Emory University v Biochem Pharma Inc - [1996] APO 9

official notice

decision of a delegate of the 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: Opposition to grant of patent by Biochem Pharma Inc; Requests to amend the statement of grounds and particulars objected to by Emory University.

Decision: Issued .
Abstract:

Biochem requested an amendment to include the grounds of opposition that the invention as claimed in claims 16 to 23 and 33 to 47 was not a patentable invention within the meaning of section 18(1) of the Patents Act 1990 as the claims were not a manner of manufacture within the meaning of section 6 of the Statute of Monopolies and did not pass the threshold requirement of “an invention”.
The law on manner of manufacture at the time the original statement was filed was uncertain due to conflicting decisions of the Federal Court. The law was made clearer by a High Court decision issued after the statement had been filed.
The patent attorney responsible for drafting the statement of grounds and particulars had a mistaken understanding of the law on manner of manufacture and consequently did not anticipate the High Court finding in NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd, issued on 9 November 1995. There was an error in judgement in not opposing the patent application on the ground of manner of manufacture.
All amendments to the statement of grounds and particulars allowed.
Direction issued that the time for filing evidence in answer run from the date of this decision.
Costs awarded against Biochem despite being successful in this case. Evidence important to the resolution of the issues was only made available at the hearing.

patents act 1990

decision of a delegate of the commissioner of patents

Re:Patent Application No. 658136 by Emory University and opposition thereto by Biochem Pharma Inc; two requests by Biochem Pharma Inc to amend the statement of grounds and particulars objected to by Emory University.

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. Biochem filed a request to amend the statement on 15 September 1995 which was allowed on 20 October 1995. Biochem filed further requests to amend the statement of grounds and particulars on 1 November 1995 and 15 November 1995. Emory objected to both of these requests.

A hearing was held in Canberra on 1 December 1995 relating to both requests to amend the statement. Biochem filed a further amendment to the grounds and particulars at the hearing. Emory also objected to this amendment.

Emory were represented at the hearing by Mr David Catterns of Counsel, assisted by Mr Paul Whenman and Ms Gwen Bentley of F.B. Rice & Co. Biochem were represented by Dr Annabelle Bennett of Counsel, assisted by Mr Ron Haliday of Cullen…

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 Emory University v Biochem Pharma Inc

Details

AGLC: Emory University v Biochem Pharma Inc [1996] APO 9
Case: [1996] APO 9
Decision Date: 9 February 1996

CaseChat Overview and Summary

In the case of Emory University v Biochem Pharma Inc, the primary dispute centered around an opposition to the grant of a patent by Emory University. Biochem Pharma Inc sought to amend its statement of grounds and particulars, which had been objected to by Emory University. The case involved the interpretation and application of the Patents Act 1990 and related regulations, particularly concerning the threshold requirement for patentability and the definition of a "manner of manufacture." The decision was rendered by Brendan Bourke, a delegate of the Commissioner of Patents.

The court was required to decide whether Biochem Pharma Inc could amend its statement of grounds and particulars to include new grounds of opposition that the invention claimed in certain patent claims was not a manner of manufacture, which is a necessary requirement under the Patents Act 1990. The central legal issues involved the interpretation of the statutory requirement for amendments, the nature of any errors or omissions justifying such amendments, and the potential prejudice to the opposing party, Emory University, if the amendments were allowed.

The court reasoned that the statutory authority to amend the statement of grounds and particulars was discretionary and could be exercised if the Commissioner reasonably believed the amendment would correct an error or omission and would not unduly prejudice the opposing party. The court noted that the definition of "error or omission" should be interpreted broadly and that the circumstances of the case, including the complexity of the legal issues and the timing of the amendments, had to be taken into account. The court found that Biochem Pharma Inc's patent attorney had a mistaken understanding of the law, which led to the omission of the relevant grounds of opposition. Given the special circumstances of a High Court decision clarifying the law after the original statement had been filed, the court allowed the amendments. The court also considered that the amendments, while introducing some delay, would not unduly prejudice Emory University and that the public interest in ensuring that the opposition was dealt with on its merits outweighed other considerations.

The outcome of the case was that all amendments to the statement of grounds and particulars were allowed. The court also directed that the time for filing evidence in answer to the amended statement would run from the date of the decision. Despite Biochem Pharma Inc's success in having its amendments allowed, the court awarded costs against it due to the late disclosure of important evidence and the filing of a further amended statement at the hearing.

Orders