extension for 10 years

followed by the possibility of a lengthy and expensive trial

of the hearing of that application. Coupled wrth that is the

fact that if that course is adopted, the caveator will also

be faced with a possibility	of a long and expensive trial.
With this in mind I formed the view that the petitioner	is

banking on the legislation being passed, initially, in this
case, by 30 June of this year, and has made it quite clear

that if the legislation is passed it will make application

under the amended legislation for the	4 year term and all the
results which flow from that as opposed to the	10 year term
sought by the present petition.

In my opinion that is a reasonable course to some

extent and it is, I would have thought, reasonable to grant a

further time to allow the legislation to be passed, the

object of that legislation being quite apparent from the

legislation itself plus	the first reading speech and the
explanatory notes. If this order is not made	it would be
open for the caveator to move the Court for	an order that the

petition be dismissed for non-compliance with the order for

the filing of the affidavit material. On such a motion it is

conceivable that further evidence would	be called by the
petitioner as to what	it is doing to pursue the petition, and

we might have this argument all over again.

- ..

- 3 -

At the same time I should make it clear that if by

30 June of this year the legislation is not passed and the

petitioner seeks	a further extension	of time, the Court would
expect evidence to	be given to show that	it has at least

taken steps to prepare the evidence	for the prosecutlon of
this petition. The petitioner might face	a very difficult

task of seeking a further extension based upon what might be said to be the gamble of Parliament passing leglslation in the near future in the absence of.evidence of that kind. I

make that comment.	I cannot bind the Judge in the exercise
of a discretion to	be exercised in the future. I merely make
that comment.

n.

Having made those comments and in the llght of what

was said during the hearing of submissions, this is a case

where I should grant the motion on the basis that the

petitioner pay the costs of the motion.