Boehringer Ingelheim Animal Health USA Inc v Elanco New Zealand [2021] FCA 1457

FEDERAL COURT OF AUSTRALIA

Boehringer Ingelheim Animal Health USA Inc v Elanco New Zealand [2021] FCA 1457 Appeal from: Merial, Inc v Bayer New Zealand Limited [2019] APO 21

File number: VID 581 of 2019

Judgment of: BESANKO J

Date of judgment: 25 November 2021

Catchwords: INTELLECTUAL PROPERTY — appeal under s 104(7) of Patents Act 1990 (Cth) from orders made by delegate of Commissioner of Patents allowing amendments to Patent Application — where respondent filed Patent Application for anti-infective formulation to prevent or ameliorate mammary gland infections including mastitis — where application disclosed invention comprising oil-based physical barrier material and at least one antiseptic compound mixed with barrier material — where application disclosed that any antiseptic may be used in formulation and disclosed preferred and suitable characteristics and properties of antiseptic — where appellant successfully opposed application on grounds of lack of novelty and lack of inventive step — where cited prior art disclosed use of acriflavine, an acridine, in teat seal formulation — where delegate made finding that part of common general knowledge that acriflavine had antiseptic property — where respondent applied for amendments to application including amendments that antiseptic compound mixed with barrier material is not an acridine — where appellant opposed amendments on basis that amendments not allowable under s 102(1) and/or ss 102(2)(b) and 40(3) of Patents Act — whether matter claimed by specification as a result of amendments travel beyond matter in substance disclosed in specification as filed — whether claim of amended specification excluding acridines from use in formulation fundamentally inconsistent with specification as filed — appeal dismissed INTELLECTUAL PROPERTY — where specification as filed disclosed use of any antiseptic in formulation and disclosed preferred and suitable characteristics and properties of antiseptic — where claim of amended specification excluded acridines from use in formulation — whether, properly construed, specification as filed disclosed use of acridines in formulation and/or disclosed that acridines a preferred antiseptic — whether characteristics and properties of acridines and their use in veterinary science part of common general knowledge before priority date INTELLECTUAL PROPERTY — where appellant successfully opposed Patent Application — where delegate made findings in decision on substantive opposition proceeding as to common general knowledge before priority date — where respondent did not appeal from decision on substantive opposition proceeding — where respondent applied for amendments to application — whether parties bound by findings made in decision on substantive opposition proceeding on appeal from orders made on amendment application