Peptide Technology Limited v Pitman-moore Australia Limited - [1993] APO 50

official notice

decision of a delegate of the commissioner of patents

Application : No. 630591 in the name of PEPTIDE TECHNOLOGY LIMITED

Title : GROWTH HORMONE RELATED PEPTIDE

Action: Opposition by PITMAN-MOORE AUSTRALIA LIMITED and an application by PEPTIDE TECHNOLOGY LIMITED for dismissal of the opposition.

Decision: Issued . Particulars found inadequate in part. Opponent directed to provide further and better particulars.

patents act 1990

decision of a delegate of the commissioner of patents

Re:Patent Application No. 630591 by PEPTIDE TECHNOLOGY LIMITED, opposition thereto by PITMAN-MOORE AUSTRALIA LIMITED and an application under regulation 5.5(1) by PEPTIDE TECHNOLOGY LIMITED for dismissal of the opposition.

background

Application 630591 was filed by Peptide Technology Limited (Peptide) on 6 July 1988 under the provisions of the Patent Cooperation Treaty as PCT/GB88/00528. That application was published under the PCT as WO 89/00166, and in Australia was allocated the application number of 19672/88. The application entered the national phase of processing on 1 February 1990 and was advertised accepted on 5 November 1992. On 5 February 1993, the opponent (Pitman-Moore) filed a notice of opposition.

The Statement of Grounds and Particulars was served on 9 March 1993. The Commissioner's delegate allowed an extension of time from 5 March 1993 to 9 March 1993 within which to file the Statement.

On 22 March 1993, Peptide filed an application for dismissal of the opposition. The matter was set down for hearing in Canberra on 20 May 1993.

At the hearing, Peptide was represented by M/s S. Goddard of counsel, assisted by Dr. W. Pickering, patent attorney of F. B. Rice & Co. of Sydney. Pitman-Moore was represented by Mr. B. Hess of counsel, assisted by Dr. V. Santer, patent attorney of Griffith Hack & Co. of Melbourne.

THE STATEMENT OF GROUNDS AND PARTICULARS

The Statement of Grounds of Opposition lists grounds a) to i). However the relevant grounds are as follows:

"a)The invention, so far as claimed in any claim, was obtained from the opponent, or from a person whom the opponent is the legal representative, assignee, agent or attorney;
b)The invention was not communicated to the applicant by the actual inventor or his legal representative or assignee;"

The Statement of Particulars provides four paragraphs of explanation in relation to ground a) above. I believe that the first part of the first paragraph is the most relevant. It is as follows:

"The invention disclosed in Australian Patent Application No. 630591 was obtained from the present opponent's British sister company, Pitman-Moore Limited. The named inventor Dr Roger Aston joined The Wellcome Foundation Limited as a Scientist II grade S2 on 5 October 1981. Coopers Animal Health Limited was set up in 1984 as a jointly-owned subsidiary of The Wellcome Foundation Limited and ICI plc. Dr. Aston joined Coopers Animal Health Limited as a Senior Scientist in approximately July 1985 on the same terms and conditions under which he was employed at Wellcome. He was employed at Coopers Animal Health Limited until 25 March 1987. Coopers Animal Health…

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.

Continue reading Peptide Technology Limited v Pitman-moore Australia Limited

Details

AGLC: Peptide Technology Limited v Pitman-moore Australia Limited [1993] APO 50
Case: [1993] APO 50
Decision Date: 6 July 1993

CaseChat Overview and Summary

Peptide Technology Limited (Peptide) filed a patent application in Australia, which was subsequently opposed by Pitman-Moore Australia Limited (Pitman-Moore). Peptide then filed an application for dismissal of the opposition, arguing that the particulars provided by Pitman-Moore were inadequate. The dispute was heard by R. Hallett, a delegate of the Commissioner of Patents. The primary legal issues were whether the particulars provided by Pitman-Moore were sufficient to support the grounds of opposition and whether the opposition could be dismissed in part or in whole.

The court found that the particulars provided by Pitman-Moore were inadequate in relation to one of the grounds of opposition, specifically the allegation that the invention was obtained from Pitman-Moore's sister company, Pitman Moore Limited. The court held that Pitman-Moore had not sufficiently established the necessary agency relationship between itself and Pitman Moore Limited to support this ground. Consequently, the court directed Pitman-Moore to provide further and better particulars within 30 days to address this deficiency. The court also found that the particulars for the other ground of opposition, related to the communication of the invention, were sufficient, and therefore, this ground would not be dismissed.

The court awarded costs to Peptide due to the partial success of the application for dismissal. The court emphasized the importance of providing adequate particulars in opposition proceedings to ensure that the opposing party is properly informed and can adequately respond to the allegations. This decision highlights the necessity for clarity and specificity in patent opposition particulars to avoid potential dismissal of claims.

Orders