FEDERAL COURT OF AUSTRALIA University of Georgia Research Foundation Inc v BioChem Pharma [2001] FCA 688 APPEAL – appeal to the Federal Court – request for amendment to the Application in the Patent Office – application for a stay of the appeal until determination by Patent Office of amendment application Patents Act s 59 In the Matter of I.G. Farbenindustrie A. G.'s Patents [1930]47 RPC 289 UNIVERSITY OF GEORGIA RESEARCH FOUNDATION INC AND EMORY UNIVERSITY v BIOCHEM PHARMA INC N 1277 OF 2000 TAMBERLIN J SYDNEY 8 JUNE 2001 IN THE FEDERAL COURT OF AUSTRALIA NEW SOUTH WALES DISTRICT REGISTRY N1277 OF 2000 BETWEEN: UNIVERSITY OF GEORGIA RESEARCH FOUNDATION INC FIRST APPLICANT EMORY UNIVERSITY SECOND APPLICANT AND: BIOCHEM PHARMA INC RESPONDENT JUDGE: TAMBERLIN J DATE: 8 JUNE 2001 PLACE: SYDNEY REASONS FOR JUDGMENT 1 This Notice of Motion arises in relation to an appeal lodged by the applicants, which I will refer to as ("Emory"), appealing a decision of the Commissioner of Patents given on 8 November 2000 that the opposition of the respondent ("BioChem") pursuant to s 59 of the Patents Act 1990 (Cth)is successful. The decision of the Commissioner was on the basis that claims 1 to 6 of the application were not novel and that the invention lacked an inventive step. On the appeal to this Court the applicants seek an order reversing that decision and an order that the application for the patent should proceed to grant. The Notice of Appeal sets out a number of grounds including grounds relating to novelty, selection and obviousness. 2 By Notice of Contention given pursuant to O 58 r 5A filed on 19 December 2000 BioChem contends that the decision of the Commissioner was correct and relies on findings which could and should have been made in addition to those made by the Commissioner through the Delegate. 3 The Notice of Motion presently before me for decision, filed on 26 February 2001, seeks an order that the appeal proceedings be stayed until a request by Emory dated 7 January 2000 to amend the application is heard and determined by the Australian Patents Office. This motion is opposed. 4 The basis for the stay sought is that what is presently before the Court is an unamended specification. It is said that if BioChem were directed to file evidence in support of its opposition in this Court at this stage, unnecessary time would be spent and expense incurred because, if the amendment were allowed, it may well be necessary to file further evidence in support of the opposition which is the subject of the proceedings. The contention of BioChem is that it is appropriate to have the amendment application finally determined by the Patent Office prior to any order by the Court as to whether the patent application should proceed to grant because there would be no ultimate delay in determination of the appeal as the Court would need to take into account the result of the amendment application. BioChem submits that if the decision of the Commissioner on the amendment were to be the subject of an appeal such appeal could and should be heard concurrently with the appeal before the Court. 5 Accordingly, it is said that the appropriate course is to defer directions as to the filing of evidence by either party until the decision on the amendment application is made by the Commissioner which will make clear the content of the specification. 6 In response, it is submitted for Emory that no stay should be granted pending the determination of the opposition by BioChem to the amendment. I note that there is no dispute raised as to the jurisdiction of the Court to stay the proceedings in the circumstances of this case. 7 Emory submits that the application for deferral is based purely on convenience. Essentially it submits that the opposition proceedings which led to this appeal are in narrow compass, simply involving a discrepancy between the recording of two figures which is said to have arisen as a result of "a clerical error" within the meaning of s 102(3) of the Patent Act 1990 (Cth). That subsection provides an exception to the non-allowance under s 102 of amendments which cause the specification to claim matter not in substance disclosed in the specification as filed. Emory contends that it should be possible for BioChem to prepare its evidence taking into account both the unamended and amended specifications and it would therefore not be necessary to file further evidence in the event that the amendment is ultimately allowed. In the alternative, it is said that short supplementary affidavits could if necessary be filed. It is suggested that there is only a "slight possibility" of BioChem filing such evidence and that, in any event, only a small part of its evidence may be later rendered irrelevant and that this is not a sufficient basis on which to stay the proceedings. Emory says that it is entitled to have its appeal heard with due expedition. The submissions of Emory on the motion also seek to canvas the merits of the opposition. 8 I was referred by BioChem to a decision of Maugham J In the Matter of I.G. Farbenindustrie A. G.'s Patents [1930]47 RPC 289 at 322-323 where his Lordship speaking of selection patents said: "Three general propositions may, however, I think, be asserted as true:- First, a selection patent to be valid must be based on some substantial advantage to be secured by the use of the selected members. (The phrase will be understood to include the case of a substantial disadvantage to be thereby avoided.) Secondly, the whole of the selected members must possess the advantage in question. Thirdly, the selection must be in respect of a quality of a special character which can fairly be said to be peculiar to the selected group. … … it is necessary for the patentee to define in clear terms the nature of the characteristic which he alleges to be possessed by the selection for which he claims a monopoly. He has in truth disclosed no invention whatever if he merely says that the selected group possesses advantages. Apart altogether from the question of what is called sufficiency, he must disclose an invention; he fails to do this in the case of a selection for special characteristics, if he does not adequately define them. … in a selection patent the inventive step lies in the selection for a useful and special property or characteristic adequately defined; and this is the proposition which has to be kept in mind in considering the application to amend …" 9 In the present case, which concerns a selection patent, it is essential that the patent which is to be the subject of the opposition should be completely and fairly defined and consistently with this objective, the preferable course, in my view, is for the appeal in this Court to be stayed pending the determination of the application for amendment before the Commissioner for Patents. This accords with the general principle of avoiding a multiplicity of proceedings and the wastage of time and expense which may arise from the presentation and consideration of what may well prove to be irrelevant evidence or material. 10 Accordingly, I am of the view that the appeal should be stayed if BioChem undertakes to prosecute the opposition in a prompt and timely manner so as to avoid any undue delay 11 I am prepared to grant the application for stay if BioChem is prepared to proffer an undertaking to the effect that its opposition to the amendment will be prosecuted in a timely and expeditious manner. 12 At this stage I do not make an order. However, in the event that such an undertaking is provided to the Court, I will make an order staying the appeal until determination of the amendment application. I consider that costs of this application for a stay should follow the ultimate award of costs in the appeal Associate: Dated: 8 June 2001 Counsel for the Applicant: Mr D K Catterns Solicitor for the Applicant: Anderson Legal Counsel for the Respondent: Dr Annabelle Bennett SC Ms Katrina Howard Solicitor for the Respondent: Freehills Date of Hearing: 18 May 2001 Date of Judgment: 8 June 2001