'"JUBGMENT No. S44 fu CATCHWORDS PATENTS - pour-on lousicide for sheep - subject of petty patent - claim for infringement of patent - whether petty patent invalid - alleged invalidity on three grounds under Patents Act 1952: invention obvious (s8.100(1)(e)); lacked novelty (s.100(1)(g)) and utility (s.100(1)(h)) - determination of priority date of claim of petty patent - ss.52(1), 45A(2) Patents Act 1952 - whether application for the petty patent is "in respect of an invention...disclosed in" the provisional specification (3.52(1)) and whether the claim of the petty patent specification is "fairly based on matter disclosed in" the provisional specification (s.45A(2)) - whether petty patent gives sufficient instructions as to how mixture is to be made (s.40). Patents Act 1952 $8.35(1)(f)(i)(i1), 38, 39, 40, 45A, 45(2), 51(1), 100(1)(e)(q)(h), 105, 159(1) Stauffer Chemical Co's Application £1977] R.P.C. 33 Ishihara Sangyo Kaisha Ltd v. The Dow Chemical Co. £1987] F.S.R. Tate v. Haskins (1935) 53 C.L.R. 594 F. Hoffman-La Roche & Co. A.G. v. Commissioner of Patents (1971) 123 C.L.R. 529 Imperial Chemical Industries Limited (Clark's) Application (19691 R.P.C. 574 British Druq Houses Ltd's Application £1964] R.P.C. 237 Bailey v. Robertson £18781 3 A.C. 1055 Re Mond Nickel Company Ltd's Application (1956) R.P.C. 189 COOPERS ANIMAL HEALTH AUSTRALIA LIMITED v. WESTERN STOCK DISTRIBUTORS PTY. LIMITED & ORS. NO. G398 OF 1986 CORAM: FOX, BEAUMONT AND SPENDER JJ. 15 OCTOBER 1987 SYDNEY IN THE FEDERAL COURT OF AUSTRALIA NEW SOUTH WALES DISTRICT REGISTRY GENERAL DIVISION ) ) ) No. G398 of 1986 ) ) ON APPEAL from the Honourable Mr Justice Wilcox BETWEEN: COOPERS ANIMAL HEALTH AUSTRALIA LIMITED Appellant AND: WESTERN STOCK DISTRIBUTORS PTY. LIMITED, CETHANA NOMINEES PTY. LIMITED, AUSTRALIAN STOCK DEVELOPMENTS LIMITED Respondents MINUTE OF ORDER JUDGES MAKING ORDER: Fox, Beaumont and Spender JJ. DATE OF ORDER: 15 October 1987 WHERE MADE: Sydney. THE COURT ORDERS THAT: 1. The appeal be dismissed with costs. Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules. IN_THE COURT US IA NEW SOUTH WALES DISTRICT REGISTRY GENERAL DIVISION No. G398 of 1986 weve ON APPEAL from the Honourable Mr Justice Wilcox BETWEEN : COOPERS ANIMAL HEALTH AUSTRALIA LIMITED Appellant AND: WESTERN STOCK DISTRIBUTORS PTY. LIMITED, CETHANA NOMINEES PTY. LIMITED, AUSTRALIAN STOCK DEVELOPMENTS LIMITED Respondents CORAM: FOX, BEAUMONT AND SPENDER JJ. DATE: 15 OCTOBER 1987 REASONS FOR JUDGMENT FOX J. This is an appeal froma decision of a Judqe of this Court (Wilcox J.) given inan application based on an alleced contravention of s.52 of the Trade Practices Act 1974 and ona Closely related alleged infringement of a petty patent. of which the appellant (the applicant below) is the registered owner. As the case developed it has become, before us, wholly one relating to the issue of infringement. The conduct complained of is the marketing of a "pour-on" lousicide for sheep known as "SPURT". SPURT was originally marketed by the first respondent, but its business has since been taken over by the third respondent, which is beneficially owned by the second respondent. SPURT is used in the control of the bitina louse (damalinia ovis), an "ectoparasite" or external parasite which lives on the skin of the sheep. As the name suggests, a ""pour-on" lousicide is applied by pouring a quantity of a liquid formulation on to an area of the back of the sheep. The formulation consists of:- (1) The lousicidal active ingredient; (Li) A "carrier". in which the active ingredient is (usually) dissolved or (sometimes) suspended; (iii) (Sometimes) a coloured marking dye. For reasons which are not completely understood, but which depend on the particular active ingredient and carrier used, a small quantity of the lousicide, applied to only a small part of the skin, may be effective over the whole body of the sheep. The active ingredient of SPURT is cypermethrin. which is one of a qaqroup of compounds known as "pyrethroids". The pyrethroids are synthetic compounds derived from the "pyrethrins", which are obtained from the chrvsanthemum flower. The pyrethrins have insecticidal properties but have the disadvantage for commercial application that they are not "light Stable". i.e. they break down quickly when exposed to light. On the other hand, some of the pyrethroids (which were first synthesized in the 1960s and early 1970s), while retaining insecticidal properties, are light stable. »?t The other ingredients of SPURT are a marking dye, and the solvent diethylene glycol mono-butyl ether, known as "DGBE". SPURT competes with two products marketed by the appellant, known as "CLOUT" and "CLOUT S", which are pour-on sheep lousicides consisting of a pyrethroid known as decamethrin (or deltamethrin), a marking dye and various carriers. It was conceded on behalf of the respondents that the marketing of SPURT would have infringed the appellant's petty patent, but as a defence to the action for infringement it was alleged that the petty patent was invalid: see 3.105 of the Patents Act 1952 ("the Act"). It was said that the petty patent was invalid on three aqrounds: that the invention described therein was obvious ($.100(1)(e)) and lacked novelty (3.100(1)(q)) and utility (s.100(1)(nh)). The relevant provisions of the Act are as follows:- 100.(1) ... a petty patent may be revoked. on one or more of the following grounds, but on no other ground: (e) that the invention, so far as claimed ... in the claim of the petty patent specification, ... was obvious and did not involve an inventive step having regard to what was known or used in Australia on or before the priority date of that claim; (q) that the invention, so far as claimed ... in the claim of the petty patent specification, ... was not novel in Australia on the priority date of that claim: (h) that the invention, so far as claimed ... in the claim of the petty patent specification, ... 13 not useful; The questions of invalidity on the ground of lack of noveltv and obviousness require, as a preliminarv step, the determination of the "priority date" of the claim of the petty patent. Before Wilcox J. a number of dates were advanced as the priority date. These ranged from 17 September 1984, the date of lodgment of the application for the petty patent, back to 21 November 1980, the date of lodgment of a provisional specification for another invention, upon which the claim of the petty patent was said to be "fairly based". The decision of Wilcox J. is now reported (Coopers Animal Health Australia Ltd. v. Western Stock Distributors Pty. Ltd. (1986) 67 A.L.R. 390). His Honour determined the priority date as 17 September 1984, found in favour of the respondents on all three qrounds, and made a declaration that the petty patent was invalid. He also considered the questions of novelty and obviousness on the alternative basis of a priority date of 21 November 1980. Some of his Honour's findings have not been , challenged in the appeal. The submissions contrary to his Honour's findings made on behalf of the appellant are as follows :- l. The priority date was 21 November 1980, not 17 September 1984. 2. As at 21 November 1980. the invention as claimed was not obvious. 3. The invention as claimed does not lack utility. The appellants did not separately raise the question of novelty, because his Honour found that the invention as claimed was novel as at 21 November 1980. However, the respondents filed a notice of contention against this finding. Counsel conceded that the appellant's case had to fail unless it could be established that the earlier priority date was correct. It is convenient to deal first with the submissions and facts relating to the question of priority date. It was submitted on behalf of the appellant that the priority date of the claim of the petty patent was 21 November 1980, being the date of lodgment of a provisional specification in connection with an application for a standard patent ("the provisional specification"). A complete specification was lodged on 30 October 1981, and an amended specification was lodged on 22 December 1982. The standard patent to which the application relates has not yet been sealed, and is indeed the subject of opposition proceedings. Section 51(1) of the Act provides that an applicant for a standard patent may, at any time before the application has been accepted, make a further application for, inter alia, a petty patent, "in respect of an invention or inventions disclosed in the provisional specification or complete specification lodaed in respect of the first-mentioned application." The application for the petty patent in question was lodged on 17 September 1984, together with a petty patent specification. Section 45A of the Act deals with the priority date of the claim of a petty patent specification, the relevant parts of which are as follows:- "45A(1) Subiect to this Act, the priority date of the claim of a petty patent specification is the date of lodqment of the specification. (2) The priority date of the claim of a petty patent specification lodged in respect of a further application for a petty patent made by virtue of section 51, being a claim fairly based on matter disclosed in - (a) Where the original application was an application for a petty patent - the petty patent specification lodged in respect of the original application; or (b) where the original application was an application for a standard patent - the provisional specification or the complete specification lodaed in respect of the original application, is - (c) in a case to which paragraph (a) applies - the date that would have been the priorty date of this claim if the claim were the claim of the petty patent specification referred to in that paraqraph; and (d) in a case to which paragraph (b) applies - (i) if a complete specification was lodged in respect of the application referred to in that paragraph - the date that would have been the priority date of the claim if the claim were a claim of that complete specification; (14) if a complete specification was not lodged in respect of the application referred to in that paragraph - the date that would have been the priority date of the claim if a complete specification had been lodged in respect of that application and the claim were a claim of that complete specification." Section 45 (2) provides as follows:- "45(2) Subtect to sub-section (3), the priority date ofa claim of a complete specification received after a provisional specification, being a claim fairly based on matter disclosed in the provisional specification, is the date of lodgment of that provisional specification." Section 45(3) is not relevant to the present case. Tt follows that the appellant''s submission is correct if the application for the petty patent is "in respect of an invention... disclosed in" the provisional specification (s.52(1)) and the claim of the petty patent specification is "fairly based on matter disclosed in" the provisional specification (s.45A(2)). This test calls on iudqment, but one based ona comparison of documents: Stauffer Chemical Co.'s Application [1977] R.P.C. 33, at 52, 60-1, 63; Ishihara Sangyo Kaisha Ltd. v. The Dow Chemical Co. £1987] F.S.R. 137, at 149. The provisional specification in this case was entitled "Control of Sheep Lice". The specification commenced:- "The present invention relates to a method of controlling the sheep biting louse (Damalinia ovis) particularly on merino sheep." It recited earlier difficulties in controlling sheep lice. and continued: - "The present invention is based on the unexpected discovery that pyrethroids are surprisingly effective in controlling and eradicating lice even on long-woolled merino sheep. Thus, the present invention provides a method of controlling sheep lice, which comprises the application of a pyrethroid onto a localised region of the skin or fleece of a sheep. The localised application is preferably carried out as a pour-on treatment by pouring a liquid formulation comprising the pyrethroid along the back of the sheep. Surprisingly, it is not necessary to totally immerse the sheep in the formulation so that the treatment of large numbers of sheep is facilitated." The specification next turned to the active ingredient, the pyrethroid:- "The pyrethroid is preferably selected from the group of light stable pyrethroids, for example permethrin, decamethrin, cypermethrin, and cyhalothrin. Decamethrin is preferred ..." The formula of decamethrin was set out partly in diagrammatic form. The specification continued:- "Suitably, the formulation contains from 1 to 500, preferably 10 to 250 mg/ml of the pyrethroid. Moreover, the pyrethroid is preferably applied to the sheep in an application of from 1 to 500, preferably 1.5 to 250 mg/kg body weight." The specification then turned to the question of application of the pyrethroid:- "The pyrethroid is preferably applied in the formof a pour-on formulation. The formulation may comprise one or more oraanic solvents, such as xylene, cyclohexanone, or a glycol ether. Suitable alycols and glycol ethers include ethvlene qlycol and propylene glycol, polyethylene qlycols and polypropylene glycols, ethylene glycol - propylene glycol copolymers and alkyl ethers thereof of the general formula ECwhich was set out] have been found to be suitable solvents and the product based thereon to be biologically active." I interpolate that DGBE, which is the carrier used in SPURT and becomes of particular significance, is a qlycol ether, one of the chemicals mentioned above in general terms, and falls within the general formula set out. DGBE is quite distinct from xylene and cyclohexanone. The specification continued:- "Alternatively, the formulation may be an aqueous formulation containing the pyrethroid in the form of a suspension and comprising suitable surfactants to stablise the suspension and prevent undue run-off from the back of the sheep. Paraffin oils, vegetable oils, e.g. corn oil, peanut oil, castor oil, olive oil, can be added as viscosity modifiers and co-solvents. Alkylamides and esters of fatty acids are useful formulation adjuncts..." After setting out some examples of the last~mentioned compounds, the specification proceeded: - "It has been found that the inclusion of 2,6 ditert-butyvl 4 cresol (BHT) has a useful stabilising effect on the active ingredients in formulations based on CDGBE]." The specification then set out the results of a number of tests comparing the effectiveness of pour-on formulations comprising a number of known insecticides in a solvent of xylene, cyclohexanone and corn oil in the control of sheep lice with that achieved by the use of pour-on formulations comprising two pyrethroids, (decamethrin and permethrin), in the same solvent. The specification concluded:- "Suitable formulations are presented in the following Examples. In general, a suitable solvent system contains 0 to 100% by weight xylene, 0 to 100% by weight cyclohexanone, and up to 20% by weight corn oil." Five example formulations expressed in very broad terms were then set out, each with different solvents. In the first exampie the solvent was cyclohexanone, and in the second and third, xvlene, cyclohexanone and corn oil. But the fourth and fifth (as distinct from the first three) contained DGBE:- EXAMPLE 4 Decamethrin 1-50 a/L CDGBEIJ TO 1 litre EXAMPLE 5 Decamethrin 1 - 100 g/L Cyclohexanone 5 - 300 g/L Sudan Red Oil Soluble Dye 500 ppm CDGBEI1 TO 1 litre 10. The invention as claimed in the petty patent specification (entitled "Pour-on formulation") was as follows:- "A pour-on formulation for localised application, which comprises a pyrethroid of the formula Ca formula was set out in part diagramatically] in admixture with a topically acceptable carrier comprising at least 50 wt %* of CDGBE]". The specification commenced:- "The present invention relates to a pour-on formulation, particularly for use on merino sheep." It then discussed the ineffectiveness of traditional methods for the control of ectoparasites, particularly lice, in sheep, and continued: - "The pour-on method of application is known. In this method, a low volume of a concentrated parasiticidal formulation is applied as a line or spot to the head or back of the animal. This qives protection over the whole animal." The specification discussed the advantages of the use of a pour-on, as is used in treating cattle, and the difficulties in developing a pour-on for sheep. It continued:- "The present invention is based on the discovery that a class of known insecticides, the pyrethroids, are surprisingly effective in controlling sheep ectoparasites when applied by the pour-on method .... In particular, the present invention provides an especially advantageous pour-on formulation for localised application A description in the same terms as the claim was then set out. The specification continued by defining and commenting on the principle of "localised application", and then turned to the pyrethroid. It expressed a preference for deltamethrin, but set outa table of other pyrethroids which were regarded as suitable. It proceeded:- ll. "Only small volumes of the pyrethroid-containing formula are applied. Depending on the size of the sheep, the volume applied will generally tie in the range 2 to 15 ml per sheep. Depending on the efficacy of the pyrethroid employed. the formulation qenerally contains from 0.1 to 500. preferablv 1 to 250 ma/ml of the pyrethroid. Moreover. the pyrethroid is preferably applied to the sheep in the application of from 1 to 500. preferably 1.5 to 250, ma/ kq body weiqht. The formulation may be applied to full-woolled or sheared sheep. However, higher doses are required for full-woolled sheep." The specification then set out the other ingredients of the formulation, commencing by saying that DGBE ",.. has been found to be particularly useful. It has minimal adverse effect on the skin in terms of mild epidermal shedding seen with other solvents in some sheep. It also exhibits qood spreading over the skin and fleece of the sheep." The specification then instanced the same viscosity modifiers and co-solvents and formulation adjuncts as were instanced in the provisional specification, and continued: - "Tt has been found that the inclusion of an antioxidant such as 2,6-ditert-butvl-4-cresol (BHT) or 2-tert-butvl-4-methoxvphenol (BHA) has a useful stabilising effect." The specification concluded with the results of comparative tests, three example formulations, and the claim which has already been set out. A problem I find in considering the question lies in the generality, and vagueness. of what is stated in the provisional specification. Doubtless this is in some degree not uncommon. but it is necessary to ascertain therefrom what is the invention disclosed. 12. Section 35(1)(f)(1) of the Act provides that an application for a standard patent shall be accompanied by a complete specification or a provisional specification. Section 39 provides that the provisional specification "shall describe the invention". This is to be contrasted with ss.40(1A) and (2), which provide as follows:- "40(1A) A petty patent specification - (a) shall fully describe the invention, including the best method of performing the invention which is known to the applicant: and (b) shall end with a single claim defining the invention. (2) The claim or claims shall be clear and succinct and shall be fairly based on the matter described in the specification" An invention is to be ""described" in the provisional specification, as opposed to being "fully described" in the petty patent specification and "defined" at the end thereof ina single clain. It was vital under English legislation that the provisional and complete specifications describe the same invention, and if they did not, the patent could be revoked for disconformity: see Tate v. Haskins (1935) 53 C.L.R. 594, at 606-9. This ground is not, as such, available in Australia (see s.159(1)); Tate v. Haskins, supra). Revocation for disconformity has never been part of Australian patent law. Section 51(1) provides that an applicant for a standard patent (as is the case here) may make an application for a petty patent "in respect of an invention or inventions disclosed in the 13. provisional specification". As I have mentioned. s.45A deals with the priority date of the claim of a petty patent and so far as relevant (sub-s.(2)(b)) requires that the petty patent claim be "fairly based on matter disclosed" in the provisional specification. All this provides a rather tortuous path. An analagous situation is dealt with in relation toa _e standard patent in s.45(2). In the Act as it now stands the provisional specification is a way of securing an earlier priority date for the purposes of assessing, inter alia, novelty and obviousness. During the period between lodgqment of the provisional and lodgment of the complete specification the provisional remains unpublished (s.55). If a patent is later qranted, the patentee has no right to sue for infringement during that period (s.67). But the prospective patentee does receive what used to be called "provisional protection": novelty and obviousness are assessed at the date of the lodgment of the provisional, so that, for example, publication by the prospective patentee or others, or developments in the art during that period are no obstacle to the grant of the patent. The phrase "fairly based" is not a term of art (FE. Hoffman-La Roche & Co. A.G. v. Commissioner of Patents (1971) 123 C.L.R. 529 at 538-9; see also the decision in Stauffer Chemical Co.'s Application, supra, at 42, 52, 61). Where the holder of the provisional specification proceeds with a complete specification with a view to the aqrant of a patent, it is recognised that greater definition, as a result of further 14. experimentation or otherwise, may be achieved before the later step is taken and the result expressed therein. Some generality of expression in the provisional specification is accepted. In language which he would not have used asa definition, but is nevertheless a quide, Lloyd-Jacob J. in Imperial Chemical Industries Limited (Clark's) Application C19691 R.P.C. 574 at 583 said of the function of a provisional specification that it is: ",...a description of the qeneral nature of the invention, its field of application and the anticipated result." Blanco White, 4th ed. (1974) says at p.44: "Thus the provisional specification should contain as clear a statement as possible of the principles upon which the success of the invention depends (foreshadowing as far as possible the broader claims) together with discussion of its field of application and some indication of what results the inventor hopes it will achieve. If details of a practical embodiment have been worked out, they should be mentioned - especially if they are ingenious - or the workability of the invention depends on getting them right - but there is no real need for a description that would enable the reader to make the embodiment for himself. The description given of the invention must, it has been said, be fair: but what this means (except perhaps that it must not be deliberately obscure) is not clear." The fact that there may be a further working out of details before the complete specification is lodged does not mean that the provisional specification can always be used as giving a priority date to something which is worked out and contained in the specification. In particular, the selection of one compound with special qualities from a class of compounds disclosed in in the provisional is not permissible for that purpose: Hoffman-La Roche, supra, at 542; British Druq Houses Ltd.'s Application C1964] R.P.C. 237, at 244. 15. A starting point is to ascertain the invention which is "described" in the provisional specification. In the present case, this is a difficult task. It cannot be done with any precision, or certainty. As its heading indicates, the provisional specification deals with a method of control of sheep lice, but clearly it deals to some extent, at least, with approximate formulations which are useful to achieve that control. On the other hand, the petty patent claim deals specifically with a "formulation". It is a formulation which fits the pour-on method using a pyrethroid which is adverted to in the provisional specification but several further matters are to be noted. In the first place, the invention is claimed to be the formulation. That formulation purports to be precise and complete, allowing for the fact that the carrier is to be added. There seem to me to be three points of departure from the provisional specification taken by the invention as claimed in the petty patent specification:- l. It is not expressed to be for use on sheep, but can be understood to apply to other animals as well. 2. It is not expressed to be in relation to lice only, but can be understood to apply to other ectoparasites {e.g.ked, being melophyagus ovinus). 3. It is specific in relation to the use of DGBE, ina 16. stated minimum proportion. as the carrier. The claim does not confine the formulation simply to the eradication of lice in sheep. Construing it by reference to the specification, it relates to ectoparasites generally. One of the species of insects, not being lice, is referred to as the "ked". There is also nothing to confine the use of the formulation to sheep. Although the experimentation described in the petty patent specification was done with sheep, and the discussion is always about sheep, the emphasis is on a pour-on formulation. It is quite possible that in the context, the patent would be regarded as confined to use on sheep, but my view is that the lack of reference to the parasite on the animal is deliberate. and the petty patent would be construed accordingly. The purposes of use are not perhaps of direct relevance in this case, except in showing that the formula is prepared with considerations in mind going beyond those of the provisional specification. It has a wide usefulness. The third matter is more significant. The use of DGBE as part of the carrier, and particularly the proportion in which it is to be used, is not treated as part of the invention claimed in the provisional specification. It is adverted to in a general way in the following passage, it being a glycol ether:- "The pyrethroid is preferably applied in the formof a pour-on formulation. The formulation may comprise one or more organic solvents, such as xylene, cyclohexanone, ora glycol ether." 17. Xvlene and cyclohexanone are mentioned. generally speaking. ina far more favourable liaht. The selection of DGBE. as distinct from other qlycol ethers. onlv appears indirectly from mention of DBGE in the context of stablization with BHT and from two of the sample formulations. Example 4 refers to a formulation based on decamethrin (a pyrethroid) with DGBE as the only solvent. Example 5 also relates to decamethrin, but with three other solvents. of which DGBE 1s one. The proportion of DGBE 1s not the 50% by weight referred to in the petty patent claim. There is no foreshadowing in the provisional of the special advantages which the petty patent specification claims for DGBE as a carrier over the other organic solvents mentioned, xvlene and cyclohexanone, or. indeed, over other qlycol ethers. The patent claim concerning DGBE is not simply a more specific application of what is claimed in the provisional specification. It 1s the result of further experimentation. and can properly be regarded as involving an inventive step. Indeed. the whole product is different from anv which could be regarded as part of an invention disclosed in the provisional specification. It is true that the same chemical names are to be found at one point or another in the provisional specification, but what has since been arrived at. although ina sense derived from various ingredients mentioned in the provisional specification, is itself a special product. A reading, ora study, of the provisional specification would not lead readily, or by a process of selection, to what is set forth in the patent claim. 18. It is recognised in both the provisional specification and in the petty patent documents that the carrier, or solvent, 1s an important factor. A central feature is dissemination of the active ingredient through the wool. I do not think that the integer respecting DGBE is disclosed as part of the invention in the provisional specification or that the claim of the petty patent can in this respect be regarded as fairly based on what 1s disclosed. I have expressed this conclusion in the alternative, but it seems to me that when s.45A refers to matter fairly based on what is is disclosed, the relevant "disclosure" must be of the whole, or part of the description, of the invention. The position is that an essential part of the invention, as claimed in the petty patent, had not been decided upon, and was not stated, at the earlier date, in general or specific terms. As mentioned previously, the two inventions described or claimed were directed at different objects, ome dealing with a method, in which precise ingredients were not perhaps so essential, and the other dealing with the ingredients. I have mentioned three points of departure from the invention described by the provisional and the petty patent clain. Counsel for the appellant submitted that to compare the two inventions in this way was to apply the wrong test, and in substance to import the concept of "disconformity" into Australian patent law. A provisional specification, it was said, may describe one invention for the purposes of s.39, and also disclose other, different, inventions for the purposes of assessing priority dates. I do not think that these submissions 19. assist the appellant in the present case, because even if they are accepted, it seems to me that the matters of departure to which I have referred are not foreshadowed anywhere in the provisional. In any event, however it may be expressed, comparison is necessary. Having these things in mind it seems to me, at least if the formulation as defined in the claim is precise, that the petty patent cannot be said to be fairly based on the provisional specification. I have a further difficulty, because, although the matter was raised by a member of the bench, no argument was addressed to the question of the exactitude of the formula. While at first appearance it may seem to be precise the fact is that there is no statement of the amount of the indicated pyrethroid which is to be used in the formulation, except ina hopelessly broad way. Doubtless with some further directions or indication this could be readily attended to but as the matter stands the formulation is expressed as follows:- "A pyrethroid of Ca specified general] formula... in admixture with a topically acceptable carrier comprising at least 50 wt % of CDGBEJ." As I have said if this were a precise formula or is to be treated as such I would still have no doubt that the claim was not fairly based upon the provisional specification. It is a new invention dealing with a pyrethroid formulation for use against ectoparasites on animals subject to then. If, as seems to me to be the case, the formula is indefinite so that the petty patent does not give sufficient 20. instructions as to how the mixture is to be made. in my opinion it fails. Section 40(1A)(a) provides that a petty patent specification is to "fully describe" the invention. It must also contain a claim "defining" the invention (s.40(1A)(b)), which is to be "clear and succinct" (s.40(2)). Failure of a petty patent specification to comply with s.40 is a ground for revocation (s.100(e)) anda defence inan action for infringement (see 3.105). The same matter can be developed under the ground of inutility (s.100 (h)). It seems to me therefore that whichever way the petty patent is looked at it fails and is not the basis for an action for infringement. The appeal should be dismissed with costs. I certify that this and the nineteen (19) preceding pages are a true copy of the Reasons for Judgment herein of his Honour Mr. Justice Fox. Associate: S [es hna- Date: 15 October 1987 IN THE FEDERAL COURT OF AUSTRALIA ) ) NEW SOUTH WALES DISTRICT REGISTRY ) No. G398 of 1986 ) GENERAL DIVISION ) ON APPEAL FROM A SINGLE JUDGE OF THE FEDERAL COURT OF AUSTRALIA BETWEEN: COOPERS ANIMAL HEALTH AUSTRALIA LIMITED Appellant ND: WESTERN STOCK DISTRIBUTORS PTY. LIMITED CETHANA NOMINEES PTY. LIMITED AUSTRALIAN STOCK DEVELOPMENTS LIMITED Respondents CORAM: Fox, RBeaumont and Spender JJ. DATED: 15 October 1987 PLACE: Sydney REASONS FOR JUDGMENT BEAUMONT J. The appellant, Coopers Animal Health Australia Limited ("Coopers"), has been granted a petty patent in respect of an invention described as a "pour-on formulation" for use, in particular, in controlling sheep lice. The respondents, Western Stock Distributors Pty. Limited, Cethana Nominees Pty. Limited and Australian Stock Developments Limited, have marketed a product known as "Spurt", which is also a pour-on formulation used to control lice on sheep. Coopers, claiming that the manufacture and sale of "Spurt" infringes its patent, sued the respondents alleging that, in selling "Spurt" without disclosina the infringement of its patent, the respondents were engaging in 2. conduct which was misleading or deceptive in contravention of ss.52 and 53(g) of the Trade Practices Act 1974. Coopers applied for injunctions restraining this conduct and also sought to enjoin the alleged infringement of its patent. The real question in the litigation was the validity of the patent. The respondents contended that it was invalid for lack of novelty, for obviousness and for inutility. In upholding their contention, a Judge of the Court ordered the dismissal of Cooper's application, declared the patent invalid and reserved leave to the respondents to apply for revocation of the patent. Coopers now appeals from these orders. On the issues of novelty and obviousness, it was first necessary for his Honour to determine what was the priority date of Cooper's claim of the petty patent. The relevant chronology is as follows: (1) The provisional specification was lodged on 21 November 1980. (2) On 30 October 1981, a complete specification for a standard patent was lodged (it was amended on 22 December 1982). (3) The petty patent specification was not lodged until 17 September 1984. Coopers conceded that it could only succeed on the issues of novelty and obviousness if 1t could establish that the priority date for its petty patent was 21 November 1980, the date of lodgment of the _ provisional specification. The general statutory framework is as follows. An application for a standard patent shall be accompanied by a provisional specification or a complete specification (Patents 3. Act 1952 ("the Act"), s.35(1)(£)(i)); an application for a petty patent shall be accompanied by a petty patent specification (s.35(1)(£)(11)). A specification shall commence with a title indicating the subject matter to which the invention relates (s.38). A provisional specification shall "describe" the invention (s.39). A complete specification (a) shall "fully describe" the invention, including the best method of performing the invention which 1s known to the applicant; and (b) shall end with a single claim "defining" the invention (s.40(1)). The claim or claims shall be "clear and succinct" and shall be "fairly based" on the matter described in the specification (s.40(2)). As has been said, the priority date of Coopers' patent 1s the matter of immediate concern. The priority date of the claim of a petty patent is dealt with by s.45A. Prima facie, the priority date is the date of lodqment of the petty patent specification - in this case 17 September 1984 (s.45A(1)). However, if the claim of a patent is "fairly based on matter disclosed in" the provisional specification, the date of lodgment of that specification - in this case, 21 November 1980 - will be Coopers' priority date (s.45A(2)). Coopers claimed, and the respondents disputed, that its claim for a petty patent was fairly based on the matter disclosed in the provisional. Reference is made, in both specifications, to a solvent system based on diethylene glycol mono-butyl ether ("DGBE"). Shortly stated, the point of departure between the parties 1s the role attributed to DGBE by the provisional on the one hand and the petty patent specification on the other. In order to understand 4. the respective contentions of the parties, 1t will be necessary to refer to Coopers' documents. The provisional specification 1s said to be for an invention entitled "control of sheep lice". It 1s described as follows: "The present invention relates to a method of controlling the sheep biting louse...particularly on merino sheep... [It] 1s based on the unexpected discovery that pyrethroids are surprisingly effective in controlling and eradicating lice even on long-woolled merino sheep. Thus, the present invention provides a method of controlling sheep lice, which comprises the application of a pyrethroid onto a localised region of the skin or fleece of a sheep. The localised application is preferably carried out as a nour-on treatment by pouring a liquid formulation comprising the pyrethroid along the back of the sheep... The pyrethroid is preferably selected from the group of light stable pyrethroids, for example permethrin, Secamethrin, cypermethrin, and cyhalothrin. Necamethrin is preferred and has the following Formula... Suitably, the formulation contains from 1 to 500, preferably 10 to 240 mg/ml of the pyrethroid. Moreover, the pyrethroid is preferably applied to the sheep in an application of from 1 to 500, preferably 1.5 to 250 mg/kg body weight. The pyrethroid is preferably applied in the form of a pour-on formulation. The formulation may comprise one or more organic solvents, such as xylene, cyclohexanone, or a glycol ether. (Emphasis added) Suitable lycols and lycol ethers include ethylene glycol and propylene Ziyeol, polyethylene glycols and polypropylene glycols, ethylene glycol - [certain] ropylene lycol copolymers and alkyl ethers thereof...have been found to be suitable solvents and the product based thereon to be biologically active. (Emphasis added) Alternatively, the formulation may be an aqueous 5. formulation containing the pyrethroid in the form of a suspension and comprising suitable surfactants' to stabilise the suspension and prevent undue run-off from the back of the sheep. Paraffin 011s, vegetable o1ls, e.g. corn o11, peanut oil, castor oil, olive oil, can be added as viscosity modifiers and co-solvents. Alkylamides and esters of fatty acids are useful formulation adjuncts e.g. n-butyl oleate, N, N-dimethyl oleamide and isopropyl myristate. It has been found that the inclusion of 2,6 ditert-butyl 4 cresol (BHT) has a useful stabilising effect on the active ingredients in formulations based on diethylene glycol mono butyl ether. (Emphasis added) The present invention will now be illustrated with reference to comparative tests showing the lack of activity of a large number of conventional insecticides, and with reference to specific examples illustrating the present invention. COMPARATIVE TESTS The effectiveness of a number of known insecticides in controlling sheep lice using pour-on formulations was assessed... All the pour-on treatments were formulated in a solvent system containing xylene, cyclohexanone and corn oil... Treatment According to the Present Invention Permethrin and decamethrin were evaluated in the control of [lice] on sheep, when applied by the pour-on method. Materials and Methods Treatments, with formulations based on a xylene, cyclohexanone, corn oil solvent system were made as follows:- Group 1 decamethrin 10 mg/kg 10 mg/ml formulation Group 2 . 50 mg/kg 50 mg/ml formulation Group 3 permethrin 100 mg/kg 100 mg/ml formulation Group 4 " 250 mg/kq 250 mg/ml formulation Results Suitable formulations are presented in the following Examples. In general, a suitable solvent system contains 0 to 100% by weight xylene, 0 to 100% by weight cyclohexanone, and up to 20% by weight corn oil. EXAMPLE 1 10.1 g decamethrin (989 g active per kg), dissolved in a solvent blend containing: cyclohexanone 100% by weight Sudan Red (oil soluble dye) 50 ppm and volume adjusted to 1 litre EXAMPLE 2 51 q of decamethrin (989 g active constituent per kq) was dissolved in a solvent blend containing: xylene 55% by weight cyclohexanone 30% by weight corn oil 15% by weight Sudan Red (011 soluble dye) 1000 ppm and volume adjusted to 1 litre with the same solvent blend. EXAMPLE 3 10.1 g decamethrin (989 active per kq) dissolved ina solvent blend, containing: xylene 55% by weight cyclohexanone 30% by weight corn oil 15% by weight Sudan Red (Oil soluble dye) 50 ppm and volume adjusted to 1 litre with the same solvent blend. EXAMPLE 4 Decamethrin 1-50 g/L Diethylene glycol mono butyl ether TO 1 litre {Emphasis added] EXAMPLE 5 Decamethrin 1 - 100 g/L Cyclohexanone 5 - 300 g/L Sudan Red 011 Soluble Dye 500 ppm Diethylene glycol mono butyl ether TO 1 litre." {Emphasis added] Turning to the petty patent specification, the invention is there described as "a pour-on formulation, particularly for use on merino sheep", After explaining the difficulties encountered in treating sheep for ectoparasites by traditional methods, the specification proceeds: "The pour-on method of application 1s known. I[n this method, a low volume of a concentrated parasiticidal formulation 1s applied as a line or spot to the head or back of the animal. ... However, attempts by the applicant over a long period to develop a pour-on for sheep have hitherto met with disappointing results. eee a large number of established parasiticides proved ineffective when applied as pour-ons to sheep... The present invention 1s based on the discovery that a_class of known insecticides, the pyrethroids, are surprisingly effective in controlling sheep ectoparasites when applied by the pour-on method. The pyrethroids are synthetic analogues of the naturall occurring pyrethrins and are typically described in British Patent Specification number 1,413,491. [Emphasis added) In particular, the present invention provides an especially advantageous pour-on formulation for localised application, which comprises a_ pyrethroid of the Formuta [there specified] in admixture with a topically acceptable carrier comprising at least 59 wt % of diethylene glycol mono-butyl ether (DGBE) ... [Emphasis added] The localised application is usually carried out by pouring the liquid formulation comprising the pyrethroid along the back of the sheep (i.e. a so-called 'backline' application). Surprisingly, it is not necessary to totally immerse the sheep in the formulation so that the treatment of large numbers of sheep is facilitated. Without wishing to be limited by any theoretical mode of action, it 1s helieved that the pyrethroid acts superficially and is not dermally and systemically absorbed. It 1s surprising that protection over the entire sheep is attainable from a localised application. Deltamethrin (also known as decamethrin) 1s the preferred pyrethroid and 1s a solid under normal conditions. Other pyrethroids are disclosed in Tables I to III [there set out]. The formulae encompass all isomers and mixtures thereof. Depending on the efficacy of the par ticular pyrethroid employed, the formulation generally contains from 0.1 to 500, preferably 1 to 250 mg/ml of the pyrethroid. Moreover, the pyrethroid 1s preferably applied to the sheep in the application of from 1 to 500, preferably 1.5 to 250, mg/kg body weight. Diethylene glycol mono-n-butyl ether (1.e. 2-(2-butoxy-ethoxy)-ethanol) has heen found to he particularly useful. It has minimal adverse effect on the skin in terms of the mild epidermal shedding seen with other solvents in some sheep. It also exhibits good spreading over the skin and fleece of the sheep. [Emphasis added] Paraffin oils, vegetable oils, e.g. corn o11, peanut oil, caster oil, olive oil, can be added as viscosity modifiers and co-solvents. Alkylamides and esters of fatty acids are useful formulation adjuncts e.g. n-butyl oleate, N,N-dimethyl oleamide and isopropyl myristate (IPM). It has been found that the inclusion of an antioxidant such as 2,6-ditert-butyl-4-cresol (BHT) or 2-tert-butyl-4-methoxyphenol (BHA) has a useful stabilising effect. The present invention will now be illustrated with reference to comparative tests showing the lack of activity of a large number of conventional insecticides, and with reference to specific examples 1llustrating the present invention. (I) COMPARATIVE TESTS The effectiveness of a number of known insecticides in controlling sheep lice using pour-on formulations was assessed ... All the pour-on treatments were formulated in a solvent system containing xylene, cyclohexanone and corn oil. A total of 18 groups of lice-infested merino sheep divided into control (1) and treatment aqroups (17) were selected and treated ... No pour-on treatment had any significant effect on existing lice burdens. (II) TREATMENT OF SHEEP WITH PYRETHROIDS A variety of pyrethroids were evaluated in the control of lice and keds on merino sheep, when applied by a liquid pour-on formulation. Tests 2, 3 and 5 include use of formulations according to the present invention, the remaining results are given as background information. Test 1 (xylene-cyclohexanone-corn oil solvent) Test 2 The results of the evaulation of deltamethrin on recently sheared merino sheep using xylene and DGBE-based solvent systems are given [below]... [Emphasis added] The xylene-based solvent system 1s the same as that qiven in Test l. The DGBE-based solvent system had a composition as follows: diethylene glycol mono-n-butyl ether ( DGBE ) 85 wt % isopropyl myristate (IPM) 15 wt % 2,6-ditert-butyl-4-cresol (BHT) 2.5 g/l. [Emphasis added] Test 3 (varying solvent systems) Table 6 gives the results for formulations of deltamethrin in a variety of other solvent systems when applied to recently sheared merino sheep ... Test 4 (varying pyrethroids) ... Test 5 (effect of deltamethrin against keds) The efficacy of deltamethrin against infestations of merino sheep with keds ... was determined by applying 8 ml of deltamethrin in the xylene-based solvent 10. system given in Test 1 as a backline treatment to twenty newly shorn sheep. Twenty further sheep were treated in the same way with deltamethrin in the DGBE-based solvent system given in Test 2. The concentration of deltamethrin was 10 g/l. ... (III) FORMULATIONS ACCORDING TO THE PRESENT INVENTION Example 1 10.1 g of technical deltamethrin (989 g active per kg) was dissolved in a solvent consisting of: diethylene glycol monobutyl ether BHT antioxidant 25090 ppm Sudan Red IV 50 ppm and the volume adjusted to one litre with the same solvent to aive a_ solution containing 10 g/l deltamethrin. [Emphasis added] The antioxidant and Sudan Ped dye are expressed as ppm of the total solvent. Example 2 10.1 gq of technical deltamethrin (989 q active per kq) was dissolved in a solvent blend containing: cyclohexane 50% by weight diethylene glycol monobutyl ether 50% by weight BHT antioxidant 2500 ppm Solvent Blue No. 36 50 ppm and the volume adjusted with the same solvent blend to give a solution containing 10 g/l deltamethrin. [Emphasis added] Example 3 10.1 g of technical deltamethrin (989 g active per kg) was dissolved in a solvent blend containing: diethylene glycol monobutyl ether 85-90% by weight isopropyl myristate 10-15% by weight BHT antioxidant 2500 ppm Sudan Red IV 50 ppm and the volume adjusted with the respective solvent blend to give a solution containing 10 a/t deltamethrin. [Emphasis added] THE CLAIM DEFINING THE INVENTION IS AS FOLLOWS: 1. A pour-on formulation for localised application, which comprises a pyrehtroid of the formula [there set out] in admixture with a topically acceptable ll. carrier comprising at least 50 wt % of diethylene glycol mono-butyl ether." [Emphasis added] The learned primary Judge held that the claim of the petty patent was not fairly based upon the _ provisional specification so that priority date of the patent was 17 September 1984. His Honour reached this conclusion by the following process: (A) It was always fundamental that, although there need not be total conformity between the provisional and the complete specifications, the invention claimed in the complete had to be the same invention as that described in the provisional (see Tate v. Haskins (19325) 53 C.L.R. 594; Bailey v. Roberton [1878] 3 A.C. 1055). (B) In determining whether a complete was fairly based upon a basic (provisional) specification, the answers to the following questions will assist (see Re Mond Nickel Company Ltd.'s Application (1956) R.P.C. 189 per Lloyd-Jacob J. at p.194; F. Hoffman - La Roche & Co. A.G. v. Commissioner of Patents (1971) 123 C.L.R. 529 per Gibbs J. at pp.538-9): (1) Is the alleged invention as claimed broadly (i.e. in a general sense) described in the basic application? (2) Is there anything in the basic application which 1s inconsistent with the alleged invention as claimed? 12. (3) Does the claim include as a characteristic of the invention a feature as to which the hbasic application is wholly silent? (Cc) With respect to question (1), the claim of the petty patent is wider than the provisional: the former claims a monopoly in the use of a particular composition for the control of any ectoparasite on any host; the latter relates specifically to the control of sheep biting louse. (D) With respect to question (3), an essential integer of the claim of the petty patent is the inclusion in the formulation of~ not less than 50 wt% of DGBE. Yet the provisional refers to DGBE only incidentally, in relation to the utility of B.H.T. Further, 1t 1s essential to the petty patent but only "preferable" in the case of the provisional, that there be a "pour-on formulation". There may be a selection from alternatives left open by the provisional but there must not be a fresh inventive step (see Hoffman ~ La Roche, supra, at pp.542-3). Here, the claim of the petty patent 1s wider, extending to any ectoparasite on any animal. Further, the petty patent treats DGBE as necessary and not merely a "particularly useful" carrier. Similarly, in the one case, the use of a pour-on solution 1s merely preferred; in the other, it is essential. Coopers now attacks this reasoning process. It puts the following arguments: (1) A provisional is disclosure ina 13. general way only of the invention in its rough state. Tt 1s not intended to disclose or define the invention in precise terms. Nor 1S 1t necessary to formulate claims in the provisional specification. (2) It is not necessary that a specification, whether provisional or complete, should disclose only one invention. (3) A standard patent may have several claims defining the invention claimed in a variety of ways, both broadly and narrowly. If one claim is invalid, this does not affect the validity of any other claim. Nor can the validity of the claim 1n Sulit depend upon what other claims might have been based on the same disclosure or whether such claims would have been novel. (4) The provisional here gave a general disclosure of the invention claimed and it also specifically disclosed two formulations falling directly within the claim. It matters not that it also disclosed other formulations which could themselves have been the subject of claims. (5) The tests for "fair basis" are satisfied: (a) the claim 1s to a composition and not to a method of use of that composition; 1f a composition broadly described in the provisional is new and useful, it may be claimed; on the issue of "fair basis", 1t 1s irrelevant that the composition has more uses than those disclosed in_ the provisional; (b) it is no part of the function of a provisional to identify in advance which of the integers in the eventual claim will be essential. (6) Thus, the priority date of the claim is 21 November 1980. As Gibbs J. recognised in Hoffman ~- La Roche, (at p.537), the decision of the present point really depends on a comparison between the claims in the petty patent and the matter 14. set out in the provisional. As his Honour also observed (at pp.538-9), whilst investigation of the three questions posed by Lloyd-Jacob J. in Mond Nickel assists the court, the questions are not a substitute for the test laid down by the Act itself, viz. whether the claim in the petty patent is "fairly based" on "matter disclosed in" the provisional. It 18 convenient to proceed, as Gibbs J. did in Hoffman - La Roche (at p.539) hy stages: (1) was the claim based on matter disclosed in the provisional? (2) If so, was it "fairly" so based, in the sense of something "fairly within" or "fairly foreshadowed" by the provisional (see (1971) 123 C.L.R. at p.540), 1.e€. something appearing on a "fair reading" of that specification (at p.541)? It will be recalled that, in the petty patent, the claim defining the invention is - A "pour-on formulation for localised application, which comprises a pyrethroid of [a stated] formula...i1n admixture with a topically acceptable carrier comprising at least 50 wt % of diethylene glycol mono-butyl ether." Was this claim based on matter disclosed earlier? The provisional describes the invention as "a method of controlling the sheep biting louse" based on the unexpected discovery "that pyrethroids are surprisingly" effective for the purpose. The method is said to comprise the application of a pyrethroid onto a localised region; the localised application is preferably carried out by pouring on a liquid formulation comprising the pyrethroid. Decamethrin is the preferred pyrethroid. The pyrethroid is preferably applied in the form of a pour-on formulation which may comprise one or more named organic solvents 15. such as xylene, cyclohexanone or a glycol ether. Suitable glycol ethers include ethylene glycol. Although not then mentioned, it appears that this would include DGBE. The product "based thereon" is said to be "biologically active". Alternatively, the formulation may be an aqueous formulation. As a separate matter, it is indicated that BHT has a useful stabilising effect on the active ingredients in "formulations based on [DGBE]." Suitable formulations are presented in five examples. In general, a suitable solvent system contains O to 100% by weight xylene, 0 to 100% by weight cyclohexanone and up to 20% by weight corn oil. Each of the five examples mentions decamethrin. Four examples ° refer to cyclohexanone. Two specify xylene. Two mention DGBE - in one case in conjunction with cyclohexanone. Whether it 1S appropriate to conclude from the language of the provisional that the claim in the petty patent is based on matter disclosed in the provisional is a question of considerable difficulty. It is true that DGBE 1s mentioned in the provisional on a number of occasions and is specifically picked up in two of the examples. But its mention is not, of course, enough. It must form a basis for the later claim. It 1s by no means apparent that the use of DGBE was the invention, or at least one of the inventions, described in the provisional. A reading of that specification leaves one with the impression that the invention claimed is the "unexpected discovery" that pyrethroids are "surprisingly effective" in controlling lice. It is then suggested that a pour-on treatment 1s "preferable". A number of possible solvents, including but by no means limited to DGBE, are suggested. It is not said that DGBE is an essential ingredient. 16. On the contrary, as has been noted, we are told that "[aiJn general, a suitable solvent system" contains xylene = and cyclohexanone; DGBE is not then mentioned. On the other hand, as Coopers now argue, it 1S open to a party to describe more than one invention in a provisional. Further, the respective functions of the provisional and the complete must be kept steadily in mind: for the purposes of the provisional, it is sufficient to "describe" the invention; by contrast, the complete shall "fully describe" the invention, including its best method of performance and shall end with a single claim "defining" the invention. Yet, taking all these considerations into account, it is still difficult to characterise the claim in the petty patent made in respect of DGBE as "based" on matter disclosed in the provisional. The role attributed to DGBE by the provisional 1s so subsidiary and so incidental to the main thrust and orientation of that specification that one would hesitate to describe 1t as forming a basis for the later claim. But it is unnecessary that I express a concluded view on this aspect. I am prepared to assume, in Coopers' favour, but without deciding, that the claim was, technically speaking, based on that matter. I proceed now to the second question ~- was it "fairly" so based? In my opinion, it was not. The invention claimed in the petty patent is the pour-on formulation comprising a pyrethroid in admixture with a topically acceptable carrier comprising 50 wt % of DGBE. The whole emphasis of the invention claimed has changed from the description in the provisional. 17. There, we are told that the pyrethroid is the essential thing. Its application by a pour-on method is advocated. DGBE 18s mentioned as a possible, but by no means preferred, solvent system. Now, in the petty patent, we are told that the carrier is the thing. This involves a significant point of departure. It 1S not merely a matter of detail or mechanics or even a change of composition. It involves an attempt to place a very different complexion upon the character of the invention. The orientation of the provisional 1s towards the pyrethroid, whereas the petty patent emphasises the carrier, 1.e., the solvent system. The result, in my view, is that even if it were possible to conclude that the claim of the petty patent was, in technical terms, based on matter disclosed in the provisional, it was not "fairly" so based for the purposes of s.45A(2). Put differently, by dealing with DGBE in such an oblique fashion, the provisional tends to conceal the claim later asserted that the invention is the solvent system and not the pyrethroid. Given the minor, inconsequential role attributed to DGBE by the provisional, that specification cannot he said to foreshadow "fairly" the claim later made for DGBE as the key element in the invention. It follows, 1n my view, that the primary Judge correctly held that Coopers' priority date was 17 September 1984. As has been said, Coopers accept that it could succeed on the issues of novelty and obviousness only if it could establish that, by virtue of s.45A(2), 1ts priority date was 21 November 1980. 18. The respondents advanced a number of other arquments in support of the primary Judge's conclusion but, in the circumstances, I need not deal with them. I would dismiss the appeal with costs. I certify that this and the preceding seventeen (17) pages are a true copy of the Reasons for Judgment herein of his Honour Mr. Justice Beaumont. A Fr mashes Associate Counsel and Solicitors for Appellant: Counsel and Solicitors for Respondents: Dates of hearing: Date Judgment Delivered: Dated: 15 October 1987 J. McL. Emmerson Q.C. with D.K. Catterns instructed by Mallesons Stephen Jaques and &- IL. NcCormack T. Simos Q.C. with J.S. Hilton instructed Corser & Corser lo 1, 2, 3, 4, 5 June 1987 15 October 1987 IN THE FEDERAL COURT OF AUSTRALIA ) NEW ES TRICT REGISTRY ) N.S.W. G398 of 1986 GENERAL DIVISION ) ON APPEAL from the Honourable Mr. Justice Wilcox BETWEEN: COOPERS ANIMAL HEALTH AUSTRALIA LIMITED Appellant AND: WESTERN STOCK DISTRIBUTORS PTY. LIMITED, CETHANA NOMINEES PTY. LIMITED, AUSTRALIAN STOCK DEVELOPMENTS LIMITED Respondents CORAM: FOX, BEAUMONT AND SPENDER JJ. DATE: 15 OCTOBER 1987 REASONS FOR JUDGMENT SPENDER J: This is an appeal from the decision of Wilcox J. concerning the validity of a petty patent owned by Coopers Animal Health Australia Limited, and its alleged infringement by the marketing by the respondents of a sheep lousicide known as "SPURT". In that decision (Coopers Animal Health Australia Limited v. Western Stock Distributors Pty. Limited (1986) 67 A.L.R. 390) his Honour determined that the priority date of the claim of the petty patent was 17 November 1984, the date of lodgment of the application for a petty patent, rather than 21 November 1980 as the present appellant contends. The earlier date was the day of lodgment of the provisional specification for another invention; the applicants assert that the petty patent, which they claim the respondents have infringed, was "fairly based" on matter disclosed in that provisional specification. The priority date of the petty patent is crucial, because counsel for the appellant concedes that its case depends on the establishment of the earlier priority date. Whether the claim of the petty patent specification 15 fairly based on matter disclosed in the provisional specification is one of fact, to be determined by a textual comparison of the relevant documents. I have had the advantage of reading, in draft form, the reasons for judgment of Fox J. in this matter, including the detailed comparison he makes between the invention as claimed in the petty patent specification and what is described in the provisional specification. I agree with those reasons and in particular, I share his conclusion that the integer respecting the carrier DGBE was not disclosed as part of the invention described in the provisional specification. The petty patent cannot, in this respect, be regarded as fairly based on what is disclosed in the provisional specification. No basis has been shown for doubting the correctness of the finding by Wilcox J. that the claim of the petty patent was not fairly based on the provisional specification lodged on the 21 November 1980. That conclusion is fatal to the appellant's case. The appeal should be dismissed with costs. | cert.fy that thts and the .4. preceding pages are a truc copy of the reasons for judgment herein of His rT oe , Mr. Justice Spender Peed ee _ « Associate Dated 15 October 1987