Merial Inc v Intervet International BV (No 4)

In the matter of Merial Inc v Intervet International BV (No 4), the Federal Court of Australia was asked to decide on the appropriate form of orders in relation to a patent dispute. The primary issue was whether declarations should be made, whether the patent application should be prevented from proceeding to grant, and whether the respondent should have 60 days to apply to the Commissioner of Patents to amend the application. Additionally, the court had to consider the costs implications of the case, including whether the successful opponent should have part of its costs on an indemnity basis due to a Calderbank letter.

The court found that the proposed declarations by the appellant, Merial, did not add significant value to the orders already proposed. The court held that it was not appropriate to make declarations about alternative conclusions that were not dispositive of the appeal. Furthermore, the court decided that the patent application should not proceed to grant, and that the respondent, Intervet, should not have 60 days to apply to the Commissioner of Patents to amend the application. Regarding costs, the court ordered that Merial pay the respondent's costs in relation to the grounds of lack of novelty, lack of fair basis, and lack of clarity. The respondent was ordered to pay the appellant's costs of the proceeding, excluding the aforementioned grounds.

The final orders of the court were as follows: (1) the appeal was allowed; (2) the decision of the Commissioner of Patents by her delegate in relation to the patent application was set aside, except as to costs; (3) Merial's opposition to the patent application was upheld; (4) the patent application would not proceed to grant; and (5) specific cost orders were made, with Merial paying the respondent's costs for certain grounds and the respondent paying the appellant's costs of the proceeding, excluding those grounds. All costs were to be on a party and party basis and be taxed if not agreed.