High Court guidance on contributory infringement by product suppliers - 22 October 2008
The recent decision of the High Court in Northern Territory v Collins provides important guidance on the meaning of the word “supply” and the phrase “staple commercial product” in contributory patent infringement proceedings.
Prior use grace period - an anomaly for divisional patent applications - 15 October 2008
A recent decision of the Federal Court of Australia has raised a potential limitation when relying on the grace period for divisional patent applications to excuse prior disclosures. The grace period in Australia provides that disclosures within 12 months “before the filing date of the complete application” are disregarded when determining the validity of a patent.
Australia’s National Innovation Report- Key Points for Corporate Counsel - 11 September 2008
On 9 September 2008, the Federal Government released a major report on Australia’s National Innovation System. The Report was prepared by a panel chaired by Dr Terry Cutler, which included respected economists and research industry experts. This Alert identifies the specific key recommendations and issues raised by the Report which would have a legal impact on major corporations.
The definition of ‘innovative step’ - a judicial first - 26 August 2008
The Federal Court has handed down a decision relating to the enforceability of innovation patents. This is the first substantive judicial decision regarding the definition of ‘innovative step’ which is a requirement specific to the validity of innovation patents.
Enantiomer claims fail; salt claims stand - 21 August 2008
In a recent decision by the Federal Court of Australia, Justice Gyles found that certain claims of Sanofi-Aventis’ (Sanofi) Australian Patent AU 597784 (AU 784) relating to the dextro-rotatory isomer of methyl alpha-5 (4,5,6,7 - tetrahydro (3,2-c) thioeno pyridyl) (2-chlorophenyl)-acetate (clopidogrel) were invalid for lack of novelty and lack of inventive step. Despite this finding however, claims relating to specific salts of the isomer were found to be novel and not obvious and consequently, were found valid.
Common knowledge or not? Full Court decides. - 12 August 2008
The Full Federal Court of Australia (Full Court) has handed down a decision which provides some guidance on when statements in a patent specification are considered to be admissions of common general knowledge (CGK) for assessing when an invention is obvious. It serves as a useful reminder to carefully consider what statements about the prior knowledge should be included when drafting the patent specification to minimise the likelihood that any statement will be considered an admission.
Limited scope for patent non-infringement declarations - 5 August 2008
The Federal Court of Australia has handed down a decision which may severely limit the scope for the grant of non-infringement declarations in patent cases. The relevant sections of the Patents Act 1990 have been interpreted to only be available to a party which has a granted patent for the activity which it alleges is non-infringing.
Full Federal Court delivers judgment in Ranbaxy v Warner-Lambert - 30 May 2008
The Full Court of the Federal Court has dismissed an appeal in Ranbaxy v Warner-Lambert, 1 revoking Warner-Lambert’s 2 patent for an isolated enantiomer of the cholesterol-inhibiting drug atorvastatin calcium but found that Ranbaxy’s product would infringe Warner-Lambert’s earlier patent covering the racemic mixture of the drug.
Proving a patent is obvious - traps in briefing experts - 14 May 2008
The Federal Court has handed down a decision which highlights the importance of the careful briefing of expert witnesses with respect to obviousness (inventive step) in patent cases. The verdict is significant because the manner in which the expert witness was briefed led the court to attach very little weight to his evidence.
IP generated by researchers and academics is not necessarily owned by their employer - 23 April 2008
On Thursday, 17 April 2008, Justice French handed down a long-awaited 554 page judgment in University of Western Australia v Gray (No 20) [2008] FCA 498.
How to speed up processing of your Australian or US patent application - 11 April 2008
On 14 April 2008, a 12 month Patent Prosecution Highway (PPH) pilot program commences at IP Australia and the USPTO. The PPH enables your patent application to be expedited and thus jump the queue to be considered by a patent examiner earlier than normal. It is equivalent to a request for accelerated examination in Australia or a Petition to Make Special in the USA.
Federal Court aims to streamline Australian patent litigation - 3 April 2008
The Australian Federal Court is to roll out an intensive case management procedure for patent litigation, following a pilot program that has been run in Sydney over the last 12 months. For some time, Judges and patent litigants have recognised a need to streamline Australian patent litigation so that matters can be dealt with faster and be more affordable.
Full Federal Court considers the meaning of “relevant to work in the relevant art” - 26 March 2008
The Full Federal Court considered the construction of section 7(3) of the Patents Act 1990 (Cth) (“Act”) in the recent case of Ajinomoto Co Inc v Nutrasweet Australia Pty Ltd [2008] FCAFC 34. Section 7(3) permits additional documents to be added to the common general knowledge for the purpose of assessing if the invention is obvious.
Nufarm Ltd v Jurox Pty Ltd - a lesson in construction of claims - 13 March 2008
The recent Federal Court decision in Nufarm Ltd v Jurox Pty Ltd has again highlighted the importance of carefully considering the language used in the body of the specification when drafting patents.
Patent Case Review 2007
2007 was another busy year for patent cases and a year where the Courts took time to consider and clarify a range of different issues. Our patent case review details the most important and interesting decisions handed down by the Australian Courts and the Patent Office in 2007.
Changes to search results requirements - 23 October 2007
The Australian Patent Office no longer requires applicants to file the results of documentary searches due on or after 22 October 2007.
Federal Court Upholds Xenical Advertising Ban – 3 September 2007
On Thursday the Federal Court upheld the decision of the National Drugs and Poisons Schedule Committee banning direct-to-consumer advertising of Xenical, Roche's obesity drug. The Court held that the nature of the advertising of Xenical and the intense criticism of the advertising run during the 2006 season of Australian Idol were properly considered by the Committee when deciding whether the drug may be advertised directly to consumers.
ANZTPA on the backburner - New Zealand says “No” - 17 July 2007
The New Zealand government announced that the joint regulatory scheme and establishment of ANZTPA has been postponed. The main issue of contention was the inclusion of complementary medicines in the scheme.
NZ moves closer to approving Trans Tasman Therapeutic Goods & Devices regulator - 14 June 2007
The plan to create a Trans Tasman regulator for therapeutic goods and medical devices (ANZTPA) may be inching towards implementation.
It’s a Lockout!: Australia’s highest court gives judgment on obviousness - 25 May 2007
Australia’s High Court (Australia’s highest court), handed down its much anticipated second decision in Lockwood Security Products Pty Ltd v Doric Products Pty Ltd on 23 May 2007.
ANZTPA implementation - Australian Bill released - 4 April 2007
Last night an exposure draft of the first of the Australian Bills to implement the scheme for joint regulation of pharmaceuticals and medical devices in Australia and New Zealand (ANZTPA) was released. The draft Bill is open for public comment. The deadline for submissions to the Department of Health and Ageing in relation to the Bill is 4 May.
Patent case review - 2006
It’s been another busy year for Australia’s hard working patent judges who have covered a broad range of issues. Our review details the important decisions which were handed down in 2006.
ANZTPA legislation: New Zealand Bill passes first reading in House of Representatives - 13 December 2006
The New Zealand Therapeutic Products and Medicines Bill narrowly passed its first reading in the New Zealand House of Representatives on 12 December 2006. The Bill aims to establish the trans-Tasman regulatory scheme for the Australia New Zealand Therapeutic Products Authority (ANZTPA).
ANZTPA second round consultation begins - 19 October 2006
The second round of consultation with stakeholders starts today about the proposed joint regulatory scheme for the Australia New Zealand Therapeutic Products Authority (ANZTPA). You have until 6 December 2006 to comment on the three draft documents which have been released.
Intellectual property update - Spring 2006
This update includes articles on Merck v Arrow Pharmaceuticals, the Trade Marks Amendment Bill 2006, geographic names as trade marks, the proposed Australian and New Zealand Therapeutic Products Authority, the Trade Marks Office ruling over the word "McBrat" and the first judgment on calculating damages for a moral rights infringement.
Intellectual Property Laws Amendment Act 2006 passed - 14 September 2006
Today, 14 September 2006, the Australian Senate enacted the Intellectual Property Laws Amendment Bill 2006. The Bill amends several pieces of intellectual property legislation, with several major changes to the Patents Act 1990 and the Trade Marks Act 1995. The Bill is particularly relevant to the pharmaceuticals and biotechnology industries as it makes significant amendments regarding springboarding, the compulsory licensing of patents and other patent laws.
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