New England Biolabs, Inc v F Hoffman-La Roche AG

In the case of New England Biolabs, Inc v F Hoffman-La Roche AG, the primary issue was the extent of the court's discretion in relation to amendments under the Patents Act 1990 (Cth). The dispute arose when Roche sought to amend its patent application, which New England Biolabs (NEB) opposed. The Commissioner of Patents had denied Roche's application to amend, and Roche appealed to the Federal Court under section 104(7) of the Patents Act. The court was required to determine whether it had the discretion to refuse amendments under section 104(1) when hearing an appeal against a decision of the Commissioner under section 104(7).

The court addressed the broad powers conferred on it by section 160 of the Patents Act, including the ability to admit further evidence, examine and cross-examine witnesses, and make orders as it sees fit. NEB argued that the court's discretion under section 104(7) should align with that under section 105 of the Act, thereby extending beyond the Commissioner's powers. The court examined whether regulations under the Act restricted its discretion and whether any such restrictions were valid. Ultimately, the court found that the regulations did not limit the court's discretion under section 104(7) and concluded that the court could exercise its discretion to refuse amendments.

The court rescinded an earlier order and directed that the question of the court's discretion to refuse amendments be decided separately. It answered that question in the negative, stating that the court does not have the discretion to refuse amendments under section 104(1) when hearing an appeal under section 104(7). The court also ordered NEB to pay the costs of the respondent and the Commissioner of Patents for the separate decision. Finally, it set a date for further directions in the proceeding.