In a recent decision that has important implications for persons who apply to a court for directions to amend a patent, the Federal Court has used its discretion to refuse amendments that were otherwise held to be allowable according to the statutory criteria of allowability. The case, Apotex Pty Ltd v Les Laboratoires Servier (No 2)  FCA 1019, emphasises the importance of candour by patentees who apply to a court for amendment of a patent.
The case concerned a request that had been made to the Federal Court for amendment of a certain patent which was the subject of revocation proceedings. The patentee, Les Laboratoires Servier (“Servier”) did not seek to delete any of the existing claims, but rather applied to add further claims that recited additional characterising features. There had been proceedings concluded in the UK not long before, in which the corresponding UK patent had been ordered to be revoked by the UK High Court, which order was upheld by the Court of Appeal. However, Servier did not cite the outcome of these proceedings as a reason for seeking to amend the Australian patent.
The respondent in the Australian proceedings, Apotex Pty Ltd (“Apotex”), argued that the proposed amendments were not allowable under the provisions of s 102 of the Patents Act 1990, but the judge, Bennett J, found no basis under s 102 for refusing them. Apotex further argued that, even if the proposed amendments were allowable under s 102, the Court should exercise its discretion and refuse to direct that the amendments be made. In considering the issue of the exercise of the Court’s discretion, Bennett J examined Servier’s conduct, and in particular the reasons Servier gave for the amendments. Although Servier made no reference to reduction of invalidity risk as a reason for requesting the amendments, evidence before the Court showed that at least part of the reason for the amendments was the outcome of the UK Court proceedings concerning the corresponding UK patent. Bennett J held that Servier had a duty to disclose this reason at the time it sought the amendments. A further factor taken into account by the Court was the choice by Servier to pursue grant of the unamended patent in Australia despite the adverse decision in the UK, without adequately explaining why it took this course. Her Honour considered that Servier’s conduct in relation to the amendments disentitled it from amending its patent and she accordingly concluded that the Court’s discretion should be exercised to refuse the amendments.
This case makes very clear that when a patentee seeks a direction from the Court that his or her patent be amended, the patentee has a duty to disclose frankly to the Court all the reasons why amendment is sought; failure to make a full and frank disclosure may be a bar to the Court directing that the amendment be made.
Author: Colin Bodkin
After a career in industrial research and development, Colin was a Principal of Spruson & Ferguson from 1995-2002. He is a Fellow of the Institute of Patent and Trademark Attorneys and has contributed to teaching in the Master of Industrial Property course at the University of Technology, Sydney. Colin is the author of the book "Patent Law in Australia", which was published in 2007. He is currently a consultant to Spruson & Ferguson.