FEDERAL COURT OF AUSTRALIA

Joy MM Delaware Inc v Hydramatic Engineering Pty Ltd [2005] FCA 341

INTELLECTUAL PROPERTY – patents – amendment of specification – whether not allowable under s 102

Patents Act 1990 (Cth), ss 102, 105

JOY MM DELAWARE INC v HYDRAMATIC ENGINEERING PTY LTD (ACN 000 596 403)

NSD 265 OF 2004

GYLES J

24 FEBRUARY 2005

SYDNEY

THE COURT ORDERS THAT:

1.         Australian Letters Patent No.727935 be amended by deleting pages 2 to 18 and inserting new pages 2 to 18 in the form of Annexure “A” with amendments as marked up in Annexure “B”. (Annexures omitted)

2.         The costs of and incidental to this motion are not costs in the proceedings.

3.         The applicant is to pay the costs occasioned to the respondent by the amendments.

4.          The applicant is to pay the respondent’s costs of the motion limited to those costs reasonably incurred in forming a position on the motion.

Note:    Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

REASONS FOR JUDGMENT

1                     This is an application for an order directing an amendment to Australian Letters Patent No: 727935, pursuant to s 105 of the Patents Act 1990 (Cth) (the Act).  I am satisfied that the requirements of s 105 have been met.  The formalities have certainly been complied with and I am satisfied that the amendments that are sought are allowable under s 102 of the Act as a matter of substance.

2                     I have been provided with comprehensive written submissions as to both the principles to be applied in a matter of this kind and as to their application in this particular case.  Those submissions have dealt with each of the particular amendments and have sought to demonstrate the application of s 102(3) of the Act, or that, if not, there would be no infraction of subsection (1) or (2).  I am satisfied that in relation to each amendment it is not ‘not allowable’ by reason of the operation of that section.

3                     There is no opposition to this application, it having been advertised in accordance with the section.  The Commissioner does not appear and does not oppose, although there is of course only a power to appear rather than a duty.  I do not see any need to exercise the power to direct an appearance in view of the evidence in this case.

4                     I therefore make order one as sought in the notice of motion.  I order that the costs, of and incidental to this motion are not costs in the proceedings.  There will be no order as to the applicant's costs.  The applicant is to pay the costs occasioned to the respondent by the amendments.  I order that the applicant pay the respondent's costs of the motion limited to those costs reasonably incurred in forming a position on the motion.

Associate:

Dated:              1 April 2005