Bristol-Myers Squibb Company v Apotex Pty Ltd [2010] FCA 814

Bristol-Myers Squibb Company v Apotex Pty Ltd [2010] FCA 814

Subject to one reservation regarding proposed claims 33 and 34, the Court found the substantive amendments to be allowable as they did not introduce new matter beyond what was in substance disclosed in the specification as filed, nor did they impermissibly broaden the claims. There was no evidence of undue delay or improper conduct by Otsuka, and full disclosure was made. However, the Court reserved on claims 33 and 34, requiring further submissions as to their compliance with section 102.

Jurisdiction
Australia
Judgment Date
04 August 2010
Procedural Posture
Application to Amend Patent / Interlocutory Judgment on Amendment Application
Outcome
Orders deferred in part; further submissions required on certain claims; matter listed for directions.
Legal Topics
['amendment of Patent Specification' 'patent Claims—clarity and Fair Basis' 'exercise of Judicial Discretion on Amendment' 'validity of Amended Claims']
['intellectual Property Law' 'patent Law'] ['amendment of Patent Specification' 'patent Claims—clarity and Fair Basis' 'exercise of Judicial Discretion on Amendment' 'validity of Amended Claims']

Case Brief

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Procedural Posture

Application to Amend Patent / Interlocutory Judgment on Amendment Application

Legal Issues

  1. 1 ['Whether proposed amendments to the patent specification are allowable under sections 102(1) and 102(2) of the Patents Act 1990 (Cth)' 'Whether the Court should exercise its discretion to allow the amendments sought']

Ratio Decidendi

Subject to one reservation regarding proposed claims 33 and 34, the Court found the substantive amendments to be allowable as they did not introduce new matter beyond what was in substance disclosed in the specification as filed, nor did they impermissibly broaden the claims. There was no evidence of undue delay or improper conduct by Otsuka, and full disclosure was made. However, the Court reserved on claims 33 and 34, requiring further submissions as to their compliance with section 102.

Court Disposition

Orders deferred in part; further submissions required on certain claims; matter listed for directions.

Orders

  • ['The second applicant (Otsuka) is to inform the Associate to Yates J by 4.00 pm on 11 August 2010 if it wishes to be heard further in relation to whether proposed claims 33 and 34 are allowable under s 102 of the Patents Act 1990 (Cth) or if it wishes to propose further limitation of those claims.' 'The matter is...