Emory University v Biochem Pharmer Inc (No. 2)[2000] FCA 1708

FEDERAL COURT OF AUSTRALIA

Emory University v Biochem Pharma Inc (No 2) [2000] FCA 1708 PATENTS – "divisional applications" under s 39 of the Patents Act 1990 (Cth) – whether there can be a divisional application out of what is already a divisional application – whether a divisional application can be made in respect of the one and only invention the subject of the application out of which it is made. Patents Act 1990 (Cth) s 39 Patents Act 1952 (Cth) s 51

emory university v biochem pharma inc &ANOR

NG 819 of 1997 LINDGREN J

23 NOVEMBER 2000

SYDNEY

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 GROUP LIMITED

SECOND RESPONDENT

JUDGE: LINDGREN J

DATE OF ORDER: 23 NOVEMBER 2000

WHERE MADE: SYDNEY

THE COURT ORDERS THAT: 1. The motion brought by notice of motion filed on 7 June 2000 be stood over to Friday 24 November 2000 at 2.00pm. 2. The costs of the motion be reserved. Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

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 GROUP LIMITED

SECOND RESPONDENT

JUDGE: LINDGREN J

DATE: 23 NOVEMBER 2000

PLACE: SYDNEY

REASONS FOR JUDGMENT (No 2)

Introduction 1 The applicant ("Emory") seeks an order revoking Australian Letters Patent No 630913 in respect of an invention entitled "Substituted 1, 3-Oxathiolanes with Antiviral Properties" ("Biochem's Patent" and "the Biochem Patent") of which the first respondent ("Biochem") is registered as the proprietor under the Patents Act 1990 (Cth) ("the Act" and "the 1990 Act"). I need not discuss the role of the second respondent. Emory wishes, against Biochem's opposition, to amend its Particulars of Invalidity.