Apotex Pty Ltd v Les Laboratoires Servier (No 3) [2014] FCA 1029

Apotex Pty Ltd v Les Laboratoires Servier (No 3) [2014] FCA 1029

Because the amendment power under s 105(1) involves a broad judicial discretion and a patentee seeking its favourable exercise must give full disclosure of all relevant matters, the limited notices to produce should be allowed so that the parties may obtain the evidentiary material they seek for the amendment application, subject to any proper objection. The interlocutory dispute was not the occasion to finally determine whether reliance on any produced material would ultimately be permitted or affect the hearing of the amendment application.

Jurisdiction
Australia
Judgment Date
26 August 2014
Procedural Posture
Patent Proceeding Concerning an Application to Amend a Complete Specification Under S 105 of the Patents Act 1990 (cth) / Interlocutory Dispute About Leave to Issue Notices to Produce in the Amendment Application
Outcome
Leave granted to Apotex and Actavis to serve notices to produce on Servier, subject to any proper objection.
Legal Topics
['amendment of Patent Complete Specification' 'notices to Produce' 'best Method Requirement' 'duty of Candour or Full Disclosure' 'judicial Discretion Under S 105(1) of the Patents Act 1990 (cth)']
['patents' 'civil Procedure'] ['amendment of Patent Complete Specification' 'notices to Produce' 'best Method Requirement' 'duty of Candour or Full Disclosure' 'judicial Discretion Under S 105(1) of the Patents Act 1990 (cth)']

Case Brief

Summary, issues, holding and outcome

More case intelligence is available

Unlock the full research layer for this judgment.

Full judgment text Downloadable case file Legal principles 1 Authorities cited 2 Party arguments 2 Amounts and remedies 1
Sign in to unlock

Procedural Posture

Patent Proceeding Concerning an Application to Amend a Complete Specification Under S 105 of the Patents Act 1990 (cth) / Interlocutory Dispute About Leave to Issue Notices to Produce in the Amendment Application

Legal Issues

  1. 1 ["Whether Apotex and Actavis should be permitted to issue notices to produce requiring Servier to produce material relevant to Servier's application to amend the complete specification under s 105 of the Patents Act 1990 (Cth)." 'Whether the material Servier can be compelled to produce is confined by the issues and findings from the earlier revocation and infringement hearing concerning the 1986 and 1991 methods of salification.' "Whether Servier's duty of candour or full disclosure in seeking a favourable exercise of the discretion under s 105(1) extends to documents about other methods of performing the invention and legal or patent attorney advice concerning insufficiency, lack of best method or amendment."]

Ratio Decidendi

Because the amendment power under s 105(1) involves a broad judicial discretion and a patentee seeking its favourable exercise must give full disclosure of all relevant matters, the limited notices to produce should be allowed so that the parties may obtain the evidentiary material they seek for the amendment application, subject to any proper objection. The interlocutory dispute was not the occasion to finally determine whether reliance on any produced material would ultimately be permitted or affect the hearing of the amendment application.

Court Disposition

Leave granted to Apotex and Actavis to serve notices to produce on Servier, subject to any proper objection.

Orders

  • ['Grant leave to Apotex and Actavis to serve notices to produce on Servier in the form settled during argument.' 'Allow the parties to deal in due course with whatever may flow from any answer to those notices, leaving for later any assessment of how the material may bear on the conduct of the further hearing of the...