Eli Lilly and Company v Pfizer Research and Development Company NV/SA [2003] FCA 988

Eli Lilly and Company v Pfizer Research and Development Company NV/SA [2003] FCA 988

The amendment to delete claim 9 and amend claim 10 should be granted, as there are no exceptional discretionary factors warranting refusal, delay was understandable, the public interest favours removal of invalid claims, and construction of the patent as at grant will not be affected by the amendment. Costs of the application to amend are to be costs in the cause.

Parties
First Applicant: Eli Lilly and Company; Second Applicant: Eli Lilly Australia Pty Ltd (ACN 000 233 992); Third Applicant: Eli Lilly and Company Limited; Applicant: Bayer Aktiengesellschaft; First Respondent/respondent: Pfizer Ireland Pharmaceuticals; Second Respondent: Pfizer Pty Limited (ACN 008 422 348)
Jurisdiction
Australia
Judgment Date
19 September 2003
Procedural Posture
Application to Amend Patent / Interlocutory, Determination of Amendment Application
Outcome
Application to amend granted
Legal Topics
Patent Amendment, Discretion to Amend Patents, Public Interest in Patent Validity, Costs of Amendment Applications
Intellectual Property Law Patents Patent Amendment Discretion to Amend Patents Public Interest in Patent Validity Costs of Amendment Applications

Case Brief

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Parties

Eli Lilly and Company

First Applicant

Eli Lilly Australia Pty Ltd (ACN 000 233 992)

Second Applicant

Eli Lilly and Company Limited

Third Applicant

Bayer Aktiengesellschaft

Applicant

Pfizer Ireland Pharmaceuticals

First Respondent/respondent

Pfizer Pty Limited (ACN 008 422 348)

Second Respondent

Procedural Posture

Application to Amend Patent / Interlocutory, Determination of Amendment Application

Legal Issues

  1. 1 Whether amendment of Australian Patent No 676571 by deletion of claim 9 and amendment of claim 10 should be allowed
  2. 2 Whether delay by Pfizer in seeking amendment provides a basis for refusing the amendment
  3. 3 Which party should bear the costs of the application to amend

Ratio Decidendi

The amendment to delete claim 9 and amend claim 10 should be granted, as there are no exceptional discretionary factors warranting refusal, delay was understandable, the public interest favours removal of invalid claims, and construction of the patent as at grant will not be affected by the amendment. Costs of the application to amend are to be costs in the cause.

Court Disposition

Application to amend granted

Orders

  • Australian Patent No 676571 be amended by deleting claim 9 and amending claim 10 as set out in the judgment
  • Costs of the application to amend be costs in each cause