Apotex Pty Ltd v ICOS Corporation [2017] FCA 466

Apotex Pty Ltd v ICOS Corporation [2017] FCA 466

The amendments to the 946 Patent and 666 Patent were allowed because the proposed amendments were allowable under s 102, ICOS made full disclosure of all relevant matters, there was no unreasonable delay, Apotex had not shown prejudice beyond the possible effect on a ground of invalidity, and the public policy and promise-based objections did not warrant refusal of the discretion under s 105(1). For the 666 Patent, opposition had been withdrawn and the application was prompted by Actavis Group v ICOS without unreasonable delay.

Jurisdiction
Australia
Judgment Date
09 May 2017
Procedural Posture
Patent Proceeding Involving Invalidity Claims, Infringement Cross Claim and Interlocutory Application to Amend Complete Specifications Under S 105(1) of the Patents Act 1990 (cth) / Interlocutory Application for Amendment Before Trial
Outcome
Application to amend allowed; parties to be heard on costs.
Legal Topics
['amendment of Complete Specification' 'discretion Under S 105(1) of the Patents Act 1990 (cth)' 'utility' 'false Suggestion' 'selection Patents' 'delay' 'full Disclosure' 'prejudice']
['intellectual Property' 'patents' 'practice and Procedure'] ['amendment of Complete Specification' 'discretion Under S 105(1) of the Patents Act 1990 (cth)' 'utility' 'false Suggestion' 'selection Patents' 'delay' 'full Disclosure' 'prejudice']

Case Brief

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Procedural Posture

Patent Proceeding Involving Invalidity Claims, Infringement Cross Claim and Interlocutory Application to Amend Complete Specifications Under S 105(1) of the Patents Act 1990 (cth) / Interlocutory Application for Amendment Before Trial

Legal Issues

  1. 1 ['Whether the complete specifications of Australian Patent No. 769946 and Australian Patent No. 773666 should be amended under s 105(1) of the Patents Act 1990 (Cth).' 'Whether ICOS made full disclosure of all relevant matters bearing on the discretion to amend.' 'Whether ICOS unreasonably delayed in seeking amendment of the 946 Patent.' 'Whether public policy or the deletion of promises from the specification of the 946 Patent warranted refusal of the amendment.' 'Whether Apotex would suffer prejudice if the amendments were allowed.']

Ratio Decidendi

The amendments to the 946 Patent and 666 Patent were allowed because the proposed amendments were allowable under s 102, ICOS made full disclosure of all relevant matters, there was no unreasonable delay, Apotex had not shown prejudice beyond the possible effect on a ground of invalidity, and the public policy and promise-based objections did not warrant refusal of the discretion under s 105(1). For the 666 Patent, opposition had been withdrawn and the application was prompted by Actavis Group v ICOS without unreasonable delay.

Court Disposition

Application to amend allowed; parties to be heard on costs.

Orders

  • ["Pursuant to s 105(1) of the Patents Act 1990 (Cth) the complete specification of Australian Patent No. 769946 be amended in accordance with the proposed amendments set out at Annexure 1 to the respondent's interlocutory application dated 11 November 2016." 'Pursuant to s 105(1) of the Patents Act 1990 (Cth) the...