EMD Millipore Corporation v Asahi Kasei Medical Co., Ltd - [2020] APO 39

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
EMD Millipore Corporation v Asahi Kasei Medical Co., Ltd. [2020] APO 39

Patent Application: 2015309939

Title:Porous membrane

Patent Applicant:                   Asahi Kasei Medical Co., Ltd.
Opponent:  EMD Millipore Corporation
Delegate:  R Subbarayan
Decision Date:  21 August 2020
Hearing Date:  Written submissions completed on 8 April 2020

Catchwords: PATENTS - opposition under section 104 – allowability under subsections 102(1) and 102(2) considered – whether the amendments extend beyond the disclosure as filed – whether as a result of the amendments, the specification does not provide a clear enough and complete enough disclosure – whether as a result of the amendments, the claims are not supported or not clear – amendments allowable – cost awarded against the opponent

Representation: Patent attorney for the applicant: Watermark Intellectual Property Pty Ltd
Patent attorney for the opponent: Shelston IP Pty Ltd.

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2015309939

Title:Porous membrane

Patent Applicant: Asahi Kasei Medical Co., Ltd.
Date of Decision: 21 August 2020
DECISION
The s104 opposition is unsuccessful. I allow the amendments.
I award costs according to schedule 8 against the opponent.
REASONS FOR DECISION
BACKGROUND

Patent application 2015309939 in the name of Asahi Kasei Medical Co., Ltd. (the Applicant) was filed on 25 August 2015 as a PCT application (WO 2016/031834) and claims an earlier priority date of 25 August 2014. Following examination, it was advertised on 28 June 2018 as having been accepted. EMD Millipore Corporation (the Opponent) filed a Notice of Opposition to the grant of the patent on 28 September 2018 (the s59 Opposition).
Evidence in support was completed on 2 April 2019. The deadline for the applicant’s evidence in answer was 3 July 2019. On 6 June 2019, the opponent filed a statement of proposed amendments that included amendments to the description and claims of the accepted specification. On 9 July 2019 a Delegate of the Commissioner of Patents stayed the s59 Opposition pending the outcome of these amendments Following the receipt of comments from the opponent regarding the proposed amendments, the applicant filed a further statement of proposed amendments on 28 June 2019. A delegate of the Commissioner found the amendments to be allowable and the allowance was advertised on 15 August 2019. The opponent filed a Notice of Opposition to the allowance of the amendments on 15 October 2019 (the s104 Opposition). Neither party wished to file any evidence in relation to this s104 Opposition and hence this matter is being decided based only on written submissions that were completed on 8 April 2020.
THE RELEVANT LAW
The present opposition is governed by the Patents Act 1990 (the Act) as amended by the
Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (the Raising the Bar Act). This includes an amendment to subsection 102(1) which precludes the inclusion of subject matter that extends beyond the original disclosure. Additionally, the changes brought about by the Raising the Bar Act to the disclosure and support requirements in subsections…

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 EMD Millipore Corporation v Asahi Kasei Medical Co., Ltd

Details

AGLC: EMD Millipore Corporation v Asahi Kasei Medical Co., Ltd [2020] APO 39
Case: [2020] APO 39
Decision Date: 21 August 2020

CaseChat Overview and Summary

The case before the court involved a dispute between EMD Millipore Corporation and Asahi Kasei Medical Co., Ltd. concerning the validity of certain patents. The central issue was the allowability of amendments to the patent applications filed by EMD Millipore Corporation under section 104 of the relevant legislation. Specifically, the court needed to determine whether the proposed amendments met the criteria set out in subsections 102(1) and 102(2). The primary concerns were whether the amendments extended beyond the disclosure originally provided in the patent applications, whether the resulting specification did not offer a clear and complete enough disclosure, and whether the claims were adequately supported or clear after the amendments.

The court examined the amendments in detail, assessing whether they expanded upon the original disclosure to an unacceptable degree. The court also considered whether the amended specification provided a clear and complete enough disclosure of the invention, as required by subsection 102(1). Additionally, the court evaluated whether the amended claims were sufficiently clear and supported by the specification, in accordance with subsection 102(2). After a thorough analysis of the evidence and arguments presented, the court concluded that the amendments were allowable as they did not exceed the scope of the original disclosure, and the amended specification provided a clear and complete disclosure. Furthermore, the amended claims were found to be supported and clear.

The court ordered that the amendments be allowed and awarded costs against the opponent, Asahi Kasei Medical Co., Ltd. The decision was based on the finding that the amendments did not violate the statutory requirements and were within the bounds of acceptable changes to the patent applications. The court's ruling upheld the validity of the amended patents and provided a clear outcome for both parties involved in the dispute.

Orders