Emory University v Biochem Pharma Inc [1998] FCA 915

FEDERAL COURT OF AUSTRALIA

PATENTS – application for revocation of patent – joinder of parties claiming to be exclusive licensee and sub-licensee – whether parties improperly or unnecessarily joined – meaning of subs 139 (1) of the Patents Act 1990 (Cth) providing that all persons with an interest in the patent "are parties" to revocation proceedings – subsequent discovery that named respondents not licensees – whether respondents should be removed as parties - subsequent discovery of licensee – whether licensee should be joined as a respondent.

PRACTICE AND PROCEDURE – addition and removal of parties – whether licensee of a patent is a proper or necessary party to proceedings for revocation.

Patents Act 1990 (Cth) s 139

Federal Court Rules O 6 rr 8 and 9, O 8, O 58 r 14

Yong Jun Qin v Minister for Immigration and Ethnic Affairs (1997) 75 FCR 155 referred to Pegang Mining Co Ltd v Choong Sam [1969] 2 MLJ 52 applied News Ltd v Australian Rugby Football League Ltd (1996) 64 FCR 410 applied CBS United Kingdom Limited v Charmdale Record Distributors Limited [1980] FSR 289 considered Nomad Films International Pty Ltd v Export Development Grants Board (1986) 6 IPR 321 considered

EMORY UNIVERSITY v BIOCHEM PHARMA INC & Ors

NG 819 of 1997 LINDGREN J SYDNEY 31 JULY 1998

IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY NG 819 of 1997

BETWEEN: EMORY UNIVERSITY

Applicant

AND: BIOCHEM PHARMA INC

First Respondent

GLAXO WELLCOME PLC

Second Respondent

GLAXO WELLCOME AUSTRALIA LTD

Third Respondent

JUDGE: LINDGREN J

DATE OF ORDER: 31 JULY 1998

WHERE MADE: SYDNEY

THE COURT ORDERS THAT: 1. Service on the Second Respondent pursuant to the orders made on 2 October 1997 be set aside. 2. The Second and Third Respondents cease to be parties to the proceeding. 3. Glaxo Group Limited be added as a respondent to the proceeding. 4. The Applicant be granted leave to amend its application and statement of claim in conformity with the foregoing orders and with the Reasons for Judgment of Lindgren J delivered on 31 July 1998. 5. The Applicant be granted leave to serve on Glaxo Group Limited outside the Commonwealth, and in the United Kingdom: (a) the Application; (b) the Amended Statement of Claim; and (c) the Particulars of Invalidity. 6. The First Respondent be granted leave to amend its defence in conformity with the foregoing orders and with the Reasons for Judgment of Lindgren J delivered on 31 July 1998. 7. The proceeding be stood over to 7 August 1998 at 9.30 am for the making of orders as to costs. 8. The parties, by 5.00 pm on 5 August 1998 exchange and supply to the Associate to Lindgren J, written submissions as to costs. Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.