Emory University v Biochem Pharma Inc - [1997] APO 46

official notice

decision of a deputy commissioner of patents

Application : No.658136 in the name of Emory University

Title: Method and Compositions for the Synthesis of BCH-189 and Related Compounds

Action: Objection by Biochem Pharma Inc to an application to serve further evidence and to a request to rely on oral submissions made by representatives from the US

Decision: Issued .
Abstract
Criteria set out in Micronair (Aerial) Ltd v Waikerie Co-op Producers Ltd (1986) 7 IPR 107
and ICI v Mitsubishi Gas Chemical (1994) 29 IPR 285 in relation to the exercise of the

Commissioner’s discretion to grant an application to serve further evidence applied. There is no requirement in the Regulations for the evidence to be filed with the request. The serving of further evidence was appropriate in all the circumstances. Emory allowed 3 months to serve the further evidence which must only be in answer to alleged new matter in the evidence-in-reply identified in Emory’s oral and written submissions. Biochem allowed one month to respond to the further evidence.
The Commissioner does have a discretion to allow unqualified persons to make oral submissions at a hearing. The discretion is to be exercised only where there is a perceived benefit to the outcome of the hearing which would be when the submissions facilitate the understanding of the issues by the Hearing Officer. The Commissioner will insist on one person having overall responsibility for the conduct of the case being made for a party. It is understood that the conduct of the hearing is under the control of the Hearing Officer. The Commissioner expects to be notified of the intention for unqualified persons to appear well before the hearing. Two US attorneys nominated by Emory granted leave to make oral submissions on Emory’s behalf at the substantive hearing. Two US attorneys nominated by Biochem permitted to make oral submissions on Biochem’s behalf at the substantive hearing.

patents act 1990

decision of a deputy commissioner of patents

Re:Patent Application No. 658136 by Emory University and opposition thereto by Biochem Pharma Inc.; objections by Biochem Pharma Inc. to an application to serve further evidence and to a request to rely on oral submissions made by representatives from the US

background

Patent Application No. 658136 by Emory University (Emory) was advertised accepted on 6 April 1995. Biochem Pharma Inc. (Biochem) opposed the application and filed a statement of grounds and particulars on 21 August 1995. This statement has been amended on several occasions since then.

Evidence-in-support of the opposition was filed on 21 November 1995, evidence-in-answer was filed on 14 June 1996 and evidence-in-reply was filed on 24 January 1997. The attorneys for Emory advised on 4 March 1997 that Emory would be filing a request to serve further evidence under regulation 5.10(4) and that request was filed on 17 March 1997. The basis for the request was that Biochem had introduced 134 new documents in the evidence-in-reply which were not identified in the statement of grounds and…

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.

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Details

Case: [1997] APO 46
Decision Date: 23 September 1997

CaseChat Overview and Summary

This case involved an objection by Biochem Pharma Inc. to an application to serve further evidence and to a request to rely on oral submissions made by representatives from the US, in relation to a patent application by Emory University. The court considered the criteria set out in previous cases in relation to the exercise of the Commissioner’s discretion to grant an application to serve further evidence. The court found that the serving of further evidence was appropriate in all the circumstances, and Emory was allowed three months to serve the further evidence which must only be in answer to alleged new matter in the evidence-in-reply identified in Emory’s oral and written submissions. Biochem was allowed one month to respond to the further evidence. The court also considered the Commissioner's discretion to allow unqualified persons to make oral submissions at a hearing. The court found that the Commissioner does have a discretion to allow unqualified persons to make oral submissions at a hearing, but it should only be exercised in those circumstances where there is some benefit to be gained in terms of facilitating a more complete understanding of the case by the Hearing Officer. The court granted leave to permit the US attorneys nominated by Emory and Biochem to make oral submissions on behalf of their respective parties at the substantive hearing.

Orders