Bristol-myers Company v L'OREAL

In the Matter of the Patents Act 1952
‑ and ‑

In the Matter of Application No. 537169 for a Patent by BRISTOL‑MYERS COMPANY
‑ and ‑

In the Matter of Opposition thereto under Section 59 by L'OREAL

FINAL DECISION OF AN ACTING SUPERVISING EXAMINER OF PATENTS:
In my decision in this matter dated 24 August 1988 I found that the opposition succeeded on the ground that claims 22 to 25 did not relate to a manner of new manufacture and the ground of non‑
compliance with section 40. I afforded the applicant the opportunity to propose amendments to overcome these defects. Requests to amend were filed by the applicant within the time allowed and following examination action were advertised in the Official Journal on 15 December 1988. The requests to amend were not opposed, were allowed and the specification duly amended, as notified in the Official Journal on 20 April 1989. The opponent has not advised that it wishes to be further heard in respect of the section 59 opposition.
I am satisfied that the amendments remove the grounds for the earlier findings and I am of the opinion that there is no lawful ground of objection to the application and complete specification. I direct, therefore, that the application and complete specification as amended proceed to sealing.

(M. KENDALL)

Patent Attorney for the Applicant: Phillips, Ormonde & Fitzpatrick

CaseChat Overview and Summary

In the case of Bristol-Myers Company v L'Oreal, the dispute arose from an opposition to a patent application filed by Bristol-Myers Company, which L'Oreal contested under Section 59 of the Patents Act 1990 (Cth). The opposition was initially upheld by an acting supervising examiner of patents, who found that certain claims of the application did not relate to a manner of new manufacture and that there was non-compliance with section 40 of the Act. The applicant was given an opportunity to amend the claims to address these issues. After amendments were made and approved, the examiner concluded that the objections were adequately addressed, and the application should proceed to sealing.

The primary legal issues that the court had to decide revolved around the validity of the patent claims made by Bristol-Myers Company. Specifically, the court had to determine whether the claims met the statutory requirements for patentability, including the criteria for being a new manner of manufacture and compliance with the disclosure requirements under section 40. The court also needed to assess whether the proposed amendments effectively resolved the issues raised during the opposition proceedings.

The court's reasoning focused on the nature and scope of the amendments made to the patent application. Upon reviewing the amended claims, the acting supervising examiner concluded that they now adequately described a new manner of manufacture and complied with the disclosure requirements of section 40. The examiner determined that the changes addressed the previously identified deficiencies, thereby removing the lawful grounds for opposition. As a result, the examiner directed that the amended application and specification proceed to sealing, effectively allowing the patent to be granted.

In light of the findings and conclusions reached by the acting supervising examiner, the final order was that the patent application, as amended, should proceed to sealing. This decision allowed Bristol-Myers Company to obtain the patent for their invention, subject to the terms of the amended claims and specification.

CaseChat Overview and Summary

Orders of the court

Background to the litigation

Evidence Before The Court

Reasons for decision

Legal Principle Established