Fysh Pty Ltd v Wesley Jessen Corporation - [1998] APO 74

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: Request under Regulation 5.5(1), by FYSH PTY LTD, for dismissal of an opposition made under Subsection 104(4) by WESLEY JESSEN CORPORATION.

Decision: Issued
Abstract

Conduct of the applicant is not a relevant consideration under Section 104(3) and Grounds 6 and 7 are not sustainable in light of Regulation 5.3(4). Opposition in relation to Grounds 2 and 3 is "so manifestly faulty that it does not admit of argument". Therefore opposition in relation to Grounds 2, 3, 6 and 7 is dismissed. The opposition in relation to the remaining grounds however stands even though only those particulars in relation to paragraphs 2(a)(ii) and 2(a)(iii) have been found to be sufficient or relevant. Direction that all other particulars not be available to the opponent to argue at the opposition hearing (E.I. DuPont de Nemours and Company v DowElanco (1994) AIPC 91-067).

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 a request under Regulation 5.5(1), for dismissal of an opposition made under Subsection 104(4) by Wesley Jessen Corporation.

background

Patent Application No. 620083 in the name of Igel International Limited (Igel) was advertised accepted on 31 January 1991. The application was opposed and in Igel International Limited v. Wesley Jessen Corporation and General Optical Pty Ltd [1996] APO 22 (2 April 1996) the delegate found that there were valid objections to the specification under Section 40 and allowed the applicant the opportunity to amend.

Section 104 amendments to the specification were eventually advertised accepted on 26 February 1998. Wesley Jessen Corporation (Wesley) opposed allowance of the amendments and served its Statement of Grounds and Particulars on 26 May 1998. On 25 September Igel sought dismissal of the opposition under Regulation 5.5. Subsequently the application was allowed to proceed in the name of the assignee Fysh Pty Ltd (Fysh).

The matter came for hearing in Canberra on 17 December 1998. Fysh was represented by Mr John Walsh, Patent Attorney of Walsh & Associates, Sydney. Wesley relied on written submissions filed by its patent attorney Mr John Terry of Griffith Hack, Sydney.

THE STATEMENT OF GROUNDS AND PARTICULARS

"The grounds of opposition upon which the Opponent relies are as follows:
1.The amendments, or some of them, are not allowable because as a result of the amendments, or some of them, the specification would claim matter not in substance disclosed in the specification as filed.
2.The amendments, or some of them, are not allowable because as a result of the amendments, or some of them, a claim of the specification would not in substance fall within the scope of claims of the specification before amendment.
3.The amendments, or some of them, are not allowable because as a result of the amendments, or some of them, the…

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 Fysh Pty Ltd v Wesley Jessen Corporation

Details

AGLC: Fysh Pty Ltd v Wesley Jessen Corporation [1998] APO 74
Case: [1998] APO 74
Decision Date: 31 December 1998

CaseChat Overview and Summary

In the case of Fysh Pty Ltd v Wesley Jessen Corporation, the dispute involved a request by Fysh Pty Ltd for the dismissal of an opposition to a patent application made by Wesley Jessen Corporation. The matter was heard by a delegate of the Commissioner of Patents in Canberra. The opposition was in relation to the proposed amendments to the patent application, originally filed by Igel International Limited and later assigned to Fysh Pty Ltd. Wesley Jessen Corporation raised several grounds for opposition, including the non-allowability of the amendments under various sections of the Patents Act 1990 and the conduct of the applicants.

The legal issues before the court were whether the opposition grounds were sufficiently particularised and whether they were relevant to the allowability of the amendments under Section 102 of the Patents Act 1990. The court also considered whether the conduct of the applicants was relevant to the Commissioner's discretion under Section 104(3) of the Act.

The court found that Grounds 6 and 7 of the opposition were not sustainable, as the conduct of the applicants was not a relevant consideration under Section 104(3) and Ground 7 was outside the requirement of Regulation 5.3(4). The court also determined that Grounds 2 and 3 were manifestly faulty and did not admit of argument. However, the opposition in relation to Grounds 1, 4, and 5 stood, albeit with limited particulars being available to support the opposition. The court directed that all other particulars not be available to the opponent to argue at the opposition hearing. The decision resulted in the dismissal of the opposition in relation to Grounds 2, 3, 6, and 7, while allowing the opposition in relation to the remaining grounds to proceed.

The final orders included the dismissal of the opposition in relation to Grounds 2, 3, 6, and 7, and the allowance of the opposition in relation to the remaining grounds, with specific directions regarding the availability of particulars for argument. The costs of the proceedings were not awarded to either party due to the protracted nature of the prosecution of the amendments and the frustration experienced by the opponent in the resolution of the Section 59 opposition.

Orders