Memcor Australia Pty Ltd v GE Betzdearborn Canada Company [2009] FCAFC 163

FEDERAL COURT OF AUSTRALIA

Memcor Australia Pty Ltd v GE Betzdearborn Canada Company [2009] FCAFC 163 PATENTS – application for leave to appeal – divisional application – whether divisional application within the scope of the claims in the parent application Patents Act 1990 (Cth) ss 60(4), 79B(1), 158(2)

Genetics Institute Inc v Kirin-Amgen Inc (1999) 92 FCR 106 MEMCOR AUSTRALIA PTY LTD (ACN 003 581 566) v GE BETZDEARBORN CANADA COMPANY

NSD 547 of 2009

EMMETT, STONE AND BENNETT JJ

20 NOVEMBER 2009

SYDNEY IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY NSD 547 of 2009

GENERAL DIVISION

ON APPEAL FROM THE FEDERAL COURT

BETWEEN: MEMCOR AUSTRALIA PTY LTD (ACN 003 581 566)

Applicant

AND: GE BETZDEARBORN CANADA COMPANY

Respondent

JUDGES: EMMETT, STONE AND BENNETT JJ

DATE OF ORDER: 20 NOVEMBER 2009

WHERE MADE: SYDNEY

THE COURT ORDERS THAT:

1. The application for leave to appeal be dismissed. 2. The applicant pay the respondent's costs of the application. Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules. The text of entered orders can be located using eSearch on the Court's website. IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY NSD 547 of 2009

GENERAL DIVISION

ON APPEAL FROM THE FEDERAL COURT

BETWEEN: MEMCOR AUSTRALIA PTY LTD (ACN 003 581 566)

Applicant

AND: GE BETZDEARBORN CANADA COMPANY

Respondent

JUDGES: EMMETT, STONE AND BENNETT JJ

DATE: 20 NOVEMBER 2009

PLACE: SYDNEY

REASONS FOR JUDGMENT 1 This appeal concerns the operation of s 79B(1) of the Patents Act 1990 (Cth) (the Act) in relation to Patent Application No. 2004203855 (the Divisional Application). Section 79B(1) of the Act relevantly provides that, where at least three months have elapsed since the publication of a notice of acceptance of a patent request and complete patent specification for a standard patent, the applicant under that application may make a further complete application for a patent for an invention: · disclosed in the specification filed in respect of the first application; and · falling within the scope of the claims of that specification. The question is whether the Divisional Application is for a patent for an invention falling within the scope of the claims of accepted complete Patent Application No. 199666528 (the Parent Application). 2 Both the Divisional Application and the Parent Application are entitled: Vertical skein of hollow fiber membranes and method of maintaining clean fiber surfaces. The claimed invention is for use in liquid-liquid micro filtration processes to remove micron, submicron and larger suspended solids, such as organic molecules, emulsified organic liquids and colloidal or suspended solids, usually from water. The specifications for the Divisional Application and the Parent Application are the same except for the claims defining the invention and the consistory clauses. The applicants and the inventors named in both the Divisional Application and the Parent Application are the same. The Parent Application was filed on 8 August 1996 and notice of acceptance was published on 12 March 1997. The Divisional Application was filed on 12 August 2004 and notice of acceptance was published on 29 June 2006. 3 The grant of a patent pursuant to the Divisional Application was opposed by the applicant, Memcor Australia Pty Ltd (Memcor). Memcor relied on numerous grounds of opposition, all of which were rejected by a delegate of the Commissioner of Patents in a decision published on 5 June 2008. Memcor appealed from the decision of the Commissioner's delegate pursuant to s 60(4) of the Act. On 20 May 2009, a judge of the Court dismissed Memcor's appeal. 4 Memcor now applies for leave to appeal pursuant to s 158(2) of the Act. Section 158(2) of the Act imposes a requirement that an appeal may be brought from a decision of a single judge of the Court given on appeal from a decision or direction of the Commissioner in relation to an opposition only with the leave of the Court. 5 The application for leave has been listed before the Full Court for hearing of the application for leave to appeal and, if leave is granted, for hearing of the appeal. Both Memcor and the respondent, GE Betzdearborn Canada Company (GE), filed written submissions and have advanced oral argument both in relation to the question of leave and on the substantive issues that would be raised, if leave were to be granted.