Genetics Institute Inc v Johnson & Johnson [1997] FCA 900

FEDERAL COURT OF AUSTRALIA

INTELLECTUAL PROPERTY - Patents Act 1952 - appeal to Federal Court from decision of Commissioner of Patents - nature of an appeal under s 60(5) - preliminary question to be tried - opposition proceedings - prior claims under s 59(1)(c) - whether deferring of decision to direct grant constitute a refusal under s 60(4). Patents Act 1952, ss 59, 60, 100 and 150 Federal Court Rules, O 29 Acushnet Co v Spalding Australia Pty Ltd (1989 - 1990) 18 IPR 364 GENETICS INSTITUTE, INC v JOHNSON & JOHNSON VG 733 OF 1996 NORTHROP ACJ MELBOURNE 5 SEPTEMBER 1997

IN THE FEDERAL COURT OF AUSTRALIA

VICTORIA DISTRICT REGISTRY VG 733 of 1996

BETWEEN: GENETICS INSTITUTE, INC

Applicant

AND: JOHNSON & JOHNSON

Respondent

court: NORTHROP acJ

place: MELBOURNE

date: 5 september 1997

THE COURT makes the following ORDERS: 1. Order that the question referred to the Court for decision by order of the Court made on 4 April 1997, as subsequently amended, be answered as follows:-

Question: On the hearing of an appeal under subsection 60(5) of the Patents Act 1952, does the Court have power to defer making an order that an application for a patent proceed to grant where, on the facts found, the ground of opposition specified in paragraph 59(1)(c) of the Patents Act has been made out until the claims with the prior priority date have been granted, refused, withdrawn or have lapsed ?

Answer: Yes

2. Costs in the cause. Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

IN THE FEDERAL COURT OF AUSTRALIA

VICTORIA DISTRICT REGISTRY VG 733 of 1996

BETWEEN: GENETICS INSTITUTE, INC

Applicant

AND: JOHNSON & JOHNSON

Respondent

court: NORTHROP ACJ