Sterling Drug, Inc v the Boots Company Plc - [1996] APO 31

official notice

decision of a delegate of the commissioner of patents

Application : No. 612679 in the name of STERLING DRUG, INC

Title: A pharmaceutical composition containing S(+) ibuprofen substantially free of its R(-) antipode

Action: Dismissal of an opposition by THE BOOTS COMPANY PLC to amendments under section 104

Decision: Issued .
Abstract: The amendment of the specification had been withdrawn by the patent applicant. As a consequence, dismissal of the opposition to the amendment is a formality.

Costs awarded against the applicant as the opponent has effectively “won” the opposition. The applicant’s behaviour in the opposition considered.

Observed that party and party costs are not equivalent to damages, and the principle of restitutio in integrum does not apply. The scale of costs can be varied to allow the recovery of costs reasonably and properly incurred, if the scale provides inadequate recompense.

Actual costs were not appropriate as there was no evidence of any unusual expense incurred. Costs awarded according to Schedule 8.

patents act 1990

decision of a delegate of the commissioner of patents

Re:Patent Application No. 612679 by STERLING DRUG, INC, and dismissal of an opposition by THE BOOTS COMPANY PLC to amendments under section 104 of the Patents Act 1990

background

Patent application 612679 in the name of Sterling Drug, Inc (hereafter referred to as STERLING) was advertised accepted on 18 July 1991. A notice of opposition to the grant of a patent was lodged by The Boots Company PLC (hereafter referred to as BOOTS) on 15 October 1991. The service of evidence in support was completed on 13 November 1992. The service of evidence in answer was completed on 13 August 1993. The time for service of evidence in reply has not yet expired.

On 12 May 1993 STERLING requested amendment of the specification under section 104 (hereafter referred to as the first amendment). The Commissioner directed that the time for service of evidence in reply to the substantive opposition would be extended to one month after the Commissioner notified the parties of the allowance, refusal or withdrawal of the first amendment. The request was advertised on 19 August 1993. A notice of opposition to the amendments was filed by BOOTS on 18 November 1993. The service of evidence in support was completed on 7 July 1994. No evidence in answer was served (following three extensions of the time for service, which extended the time until 7 July 1995). On 3 August 1995 the Opposition Clerk advised the parties that the provisions of regulation 5.12 would now apply, i.e. the opposition to the first amendment could be set down for a hearing. STERLING withdrew the first amendment on 17 October 1995.

On 6 July 1995 STERLING made another request to amend the specification under section 104 (hereafter referred to as the second amendment). The Commissioner directed that the time for service of evidence in reply to the substantive opposition would be extended to one month after the Commissioner notified the parties…

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 Sterling Drug, Inc v the Boots Company Plc

Details

AGLC: Sterling Drug, Inc v the Boots Company Plc [1996] APO 31
Case: [1996] APO 31
Decision Date: 13 June 1996

CaseChat Overview and Summary

Sterling Drug, Inc, an American pharmaceutical company, filed a patent application in Australia for a composition containing S(+) ibuprofen. The Boots Company PLC, a UK-based pharmaceutical company, opposed the application, arguing against the grant of a patent. The dispute centred on the amendments made to the patent specification by Sterling Drug, Inc, which Boots opposed. The case was heard before a delegate of the Commissioner of Patents.

The court had to decide whether the opposition to the amendments should be dismissed due to their withdrawal and, if so, what costs, if any, should be awarded to Boots. The court also had to determine whether the opposition to the amendments could be set down for a hearing, despite the withdrawal of the amendments, and whether the facsimile letter submitted by Sterling Drug, Inc was admissible as evidence.

The court found that the opposition to the amendments was effectively rendered moot by their withdrawal, and thus the opposition could be dismissed as a formality. Regarding the costs, the court concluded that Boots was entitled to costs as they had effectively "won" the opposition. However, the court determined that actual costs were not appropriate as there was no evidence of any unusual expenses incurred by Boots. The court awarded costs according to Schedule 8 of the Patents Regulations, including the hearing fee.

In conclusion, the opposition to the amendments was dismissed, and costs were awarded to Boots in accordance with Schedule 8 of the Patents Regulations, including the hearing fee. The decision highlighted the importance of timely amendments and the consequences of unnecessary delays in patent opposition proceedings.

Orders