Neurim Pharmaceuticals (1991) Ltd v Generic Partners Pty Ltd (No 2) [2019] FCA 154

Neurim Pharmaceuticals (1991) Ltd v Generic Partners Pty Ltd (No 2) [2019] FCA 154

The Court allowed the amendments because Neurim had reasonable grounds to believe that claim 1, read in the context of the specification, was directed to one medical use: treatment of lack of restorative sleep in patients suffering from primary insomnia. The prosecution histories in the United States, Canada and Europe did not show that Neurim knew or ought reasonably to have known that the Australian claim was, or might well be, invalid without the proposed non-restorative sleep, melatonin, prolonged release or range limitations. The Court was not satisfied that Neurim had unreasonably delayed, obtained an unfair advantage, or failed to make full and frank disclosure.

Jurisdiction
Australia
Judgment Date
19 February 2019
Procedural Posture
Application by Patentee to Amend Patent Pursuant to S 105(1) of the Patents Act 1990 (cth) in Patent Infringement Proceedings / Interlocutory Application
Outcome
Amendments allowed; applicant ordered to pay the respondents' costs of the interlocutory application.
Legal Topics
['amendment of Patent' 'discretion Under S 105(1) of the Patents Act 1990 (cth)' 'unreasonable Delay' 'full and Frank Disclosure' 'unfair Advantage' 'foreign Prosecution History' 'claim Construction']
['intellectual Property' 'patents'] ['amendment of Patent' 'discretion Under S 105(1) of the Patents Act 1990 (cth)' 'unreasonable Delay' 'full and Frank Disclosure' 'unfair Advantage' 'foreign Prosecution History' 'claim Construction']

Case Brief

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Procedural Posture

Application by Patentee to Amend Patent Pursuant to S 105(1) of the Patents Act 1990 (cth) in Patent Infringement Proceedings / Interlocutory Application

Legal Issues

  1. 1 ['Whether the Court should direct amendment of Australian Patent No 2002326114 pursuant to s 105(1) of the Patents Act 1990 (Cth).' 'Whether Neurim knew or ought reasonably to have known, because of amendments made in the United States, Canada and Europe, that claim 1 needed amendment to avoid invalidity.' 'Whether Neurim unreasonably delayed in seeking the proposed amendments.' 'Whether Neurim failed to make full disclosure of matters relevant to the proposed amendments.' 'Whether Neurim took unfair advantage of the Patent in its unamended form.']

Ratio Decidendi

The Court allowed the amendments because Neurim had reasonable grounds to believe that claim 1, read in the context of the specification, was directed to one medical use: treatment of lack of restorative sleep in patients suffering from primary insomnia. The prosecution histories in the United States, Canada and Europe did not show that Neurim knew or ought reasonably to have known that the Australian claim was, or might well be, invalid without the proposed non-restorative sleep, melatonin, prolonged release or range limitations. The Court was not satisfied that Neurim had unreasonably delayed, obtained an unfair advantage, or failed to make full and frank disclosure.

Court Disposition

Amendments allowed; applicant ordered to pay the respondents' costs of the interlocutory application.

Orders

  • ['Pursuant to s 105(1) of the Patents Act 1990 (Cth), direct that Australian Patent No 2002326114 be amended in the manner set out in Annexure 1 to the applicant\'s "Statement of Grounds in Support of the s 105 Amendments" filed on 1 June 2017.' "The applicant pay the respondents' costs of the interlocutory...