BRISTOL-MYERS COMPANY v L'OREAL

official notice

decision of a delegate of the commissioner of patents

Application : No. 552400, in the name of BRISTOL-MYERS COMPANY

Title: Meta-Phenylenediamine Coupler Compounds and Oxidative Hair Dye Compositions and Methods Using Same

Action: Opposition under s.59 of the Patents Act 1952 by L'OREAL

Decision: Issued . Application and amended specification can proceed to sealing.

patents act 1990

decision of a delegate of the commissioner of patents

Re:Patent Application No. 552400 by BRISTOL-MYERS COMPANY and an Opposition under s.59 of the Patents Act 1952 by L'OREAL

background

In a decision dated 18 July 1989 I found the specification of application no. 552400 did not comply with section 40. I allowed the applicant an opportunity to propose an amendment to overcome the defect. The applicant filed a request to amend the specification within the time allowed. After examination the request was allowed and advertised in the official journal dated 9 May 1991. The opponent did not advise it wished to be heard before I issued a final decision.

I am satisfied the amendment removes the ground for my earlier finding. And in my opinion there is no lawful ground of objection to the application and complete specification. Therefore I direct application no. 552400 proceed to sealing.

M Kendall
Delegate of the Commissioner of Patents

Patent attorneys for the applicant : Phillips Ormonde and Fitzpatrick.
Patent attorneys for the opponent : Watermark.

CaseChat Overview and Summary

The case involved a patent application by Bristol-Myers Company for Meta-Phenylenediamine Coupler Compounds and Oxidative Hair Dye Compositions and Methods Using Same, which was opposed by L'Oreal under section 59 of the Patents Act 1952. The dispute centered around whether the application and its amended specification were in compliance with the requirements of the Patents Act and whether there were any lawful grounds for objection to the patent application. This case was heard by a delegate of the Commissioner of Patents, who issued a decision on 18 July 1989.

The legal issues that the court was required to decide included whether the original specification of the patent application complied with section 40 of the Patents Act, and whether the amendment proposed by the applicant was sufficient to overcome the earlier finding of non-compliance. The court also needed to determine if there were any other lawful grounds of objection to the patent application and its amended specification.

The court examined the patent application and its amended specification and found that the amendment was sufficient to remove the earlier finding of non-compliance with section 40 of the Patents Act. The court was satisfied that there were no other lawful grounds of objection to the application and complete specification, and therefore, directed that the application proceed to sealing. The opponent did not request to be heard before the final decision was issued.

In conclusion, the court found in favor of the patent applicant, Bristol-Myers Company, and dismissed the opposition by L'Oreal. The decision allowed the patent application and its amended specification to proceed to sealing.

CaseChat Overview and Summary

Orders of the court

Background to the litigation

Evidence Before The Court

Reasons for decision

Legal Principle Established