New England Biolabs, Inc v Commissioner of Patents [2001] FCA 1551

FEDERAL COURT OF AUSTRALIA

New England Biolabs, Inc v Commissioner of Patents [2001] FCA 1551 NEW ENGLAND BIOLABS, INC v COMMISSIONER OF PATENTS & ANOR V 910 OF 2000 EMMETT J 27 JULY 2001 SYDNEY

IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY V910 OF 2000

BETWEEN: NEW ENGLAND BIOLABS, INC

APPLICANT

AND: COMMISSIONER OF PATENTS

FIRST RESPONDENT

F. HOFFMANN-LA ROCHE AG

SECOND RESPONDENT

JUDGE: EMMETT J

DATE OF ORDER: 27 JULY 2001

WHERE MADE: SYDNEY

THE COURT ORDERS THAT: 1. The application be dismissed. 2. The applicant pay the respondents' costs up to and including 10 May 2001. 3. There be no other order as to the costs of the proceedings. 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 V910 OF 2000

BETWEEN: NEW ENGLAND BIOLABS, INC

APPLICANT

AND: COMMISSIONER OF PATENTS

FIRST RESPONDENT

F. HOFFMANN-LA ROCHE AG

SECOND RESPONDENT

JUDGE: EMMETT J

DATE: 27 JULY 2001

PLACE: SYDNEY

REASONS FOR JUDGMENT 1 On 27 June 2001, I published my reasons for reaching the conclusion that this application should be dismissed with costs. However, I gave the parties the opportunity of considering my conclusion so that there could be further submissions as to the orders that might be appropriate in the light of the reasons that I then published. 2 The parties are now agreed that it is appropriate that I order that the application be dismissed. However, there has been further debate concerning the question of costs. 3 As I indicated in my earlier reasons, a question arose in the course of the hearing concerning compliance with the Patent Regulations 1991 ("the regulations"). As a result of that issue being raised, an amended application was filed and further submissions were made concerning the question of whether or not there had been compliance with the regulations and what the consequences of any non-compliance would be. 4 There was no further oral hearing, but the matter was dealt with by means of written submissions. Ultimately, as I have indicated, I concluded that, while there was non-compliance with the regulations, that non-compliance did not lead to any invalidity of any decision made by the Commissioner of Patents. Each of the parties therefore has been partly successful in relation to that subsequent series of questions. 5 The applicant, New England Biolabs, Inc ("NEB"), initially asked that there be separate orders for costs in respect of the sub-issues that were subsequently raised, namely the compliance question and the question of the consequence of non‑compliance. That seems to me to be an inappropriate particularisation of costs. It would raise difficulties in terms of allocation and appropriation of costs. However, as I have said, although ultimately NEB failed, both parties were partly successful in terms of the subsequent issues raised. 6 In the circumstances, the appropriate course is simply to make no order as to the costs of all of the issues that were ventilated after the hearing. What I propose is to order the applicant to pay the respondent's costs up to and including 10 May 2001, and make no order as to any further costs in the proceedings. I certify that the preceding six (6) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Emmett .