A recent Australian Federal Court judgement discussed the power of the Court to rectify a patent it had previously found to be invalid. In Apotex Pty Ltd v Les Laboratoires Servier (No 4) [2015] FCA 104 the Court had previously found Australian Patent No. 2003200700 to be invalid as it did not disclose the best method known to the patentee of performing the invention. As a consequence, the patentee sought to amend the patent to include the best method.
The Court found that it had the power, under s105 of the Australian Act, to cure any ground of revocation on which a challenger relied. However, any amendment to the patent must be allowable, and the patentee must persuade the Court to exercise its discretion in the patentee’s favour. In this case, a core question was should the Court exercise its discretion and allow the amendment?
In convincing the Court to exercise its discretion, the conduct of the patentee is of paramount importance. Considerations include:
- Has the patentee fully disclosed all relevant matters? If not, the amendment should be refused.
- Is the amendment permitted under the Australian Act? If not, the amendment will be refused.
- Has the patentee delayed for an unreasonable period before seeking amendment? If so, the patentee must show reasonable grounds for the delay or else the amendment should be refused.
- Has the patentee sought to obtain an unfair advantage from a patent, which he knows (or should have known) should be amended? If so, the amendment should be refused.
In this case, the patentee had received advice from solicitors and senior counsel prior to the initial Federal Court decision that no amendment was needed. The Court found that any failure of the patentee to seek an amendment at this time was an error reasonably made in good faith on the basis of that advice. Furthermore, it was found that the patentee did not intend to gain any advantage by the non-disclosure of the best method.
However, many years earlier the patentee’s Australian attorney provided advice that further details of the production method (which would include the best method) should be included in the specification and the patentee did not follow that advice. The Court was not satisfied that it was reasonable for the patentee to decide not to act on the Australian attorney’s advice. Consequently the amendment request was refused.
Comment
While the Australian attorney was ultimately proven correct that the specification should have been amended to include further details of the production method, it seems that if the Australian attorney had not provided this advice then the Court may have allowed the amendment and the patentee may still have an enforceable patent. It is notable that the attorney’s advice was included in their letter reporting the first examination report to the patentee, and the examination report only included formalities issues.
In my experience, unless there are explicit instructions to the contrary, when prosecuting a patent application an Australian attorney should bring any issue to a client’s attention which may affect the validity of the patent under Australian law and practice. In my mind, this raises the following questions: What were the standing instructions provided by the patentee to the Australian attorney – was the attorney authorised to perform a detailed review of the specification and provide comment on issues such as the disclosed production method? If so, why did the patentee pay for advice that it subsequently chose to ignore?
In any event, the present case illustrates that patent applicants should carefully consider the extent to which they want Australian attorneys to review specifications and provide detailed comments under Australian law. If patent applicants want an Australian attorney to provide detailed comments, then it can be dangerous to ignore the recommendations.
Please contact me at doug.horton@spruson.com for any queries you may have about patents.