An Australian Federal Court decision provides a reminder to diligently review issued patent claims in view of newly-emerged prior art before filing suit.  Apotex Pty Ltd v Les Laboratoires Servier (No 2) [2009] FCA 1019.

In the suit, there was a corresponding British patent which had been held invalid in view of certain prior art. The competitor of the patentee initiated a revocation action against the Australian patent. Subsequent to the commencement of revocation proceedings in Australia, the patentee sought the permission of the court to amend its claims in order to add narrower claims.

Note, prior to court proceedings commencing, amendments can be made by the patentee as of right, provided that the claims are not broadened, and provided that no new matter is claimed – however, once court proceedings are commenced, amendments can only be made with the consent of the court.

Here, Apotex tried to get Les Laboratoires Servier’s Australian Patent No 2001276418 (AC Patent) declared invalid while Servier tried to amend the AC Patent under s 105(1) of the Patents Act 1990 (Cth) to add an additional set of narrower claims.

Section 105 of the Act confers a discretion on the Court in relation to an application to amend a patent. That is, even if proposed amendments are otherwise allowable under s 102 of the Act, the Court may still refuse to direct the amendments on discretionary grounds. The Court should consider all relevant factors in deciding the exercise of that discretion.

Guidelines identified as relevant to the exercise of discretion:

  • Whether there has been a full disclosure of all relevant matters;
  • Whether the patentee has sought to obtain an unfair advantage from the unamended patent;
  • Whether there has been any unreasonable delay in seeking amendment; and
  • Whether any circumstances arise that would lead the Court to refuse the amendment.

Here, the onus is on the patentee to satisfy the court that the amendments should be allowed. The court is concerned with the conduct of the patentee and not with the merit of the invention:

  • Mere delay does not warrant refusal although the patentee must explain any delay, which should be reasonable;
  • If a patentee becomes aware of the undue breadth of its claims, it must act to amend them without undue delay.

In the case in question, the court refused to exercise the discretionary power to allow the amendment. The two main factors relied upon by the court in not allowing the amendment were (a) delay on the part of the patentee, and (b) the patentee was seeking an unfair advantage by also retaining the original broader claims.

In relation to the second factor, the court noted that the patentee was seeking to add narrower claims which better reflected what was said by the patentee to be the crux of the invention, whilst concurrently maintaining the broader claims which went beyond the scope of the invention as asserted by the patentee.

Servier was clearly aware of the contents of the specification of the AC Patent, its own prior patent (held to anticipate the equivalent patent in the UK and in the Netherlands), the Coquerel reports written by the inventor of the AC Patent and its own prior product. Servier submits that these matters formed no part of its reasons to amend or to pursue amendment. I find that difficult to accept.

Servier had ample opportunity to amend the AC Patent application if it was of the view that it contained additional claimable matter. It litigated the unamended patent in the UK and pursued the grant of the unamended patent in Australia, abandoning the s 104 amendments. Servier has not sufficiently explained why it took this course. At the time of abandoning the s 104 amendments, Servier was aware of the first instance decision in the UK. Servier’s conduct in relation to the amendments disentitles it from presently amending the AC Patent in circumstances where litigation over the validity of that patent with Apotex was in clear prospect and the contest over the patent had already commenced. The lack of forthrightness in providing Servier’s reasons to amend reinforces that conclusion.

Therefore, patentees should carefully review their issued Australian claims whenever new art comes to light, and should seek to diligently make any amendments prior to any court proceedings commencing, if at all possible.

(via Bill Bennett at Pizzeys in Australia)

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