Warner-Lambert Company v Dynogen Pharmaceuticals, Inc - [2007] APO 34

ABSTRACTS OF DECISIONS
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No. 779262 in the name of Warner-Lambert Company

Title: Method for the Treatment of Incontinence

Action: Request by Warner-Lambert Company for an Official Direction under Regulation 5.10(1) to file Evidence in Answer and an objection thereto by Dynogen Pharmaceuticals, Inc.

Decision: Issued 2 October 2007.
Abstract

The applicant has sought a direction by the Commissioner under regulation 5.10(1) to extend the time for service of evidence in answer to one month after the final allowance or refusal of the request to amend.
The present opposition is unusual in that the evidence in support has focussed on section 40 issues and the opponent has stressed the importance of these grounds to their case. As a consequence any amendments addressing such issues can only be viewed as being non-trivial in the context of the evidence to be adduced. Evidence in relation to these section 40 matters will also be significant in the context of the opposition being pursued.
The interests of the parties are not entirely at odds. A prima facie consideration of the evidence suggests that the nature of the amendments is such that they are likely to have a significant effect on the type of evidence that needs to be adduced. If this is indeed the case then the parties should be able to focus on the key issues of dispute in the substantive hearing, thereby ensuring a more efficient evidentiary process and hearing. The time taken to file the proposed amendments does appear excessive, but a satisfactory explanation has been provided for the delay.
On balance the direction sought has been considered appropriate under all the circumstances.
Both parties submitted that costs should follow the result, but the opponent further submitted that in view of “the dilatory approach of the applicant to the present proceedings and the consequent offence to the public and private interests in an expeditious manner” the opponent should be awarded costs if their submissions were successful in any of these issues. As the opponent has been unsuccessful in this regard costs in accordance with Schedule 8 have been against the opponent.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No. 779262 by Warner-Lambert Company and Request by Warner-Lambert Company for an Official Direction under Regulation 5.10(1) to file Evidence in Answer and an objection thereto by Dynogen Pharmaceuticals, Inc.

BACKGROUND

Patent application 779262 for an invention titled “Method for the Treatment of Incontinence” was filed on 17 January 2000 in the name of Warner-Lambert Company (hereinafter referred to as the applicant). The application was advertised accepted on 13 January 2005, and a notice of opposition was filed on 13 April 2005 by Dynogen Pharmaceuticals Inc. (hereinafter the opponent). A Statement of Grounds and Particulars (SGP) was served on 13 July 2005 which set out grounds of opposition under manner of manufacture, novelty, inventive step, best method of performance, clarity and fair basis.…

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.

Keep reading for free

Create a free CaseChat account to read Warner-Lambert Company v Dynogen Pharmaceuticals, Inc and more:

Read every judgment in full
Ask AI and get answers linked to paragraphs
See how each paragraph was cited in later cases
Download judgments as PDF or Word

Continue with Google

One click creates your free account or signs you in.

By continuing you agree to the Terms and Privacy Policy.

Details

Case: [2007] APO 34
Decision Date: 2 October 2007

CaseChat Overview and Summary

Warner-Lambert Company filed a patent application for a method of treating incontinence, which was opposed by Dynogen Pharmaceuticals, Inc. The opposition centred around various grounds, including novelty, inventive step, and clarity. Warner-Lambert subsequently sought an extension to file evidence in answer, contingent on the outcome of a request to amend the patent specification. Dynogen objected to this request.

The court had to determine whether the extension was appropriate under Regulation 5.10(1). This regulation allows the Commissioner to direct the conduct of opposition proceedings, including the timing of filing evidence in answer when a request to amend the specification is made. The decision hinged on several factors: the nature of the amendments, any undue delays in proposing the amendments, the interests of the parties, and the nature and significance of the evidence to be adduced.

Warner-Lambert argued that the amendments were non-trivial and necessary to address the grounds of opposition. Dynogen contended that the amendments were trivial and that the delay in filing them was unwarranted. The court found that the amendments were non-trivial as they addressed significant section 40 issues highlighted by the evidence in support. Although the delay in filing the amendments was excessive, the applicant provided a satisfactory explanation due to changes in in-house counsel. The court balanced the interests of both parties and the public interest in expeditious yet thorough proceedings. It concluded that allowing the extension would focus the parties on the key issues, ensuring a more efficient hearing. The court also considered the significant nature of the evidence in support, particularly the section 40 issues, which were central to the opposition.

The court granted the extension under Regulation 5.10(1), allowing Warner-Lambert one month to file evidence in answer after the amendments were allowed or refused. It also awarded costs against Dynogen, as they were unsuccessful in their submissions.

Orders