FEDERAL COURT OF AUSTRALIA
ToolGen Incorporated v Fisher (No 3) [2024] FCA 539
File number: NSD 1909 of 2018 Judgment of: NICHOLAS J Date of judgment: 23 May 2024 Catchwords: PATENTS – application to amend claims following determination of appeal under s 60(4) of the Patents Act 1990 (Cth) (“the Act”) – whether proposed amendments allowable under s 102 of the Act – correction of obvious mistake – discretion
Held: order made pursuant to s 105(1A) of the Act
Legislation: Patents Act 1990 (Cth) ss 40(2), (3), (3A), 102, 105(1A)
Patents Act 1949 (UK) s 31(1)
Cases cited: Bristol-Myers Squibb Co v Apotex Pty Ltd (2010) 87 IPR 516
Cytec Industries Inc. v Nalco Company [2019] FCA 1800
Fina Research SA v Halliburton Energy Services Inc (2003) 127 FCR 561
Holtite Ltd v Jost (Great Britain) Ltd [1979] RPC 81
Les Laboratoires Servier v Apotex Pty Ltd (2016) 247 FCR 61
Meat & Livestock Australia Ltd v Cargill, Inc (No 2) (2019) 139 IPR 47
Neurim Pharmaceuticals (1991) Ltd v Generic Partners Pty Ltd (No 2) (2019) 139 IPR 424
Novartis AG v Arrow Pharmaceuticals Pty Ltd [2020] FCA 139
ToolGen Incorporated v Fisher (No 2) [2023] FCA 794
TA Blanco White, Patents for Inventions, 5th ed. Stevens & Sons, London, 1983
Division: General Division Registry: New South Wales National Practice Area: Intellectual Property Sub-area: Patents and associated Statutes Number of paragraphs: 32 Date of hearing: 10 May 2024 Counsel for the Appellant/Cross-Respondent: Mr T Cordiner KC Solicitor for the Appellant/Cross-Respondent: Jones Day Counsel for the Respondents/ Cross-Appellants: Ms C Cunliffe Solicitor for the Respondents/ Cross-Appellants: Ashurst Australia ORDERS
NSD 1909 of 2018 BETWEEN: TOOLGEN INCORPORATED
Appellant
AND: GRANT FISHER
First Respondent
ACN 004 552 363 PTY LTD
Second Respondent
AND BETWEEN: GRANT FISHER
First Cross-Appellant
ACN 004 552 363 PTY LTD
Second Cross-AppellantAND: TOOLGEN INCORPORATED
Cross-Respondent
ORDER MADE BY:
NICHOLAS J
DATE OF ORDER:
23 MAY 2024
THE COURT ORDERS THAT:
1.The appeal be dismissed.
2.The cross-appeal be allowed.
3.The decision of a Delegate of the Commissioner of Patents in relation to Australian Patent Application No. 2013335451 (“the Patent Application”) given on 18 September 2018 be set aside except insofar as it relates to the costs awarded to the first respondent (the opponent) by the Delegate.
4.The complete specification of the Patent Application be amended pursuant to section 105(1A) of the Patents Act 1990 (Cth) by substituting for the existing claims the amended claims set out in the Annexure to these orders.
5.The Patent Application proceed to grant as amended in accordance with order 4.
6.The appellant pay the respondents’ costs incurred up to and including 16 November 2023 of and incidental to their consideration of the interlocutory application dated 1 September 2023.
7.The appellant serve a copy of these orders on the Commissioner of Patents within 7 days.
Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.
Annexure
REASONS FOR JUDGMENT
NICHOLAS J
BACKGROUND
My reasons for judgment…
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- Case
- [2024] FCA 539
- Decision Date
CaseChat Overview and Summary
The court examined the nature of the proposed amendments and whether they were allowable under the statutory provisions. It considered whether the patentee had discharged the onus of establishing that the amendment should be permitted, taking into account factors such as the timing of the amendment request, the conduct of the patentee, and any detriment to the respondent or the public that might result from the delay in seeking the amendment. The Full Court outlined various considerations pertinent to the exercise of this discretion, emphasizing that the discretion exists for the benefit of the patentee and that unreasonable delay could be a significant factor in refusing the amendment. The court also stressed that the focus should be on the patentee’s conduct rather than the merits of the invention.
Upon reviewing the specific circumstances of the case, the court found that the composite claim indeed contained an obvious mistake that was apparent on the face of the specification. The court concluded that the patentee had failed to promptly seek the amendment and had thereby delayed unreasonably. Consequently, the court exercised its discretion to allow the amendment, setting aside the previous decision of the Delegate of the Commissioner of Patents, with the exception of the costs awarded to the opponent. The court ordered the patent application to proceed to grant with the amended claims as set out in the Annexure to the orders. Additionally, the appellant was required to pay the respondents’ costs incurred up to a specified date and to serve a copy of the orders on the Commissioner of Patents within seven days.
Orders
Orders of the court
1. The appeal be dismissed.
2. The cross-appeal be allowed.
3. The decision of a Delegate of the Commissioner of Patents in relation to Australian Patent Application No. 2013335451 (“the Patent Application”) given on 18 September 2018 be set aside except insofar as it relates to the costs awarded to the first respondent (the opponent) by the Delegate.
4. The complete specification of the Patent Application be amended pursuant to section 105(1A) of the Patents Act 1990 (Cth) by substituting for the existing claims the amended claims set out in the Annexure to these orders.
5. The Patent Application proceed to grant as amended in accordance with order 4.
6. The appellant pay the respondents’ costs incurred up to and including 16 November 2023 of and incidental to their consideration of the interlocutory application dated 1 September 2023.
7. The appellant serve a copy of these orders on the Commissioner of Patents within 7 days.
Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.
Annexure
Background
Background to the litigation
Full text does not contain this section.
Evidence
Evidence Before The Court
Full text does not contain this section.
Decision
Reasons for decision
Full text does not contain this section.
Ratio Decidendi
Legal Principle Established
The Full Court went on at [243] to identify various considerations relevant to the exercise of the discretion as follows:•The discretion exists for the benefit of the patentee.•The onus to establish that amendment should be allowed is on the patentee.•Generally, a permissible amendment (ie one which is permitted under the Act) will be allowed unless there are circumstances which would lead the court to refuse amendment.•The patentee must make full disclosure of all relevant matters.•The Court’s focus is on a patentee’s conduct, not the merit of an invention.•Amendment should be sought promptly and where a patentee delays for an unreasonable period, the patentee has the onus of showing that it delayed on reasonable grounds, such as a belief, on reasonable grounds, that an amendment was not necessary. •Unreasonable delay is a circumstance likely to lead to refusal of the amendment.•In assessing delay, the time when the patentee was unaware and reasonably did not know of the need for amendment is not taken into account. The relevant delay is from when the patentee knows of the likely invalidity, or has its attention drawn to a defect in the patent, or is advised to strengthen the patent by amendment. That is, amendment will not be permitted in cases where a patentee knows or ought to know that amendment should be sought and fails to do so for a substantial period of time. Thus the reasonableness of the conduct of the patentee is a relevant consideration when assessing delay. •Mere delay is not, of itself, sufficient to refuse to exercise the discretion to amend. The fact of delay is, however, relevant to whether the respondent or the general public have suffered detriment.•If a patentee seeks to take unfair advantage of the unamended patent, knowing that it requires amendment, then refusal of the amendment is likely. •The proportionality of the asserted culpability of the patentee as compared with the effect of loss of protection for the invention should be considered. CONSIDERATION I will first consider whether claim 19 when read with claim 10 is affected by an obvious mistake. Looking at the claims in their existing form, as found in the principal judgment, the person skilled in the art would understand claim 10 to describe a system in which the nucleic acid encoding the guide RNA provides the information used to produce the guide RNA in the cell (i.e. in vivo). They would further understand claim 19 to refer to a system in which the guide RNA is produced outside the cell (i.e. in vitro). They would therefore understand that there is a mistake in the composite claim because it uses language from claim 10 to describe a guide RNA produced in vivo and language from claim 19 to describe a guide RNA produced in vitro. The mistake would in my opinion be plainly apparent on the face of the specification when read by the person skilled in the art. I am satisfied that the composite claim is in this respect affected by an obvious error.