Neurim Pharmaceuticals (1991) Ltd v Generic Partners Pty Ltd [2018] FCA 1082

Neurim Pharmaceuticals (1991) Ltd v Generic Partners Pty Ltd [2018] FCA 1082

Neurim had not impliedly waived privilege. It did not rely on, or make any express or implied assertion about, the contents or effect of overseas patent prosecution advice. The overseas communications concerned different patent applications in jurisdictions with materially different laws after the Australian Patent had already been granted, and were not shown to be likely to have affected Neurim's state of mind, or that of a reasonable person in its position, about whether it was necessary or desirable to amend the Australian Patent under s 105 of the Patents Act 1990 (Cth). Nor was there evidence that the documents contained validity advice central to Professor Zisapel's opinion about...

Jurisdiction
Australia
Judgment Date
24 July 2018
Procedural Posture
Patent Infringement Proceeding; Interlocutory Application Challenging Claims for Legal Professional Privilege and Patent Attorney Privilege in Respect of Discovered Documents / Interlocutory Application by the Second Respondent, Supported by the First Respondent, Heard Before the Hearing of the Applicant's Application to Amend the Patent Under S 105(1) of the Patents Act 1990 (cth)
Outcome
The interlocutory application was dismissed and the respondents were ordered to pay the applicant's costs of the interlocutory application.
Legal Topics
['legal Professional Privilege' 'patent Attorney Privilege' 'implied Waiver' 'patent Amendment Under S 105(1) of the Patents Act 1990 (cth)' 'delay in Seeking Patent Amendment' 'discovery']
['patents' 'privilege' 'civil Procedure'] ['legal Professional Privilege' 'patent Attorney Privilege' 'implied Waiver' 'patent Amendment Under S 105(1) of the Patents Act 1990 (cth)' 'delay in Seeking Patent Amendment' 'discovery']

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 Infringement Proceeding; Interlocutory Application Challenging Claims for Legal Professional Privilege and Patent Attorney Privilege in Respect of Discovered Documents / Interlocutory Application by the Second Respondent, Supported by the First Respondent, Heard Before the Hearing of the Applicant's Application to Amend the Patent Under S 105(1) of the Patents Act 1990 (cth)

Legal Issues

  1. 1 ['Whether Neurim had impliedly waived legal professional privilege or patent attorney privilege over communications concerning prosecution of related European and United States patents.' "Whether Neurim's reliance on its reasons for seeking the Australian patent amendments, including alignment with overseas patent claims, was inconsistent with maintaining privilege over overseas advice." "Whether Neurim's pleading and evidence about when it decided, and when a reasonable person in its position would have decided, that amendment was desirable put the contents of privileged communications in issue." "Whether Professor Zisapel's opinion that the Australian Patent was valid gave rise to an implied waiver over overseas patent prosecution advice."]

Ratio Decidendi

Neurim had not impliedly waived privilege. It did not rely on, or make any express or implied assertion about, the contents or effect of overseas patent prosecution advice. The overseas communications concerned different patent applications in jurisdictions with materially different laws after the Australian Patent had already been granted, and were not shown to be likely to have affected Neurim's state of mind, or that of a reasonable person in its position, about whether it was necessary or desirable to amend the Australian Patent under s 105 of the Patents Act 1990 (Cth). Nor was there evidence that the documents contained validity advice central to Professor Zisapel's opinion about...

Court Disposition

The interlocutory application was dismissed and the respondents were ordered to pay the applicant's costs of the interlocutory application.

Orders

  • ['The interlocutory application be dismissed.' "The respondents pay the applicant's costs of the interlocutory application."]