Federal Court of Australia
FEDERAL COURT OF AUSTRALIA
Apotex Pty Ltd v ICOS Corporation [2017] FCA 466 File number: VID 280 of 2016
Judge: BESANKO J
Date of judgment: 9 May 2017
Catchwords: PATENTS – Consideration of application seeking amendment of complete specification pursuant to s 105(1) of the Patents Act 1990 (Cth) – whether grounds support the exercise of discretion in favour of allowing amendment – where patentee has made full disclosure of all relevant matters bearing on the discretion – where no unreasonable delay by patentee – where no evidence that party in opposition to amendment will suffer any prejudice if amendment is allowed – whether public policy grounds weigh against exercise of discretion in favour of amendment – whether obligation to make promises that were met or could be met – where patentee was not required to make statements as to the utility of the invention – where statement sought to be deleted from specification is the main promise in the patent – where patentee has enjoyed a monopoly for over 17 years out of the 20 year patent term. PRACTICE AND PROCEDURE – Whether statements made to the Commissioner of Patents before grant are material on the evidence – where amendments sought to save time at trial – where amendments sought for avoidance of the risk of a plea of a lack of utility being upheld – where no current plea of false suggestion.
Legislation: Patents Act 1990 (Cth) ss 18, 40, 102, 104, 105, 138
Cases cited: Actavis Group PTC EHF v ICOS Corporation [2016] EWHC 1955 Artcraft Urban Group Pty Ltd v Streetworx Pty Ltd [2016] FCAFC 29; (2016) 117 IPR 210 Bayer Pharma Aktiengesellschaft v Generic Health Pty Ltd [2012] FCA 1510; (2012) 99 IPR 59 Eli Lilly Canada Inc v Mylan Pharmaceuticals ULC & Anor 2015 FC 125 Flour Oxidising Company Ltd v Hutchinson (1909) 26 RPC 597 In the Matter of Alsop's Patent (1907) 24 RPC 733 In the Matter of I.G. Farbenindustrie AG's Patents (1930) RPC 289 Les Laboratoires Servier v Apotex Pty Limited [2010] FCAFC 131; (2010) 89 IPR 219 Les Laboratoires Servier v Apotex Pty Ltd [2016] FCAFC 27; (2016) 117 IPR 415 Lockwood Security Products Pty Ltd v Doric Products Pty Ltd [No 2] (2007) 235 CLR 173 Pracdes Pty Ltd v Stanilite Electronics Pty Ltd (1995) 35 IPR 259 Pracdes Pty Ltd v Stanilite Electronics Pty Ltd (1995) 35 IPR 277 Prestige Group (Australia) Pty Ltd v Dart Industries Inc (1990) 26 FCR 197 Ronneby Road Pty Ltd v ESCO Corporation [2016] FCA 588 Smith Kline & French Laboratories Limited v Evans Medical Limited [1989] 1 FSR 561 Streetworx Pty Ltd v Artcraft Urban Group Pty Ltd [2014] FCA 1366; (2014) 110 IPR 82 Wimmera Industrial Minerals Pty Ltd v RGC Mineral Sands Limited [1997] FCA 1063; (1997) AIPC 91-366
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