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

FEDERAL COURT OF AUSTRALIA

Neurim Pharmaceuticals (1991) Ltd v Generic Partners Pty Ltd [2018] FCA 1082 File number: NSD 656 of 2017

Judge: NICHOLAS J

Date of judgment: 24 July 2018

Catchwords: PATENTS – legal professional privilege/patent attorney privilege – whether implied waiver – application by patentee to amend patent pursuant to s 105 of Patents Act 1990 (Cth) – delay – where patentee alleges that it did not decide that it would be desirable to amend patent until shortly prior to filing of application under s 105 – whether implied waiver arising from patentee's pleaded grounds in support of proposed amendments in relation to advice given to patentee concerning amendments made to patent applications filed in other jurisdictions PRIVILEGE – legal professional privilege/patent attorney privilege – whether implied waiver

Legislation: Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth) Patents Act 1990 (Cth) s 105(1)

Cases cited: Commissioner of Taxation v Rio Tinto Ltd (2006) 151 FCR 341 Council of the New South Wales Bar Association v Archer (2008) 72 NSWLR 236 CSL Ltd v Novo Nordisk Pharmaceuticals Pty Ltd (2010) 87 IPR 134 DSE (Holdings) Pty Ltd v Intertan Inc (2003) 127 FCR 499 Ferella & Anor v Official Trustee in Bankruptcy (2010) 188 FCR 68 Macquarie Bank v Arup [2016] FCAFC 117 Mann v Carnell (1999) 201 CLR 1 Smith Kline & French Laboratories Ltd v Evans Medical Ltd [1989] 1 FSR 561 Telstra Corporation Ltd v BT A/asia Pty Ltd (1998) 85 FCR 152 Thomason v Campbelltown Municipal Council (1939) 39 SR (NSW) 347 United States Surgical Corp v Hospital Products International Pty Ltd (unreported, Supreme Court, NSW, McLelland J, 13 October 1981)