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. Background 2 The Biochem Patent was granted on 5 March 1993. It was granted under the 1990 Act, but upon an application and complete specification made and lodged on 8 February 1990 under the Patents Act 1952 (Cth) ("the 1952 Act"). 3 By notice of motion filed on 7 June 2000, Emory applied pursuant to O 13 r 2 of the Federal Court Rules for leave to amend its Particulars of Invalidity. The amendment would introduce a ground of lack of novelty as follows: "LACK OF NOVELTY 5. The alleged invention as claimed in the FTC Claims is not novel. PARTICULARS 5.1 The alleged invention as claimed in the FTC Claims is not entitled to a priority date earlier than 7 February 1990 because none of the FTC Claims is fairly based on the matter disclosed in the document from which they claim priority being United States Patent USSN 07/308,101. 5.2 The alleged invention as claimed in the FTC Claims is not novel in light of information contained in the specification of Australian Petty Patent (Serial Number 715577) entitled 'Method and Compositions for the Synthesis of BCH-189 and Related Compounds' (Petty Patent). 5.3 The Petty Patent: (a) has a priority date of 1 February 1990; (b) was published on 3 February 2000; and (c) contained the information in its specification on its the filing date and when it was published." The expression "FTC Claims" is defined in the document as being claims 1-5, 8-13, 17-21 and 24-30 of the Biochem Patent. 4 I need not discuss in detail the nature of the invention claimed in Biochem's Patent. It is a chemical compound which is said to have been "effective in the treatment of HIV/AIDS and other diseases as well". It has been designated "3TC", a "shorthand way of describing the chemical structure", and as "BCH-189" by reference to a series of drugs manufactured by Biochem. A development on 3TC has been designated "FTC", which is 3TC with a fluorine substitution. It is this development that is the subject of Emory's Petty Patent referred to in the proposed amended Particulars of Invalidity. 5 Biochem submits that the proposed amendment should not be allowed because the proposed additional ground would be legally unsound and therefore futile. 6 In order to understand the particulars of the alleged lack of novelty and the issues that have arisen for decision, one must bear in mind the following chronological sequence of relevant events: Biochem's Patent (No 630913) 8 February 1989 Priority date (based on US Patent Application 07/308,101) 8 February 1990 Date of filing in Australia 5 March 1993 Date of grant Emory's Patent Application No 658136 ("Emory 1") 1 February 1990 Claimed priority date (based on US Patent Application 473,318) 31 January 1991 Date of filing in Australia as Australian Application 73004/91 – a complete specification under the Patent Co-operation Treaty 6 April 1995 Date of publication of accepted application 19 May 1995 Application opposed 11 December 1995 On or about this date, Emory 2, the subject of Emory's Patent Application No 698859 noted next below, was omitted from the present application for Emory 1 5 August 1999 Decision of delegate of Commissioner of Patents ("the Commissioner") upholding opposition on grounds of "section 40 (fair basis and full description), novelty (claims 25, 28-31 and 37), and obviousness (claims 26 and 27)" (On 26 August 1999, Emory filed a notice of appeal from part of the delegate's decision (commencing proceeding N 842 of 1999 in this Court) and Biochem filed a notice of appeal from another part of the delegate's decision (commencing proceeding N 844 of 1999 in this Court).) Emory's Patent Application No 698859 ("Emory 2") 1 February 1990 Claimed priority date (based on US Patent 473,318) 11 December 1995 Date of filing in Australia as Application 40319/95 (as a "divisional" of 658136 (Emory 1)) 12 November 1998 Date of publication of accepted application 12 February 1999 Application opposed. The opposition is still at the "filing of evidence" stage in the Patents Office Emory's Petty Patent No 715577 ("Emory 3" and "Petty Patent") 1 February 1990 Claimed priority date (based on US Patent Application 473,318) 19 November 1999 Date of filing in Australia as Application AU 59571/91 (as a "divisional" of 698859 (Emory 2)) 3 February 2000 Petty Patent granted. 7 Emory 1 contained 47 claims. Emory asserts that they were for both 3TC and FTC. Emory 2 contains 13 claims. Emory asserts that Emory 2 is a divisional of Emory 1, making only the FTC claims, which were approximately contemporaneously deleted from Emory 1. Emory 3 contains 3 claims. Emory asserts that they repeat claims contained in Emory 2, that Emory 3 is a divisional of Emory 2, and that Emory 3 is for the same invention as Emory 2. 8 There are two steps in Emory's contention. First, Emory contends that Biochem's Patent is not entitled to a priority date earlier than the date of the filing in Australia, that is, 8 February 1990. Secondly, Emory contends that its own Petty Patent granted on 3 February 2000 has a priority date of 1 February 1990, that is, a date seven days earlier than the priority date to which Biochem's Patent is entitled. It is with the legal foundation of this second step that the argument on the motion has been concerned. I am not presently concerned with the question whether Emory 1 was indeed entitled to a priority date of 1 February 1990 based on US Application 473,318, or with questions of comparison of inventions or claims as between Emory 1, Emory 2 or Emory 3, or as between the Biochem Patent and Emory 1, 2 or 3. The question for decision is whether there is a legal basis on which Emory 3 could enjoy the priority date of 1 February 1990. 9 I turn next to the legislative background of the proposed amendment. Section 138 of the Act empowers the Court to revoke a patent, either wholly or so far as it relates to a claim, on one or more of the grounds set out in the section but on no other ground. The ground that is relevant here is that identified in par 138(3)(b): "that the invention is not a patentable invention". Section 18 of the Act defines the concept of a "patentable invention". Relevantly, the invention must be one which, so far as claimed in any claim, when compared with the "prior art base" as it existed before the priority date of that claim, is novel: par 18(1)(b)(i). The expression "prior art base" is defined in Schedule 1 to the Act to mean, relevantly: "(b) in relation to deciding whether an invention is or is not novel: (i) Ľ; (ii) information contained in a published specification filed in respect of a complete application where: (A) if the information is Ľ subject of a claim of the specification, the claim has Ľ a priority date earlier than that of the claim under consideration; and (B) the specification was published after the priority date of the claim under consideration; and (C) the information was contained in the specification on its filing date and when it was published". 10 Although the Biochem Patent was granted under the 1990 Act, it was applied for under the 1952 Act. Subsection 234(5) of the 1990 Act provides that such a patent is not invalid: "so far as the invention is claimed in any claim, on any ground that would not have been available against the … patent … under the 1952 Act." 11 The ground of revocation under the 1952 Act corresponding to the lack of novelty ground under the 1990 Act is that which was contained in par 100(1)(f) of the 1952 Act, which was as follows: "(f) that the invention, so far as claimed in any claim of the complete specification or in the claim of the petty patent specification, as the case may be, is the subject of a valid claim of earlier priority date contained in the complete specification of a standard patent or in the petty patent specification of a petty patent." This "prior claiming" ground under the 1952 Act is narrower than the lack of novelty ground under the 1990 Act: whereas the 1990 Act invites comparison with the whole of the other specification, the 1952 Act invited comparison with only the claims made in it. Biochem objects to Emory's formulation of its proposed additional ground of invalidity in terms of lack of novelty. The parties do not seem to be at issue over the principles that are applicable and senior counsel for Emory has indicated that he is willing to amend. I will return to this issue later. 12 By reason of the expression "earlier priority date contained in the complete specification of a standard patent or in the petty patent specification of a petty patent" in par 100(1)(f) of the 1952 Act, the prior claiming ground was limited by reference to granted standard patents and petty patents. For this reason Emory cannot sustain a claim for revocation of Biochem's Patent on the basis of Emory 2: Emory 2 has not yet been granted. Accordingly, so Emory states, the purpose of Emory 3 was to secure the grant of a patent, which would enable Emory, without the delay that would be caused by opposition to grant, to seek revocation of Biochem's Patent. Emory submits that if, as Biochem would have it, Emory 3 cannot be relied upon, Emory must wait until Emory 2 is granted before it can seek revocation of Biochem's Patent. Thus, according to Emory, the only advantage it derives from the obtaining of the Petty Patent is a temporal one: the avoidance of the delay that would be associated with the opposition to Emory 2 and the resolution of it, which, of course, are not features of the petty patent system. 13 I note, however, that Emory's characterisation of the advantage as merely temporal does not take into account the possibility that its application for the standard patent for Emory 2 will never proceed to grant at all. On the other hand, if the matter fell to be considered under the 1990 Act, Emory would be able to seek revocation on the lack of novelty ground by reference to its pending application in respect of Emory 2 alone. On one view, the obtaining of the Petty Patent can be seen as circumventing a procedural disadvantage which the 1952 Act imposed on Emory. As noted above, Emory accepts that it is otherwise subject to the substantive disadvantage arising from the difference between the notions of "prior claiming" under the 1952 Act as compared with "lack of novelty" under the 1990 Act. 14 Central to the issue debated is subs 39(1) of the 1990 Act which is as follows: "Where a complete patent application is made (but has not lapsed or been refused or withdrawn), the applicant may, in accordance with the regulations, make a further complete application for a standard patent or a petty patent for an invention: (a) disclosed in the specification filed in respect of the first-mentioned application; and (b) where the first-mentioned application is for a standard patent and at least 3 months have elapsed since the publication of a notice of acceptance of the relevant patent request and specification in the Official Journal – falling within the scope of the claims of the accepted specification." 15 The expression "complete patent application" is not defined in Schedule 1 to the Act. That Schedule does, however, contain the following definitions of present relevance: "'complete specification' means a specification filed in respect of a complete patent application"; "'divisional application' means a further application for a patent under section 39"; "'patent application' means an application for a standard patent or an application for a petty patent". 16 Emory submits that the literal terms of subs 39(1) are satisfied in the present case as follows: (a) a "complete patent application" was made when the application for Emory 1 was filed on 31 January 1991 (see the opening words of subs 39(1)); (b) a "further complete application for a standard patent" for an invention disclosed in the specification filed in respect of Emory 1 (Emory 1 was an application for a standard patent and at least three months had elapsed since the publication of the notice of acceptance of the relevant patent request and specification in the Official Journal, and the invention fell within the scope of the claims of the accepted specification for Emory 1) was made when the application for Emory 2 was filed on 11 December 1995 (see pars 39(1)(a) and (b)); (c) the application for Emory 2 was itself, in turn, a "complete patent application" and was made when the application for Emory 2 was filed on 11 December 1995 (see the opening words of subs 39(1)); (d) a "further complete application for a Ľ petty patent" for an invention disclosed in the specification filed in respect of Emory 2 (Emory 2 was an application for a standard patent and at least three months had elapsed since the publication of the notice of acceptance of the relevant patent request and specification in the Official Journal, and the invention fell within the scope of the claims of the accepted specification for Emory 2) was made when the application for Emory 3 was filed on 19 November 1999 (see pars 39(1)(a) and (b)). "Divisionals" out of "divisionals" 17 (I will use such words as "divisional" and "dividing", but, unless the context indicates otherwise, without implying that they indicate the true nature of the legislative provisions with which I am concerned, the text of none of which in fact contains such words.) 18 Biochem submits that s 39 does not permit the making of a divisional application out of a divisional application; in the present case, the application for Emory 3 out of the application for Emory 2. Biochem relies on aspects of the historical background to s 39 to which I will now refer. 19 The Patents Regulations 1912 provided in reg 11 for the filing of divisional applications in the following terms: "(1) Ľ (2) Where a person making application for a patent has included in his specification more than one invention, the Commissioner may require or allow him to amend such application and specification and drawings or any of them so as to apply to one invention only, and the applicant may make application for a separate patent for any invention excluded by such amendment. (3) Every such last-mentioned application may, if the Commissioner at any time so directs, bear the date of the original application, or such date between the date of the original application and the date of the application in question, as the Commissioner directs, and shall otherwise be proceeded with as a substantive application in the manner prescribed by the Act and by these Regulations." This provision for "division out" addressed the problem that an application for a patent might be for more than one invention, contrary to subs 33(1) of the Patents Act 1903 (Cth), which provided: "An application for a patent shall be for one invention only,Ľ". Similarly, s 65 of the Patents Act 1903 (Cth) stated: "A patent Ľ shall be granted for one invention only but may contain more than one claim". If the applicant of its own volition requested division out, the applicant was required to lodge, not only the application and specification in respect of the divided out invention, but also the necessary proposal to amend the original specification by the deletion from it of that invention. Where division out occurred as a result of official action by the Commissioner, it was a matter for the applicant whether to apply for a separate patent for the divided out invention. 20 In Australian Patents – the Australian Patent System Explained (1949), Examiner H N Walker stated of division out (at 76): "When claims have been so drafted that the Commissioner has notified the applicant that his application for a patent is not for one invention only, the applicant may follow any one of three distinct courses:- (a) Ľ (b) Ľ (c) He may feel that each of the integers is novel and patentable in its own right, and that each is of equal importance to him as the subject of an individual patent. In this case, he will submit an application for permission to divide-out the subject-matter of the separate inventions into separate applications and complete specifications, will lodge a separate application and specification for each of the separate inventions and, in each of these, will request that it be accorded the date of the original application." It seems clear that the purpose of divisionals under the original federal patents régime was to overcome the "plurality of inventions" problem, as an alternative to refusal of an application. 21 Section 51 of the Patents Act 1952 (Cth) (No 42 of 1952) in its original form was as follows: "51(1)A person who has made an application for a patent may, at any time before publication of the complete specification, make one or more further applications in respect of an invention disclosed in the provisional specification or complete specification lodged in respect of the first-mentioned application. (2) An application under the last preceding sub-section shall be accompanied by a complete specification." The section resulted from the Report of the Committee Appointed by the Attorney-General of the Commonwealth to Consider what Alterations are Desirable in The Patent Law of the Commonwealth (1952), which stated in par 61: "We have included in clause 51 provisions enabling the voluntary division of applications. This may be done at the present time under the Regulations, but we consider that it is preferable for this matter to be in the Act." This brief explanation suggests that the purpose of the provision in the 1952 Act was no different from that of reg 11 of the Patents Regulations 1912. The language "one or more further applications in respect of an invention disclosed in … the first-mentioned application" in subs 51(1) is interesting. The plural "applications" coupled with the singular "invention" could be read as referring to a succession of applications in respect of the one invention. I need not, however, arrive at a final view. 22 By the Patents Act 1962 (Cth) (No 84 of 1962), s 51 was repealed and replaced with the following section: "51(1)A person who has made an application for a patent (not being an application that has lapsed or has been refused or withdrawn) may, at any time before the application has been accepted, make one or more further applications in respect of an invention disclosed in the provisional specification or complete specification lodged in respect of the first-mentioned application. (2) A further application may not be made by virtue of the last preceding sub-section– (a) in respect of an invention disclosed in a provisional specification lodged more than twelve months before the date of that application and being an invention that is not disclosed in the complete specification; or (b) in respect of an invention disclosed in a complete specification – after the expiration of twelve months after the complete specification became open to public inspection. (3) An application made by virtue of sub-section (1) of this section shall be accompanied by a complete specification." 23 By the Patents Act 1969 (Cth) (No 34 of 1969), subsection (1) was omitted and replaced by the following: "An applicant for a patent (not being an applicant in respect of an application that has lapsed or has been refused or withdrawn) may, at any time before the application has been accepted, make one or more further applications in respect of an invention disclosed in the provisional specification or complete specification lodged in respect of the first-mentioned application." 24 The history recounted to date does not expose an intention that s 51 of the 1952 Act was to achieve a purpose different from that of the earlier reg 11 of the Patents Regulations 1912. 25 The Patents Amendment Act 1979 (Cth) (No 9 of 1979) introduced the "petty patent" as a form of protection alternative to a "standard patent". It did so by way of amendment of the 1952 Act. It is important to remember that down to this time a divisional application could only be an application for a standard patent which could provoke opposition and consequential delay. Accordingly, it appears that down to this time the only purpose that could be served by a divisional was that of overcoming the plurality of inventions problem. 26 The amending Act of 1979 repealed s 51 and replaced it with the following: "51(1)Subject to sub-sections (2) and (3), an applicant for a standard patent (not being an applicant in respect of an application that has lapsed or has been refused or withdrawn) may, at any time before the application has been accepted, make a further application for a standard patent or for a petty patent, or further applications for standard patents or petty patents, in respect of an invention or inventions disclosed in the provisional specification or complete specification lodged in respect of the first-mentioned application. (2) A further application for a standard patent or petty patent may not be made by virtue of sub-section (1) in respect of an invention disclosed in a provisional specification lodged more than 12 months before the date of the further application unless the invention is disclosed in the complete specification. (3) A further application for a petty patent may not be made by virtue of sub-section (1) in respect of an invention disclosed in a complete specification of an application for a standard patent unless examination of the application for a standard patent and of the complete specification has been requested. (4) An applicant for a standard patent (not being an applicant in respect of an application that has lapsed or has been refused or withdrawn) may, at any time after the application has been accepted and before sealing of a patent on the application, make a further application for a standard patent or a petty patent, or further applications for standard patents or petty patents, in respect of an invention or inventions falling within the scope of the claims of the complete specification that was accepted in respect of the first-mentioned application. (5) An application for a petty patent (not being an applicant in respect of an application that has lapsed or has been refused or withdrawn) may, at any time before the application has been accepted, make a further application for a petty patent or a standard patent, or further applications for petty patents or standard patents, in respect of an invention or inventions disclosed in the petty patent specification lodged in respect of the first-mentioned application. (6) A further application for a standard patent made by virtue of this section shall be accompanied by a complete specification." 27 As introduced in 1979, a petty patent was to be based on only one claim. This aspect of a petty patent, the possibility of making a further application where the "parent" was itself a petty patent, and the breadth of the new provision generally, suggest that the legislature contemplated the possibility of further applications being made in respect of the one and only invention in the original. Emory points to the plural alternative in subs 51(1), "or further applications for standard patents or petty patents, in respect of … inventions", but in my view these words alone are equivocal. They are as apt to refer to the possibility of two or more "horizontal" divisionals arising out of a single application which was for more than two inventions (parent ® children), as they are to refer to "vertical" divisionals (grandparent ® parent ® child). 28 Section 51 of the 1952 Act was further amended by the Statue Law (Miscellaneous Amendments) Act (No 1) 1982 (Cth) (No 26 of 1982). I need not discuss the significance of the amendments at this stage. I will set out the section, indicating the amendments by emphasis: "51(1)Subject to sub-sections (2) and (3), an applicant for a standard patent (not being an applicant in respect of an application that has lapsed or has been refused or withdrawn) may, at any time before the application has been accepted or at any time after the application has been accepted and before the expiration of the period of 3 months after acceptance of the application has been advertised in the Official Journal, make a further application for a standard patent or for a petty patent, or further applications for standard patents or petty patents, in respect of an invention or inventions disclosed in the provisional specification or complete specification lodged in respect of the first-mentioned application. (2) A further application for a standard patent or petty patent may not be made by virtue of sub-section (1) in respect of an invention disclosed in a provisional specification lodged more than 12 months before the date of the further application unless the invention is disclosed in the complete specification. (3) A further application for a petty patent may not be made by virtue of sub-section (1) in respect of an invention disclosed in a complete specification of an application for a standard patent unless examination of the application for a standard patent and of the complete specification has been requested. (4) An applicant for a standard patent (not being an applicant in respect of an application that has lapsed or has been refused or withdrawn) may, at any time after the expiration of the period of 3 months after acceptance of the application has been advertised in the Official Journal and before sealing of a patent on the application, make a further application for a standard patent or a petty patent, or further applications for standard patents or petty patents, in respect of an invention or inventions falling within the scope of the claims of the complete specification that was accepted in respect of the first-mentioned application. (5) An application for a petty patent (not being an applicant in respect of an application that has lapsed or has been refused or withdrawn) may, at any time before the sealing of a petty patent on the application, make a further application for a petty patent or a standard patent, or further applications for petty patents or standard patents, in respect of an invention or inventions disclosed in the petty patent specification lodged in respect of the first-mentioned application. (5A) A patentee of a petty patent may, at any time before the expiration of the period of 3 months after sealing of the petty patent, make an application for a petty patent or a standard patent, or applications for petty patents or standard patents, in respect of an invention or inventions disclosed in the petty patent specification lodged in respect of the application on which the first-mentioned petty patent was sealed. (6) A further application for a standard patent made by virtue of this section shall be accompanied by a complete specification." 29 In October 1979, the then Minister for Productivity, the Hon Ian Macphee MP, referred to the Industrial Property Advisory Committee ("IPAC") the task of reviewing the Australian patent system. The Committee reported on 29 August 1984. Its report, Patents, Innovation and Competition in Australia, recommended "that a petty patent be permitted to include up to 3 claims in dependent form". The Report stated as follows (at 47-48): "A standard patent application may take some years to proceed to grant. Petty patents are therefore sometimes used as a device to obtain protection rapidly for a commercial embodiment of an invention which is broadly claimed in a concurrent standard patent application. This situation arises particularly when a competitor of the applicant is undertaking or seems likely to undertake actions which would infringe the patent if it were granted. In these circumstances there are two techniques which may be adopted. First, some applicants simultaneously lodge standard and petty patent applications for the same invention. Second, there is an increasing practice whereby an applicant for a standard patent files a petty patent application as a divisional application. In either case a petty patent, if granted, may have to be abandoned in order to obtain acceptance of the standard patent application, since Patent Office practice is to object to claims in concurrent applications by the same applicant if those claims have the same priority date and are identical in scope. These techniques, in addition to offering quick protection, enable an applicant to delay a choice between standard and petty patent protection until much later than the application date. That choice would become more important for applicants if our recommendations for a two-tier system were implemented. Ľ [18] WE RECOMMEND – (i) that divisional applications for petty patents not be permitted from standard patent application, and vice versa; (ii) that the provisional specification procedure be available for petty as well as standard patent applications; and (iii) that grant of a standard patent not be permitted where there has previously been granted to the same applicant a petty patent for the same invention and having the same priority date, and vice versa." The Report noted that one member of the Committee dissented from the first and third recommendations and gave his reasons. 30 Importantly, the Government did not accept, relevantly, Recommendation 18(i), giving the following reason: "Since pre-grant opposition is not being abolished (Ľ) divisional applications for petty patents should be permitted for the benefit of applicants needing to take urgent action for infringement." (The IPAC's recommendations and the Government response are conveniently set out in tabular form in Vol 56 (No 47) of The Australian Official Journal of Patents, Trade Marks and Designs of 18 December 1986, and in Lahore, Patents, Trade Marks and Related Rights (loose leaf, vol 1 at [5190], p 5165).) 31 The 1990 Act which commenced on 1 April 1991, was based in large part on the IPAC report of 1984. The Explanatory Memoranda relating to the Patents Bill 1989 and the Patents Bill 1990, stated in relation to clause 39 of those Bills: "This clause has the main effect of allowing an applicant to make separate applications for each of multiple inventions disclosed in a specification, without loss of priority dates. The clause sets out different time constraints for when a divisional application can be made, depending upon the type of application that is being divided from." (my emphasis) Subsection 39(1) was set out earlier. Senior counsel for Emory correctly points out that the expression "the main effect" reserved the possibility that s 39 might have other effects. In my view it is clear, in the light of the historical background that I have outlined, and in particular the Government's non acceptance of IPAC Recommendation 18(i), that at least one other purpose in mind at the time was to allow the obtaining of a petty patent for an invention that was the subject of a pending application for a standard patent, in order to support an infringement action. 32 Just as plurality of inventions had posed a problem for an applicant under the Act of 1903, so it did under the 1952 Act and does under the 1990 Act. Subsection 35(1) of the 1952 Act provided, by virtue of par (b), that an application must be "for one invention only". Similarly, subs 40(4) of the 1990 Act provides that the claim or claims must relate to one invention only. I will now assume, contrary to my view last expressed above, that subs 39(1) cannot properly be invoked to serve any purpose other than that of overcoming the problem of a plurality of inventions. 33 In the absence of any suggestion to the contrary, the following two propositions seem to me consistent with the objective of saving an application in respect of more than one invention from incurable invalidity with consequential loss of priority date. First, if it were discovered that a divisional application was itself in respect of more than one invention, it is consistent with that objective for a second divisional application to be able to be made out of the first one. The first divisional application, like the original application, would have been wrongly made in respect of multiple inventions and so both would have suffered from the same vice. I do not see why the objective mentioned requires that the remedy of division under s 39 be treated as spent, once it is invoked in relation to the original patent. It must be remembered that an application under s 39 is, after all, itself only a specially authorised application under s 29 of the Act. 34 The point can be illustrated. Assume that an application is for inventions A, B and C. Section 39 permits division out of two new applications, one in respect of B and one in respect of C. Now assume that, instead of doing this, the applicant commits either one of two errors. First, the applicant may divide out C alone, failing to appreciate that the original application will still be left as one for multiple inventions, A and B. In my opinion s 39 would permit the applicant, upon appreciating the existence of the problem, to divide out B from A. If the applicant did so, there would have been a second divisional application out of the original, and A, B and C would enjoy the same priority date because they had all been disclosed in the original. The second error is that the applicant may, by a single divisional application, divide out B and C, as if they were a single invention, failing to appreciate that they represent two inventions. In my opinion s 39 would permit the applicant, upon becoming aware of the problem, to divide out C from B. If the applicant did so there would have been a second divisional, this time out of the first divisional, and again, A, B and C would enjoy the same priority date because they had all been disclosed in the original application. It is not obvious why a second divisional should be permissible in the first situation referred to and not in the second. Even the limited objective identified by Biochem in its submissions is served, rather than thwarted, by the construction that I have suggested. 35 The second proposition to which I referred is that consistently with that objective (overcoming the problem of plurality of inventions), it should not invalidate a divisional application that the application out of which it was taken, directly or indirectly, lapses or is refused or withdrawn after the making of that divisional application. The invention the subject of the divisional will, ex hypothesi, have been excised from the original. Accordingly, the original application will not have lapsed or been refused or withdrawn in so far as it was for that excised invention. 36 Consistently with the two propositions mentioned, one would expect that a first divisional and a second one made out of it would enjoy the priority date associated with the original application. Section 65 of the Act provides that the date of a patent is (a) the date of filing of the relevant complete specification, or (b) where the regulations provide for the determination of a different date, the date determined under the regulations. Regulation 6.3(f) provided, until it was replaced on 1 January 2000, that for the purposes of par 65(b) of the Act, the date of a patent was: "in the case of a patent granted on a divisional application – the date of filing of the complete specification in which the invention that is the subject of the application was first disclosed." In the hypothetical circumstances discussed above, the invention the subject of a divisional out of the original application would have been "first disclosed" in the complete specification associated with that original application, and the invention the subject of the second divisional would also have been "first disclosed" in that document. The priority date is determined by the date of first disclosure. If a divisional application (suffering from the plurality of inventions problem) disclosed an invention that had not been disclosed previously, the relevant priority date would be the date of filing of the complete specification of the divisional application. 37 From 1 January 2000, par (f) of reg 6.3 has been as follows: "(f) for a patent granted on a divisional application made under subsection 39 (1) of the Act, the earlier of: (i) the date of the patent of the first-mentioned application referred to in subsection 39(1) of the Act; or (ii) the date that would be the date of the patent if a patent had been granted on that first-mentioned application; or (iii) if that first-mentioned application was itself a divisional application or was amended to be a divisional application before filing the later application – the date that would be the date of the patent if a patent had been granted on the divisional application". 38 In relation to subpar (iii) of the new par (f), Biochem submits as follows: "While subpar (iii) of the new par (f) has no direct application in the present case, it seems to contemplate the existence of divisionals of divisionals. To that extent it is, for the reasons outlined above, inconsistent with its enabling Act. The Governor-General is only permitted to make regulations not inconsistent with the 1990 Act (s 228 of the 1990 Act); as a result reg 6.3(1)(f)(iii) is inconsistent. It goes without saying that a regulation that is inconsistent with the statutory scheme of the act is prima facie invalid: State of NSW v Macquarie Bank Ltd (1992) 30 NSWLR 307 at 329." Biochem submits that s 39 of the Act does not allow the filing of divisionals of divisionals. But it will be clear from what I have said above that according to the scheme of the provisions that I have outlined, and consistently even with a sole purpose of overcoming the problem of plurality of inventions, the Act does allow the filing of a divisional out of a divisional, where the immediate parent divisional is for more than one invention. A divisional for the same invention as the application out of which it is taken 39 The legislative history I recounted earlier is relevant to Biochem's other submission that s 39 does not permit a divisional application to be made, whether for a standard patent or a petty patent, in respect of the very invention the subject of the pending application out of which the divisional is made. 40 It is common ground that the Petty Patent that Emory has obtained is for the same invention as the invention the subject of the Emory 2 application, although, as noted earlier, the complete specification for Emory 2 contains 13 claims, whereas Emory 3 contains only 3 claims – the maximum allowed in the case of a petty patent (par 40(2)(c) of the Act requires a complete specification relating to an application for a petty patent to end with a single claim, or a single independent claim and not more than two dependent claims, defining the invention). Biochem concedes that a practice has developed according to which petty patents are obtained in respect of an invention the subject of a pending application for a standard patent in order to support an action for infringement, but submits that this practice has no basis in s 39. Although Emory did not obtain the Petty Patent to support an action against Biochem for infringement, it obtained it for a purpose that is similar in one respect: the purpose of safeguarding Emory's position pending determination of its application for the standard patent for Emory 2. 41 Biochem suggests that the use of the expression "an invention" in subs 39(1) rather than "the invention" suggests that there must be more than one invention the subject of an application out of which a divisional application is made. I do not accept the submission. A drafter who wished to exclude the possibility contemplated would have adopted a more direct and express means of doing so than the mere use of the expression "an invention". On the other hand, a drafter who intended that divisionals be possible either for one of several inventions, or for the one and only invention, disclosed in the parent application, would have comfortably used the expression "an invention", and would not have thought it necessary to say, for example, "an invention (which may be the only invention)". 42 The background to s 39 to which I referred earlier gives emphasis to the point. The practice of applicants for standard patents under pending applications applying for a divisional petty patent for the same invention was not only countenanced when the 1990 Act was enacted: the Government rejected the IPAC recommendation that the practice be legislated against. Clearly, it was thought that s 39 would support a continuation of the practice. (I do not think it possible to construe s 39 as confined to permitting only the practice that was current at the time of its enactment, that is, the making of divisional applications for petty patents to ground actions for infringements.) 43 There is, moreover, an indication in the terms of par 39(1)(b) itself that a divisional in respect of the only invention disclosed in an application be permitted. It will be recalled that par 39(1)(b) is as follows: "(b) Where the first-mentioned application is for a standard patent and at least 3 months have elapsed since the publication of a notice of acceptance of the relevant patent request and specification in the Official Journal – falling within the scope of the claims of the accepted specification." Section 45 provides that where an applicant asks for an examination of a patent request and complete specification, the Commissioner must examine the request and specification, and report on, inter alia, "whether the specification complies with section 40". Subsection 40(4) provides, as noted earlier, that the claim or claims must relate to one invention only. It follows that s 45 requires the Commissioner to examine the patent request and report on, inter alia, whether the claim or claims relate to one invention only. Subsection 49(5) provides as follows: "Where the Commissioner accepts a patent request and a complete specification relating to an application for a standard patent, the Commissioner must: (a) notify the applicant in writing of the acceptance; and (b) publish a notice of the acceptance in the Official Journal." Unless the Commissioner has reached a wrong conclusion, his published acceptance of an application is an indication that the claim or claims made in the complete specification are for one invention only. Yet par 39(1)(b) contemplates that division out is permissible in respect of just such an application, because it provides for division out after publication of the Commissioner's notice of acceptance of the relevant patent request and specification in the Official Journal. 44 In my view, s 39 permits the making of a further complete application for a standard patent or a petty patent for the one and only invention that is disclosed in the specification filed in respect of an existing complete patent application which has not lapsed or been refused or withdrawn at the time of the making of that further complete application. subversion of time limit for lapsing, and of term of patent 45 Biochem submits that a succession of divisional applications for the same invention could subvert various time limits laid down in the Act, and that s 39 should be construed so as not to permit that possibility. In substance, my view is that if circumstances can be conceived of in which certain of the Act's time limits could be circumvented, this would not persuade me to construe s 39 differently. I would not assume that the drafter of s 39 had the possibility in mind. More importantly, the words of the provision have a plain meaning to which effect must be given. 46 I will outline the parties' submissions on the "subversion of time limits" issue but will not explore it fully because of the view which I have just expressed. Subversion of time limit for lapsing of an application for a standard patent 47 Section 142(2)(e) of the Act provides that a complete application for a standard application lapses if the patent request and complete specification are not accepted within the prescribed period. Regulation 13.4 of the Patents Regulations 1991 prescribes various periods for the purpose. Section 223 of the Act provides for the Commissioner to extend time. An extension may have the effect of extending the lapsing period. Biochem submits that if s 39 permits the filing of a divisional out of a divisional making claims to the same invention as that the subject of the "parent", this régime could be subverted by the use of a chain of divisionals out of divisionals, each filed within the time allowed under s 39 and reg 3.11. Biochem submits that the drafter of s 39 should not be taken to have intended this possibility and that s 39 should be construed so as not to permit it. 48 I am not persuaded by Biochem's submission, which, apparently would apply to a first and only divisional, as well as to a chain of divisionals. Indeed, even a first and only divisional which divided out one of multiple inventions, could "defeat" the lapsing régime as it would otherwise apply to that invention. This would be the case, for example, if an application for a standard patent for inventions A and B was about to lapse when the applicant made a divisional application in respect of A or B. 49 In my view, what I perceive to be the straightforward construction of s 39 should not be distorted by reference to the lapsing provisions mentioned. Subversion of the term of a patent 50 Biochem submits that if the Act permits the filing of a divisional of a divisional where both make claims to the same invention, an applicant could circumvent the standard patent term of twenty years. Biochem illustrates by reference to a divisional petty patent, the term of which runs from the date of sealing (s 68). The term of the divisional petty patent will, it says, presumably expire shortly after the date of the sealing of its immediate parent, that is, shortly after the expiry of the term of its immediate parent. It suggests that further divisional petty patents could be filed similarly, each child having a term expiring shortly after the expiry of its parent's term. Ultimately, so the submission goes, the "youngest" child will have a term that extends beyond the expiry of the term of the original patent (which may be either a standard patent or a petty patent). Biochem submits: "If, as a matter of the application of the rules of priority dates, an expired original application will not ultimately deprive a youngest child of novelty, the term of the patent could, in substance, be extended without limit. If a youngest child, filed after the expiry of the original parent, is deprived of novelty, the applicant could, nonetheless, extend the term of the patent, in substance, by, at least, about the term of a petty patent." 51 In response, Emory submits that the anomaly is not a result of "divisionals of divisionals", and could occur where only one divisional, an application for a petty patent, was divided from an application for a standard patent which had not been granted or refused for some 19 years. Emory submits that the "problem" is in the drafting of s 68 of the Act. Section 68 provides as follows: "The term of a petty patent is: (a) the period of 12 months beginning on the date of sealing of the patent; and (b) if an extension of the term of the patent is granted – an additional period beginning on the day immediately following the end of that 12 months' period and ending at the end of 6 years after the date of the patent." Emory submits that the problem to which Biochem refers would not exist if par (a) were differently drafted. Emory submits that the anomaly has nothing to do with its construction of s 39. 52 Biochem replies that Emory's answer is no answer because "(a) in [Emory's] example, the patentee must rely on opposition, and perhaps appeals, by another party to achieve the 'extended term'; and (b) the fault may lie in the filing of a divisional for the same invention as its parent". 53 Again, I am not persuaded by Biochem's illustration to think that s 39 should be construed otherwise than as I have suggested. It is possible to conceive of circumstances in which the twenty-year monopoly of a standard patent could be, in effect, exceeded. This should be seen to result from a combination of provisions, not from s 39 alone. It should be noted, as well, that once an original application for a standard patent is refused, it is known that an application for revocation of any petty patent for the same invention will succeed. A pleading point – "novelty" and "prior claiming" 54 As noted earlier, Biochem's Patent is not invalid, so far as the invention is claimed in any claim, on any ground that would not have been available against the patent under the 1952 Act. I have also referred earlier to the difference between "lack of novelty" for the purposes of subpar 18(1)(b)(i) of the 1990 Act and "prior claiming" as that notion is defined in par 100(1)(f) of the 1952 Act. It is well established that in order to establish the invalidity of the Biochem Patent, Emory is confined to the elements of lack of novelty under the 1990 Act to the extent that they formed part of the prior claiming ground under the 1952 Act: see NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd (1993) 44 FCR 239 (FC) at 253-254 (per Lockhart J, with whom Northrop J and Burchett J agreed); Alcatel NV v Commissioner of Patents (1996) 68 FCR 8 (Burchett J) at 10-11; Aktiebolaget Hässle v Alphapharm Pty Ltd (1999) 44 IPR 593 (FCA/Lehane J) at 601. The parties do not appear to be in disagreement in this respect. Senior counsel for Emory properly accepts that it is necessary for his particulars of invalidity to assert that the invention, so far as claimed in any claim of the complete specification of the Biochem Patent, is the subject of a valid claim contained in the Emory 3 petty patent specification. 55 Paragraph 5 of the proposed amended particulars of invalidity (set out earlier), by referring without qualification to lack of novelty and "the specification" of the Petty Patent, suggests simply the lack of novelty ground available under the 1990 Act. Emory wishes to have the opportunity to amend further its particulars of invalidity. 56 Since Emory's existing proposed amended particulars of invalidity to which its present motion relates have not yet been filed, the better course seems to be not to permit the filing of the document at all, but to permit Emory the opportunity of preparing a replacement document for consideration by Biochem (in the first instance). With that objective in view, I will not dismiss Emory's motion at this stage but will stand it over to a later date. As well, I will reserve costs. Conclusion 57 I will stand over Emory's motion brought by notice of motion filed on 7 June 2000 to 24 November 2000 and reserve the costs of the motion. On the date mentioned any further draft of Emory's particulars of invalidity will be considered, as will the question of the costs of Emory's motion. 58 I have dealt with the submissions that were put on the hearing of Emory's motion. It seems to me, however, that there may be a further reason, not debated, why Emory should be permitted to introduce the additional ground of invalidity once it is appropriately formulated. This is simply that the Petty Patent exists and there has not yet been an application for the revocation of it. While it exists, it is not easy to see on what basis Emory can be deprived of the opportunity of raising the ground of invalidity in question based on it. I do not, however, decide the motion on this ground in the absence of submissions from the parties. No doubt those submissions would, inter alia, address the limited nature of the grounds of revocation allowed by s 138 of the Act. I certify that the preceding fifty-eight (58) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Lindgren. Associate: Dated: 23 November 2000 Counsel for the Applicant: Mr D K Catterns QC Solicitor for the Applicant: Andersen Legal Counsel for the Respondents: Dr A C Bennett SC and Ms K J Howard Solicitor for the Respondents: Freehills Date of Hearing: 23 August 2000 Date of Judgment: 23 November 2000