Aktiebolaget Hässle v Alphapharm Pty Limited [2002] HCA 59

HIGH COURT OF AUSTRALIA

GLEESON CJ,

GAUDRON, McHUGH, GUMMOW, KIRBY, HAYNE AND CALLINAN JJ

AKTIEBOLAGET HÄSSLE & ANOR APPELLANTS

AND

ALPHAPHARM PTY LIMITED RESPONDENT

Aktiebolaget Hässle v Alphapharm Pty Limited [2002] HCA 59

12 December 2002

S287/2001

ORDER 1. Appeal allowed with costs. 2. Set aside orders made by the Full Court of the Federal Court on 9 October 2000. 3. Matter remitted to the Full Court for the determination of any remaining grounds on the respondent's Notice of Contention. 4. Order 2 made by Lehane J on 18 June 1999 dealing with revocation further stayed until further order of the Federal Court. 5. Costs of the whole of the proceedings in the Federal Court to be in the discretion of the Full Court.

On appeal from the Federal Court of Australia

Representation:

J McL Emmerson QC with D M Yates SC and K J Howard for the appellants (instructed by Minter Ellison)

A C Bennett SC with S C G Burley and C Dimitriadis for the respondent (instructed by Mallesons Stephen Jaques)

Notice: This copy of the Court's Reasons for Judgment is subject to formal revision prior to publication in the Commonwealth Law Reports.

CATCHWORDS

Aktiebolaget Hässle v Alphapharm Pty Limited

Patents – Revocation – Obviousness or lack of inventive step – Patent for an oral pharmaceutical preparation – Whether invention obvious and did not involve an inventive step having regard to what was known or used in Australia on or before priority date – Combination of integers – Preparation arrived at by group of pharmaceutical chemists after period of experimental research – Whether hypothetical non-inventive worker in the field would have been led directly as a matter of course to pursue one avenue in expectation that it might well produce claimed invention – Relevance of publications discoverable by "routine literature search" but not found to have been part of the common general knowledge in Australia at the priority date – Whether invention obvious if it was apparent to a non-inventive skilled worker that it would be "worthwhile to try" each of the integers that was ultimately successfully used – Relevance of attempts to replicate the process of invention by a skilled person aware of the desired result – Whether attempts futile.