ICI Chemicals & Polymers Ltd v Lubrizol Corp Inc [1999] FCA 1636

FEDERAL COURT OF AUSTRALIA

ICI Chemicals & Polymers Ltd v Lubrizol Corp Inc [1999] FCA 1636

ICI CHEMICALS & POLYMERS LTD v LUBRIZOL CORP INC NG190 OF 1997 LUBRIZOL CORP INC v WOOLWORTHS LTD & ORS NG552 OF 1997 EMMETT J 5 NOVEMBER 1999 SYDNEY

IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY

NG 190 OF 1997 BETWEEN: ICI CHEMICALS & POLYMERS LIMITED

Applicant

AND: THE LUBRIZOL CORPORATION INC

Respondent

JUDGE: EMMETT J

DATE OF ORDER: 5 NOVEMBER 1999

WHERE MADE: SYDNEY

THE COURT ORDERS THAT:

1. The Applicant's Application dated 14 March 1997 be dismissed.

THE COURT DIRECTS THAT:

2. Australian Patent Number 638710 be amended as set out in the marked up schedule which is annexed.

3. Further advertisement of the amendments be dispensed with.

THE COURT CERTIFIES THAT:

4. The validity of Claims 1 to 27 of the Respondent's Australian Patent Number 638710, as accepted, was questioned in these proceedings. The challenge was unsuccessful on the following grounds:

(a) whether the alleged invention is not a patentable invention within the meaning of the Patents Act 1990 because the alleged invention is not novel; does not involve an inventive step; is not a manner of manufacture within the meaning of section 6 and is not useful.

(b) whether the patent was obtained on a false suggestion or representation.

The challenge was successful in that, in the absence of amendment, there was a failure to comply with section 40(3). The patent as amended under Order 2 above now contains claims 1-20 and does not fail to comply with section 40(3).

THE COURT FURTHER ORDERS THAT:

5. The Applicant pay the Respondent's costs of the proceedings (including proceedings NG76 of 1997) up to and including 31 March 1999. The Respondent to pay the Applicant's costs of the application to reopen heard on 5 May 1999 and the application for amendment. Costs of today reserved.