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:

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59(1)(c) of the Patents Act has been made out until the claims with the prior priority date have been granted, refused, withdrawn or have lapsed?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 Those provisions have been repealed and are not contained in the Patents Act 1990.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…

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: [1997] FCA 900
Decision Date: 5 SEPTEMBER 1997

CaseChat Overview and Summary

The matter before the Federal Court of Australia involved a dispute between Genetics Institute Inc and Johnson & Johnson regarding patent applications for the production of Erythropoietin, a glycoprotein used in the treatment of anaemia. The court had to decide whether it had the power to defer a decision on the grant of a patent where a prior claim based on an earlier priority date had been made out. This decision was in the context of an appeal from a decision of the Commissioner of Patents. The court's task was to determine whether the Commissioner, or the court on appeal, could defer a decision on the grant of a patent where the ground of opposition was a prior claim. The court considered the relevant provisions of the Patents Act 1952, the history of the relevant statutory provisions, and the submissions of the parties. The court concluded that it did have the power to defer a decision on the grant of a patent where the ground of opposition was a prior claim, but that this did not necessarily mean that a patent had to be granted. The court's decision was limited to the existence of the power and did not address the question of whether the power should be exercised. The court ordered that the question be answered in the affirmative and that the costs of the parties be their costs in the cause.

Orders