The Wellcome Foundation Limited v Peptide Technology Limited Summary

official notice

decision of a delegate of the commissioner of patents

Application : No. 564783 in the name of THE WELLCOME FOUNDATION LIMITED

Title: Physiologically active compositions

Action: opposition by PEPTIDE TECHNOLOGY LIMITED under section 59 of the Patents Act 1952 - FINAL DECISION.

Decision: Issued . Final decision, application directed to sealing.

patents act 1990

decision of a delegate of the commissioner of patents

Re:Application No. 564783 by THE WELLCOME FOUNDATION LIMITED and opposition by PEPTIDE TECHNOLOGY LIMITED under section 59 of the Patents Act 1952.

BACKGROUND

In my decision in this matter dated 12 December 1991, I found that:

.claims 1, 2 and 8 were not fairly based as they were not limited to the use of antibodies, with particular epitope specificity to pituitary hormones, to treat clinical abnormalities resulting from a deficiency of the hormone in vertebrates;
.the term "fragment" used in claims 8 and 11 was not clear;
.claims 3, 9 and 12 were not clear in their appendency to claims 1, 2, 8 and 11 respectively, because they included within their scope non-pituitary hormones;

I allowed the applicant 60 days from the date of that decision to propose amendments to the specification.

Amendments have been proposed by the applicant in response to the decision and allowed and incorporated into the specification.

The opponent did not object to the amended specification.

DECISION

I consider the applicant has overcome my objections and consequently direct the application to sealing.

Bob Sawyer
Delegate of the Commissioner of Patents

Patent Attorneys for the applicant: Griffith Hack & Co., Melbourne
Patent Attorneys for the opponent : F.B. Rice & Co., Sydney

CaseChat Overview and Summary

The Wellcome Foundation Limited sought to register a patent for physiologically active compositions, while Peptide Technology Limited opposed the application under section 59 of the Patents Act 1952. The dispute centred on the validity and clarity of specific claims within the patent application. The case was heard by a delegate of the Commissioner of Patents, who issued a final decision directing the application to sealing after amendments were made to the specification.

The court was tasked with determining whether the claims in the patent application were fairly based and clear. This involved examining whether the claims were limited to the use of antibodies with particular epitope specificity to pituitary hormones for treating clinical abnormalities in vertebrates, and whether the term "fragment" and the appendency of certain claims were sufficiently defined. The court also had to assess if the proposed amendments adequately addressed the previous objections.

The delegate found that the applicant had successfully addressed the issues raised in the previous decision. The amendments to the specification clarified the scope of the claims, ensuring they were limited to the intended use of antibodies and defining the term "fragment". Additionally, the appendency of certain claims was made clear. As a result, the delegate directed the application to sealing, indicating that the patent could proceed to registration.

In conclusion, the delegate's final decision directed the application to sealing, confirming the patent's validity and clarity following the amendments. This decision allowed The Wellcome Foundation Limited to proceed with the registration of its patent for physiologically active compositions.

The Wellcome Foundation Limited v Peptide Technology Limited

CaseChat Overview and Summary

Orders of the court

Background to the litigation

Evidence Before The Court

Reasons for decision

Legal Principle Established