FISONS LIMITED - [1983] APO 40

IN THE MATTER of the Patents Act 1952

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IN THE MATTER of Application No. 52885/77 in the Name of FISONS LIMITED

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IN THE MATTER of Examiner's Objections thereto.

INTERIM DECISION OF A SUPERVISING EXAMINER OF PATENTS:
BACKGROUND
Application No. 52885/79 was lodged on 15 November, 1979 by Fisons Limited and purports to be an application for a patent of addition to Application No. 83859/75 (Patent No. 492916) and also an application for a divisional patent in respect of subject matter divided from Application No. 21589/77 (Patent No. 506878). Since Patent No. 506878 is itself a patent of addition to Patent No. 492916, it will be convenient to refer to 52885/79 as "the daughter", to 506878 as "the parent" and to 492916 as "the grandparent". Both the parent and the grandparent are patents in force in the name of Fisons Limited. The relevant dates are set out below:

Parent

Lodged              11 Aug 1975         24 Jan 1977     15 Nov 1979
Accepted             8 May 1978         30 Nov 1979         ‑
Sealed               5 Oct 1978         30 Jun 1980         ‑
Published            24 Feb 1977          3 Aug 1978     15 May 1981
Prima facie Priority 10 Aug 1974         24 Jan 1977     24 Jan 1977

The date of lodgement of the daughter is such that the relevant Patents Act is the Patents Act 1952 as amended by the Patents Amendment Act 1979. The requirements for a divisional application are therefore those of section 51, in particular section 51(1), and the priority date of 24 Jan 1977 indicated above for the daughter is conditional upon those requirements having been met.

An Examiner's first report issued on 6 May 1982, so that the final date for acceptance, utilising the maximum extension available under section 54(1)B, is 6 Feb 1984.

In all, a total of four adverse Examiner's reports have been communicated to the applicant. Of these, the first two elicited statements of proposed amendments which overcome minor objections, and for the present purpose I will consider the specification as it is proposed to be amended. The Examiner's main objections, however, remain unresolved despite lengthy submissions in rebuttal, and in response to the Examiner's fourth report the applicant requested a hearing. These objections in substance are that first, the application in suit is not fit subject matter for a patent of addition to the grandparent, and second, Dreyfus claiming exists between the application in suit and the parent. At the hearing, which was held in Melbourne on 5 Aug. 1983, the applicant was represented by Mr. J. Slattery, Patent Attorney, of the firm Davies & Collison.

It will be convenient to describe the three specifications separately in the order grandparent, daughter, parent.

THE GRANDPARENT SPECIFICATION
The grandparent patent is predicated on the discovery that medicaments, when made up into pellets having certain characteristics, are suitable for administration by insufflation. Accordingly, claim 1 is directed to:

"A medicament comprising a plurality of pellets characterised in that the pellets are soft, are from 10 to 1000 microns…

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: [1983] APO 40
Decision Date: 18 November 1983

CaseChat Overview and Summary

Fisons Limited was involved in a dispute over its patent applications, Application No. 52885/79, which claimed to be a patent of addition and a divisional patent. The dispute centred on objections raised by an Examiner concerning the suitability of the application as a patent of addition and the existence of a Dreyfus claim, where an applicant has proposed claims of substantially identical scope in separate applications. The case was heard by J.L. Roveta, the Supervising Examiner of Patents, who was tasked with deciding on the legal issues presented by the Examiner's objections.

The first legal issue was whether Application No. 52885/79 was fit subject matter for a patent of addition to the grandparent patent. The court found that the application did not disclose any new subject matter over the grandparent patent, and thus it could not proceed as a patent of addition. The second legal issue was whether a Dreyfus claim existed between the daughter application and the parent patent. The court found that claims 1 and 11 of the daughter application were of substantially identical scope to claims 7 and 8 of the parent patent, and thus a Dreyfus claim existed. The final legal issue was whether the complete specification failed to define the best method of performance known to the applicant. The court found that the specification did not describe the best method of performance for the preparation of pellets with the preferred ranges of loose bulk density.

Based on these findings, the court decided that Application No. 52885/79 could not proceed as an application for a patent of addition to Patent No. 492916. Additionally, a Dreyfus objection applied to claims 1 and 11, respectively on comparison to claims 7 and 8 of Patent No. 506878. Finally, the complete specification failed to define the best method of performance. The court directed the applicant to lodge a statement of amendments to its satisfaction within the time remaining for acceptance. However, the court considered it may not be possible to propose satisfactory amendments to the specification of Application No. 52885/79, and suggested that the claims of the parent patent 506878 could be amended to incorporate reference to the loose bulk density of the pellets.

Orders