BRISTOL-MYERS SQUIBB COMPANY v L'OREAL

official notice

decision of a delegate of the commissioner of patents

Application : No.547971 in the name of BRISTOL-MYERS SQUIBB COMPANY

Title : HAIR WAVING OR STRAIGHTENING PROCESS THAT SIMULTANEOUSLY CONDITIONS HAIR AND HAIR WAVING COMPOSITION THEREFORE

Action : S.59 opposition by L'OREAL; final decision following amendment action subsequent to initial decision.

Decision : Issued . Application and complete specification as amended to proceed to sealing.

patents act 1990

decision of a delegate of the commissioner of patents

Re:Patent Application No.547971 by BRISTOL-MYERS SQUIBB COMPANY and an opposition by L'OREAL under section 59 of the Patents Act 1952

FINAL DECISION OF A DELEGATE OF THE COMMISIONER OF PATENTS

In my decision in this matter dated 21 August 1991 I found that the specification did not comply with section 40 and did not relate to a manner of manufacture. I gave the applicant an opportunity to propose amendments to overcome these defects. A request to amend was filed by the applicant within the time allowed. Allowance of the request was advertised in the Official Journal dated 6 August 1992. The opponent has not advised that it wishes to be heard further in respect of the section 59 opposition.

I am satisfied the amendments remove the grounds for my earlier findings. And I consider there is no lawful ground of objection to the application and complete specification. Therefore I direct that the application and complete specification as amended proceed to sealing.

M. KENDALL
Delegate of the Commissioner of Patents

Patent attorneys for the applicant : Phillips Ormonde & Fitzpatrick, Melbourne
Patent attorneys for the opponent : Watermark, Melbourne

CaseChat Overview and Summary

The case of Bristol-Myers Squibb Company v L'Oreal involved an application for a patent by Bristol-Myers Squibb Company for a hair waving or straightening process and a composition used in the process. L'Oreal opposed the patent application under section 59 of the Patents Act 1990. The dispute was ultimately decided by a delegate of the Commissioner of Patents, M. Kendall. The primary legal issues revolved around whether the patent application complied with section 40 of the Patents Act 1990 and if the specification related to a manner of manufacture.

The delegate initially found that the patent application did not comply with section 40 and did not relate to a manner of manufacture, leading to the initial opposition by L'Oreal. However, Bristol-Myers Squibb Company proposed amendments to the application to address these deficiencies. After reviewing the amendments, the delegate concluded that the changes successfully addressed the earlier concerns, removing the grounds for the initial findings. Consequently, the delegate determined that there was no lawful ground of objection to the application and complete specification as amended.

As a result, the delegate directed that the patent application and complete specification, as amended, proceed to sealing. This decision allowed the patent to move forward pending the payment of the sealing fee and any other formalities required under the Patents Act 1990. The opponent, L'Oreal, did not seek to be heard further regarding the section 59 opposition, which solidified the delegate's decision.

CaseChat Overview and Summary

Orders of the court

Background to the litigation

Evidence Before The Court

Reasons for decision

Legal Principle Established