Hoechst Aktiengesellschaft v American Home Products Corporation

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Application No. 544756 by HOECHST AKTIENGESELLSCHAFT and an Opposition under S.59 of the Patents Act 1952 by AMERICAN HOME PRODUCTS CORPORATION
In a decision in this matter dated 4 October 1990 I found some claims of application No 544756 were prior claimed by the claims of AU patent No 536316. I also found the specification did not comply with section 40. The applicant was granted the opportunity to propose amendments to overcome these defects. A request to amend was filed by the applicant within the time allowed. Following examination action the request was advertised allowed in the Official Journal dated 26 April 1991. The opponent has advised that it does not wish to be heard further in respect of the section 59 opposition.
I am satisfied the amendments remove the grounds for my earlier findings. And I am satisfied there are no other lawful grounds of objection to the application and complete specification. Therefore I direct that the application and complete specification as amended proceed to sealing.

(M. KENDALL)
Delegate of the Commissioner of Patents

Patent attorney for the applicant: Watermark, Melbourne
Patent attorney for the opponent : Phillips Ormonde & Fitzpatrick
Melbourne

CaseChat Overview and Summary

In this matter, Hoechst Aktiengesellschaft applied for a patent, and American Home Products Corporation opposed the application under section 59 of the Patents Act 1990. The dispute centred on whether the claims in Hoechst's patent application were prior claimed by another patent and whether the specification complied with section 40 of the Patents Act. Hoechst was given the opportunity to amend its application to address the issues raised, and subsequently filed an amended application. American Home Products Corporation decided not to pursue its opposition further.

The primary legal issues the delegate of the Commissioner of Patents had to decide were whether the amended claims in Hoechst's patent application overcame the prior claim issue and whether the amended specification complied with section 40 of the Patents Act. The delegate found that the amendments made to the patent application effectively addressed the prior claim issue and that the amended specification complied with section 40. The delegate also concluded that there were no other lawful grounds of objection to the application and complete specification.

The delegate of the Commissioner of Patents found that the amendments proposed by Hoechst successfully resolved the issues previously identified, and that the amended specification met the requirements of section 40 of the Patents Act. Consequently, the delegate directed that the amended application and complete specification proceed to sealing. The decision was made in the absence of further opposition from American Home Products Corporation.

There were no specific final orders mentioned in the decision. However, the delegate's direction that the amended application and complete specification proceed to sealing effectively allowed Hoechst's patent application to move forward and be granted a patent.

CaseChat Overview and Summary

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Background to the litigation

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Legal Principle Established