Apotex Pty Ltd v Les Laboratoires Servier (No 2) [2009] FCA 1019

Apotex Pty Ltd v Les Laboratoires Servier (No 2) [2009] FCA 1019

While the proposed amendments to add claims limited to 'individual needles' are allowable under s 102, Servier's failure to give timely and full disclosure of its reasons for seeking the amendment, combined with its conduct in maintaining broader claims and seeking to gain advantage after adverse UK findings, justify the exercise of the Court's discretion under s 105 to refuse the amendments.

Jurisdiction
Australia
Judgment Date
11 September 2009
Procedural Posture
Patent Amendment Application and Opposition / Judgment on Motion to Amend Patent and Opposition Thereto
Outcome
Application to amend the AC Patent dismissed; costs awarded to applicant (Apotex); costs order stayed until 17 September 2009 at midday.
Legal Topics
['patent Amendment' 'disclosure Requirements' 'fair Basis' 'full and Frank Disclosure' 'judicial Discretion Under Patents Act' 'opposition to Amendment']
['intellectual Property Law'] ['patent Amendment' 'disclosure Requirements' 'fair Basis' 'full and Frank Disclosure' 'judicial Discretion Under Patents Act' 'opposition to Amendment']

Case Brief

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Procedural Posture

Patent Amendment Application and Opposition / Judgment on Motion to Amend Patent and Opposition Thereto

Legal Issues

  1. 1 ['Whether the proposed amendments to the AC Patent are allowable under s 102(1) and s 102(2) of the Patents Act 1990 (Cth)' "Whether the specification provides a real and reasonably clear disclosure of 'individual needles' as part of the invention" 'Whether the Court should exercise its discretion under s 105 to allow or refuse the amendments']

Ratio Decidendi

While the proposed amendments to add claims limited to 'individual needles' are allowable under s 102, Servier's failure to give timely and full disclosure of its reasons for seeking the amendment, combined with its conduct in maintaining broader claims and seeking to gain advantage after adverse UK findings, justify the exercise of the Court's discretion under s 105 to refuse the amendments.

Court Disposition

Application to amend the AC Patent dismissed; costs awarded to applicant (Apotex); costs order stayed until 17 September 2009 at midday.

Orders

  • ['The notice of motion filed by the respondent on 26 May 2008 be dismissed.' "The respondent pay the applicant's costs of the notice of motion." 'Order 2 be stayed until 12:00pm on 17 September 2009.']