Genetics Institute Inc v Kirin-Amgen Inc

Genetics Institute Inc, an applicant for a patent, appealed to the Federal Court of Australia against a decision of a delegate of the Commissioner of Patents who granted a patent for a pharmaceutical product to Kirin-Amgen Inc. The dispute revolved around the validity of certain claims in Kirin-Amgen's patent application, with Genetics opposing the grant of a patent on several grounds. The Federal Court was asked to determine whether it had the power to direct that the patent application proceed to grant, subject to amendments directed by the Court if the Court found that any of the claims were defective but could be cured by amendment.

The legal issues before the court were centered on the interpretation of the Patents Act 1990 (Cth) and the scope of the court's powers under s 160 of the Act. The court had to decide whether it could order amendments to the patent application and direct the Commissioner to grant the patent, contingent on those amendments being made. This involved interpreting the powers of the Federal Court on appeal from the Commissioner's decision and whether such powers included the ability to direct specific amendments to the patent claims.

Heerey J held that the court indeed had the power to direct that the patent application proceed to grant subject to amendments, provided those amendments were necessary to cure defects identified in the application. The court reasoned that the statutory language in s 160 of the Act, which allows the court to make any order it thinks fit, supported this conclusion. The court emphasized that the appeal was a rehearing of the case and that the court had broad powers to vary the Commissioner's decision, including the power to direct amendments. This interpretation was supported by precedents such as Kaiser Aluminium & Chemical Corporation v The Reynolds Metal Co and Jafferjee v Scarlett, which highlighted the appellate court's authority to make comprehensive decisions in patent matters. The court also noted that the Commissioner's power to direct amendments under the Act further supported the notion that the court could similarly direct such amendments on appeal.

The court ordered that the applicant, Genetics Institute Inc, pay the respondent's costs for the hearing on 21 June 1996, but reserved the costs for the notice of motion dated 31 May 1996 for further consideration. This outcome reflected the court's view that the specific issue addressed in the motion was discrete and final, warranting a costs order for the respondent, while reserving other costs pending further directions.