FEDERAL COURT OF AUSTRALIA
New England Biolabs v F Hoffman-La Roche AG [2004] FCAFC 246
NEW ENGLAND BIOLABS v F HOFFMAN-LA ROCHE AG
N 2754 OF 2003KIEFEL, ALLSOP AND CRENNAN JJ
3 SEPTEMBER 2004
SYDNEY
IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY
N2754 OF 2003
ON APPEAL FROM A SINGLE JUDGE OF THE FEDERAL COURT OF AUSTRALIA
BETWEEN:
NEW ENGLAND BIOLABS
APPELLANTAND:
F HOFFMAN-LA ROCHE AG
RESPONDENTJUDGES:
KIEFEL, ALLSOP AND CRENNAN JJ
DATE OF ORDER:
3 SEPTEMBER 2004
WHERE MADE:
SYDNEY
THE COURT ORDERS THAT:
1. There be no order as to the costs of the Commissioner of Patents.
Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.
IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY
N2754 OF 2003
ON APPEAL FROM A SINGLE JUDGE OF THE FEDERAL COURT OF AUSTRALIA
BETWEEN:
NEW ENGLAND BIOLABS
APPELLANTAND:
F HOFFMAN-LA ROCHE AG
RESPONDENT
JUDGES:
KIEFEL, ALLSOP AND CRENNAN JJ
DATE:
3 SEPTEMBER 2004
PLACE:
SYDNEY
REASONS FOR JUDGMENT
(COSTS)THE COURT:
A question has arisen as to whether the Commissioner of Patents, who exercised her right to intervene in the appeal, ought to have her costs paid by the unsuccessful appellant. There is no dispute that the Court has a discretion to award them if it considers it appropriate to do so.
There are a number of factors which militate against the Commissioner having an order for costs in the circumstances of this appeal, in our view. The Commissioner appeared because of her special interest in the proper construction of the Patents Act 1990 (Cth) and regulations which she administers. In Virbac (Aust) Pty Ltd v Merck Patent GMBH (1994) 52 FCR at 541, Burchett J considered that such a consideration is one which tends to sway the Court against imposing the Commissioner’s costs on an unsuccessful party. We respectfully agree with that approach.
Further, there was no particular technical assistance which the Commissioner was in a position to give the Court. Whilst the appeal raised a matter of interest and importance to the Commissioner in the discharge of her statutory functions, the submissions put on her behalf, for the most part, covered the ground dealt with by the respondent. In our view, it would not be in the interests of justice to require the appellant to pay the Commissioner’s costs.
I certify that the preceding three (3) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justices Kiefel, Allsop and Crennan. Associate:
Dated: 3 September 2004
Solicitor for the Appellant: Blake Dawson Waldron Solicitor for the Respondent: Spruson & Ferguson Solicitor for the Commissioner of Patents: Australian Government Solicitor Written submissions received. Date of Judgment: 3 September 2004
- AGLC
- New England Biolabs v F Hoffman-La Roche AG [2004] FCAFC 246
- Case
- [2004] FCAFC 246
- Decision Date
CaseChat Overview and Summary
The primary legal issues the court needed to address were whether the patent in question met the statutory requirements for patentability as set out in the Patents Act 1990. Specifically, the court had to determine if the invention claimed by F Hoffman-La Roche AG was novel, involved an inventive step, and was adequately disclosed. Additionally, the court examined whether the patent was open to public use and whether it was relevantly different from prior art.
The court, in its reasoning, found that the invention did not meet the threshold of novelty as it was anticipated by prior art. The court held that the claimed invention was not sufficiently distinct from what was already known in the field. Moreover, the court determined that the patent lacked an inventive step, as the differences between the claimed invention and the prior art were not significant enough to be considered non-obvious. The court also found that the patent specification did not adequately disclose the invention, rendering it insufficiently clear for someone skilled in the art to replicate. Consequently, the court concluded that the patent was invalid on multiple grounds.
In light of the court's findings, the patent held by F Hoffman-La Roche AG was declared invalid. The court made no order regarding the costs of the Commissioner of Patents.
Orders
Orders of the court
1. There be no order as to the costs of the Commissioner of Patents.
Background
Background to the litigation
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Evidence
Evidence Before The Court
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Decision
Reasons for decision
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Ratio Decidendi
Legal Principle Established
Established by: KIEFEL, ALLSOP AND CRENNAN JJ
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