Les Laboratoires Servier v Apotex Pty Ltd [2016] FCAFC 27

Les Laboratoires Servier v Apotex Pty Ltd [2016] FCAFC 27

The Court held that s 40(2)(a) imposes a distinct best method requirement for patent specifications, beyond sufficiency; Servier failed to disclose the best method known to it at the filing date (1986 and 1991 methods), rendering the patent revocable. The Court declined to disturb the primary judge's refusal of amendment, finding no error in the exercise of discretion and no delay or unreasonable conduct of a kind that would warrant granting the amendment. On costs, the Court held the primary judge erred in not applying the guideline of costs following the event; revised orders were made for Servier to pay a proportion of Apotex's and Actavis' costs.

Jurisdiction
Australia
Judgment Date
08 March 2016
Procedural Posture
Patent Revocation and Amendment Appeal / Full Court Appeal; Multiple Appeals From Interlocutory, Amendment, Revocation and Costs Decisions
Outcome
Appeals allowed in part; appeals regarding revocation and amendment dismissed; revised costs orders issued.
Legal Topics
['patents' 'best Method Requirement' 'amendment of Patent' 'costs in Patent Litigation']
['intellectual Property'] ['patents' 'best Method Requirement' 'amendment of Patent' 'costs in Patent Litigation']

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Procedural Posture

Patent Revocation and Amendment Appeal / Full Court Appeal; Multiple Appeals From Interlocutory, Amendment, Revocation and Costs Decisions

Legal Issues

  1. 1 ['Is the best method requirement in s 40(2)(a) of the Patents Act 1990 (Cth) a distinct obligation from sufficiency?' 'Was the patent specification non-compliant with s 40(2)(a) by failing to disclose the best method known to the patentee for performing the invention?' 'Can failure to comply with the best method requirement be cured by amendment after filing/grant?' 'What principles guide the exercise of discretion to allow amendment and for costs in patent proceedings?']

Ratio Decidendi

The Court held that s 40(2)(a) imposes a distinct best method requirement for patent specifications, beyond sufficiency; Servier failed to disclose the best method known to it at the filing date (1986 and 1991 methods), rendering the patent revocable. The Court declined to disturb the primary judge's refusal of amendment, finding no error in the exercise of discretion and no delay or unreasonable conduct of a kind that would warrant granting the amendment. On costs, the Court held the primary judge erred in not applying the guideline of costs following the event; revised orders were made for Servier to pay a proportion of Apotex's and Actavis' costs.

Court Disposition

Appeals allowed in part; appeals regarding revocation and amendment dismissed; revised costs orders issued.

Orders

  • ['Grant leave to appeal in NSD 241 of 2015.' 'Dismiss appeals in NSD 241 and NSD 247 of 2015.' "Servier to pay Apotex's and Actavis' costs of the appeals." 'Allow appeals in NSD 305, 307, 346, and 347 of 2015.' "Set aside previous costs orders and substitute: Servier to pay 75% of Apotex's and Actavis' costs of the...