Fysh Pty Ltd v Wesley Jessen Corporation - [2000] APO 2

OFFICIAL NOTICE

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Application : No. 620083 in the name of FYSH PTY LTD

Title: Improved Contact Lens Design

Action: Opposition by WESLEY JESSEN CORPORATION under Section 104 of the Patents Act 1990

Decision: Issued
Abstract

The amendments which were the subject of the opposition were filed in response to an adverse finding in a section 59 opposition. The opponent alleged that two of the amendments introduced matter not in substance disclosed in the specification as filed and did not meet the requirements of section 40.

The amendments were found to be allowable. When the disclosure of the specification was read in light of the common general knowledge and account was taken of the findings made in the section 59 opposition, the substance of the amendments could be found in the specification as filed. Similarly, when account was taken of the findings in the section 59 opposition, the amendments were properly construed and the consideration was confined to matters which arise as a result of the amendment, as section 102 requires, the amendments comply with the requirements of section 40. An amendment may be allowed even though it does no more than explain what is already in the claim when properly construed, as appears the case with a large proportion of the amendments involved here.

Costs were awarded against the opponent.

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Patent Application No. 620083, in the name of FYSH PTY LTD and an opposition by WESLEY JESSEN CORPORATION under Section 104 of the Patents Act 1990.

BACKGROUND

Patent Application No. 620083 in the name of Igel International Limited was advertised accepted on 31 January 1991. The application was opposed by Wesley Jessen Corporation. Prior to the opposition being heard the applicant filed a request to amend the specification under section 104 of the Patents Act and this was also opposed. Subsequently both oppositions were heard together, and in Igel International Limited v Wesley Jessen Corporation and General Optical Pty Ltd [1996] APO 22 (referred to hereinafter as "the section 59 opposition") the delegate found that there were valid objections to the specification under section 40 both as it stood and as it was proposed to be amended, and allowed the applicant the opportunity to amend. The section 104 amendment which had been the subject of the opposition was refused for non-compliance with subsection 102(1) and paragraph 102(2)(b).

Fresh section 104 amendments to the specification were eventually advertised accepted on 26 February 1998. Wesley Jessen Corporation opposed allowance of these amendments as well, and served its Statement of Grounds and Particulars on 26 May 1998. On 25 September 1998 the applicant sought dismissal of the opposition under Regulation 5.5. Shortly thereafter a request was made under section 113 for the application to proceed in the name of the assignee Fysh Pty Ltd, and this was granted on 12 October 1998. Subsequently, in Fysh Pty Ltd v Wesley…

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

AGLC: Fysh Pty Ltd v Wesley Jessen Corporation [2000] APO 2
Case: [2000] APO 2
Decision Date: 5 January 2000

CaseChat Overview and Summary

Fysh Pty Ltd opposed the Wesley Jessen Corporation's opposition to their patent application for an improved contact lens design. Wesley Jessen argued that the amendments to the patent application did not comply with sections 102 and 40 of the Patents Act 1990. The delegate of the Commissioner found that the proposed amendments were allowable. The opposition was dismissed and costs were awarded against Wesley Jessen Corporation.

The delegate of the Commissioner considered the allowability of the proposed amendments under section 102 of the Patents Act 1990. The delegate found that the amendments did not claim matter not in substance disclosed in the specification as filed, and that the amendments complied with the requirements of section 40. The delegate concluded that the amendments were allowable as they explained what was already in the claim when properly construed.

The delegate considered the submissions made by both parties. Wesley Jessen argued that the proposed amendments were unclear and indefinite, and that the term "draping" was in conflict with the claim that the lens allows refractive correction of the eye independent of the topography of the cornea. Fysh Pty Ltd submitted that the terms used in the proposed amendments were clear, succinct and fairly based, and that they were supported by the specification as filed.

The delegate found that the proposed amendments were clear and capable of a sensible meaning when read in the context of the entire specification. The delegate found that the term "draping" did not necessarily imply that the lens had to fully conform to the shape of the cornea, and that the act of placing the contact lens on an eye in the manner described in the specification fell within the scope of the term "draping".

The delegate concluded that the proposed amendments satisfied the requirements of sections 102 and 40 of the Patents Act 1990, and that the opposition was dismissed. Costs were awarded against Wesley Jessen Corporation.

Orders