Genetics Institute Inc v Johnson & Johnson

[1997] FCA 900

GENETICS INSTITUTE, INC v. JOHNSON & JOHNSON
No. VG 733 of 1996
FED
No. 900/97
Number of pages - 13
Intellectual Property

IN THE FEDERAL COURT OF AUSTRALIA

VICTORIA DISTRICT REGISTRY

GENERAL DIVISION

NORTHROP ACJ

Intellectual Property - Patents Act 1952 - appeal to Federal Court from decision of Commissioner of Patents - nature of an appeal under s 60(5) - preliminary question to be tried - opposition proceedings - prior claims under s 59(1)(c) - whether deferring of decision to direct grant constitute a refusal under s 60(4).

Patents Act 1952, ss 59, 60, 100 and 150

Federal Court Rules, O 29

Acushnet Co v Spalding Australia Pty Ltd (1989 - 1990) 18 IPR 364

VICTORIA, 16 May 1997 (hearing), 5 September 1997 (decision)

#DATE 5:9:1997

#ADD 10:9:1997

Appearances

Counsel for the Applicant: Mr B Caine

Solicitor for the Applicant: Davies Ryan De Boos

Counsel for the Respondent: Dr A Bennett & Ms K Howard

Solicitor for the Respondent: Sprusons Solicitors

THE COURT MAKES THE FOLLOWING ORDERS:

1. Order that the question referred to the Court for decision by order of the Court made on 4 April 1997, as subsequently amended, be answered as follows:-

   Question: On the hearing of an appeal under subsection 60(5) of the Patents Act 1952, does the Court have power to defer making an order that an application for a patent proceed to grant where, on the facts found, the ground of opposition specified in paragraph 59(1)(c) of the Patents Act has been made out until the claims with the prior priority date have been granted, refused, withdrawn or have lapsed?

   Answer: Yes

   2. Costs in the cause.

Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

NORTHROP ACJ

The matter before the Court involves the construction of paragraph 59(1)(c) and subsection 60(4) of the Patents Act 1952 ("the 1952 Act"). Those provisions have been repealed and are not contained in the Patents Act 1990. Nevertheless the 1952 Act applies with respect to the matter before the Court. This matter is but a step in a long-standing and bitter dispute between Genetics Institute Inc ("Genetics Institute") on the one part and Johnson & Johnson and its related company Kirin-Amgen on the other. The parties have made applications for patents under the 1952 Act with respect to the method for the production of Erythropoietin, a glycoprotein understood to be responsible for regulation of the manufacture of red blood cells in humans. Its production by artificial means, that is to say, by recombinant DNA technology, has very significant implications for the treatment of diseases, particularly anaemia, and has substantial commercial value. The matter before the Court does not involve a consideration of the nature of the claims for the inventions the subject of the applications for a patent. The invention will be described as the DNA invention.

For present purposes, it is sufficient to note that under paragraph 59(1)(c) of the 1952 Act a person may oppose the grant of a patent on the ground:-

"(c) that the invention, so far as claimed in any claim, is the subject of -

(i) a claim of the complete specification of another application for a standard patent lodged in Australia; or

(ii) the claim of a petty patent specification of an application for a petty patent lodged in Australia

being in either case a claim the priority date of which is earlier than the priority date of the first-mentioned claim;"

Sub-section 60(1) of the 1952 Act provides that where a notice of opposition is given under section 59, the Commissioner of Patents, after hearing the applicant for the patent and the opponent shall decide the case. Subsection 60(4) provides:-

"(4) The grant of a patent shall not be refused on the ground specified in paragraph 59(1)(c) if a patent has not been sealed on the application mentioned in that paragraph."

Under subsection 60(5) the applicant for the patent, and an opponent who, in the opinion of the Federal Court is entitled to be heard in opposition to the grant , "may appeal to the Federal Court from a decision of the Commissioner under this section".

In the matter before the Court, Genetics Institute had made an application for a patent for the DNA invention. The application was identified as Patent Application No. 621535. Johnson & Johnson gave notice of opposition to the grant of the patent on a number of the grounds specified in subsection 59(1) including the ground specified in paragraph 59(1)(c). It appears that the primary ground of the opposition was under this paragraph in that the opposition was based upon a prior claim based on patent application No. 600650 in which Kirin-Amgen was the applicant for a patent with respect to the DNA invention. Application No. 600650 is presently on appeal from the decision of the Commissioner in that application. In addition, a related divisional application is in opposition proceedings before the Commissioner being application No. 657555. There is a third application being No. 10074/95 pending in the Patents Office.

For the purpose of the matters before the Court, it can be accepted that the earliest priority date for the Kirin-Amgen claims is 13 December 1983 while the earliest priority date for the Genetics Institute claims is 4 December 1984. Thus it can be accepted for present purposes that the claims by Kirin-Amgen (and Johnson & Johnson) are prior claims with respect to the claims by Genetics Institute.

The policy behind subsection 60(4) seems reasonably clear. Where opposition is based on paragraph 59(1)(c) there can be no certainty that a patent will be granted with respect to the claim with the earlier priority date. In these circumstances, if the application based on the claims with the later priority date was refused, the applicant would be disadvantaged if subsequently the claims with the earlier priority date lapsed, were refused or were withdrawn. The position can be contrasted with the ground of opposition specified in paragraph 59(1)(d) namely:-

"(d) that the invention, so far as claimed in any claim, is the subject of a claim of earlier priority date contained in the complete specification or petty patent specification of a patent;"

The opposition proceedings in Application No. 621535 in the name of Genetics Institute were heard by Mr Harold, a Deputy Commissioner of Patents exercising the powers of the Commissioner. Mr Harold refused a request by Johnson & Johnson that the opposition proceedings be deferred for the reason that the primary ground of the opposition was an objection of prior claim based on patent application 600650 (Kirin-Amgen) and that the opposition proceedings should be adjourned until application 600650 had been granted, refused, has lapsed or has been withdrawn.

On 19 November 1996, Mr Harold gave his decision in the opposition proceedings in application 621535 and published his reasons for decision. The practical effect of his decision was to adjourn the final decision of the application 621535 until both 600650 and 657555 had either proceeded to grant, or had lapsed, been refused or withdrawn. Directions were given as to what should happen when any one of these events occurred. The decision was contained in the reasons under the heading "Conclusion" and is set out in full:-

"Conclusion

I have found that:

- all claims except claim 1 are the subject of prior claim by patent applications 600650, 657555, and 10074/95; and

- claims 2, 16, and 31 lack clarity

With regard to the further prosecution of this case, I direct as follows:

- the present application is not to proceed to grant in its present form until both 600650 and 657555 have either proceeded to grant, or have lapsed, been refused, or withdrawn;

- patent application 10074/95 and any other applications deriving priority from patent application 600650, shall not be a barrier to the present application proceeding to grant - unless and until a patent is granted on any such application;

- the applicant has 90 days from the date of grant of a patent on one or other of 600650 and 657555 to either:

(request amendments to avoid the objection of prior claim by a valid claim of a patent;

(seek directions as to how the application should proceed; or

(request to be further heard.

- the applicant has 60 days from the date of lapsing, refusal or withdrawal of both 600650 and 657555 to amend the specification to remove the section 40 problems; and

- the applicant is otherwise at liberty to propose amendments to the present application."

Counsel for Genetics Institute contends that this decision in substance and in truth is a decision to refuse to grant a patent in application 621535 or the ground specified in paragraph 59(1)(c) of the 1952 Act where a patent had not been granted with respect to the claims contained in applications 600550, 657555, 10074/95 or any other application deriving priority from patent application 600650. It followed, it was contended, that the Deputy Commissioner of Patents had no power to make that decision since it was in contravention of subsection 60(4).

By notice of appeal dated 10 December 1996, Genetics Institute appealed from that part of the decision of Mr Harold (the delegate of the Commissioner) given on 19 November 1996 set out earlier in these reasons and the order that it pay the costs of Johnson & Johnson. By its notice of appeal, Genetics Institute sought an order reviewing the decision of the delegate insofar as it found that all claims of application 621535 (apart from claim 1) are the subject of prior claim by patent applications 600650, 657555 and 10074/95, that claims 2, 3, 16 and 31 of application 621535 lack clarity and the order for costs. Genetics Institute sought orders that application 621535 proceed to grant and that Johnson & Johnson pay its costs of the opposition proceedings and of the appeal. Comments about the notice of appeal will be made later in these reasons. It is noted the appeal was given the identifying number VG 733 of 1996.

Strangely, by a notice of contention dated 8 January 1997 and before the first directions hearing in VG 733 of 1996, Johnson & Johnson gave notice that the decision of the delegate should be affirmed on additional grounds based upon other grounds of opposition specified in subsection 59(1) of the 1952 Act.

On 4 April 1997, at what was in reality the first directions hearing in the appeal, the Court made the following order:-

"1. There be a separate determination, before any trial in this proceeding, of the following question:

"Whether the grant of a patent on Patent Application No. 621,535 can be refused on the ground that the invention claimed in any claim of the said patent application is the subject of a claim of earlier priority date contained in the complete specification of:

(i) Patent Application No. 600,650;

(ii) Patent Application No. 657,555; or

(iii) Patent Application No. 10074/95

or any of them (hereinafter collectively referred to as "the prior applications")

when a patent has not been sealed on any one or more of the prior applications."

This order appears to have been made pursuant to O29 r2(a) of the Federal Court Rules. At the same time the Court made consequential orders none of which are presently relevant. Of more importance, no directions were given relating to the procedures to be followed in the conduct of the hearing of this preliminary question.

This preliminary question is the matter which came on for hearing before the Court as presently constituted on 16 May 1997. Immediately, concerns were raised relating to the form of the preliminary question contained in the order of 4 April 1997. Of necessity, having regard to subsection 60(4) of the 1952 Act, the answer to that question had to be in the negative. Counsel for Johnson & Johnson moved the Court for an order that the preliminary question be stated as follows:-

"Whether patent application No. 621535 is not to proceed to grant until both patent application Nos. 600650 and 657555 have either proceeded to grant or have lapsed, been refused or withdrawn."

The Court deferred determination of the motion. At the conclusion of the hearing, the Court granted leave to the parties to notify the Court of the appropriate form of the question and, if necessary, to leave it to the Court to determine the formulation of the question.

By letter dated 23 May 1997, the solicitors for Johnson & Johnson proposed four questions namely:-

"1. Whether the Deputy Commissioner of Patents has refused the grant of patent application No. 621535.

2. If the answer to question 1 is "No, Whether if the Appellant declines to amend patent application No. 621535 to overcome the prior claiming as found, the opposition proceedings before the Commissioner are deferred until 90 days after the final determination of patent application Nos. 600650 and 657555 which are prior in time and prior claim the patent application.

3. If the answer to question 2 is "Yes, Whether that decision of the Commissioner is consistent with Section 60 of the Patents Act 1952.

4. Whether, as a consequence of Section 60(4) and in the absence of amendment, the Commissioner is obliged to grant the unamended patent application No. 621535 notwithstanding the finding of prior claiming by two patent applications which are prior in time."

By letter dated 2 June 1997, the solicitors for Genetics Institute proposed two questions namely:-

"1. Whether the decision of the Deputy Commissioner of Patents ("the Commissioner") to defer making a decision as to whether Patent Application No. 621,535 ("the GI application") should proceed to grant is a refusal to grant a patent on the GI application contrary to the provisions of s60(4).

2. If the answer to question 1 is "Yes", Whether the Commissioner should order that a patent be granted on the GI application, subject only to the Applicant proposing amendments to the GI application which overcome the want of clarity found by the Commissioner to exist in respect of claims 2, 16 and 31 of the GI application."

In my opinion, none of the questions proposed is appropriate for determination as a preliminary question under O29 of the Federal Court Rules in application No. VG 733 of 1996. The questions proposed illustrate what appears to be a misapprehension by the parties as to the nature of an appeal under subsection 60(5) of the 1952 Act. The misapprehension is illustrated by the fact that at an early stage of the hearing it became apparent that the issue related to the power of the Commissioner (in these reasons the word Commissioner will be used rather than a Delegate or Mr Harold), when deciding opposition proceedings under subsection 60(1) to defer making a decision where, on the material before the Commissioner, the Commissioner has found the opponent has established the ground specified in paragraph 59(1)(c). In other words, does a decision by the Commissioner that the application for the patent is not to proceed in its present form until both patent applications 600650 and 657555 have either proceeded to grant or have lapsed, been refused, or withdrawn, constitute a refusal, under subsection 60(4), to grant the patent on the ground specified in paragraph 59(1)(c) if the patent has not been sealed on the application mentioned in that paragraph.

The parties disclaimed that the proceeding before the Court was in the nature of a claim for a prerogative writ; c/f R v Smith; Ex parte Mole Engineering Pty Ltd (1981) 147 CLR 340. The parties disclaimed that the proceeding was in the nature of a judicial review under the Administrative Decisions (Judicial Review) Act 1977 or on appeal on a question of law under the Administrative Appeals Tribunal Act 1975. Nevertheless the Notice of Appeal and the Notice of Contention are drawn more on the basis of an appeal properly so called or judicial review. During the hearing reference was made continually to the power of the Commissioner. It seemed to have been overlooked that the proceeding before the Court was a hearing by the Court of opposition proceedings to be decided upon the evidence properly before the Court. In these circumstances, the preliminary question for determination should be in the form of whether the Court, on the facts agreed by the parties, has power to defer making an order for the grant of the patent. In this context, the other grounds of opposition relied upon are to be put to one side.

This long introduction has been necessary since the hearing was confused by the failure to comply with the correct practice and procedure of the Court in relation to an appeal under subsection 60(5) of the 1952 Act.

In Acushnet Co v Spalding Australia Pty Ltd No. VG 298 of 1989 I considered and gave reasons for judgment on two separate matters relating to that practice and procedure. The first reasons for judgment were given 14 December 1989 and are unreported. The second reasons for judgment were given 16 July 1990 and are reported (1989-1990) 18 IPR 364. That proceeding arose out of an appeal under subsection 60(5) of the 1952 Act. At the time of that proceeding, the appropriate Rules of Court were contained in O 54B. In 1994, the Rules were amended and are now contained in O 58. Although some minor amendments were made, they do not affect the reasoning applied. The relevant rule numbers are the same in the former O 54B and the present O 58. In that case, the Court gave leave to appeal. An appeal was instituted but during the course of the hearing of the appeal, the appeal was discontinued. I see no reason to depart from the opinions expressed in Acushnet. They have equal application to the matter now before the Court. The reasons given on each occasion should be read in full and applied to the matter now before the Court.

Commencing at 365 of the report, reference is made to the general structure of the 1952 Act including Part IV, Part V, Part VI, Part VIII and Part XVII and in particular sections 146 and 150 in Part XVII. At 368-9 the following passage appears:-

"Section 146 of the Patents Act confers jurisdiction on the Federal Court to hear the appeal while s 150 specifies the powers of the Federal Court when hearing an appeal from a decision of the Commissioner. Order 54B of the Federal Court Rules contains the procedures to be applied in respect of an appeal to the court under s 60(5). It should be noted that under O 54B, r 2(2) of the Federal Court Rules, as far as is practicable, apply to intellectual property cases. Division 2 of O 54B comprising rr 4, 5 6 and 7, apply with respect to appeals from the Commissioner. An appeal is instituted by the filing of an application in the form numbered 58B(should be 58A) in the first Schedule to the rules. The appeal is within the original jurisdiction of the court and the party instituting the appeal is called the applicant while any opposing party is called the respondent. Thus the rules make provision for the parties to what is called an appeal but what is in reality and in law a proceeding in the original jurisdiction of the court, not a proceeding in its appellate jurisdiction: see ss 19 and 20 of the Federal Court of Australia Act 1976 (Cth). Under r 4(6) and (7) the appeal must be instituted within 21 days from the date appearing on the Commissioner's decision in respect of which the appeal is instituted but under r 4(8) the court is empowered to extend the time for appeal "upon application made at any time, showing special circumstances".

Rule 5 makes provision as to the form of the application and requires that the application shall state, among other things, whether the appeal is brought from the whole or part only of the decision appealed from; the orders sought and briefly, but specifically, the grounds relied upon in support of the orders sought. Form 58A is in conformity with the provisions of r 5. In conformity with the general practice and procedure of the court, the application must specify a date for the first directions hearing in that application: r 6. Rule 7 is set out in full: "7(1) At the directions hearing referred to in subrule 6(2), the Court may give directions as to the giving of further evidence at the hearing, pursuant to s 150(b) of the Patents Act.

"(2) Evidence in proceedings before the Commissioner shall, with the leave of the Court, and saving all just exceptions, be admissible in evidence on the hearing by the Court of an appeal to which this Division applies."

The views so expressed are in conformity with the opinion expressed by Kitto J in Kaiser Aluminium & Chemical Corp v Reynolds Metal Co (1969) 120 CLR 136 at 142 and set out in Acushnet at 371.

In Acushnet at 369-370 criticism is made of the notice of appeal in that matter. Similar criticisms are made with respect to the notice of appeal in the present case. Here the notice of appeal specifies 25 different grounds many of which contain subgrounds. The grounds are framed on the basis that the appeal is in the nature of a judicial review, not a re-hearing. At the present time, no directions have been given as to the evidence to be presented to the Court at the hearing or whether leave is to be given to rely on the material before the Commissioner.

In Acushnet commencing at 373, reference is made to Broken Hill Pty Co Ltd v American Can Co (1980) VR 143 and the views expressed by Fullagar J as to the power of the Court on hearing an appeal under subsection 60(5) of the 1952 Act to make declarations. With the same reservations expressed by Fullagar J, I see no reason why, upon a consideration of the whole of the material before the Court on the appeal, the Court could not make a declaration of the kind sought under the preliminary question presently before the Court. Any declaration would be limited to the existence of the power of the Court to defer making a decision based upon establishing the ground of a prior claim and not to the question of whether, in the exercise of the power, the decision should be deferred. Much would depend upon the other matters raised on the appeal or any cross-appeal or contention. These other matters go far beyond the ground of opposition specified in subsection 59(1)(c) of the 1952 Act. Any declaration as to power would have equal application with respect to the power conferred upon the Commissioner by sub-section 60(1) of the 1952 Act.

In all the circumstances, the Court would formulate the preliminary question as follows:-

"On the hearing of an appeal under subsection 60(5) of the Patents Act 1952, does the Court have power to defer making an order that an application for a patent proceed to grant where, on the facts found, the ground of opposition specified in paragraph 59(1)(c) of the Patents Act has been made out until the claims with the prior priority date have been granted, refused, withdrawn or have lapsed ?"

The essence of the contentions made on behalf of Genetics Institute was that a decision by the Court under subsection 60(5) of the 1952 Act, and for that matter a decision of the Commissioner under subsection 60(1), to defer the further hearing of the opposition proceedings in whatever form that application may take, until after the prior claims had proceeded to grant or had lapsed, been refused or withdrawn was, in substance and in truth, a refusal to grant a patent on the ground specified in paragraph 59(1)(c) and would be contrary to the direction contained in subsection 60(4). In submissions supporting the contention, counsel referred to the structure of the 1952 Act, the substance of which have been set out earlier in these reasons. Counsel referred to the history of the relevant statutory provisions. In particular, counsel referred to subsections 48(3) and 60(4) as first introduced in 1952. Section 48 is within Part IV of the 1952 Act. It contains provisions enabling an Examiner under the 1952 Act to examine applications for patents and make reports on specified matters including grounds of opposition specified in subsection 59(1). As originally enacted subsection 48(1) included the following paragraphs:-

"48. (1) In the case of a complete specification the Examiner shall -

(a) ascertain and report whether the invention, so far as claimed in any claim, is the subject of a claim of the complete specification of another application for a patent lodged in Australia, being a claim having a priority date earlier than the priority date of the first-mentioned claim;

(b) ......

(c) ascertain and report whether the invention, so far as claimed in any claim, is the subject of a claim of earlier priority date contained in the complete specification of a patent;

(d) ......"

Subsection 48(3) was as follows:-

"(3) If the Examiner reports adversely to a complete specification under paragraph (a) of sub-section (1.) of this section, the Commissioner may defer acceptance of the application and complete specification until a patent has been sealed on the other application."

At that time, the provisions of paragraph 59(1)(c) and subsection 60(4) were the same as they are for the purposes of the question before the Court.

Under the 1952 Act now in operation a similar power to defer acceptance of an application where an Examiner reports adversely to a complete specification contained in subsection 48(3) is conferred upon the Commissioner by subsection 54(4), but that power, apparently, was not exercised here.

By an amendment contained in section 9 of the Patents Act 1960, subsection 48(3) in its original form was deleted, but for present purposes the former paragraph 48(3) and the current subsection 54(4) have the same effect. It is noted that subsection 48(3) had, and subsection 54(4) has the effect of conferring a power on the Commissioner to refuse to accept an application for a patent. The acceptance of a patent has the effect that publication of the application is then made and persons have the right to lodge grounds of opposition to the grant of the patent and so institute opposition proceedings under Part V of the 1952 Act.

On this history, counsel for Genetics Institute submitted that the existence of an express power to defer acceptance of an application and the absence of such a power in section 60 had the effect of preventing the Commissioner from deferring consideration of the ground of opposition specified in paragraph 59(1)(c) until the prior claim had been granted refusal, withdrawn or lapsed.

The short answer to this contention is that the provisions are limited to different matters. Subsection 48(3) had been, and subsection 54(4) is limited to the power of the Commissioner to accept an application. Section 60 is limited to the granting of an application. The contention made on behalf of Genetics Institute is rejected.

It was contended further that the 1952 Act contemplated the existence of two or more patents being granted with respect to the same claims. Reference was made to subsection 67(3) which provides:-

"(3) Where 2 or more applications are lodged for patents for the same invention, the sealing of a patent on one of those applications does not prevent the sealing of a patent on any of the other applications."

In this regard reference may be made to section 100 of the 1952 Act which specifies the grounds upon which a patent may be revoked. Particular reference is made to paragraph 100(1)(f) which provides:-

"100. (1) A standard patent may be revoked, either wholly or in so far as it relates to any claim of the complete specification, and a petty patent may be revoked, on one or more of the following grounds, but on no other grounds:

(a) ......

(f) that the invention, so far as claimed in any claim of the complete specification or in the claim of the petty patent specification, as the case may be, is the subject of a valid claim of earlier priority date contained in the complete specification of a standard patent or in the petty patent specification of a petty patent;

(g) ......"

This contention goes to the question of the exercise of the power to defer a decision on an opposition based on paragraph 59(1)(c), not the existence of the power.

Counsel for Genetics Institute contended that the words of subsection 60(4) carried with them an implication that if the only ground of opposition established under section 59 was that contained in paragraph 59(1)(c), the Commissioner, or on appeal, a Court, was under a duty to direct the grant of the patent. The present case involves other relevant facts - the requirement to amend the specification to remove the section 40 problems. Further, Johnson & Johnson proposes at the hearing of the appeal, to rely upon other grounds of opposition which were rejected by the decision of the Commissioner. However, for present purposes, these complications can be put to one side, since the parties seem to desire to have a direction of the Court on whether the Court, on an appeal under subsection 60(5), and, for that matter, the Commissioner in exercising the power conferred by subsection 60(1) have power to defer applying subsection 60(4) until the prior claims have either proceeded to grant or have lapsed, been refused or withdrawn. No question relating to whether the power should be exercised arises on the preliminary question.

There can be no doubt that the powers conferred by subsection 60(1) and 60(5) are very extensive. They include a power to defer a decision to refuse an application for a patent to enable the applicant time within which to lodge a request to amend the specifications. Order (iv) of the orders of the Commissioner in the matter presently before the Court is an illustration of the exercise of such a power even though the further amendments can be made only after the prior claims have lapsed, been refused or withdrawn. The nature of this power was discussed in Acushnet commencing at 373. In that passage reference is made to Mole Engineering Pty Ltd, above, which it will be recalled involved an application for a prerogative writ and was concerned with the nature of the power conferred by subsection 60(1). That case involved a consideration of the powers of the Commissioner and the effect of Part V and Part VIII of the 1952 Act in relation to those powers. The facts are summarized in Acushnet at 373. At 374 there is a quote from the judgment of Mason J in Mole Engineering Pty Ltd at 348-9 as follows:-

"It will be noted that s 60(5) enables an appeal to be brought from `a decision', rather than `the decision', of the Commissioner. The sub-section is quite consistent with the view that an appeal lies from a decision of the kind given by Mr Kildea in the present case, one which upholds grounds of opposition but does not refuse the application because the objections may be overcome by amendment. The peculiarity of the statutory procedure is that Pt VIII provides for the consideration of amendments after the initial opposition proceedings have been heard and decided. What is more, Pt VIII provides for the lodging of notice of opposition to amendments and for a hearing of that opposition and a decision upon it with a consequent right of appeal. The Act therefore contemplates that there may be two decisions, one under Pt V and another under Pt VIII, each finally deciding an issue arising from a notice of opposition and that there will be a right of appeal from each decision.

It is a natural consequence of the procedures under Pt V and Pt VIII that an officer who upholds objections to the grant of an application under Pt V will refrain from refusing the application where it appears that the objections may be cured by amendment. Then it is a practical and sensible course to allow the applicant time within which to lodge a request to amend the specification, as Mr Kildea did in this instance. But his decision was nonetheless a final decision on the original unamended application - there was nothing provisional or tentative about the finding on the grounds of objection. It dealt with all the issues arising on the notice of opposition so far as they were capable of final determination."

In all the circumstances, in my opinion, the contention made on behalf of Genetics Institute should be rejected. The word refuse does not import a duty to grant where the ground specified in paragraph59(1)(c) of the 1952 Act is made out. A decision to defer further consideration of the application until after the lapsing of a specified event is a decision from which an appeal lies under subsection 60(5). The decision of Mr Harold is that the ground of opposition based on paragraph 59(1)(c) has been made out. The issue between the parties is whether, in those circumstances, and on the facts before it, the Court should defer directing the sealing of the application. This involves the exercise of a discretion. This exercise of discretion, to a large extent, may depend upon consideration of the grounds of opposition sought to be raised by Johnson & Johnson.

If the appeal is to proceed, it will be necessary to give directions relating to the future conduct of the appeal. Attention is drawn to the directions given in Acushnet as set out at 370.

Having come to the conclusion that the Court has, and for that matter, the Commissioner, had, power to defer the matter of amendments to the specification until the happening of one of the specified events, the Court does not need to refer to the many cases cited in submissions which authorities appear to go to the question of the exercise of the power.

In the result, the Court answers the preliminary question as follows:-

Question: On the hearing of an appeal under subsection 60(5) of the Patents Act 1952, does the Court have power to defer making an order that an application for a patent proceed to grant where, on the facts found, the ground of opposition specified in paragraph 59(1)(c) of the Patents Act has been made out until the claims with the prior priority date have been granted, refused, withdrawn or have lapsed?

Answer: Yes

In all the circumstances the costs of the parties should be their costs in the cause. The answer given to the question cannot, apart from agreement between the parties, finally determine the appeal from the decision of the Delegate of the Commissioner.