Patents


January 16, 2017 5:03 PM | Posted by Gus Lightowlers | Permalink

Approximately two years ago, the US Supreme court in the Alice decision considered the in-principle patentability of software patents. Since then, gaining US software patents has been very difficult.

In 2016, the United States Court of Appeals for the Federal Circuit has considered numerous appeals from district courts relating to patentable subject matter. This blog post discusses the two-step test from the Alice decision and how the test was applied by the Court in 2016, the developing trends for patentable subject matter in the US as it relates to software patents and the take-away messages for 2017.

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December 2, 2016 4:21 PM | Posted by Desiree Chong | Permalink
On 5 October 2016, the Full Federal Court delivered judgment in Kafataris v Davis [2016] FCAFC 134. The case concerned Mr Kafataris' entitlement to be recognised as a co-inventor of a PCT application under section 15 of the Patents Act 1990 (Cth). This judgment serves as a practical reminder to ensure that appropriate contractual arrangements are in place to clarify a person's co-inventorship status, lest their contributions go unrecognised. read more
December 2, 2016 11:27 AM | Posted by Alyssa Dixon | Permalink
The Full Federal Court has recently handed down its decision in the appeal by Otsuka Pharmaceutical Co (Otsuka) against the earlier finding by Justice Yates that Otsuka's patent relating to aripiprazole, a drug used in the treatment of schizophrenia, is invalid for want of novelty and inventive step. read more
November 8, 2016 11:51 AM | Posted by Tony Middleton | Permalink
In a relatively recent flurry of decisions, the Federal Court examined a variety of agreements purporting to give exclusive rights to various licensees to exploit patents under the Patents Act 1990 (Cth) (Act). These decisions consider whether a purported exclusive licensee of a patented article is actually entitled to the rights of an exclusive licensee under the Act. read more
July 19, 2016 11:37 AM | Posted by Rebecca Dutkowski | Permalink
A recent decision of the Full Federal Court has overturned an earlier Federal Court decision that controversially held an omnibus claim to be broader than the examples and drawings disclosed in a patent specification. The Full Federal Court found that a feature made essential by the specification could not be made inessential by the word "substantially" in the common omnibus claim wording: "substantially as described with reference to the drawings and/or examples". read more
May 9, 2016 3:34 PM | Posted by Alexander Horton | Permalink
Last Thursday, the High Court refused RPL Central's application for special leave to appeal the Full Federal Court decision denying patentability to its computer-implemented invention. In December 2015, the Full Court held that the computer-implemented nature of RPL's business scheme was not sufficient to transform it into a patentable invention. read more
May 4, 2016 11:34 AM | Posted by Rebecca Pereira | Permalink
As reported in our earlier post, Gilead recently succeeded in invalidating key claims of Idenix's patent relating to the Hepatitis C treatment sofosbuvir, on the grounds of insufficiency and inutility. This post reports on aspects of the subsequent costs orders made by Jagot J (see decision here). Her Honour ordered a proportional reduction of the costs to be paid to the successful party, Gilead. Whilst such orders are not uncommon in cases where parties are successful only on certain grounds of invalidity, her Honour's reasoning for applying the reduction — and her observations regarding the parties' preparation of their evidence — should be kept in mind by parties on both sides of patent disputes. read more
April 29, 2016 3:38 PM | Posted by Jonathan Kelp and Rebecca Pereira | Permalink

Today, the Productivity Commission released its draft report into Australia's intellectual property regime. The report is wide-ranging, covering patents, copyright, trade marks, designs, international trade obligations and other issues. Submissions in response to the draft recommendations have been sought by Friday 3 June 2016.

In general, the Commission has taken a consumer-favourable approach as to the reforms that it considers are required to the Australian intellectual property regime – flagging, in particular, the growing disparity between Australian intellectual property imports over its exports. If, however, Australia's economy is to ultimately transition to being an intellectual property producer (and therefore net exporter) – an underlying theme of the current Federal Government's innovation agenda – then adopting a strong pro-consumer (ie net importer) stance may not lead to favourable long term growth outcomes should Australia succeed in effecting this transition.

This post outlines our initial thoughts on the key issues addressed in the report in relation to patents and pharmaceuticals. In follow-up posts, we will consider copyright, trade marks and other aspects of the Report.

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March 31, 2016 1:57 PM | Posted by Amy Surkis | Permalink
Servier was successful in yesterday's hearing of its stay application.  As a result, the orders which revoked Servier's patent and discharged the interlocutory injunction were stayed pending determination of Servier's special leave application (or the High Court appeal, if special leave is granted). read more
March 29, 2016 9:21 AM | Posted by George McCubbin | Permalink
On 2 March 2016, Jagot J handed down her decision in Gilead Sciences Pty Ltd v Idenix Pharmaceuticals LLC [2016] FCA 169. The case concerns the small molecule sofosbuvir, a treatment for the Hepatitis C virus. To guide you through her Honour's 200+ page decision, we have prepared the following summary of the key issues considered, focusing on Gilead's successful grounds of invalidity. read more
March 18, 2016 11:09 AM | Posted by Amy Surkis | Permalink
In a unanimous Full Federal Court decision, Justices Bennett, Besanko and Beach upheld the trial judge's finding that Servier's patent for the multi-million dollar drug perindopril arginine was invalid. Servier has now applied for special leave to the High Court to appeal the Full Court's decision. read more
January 28, 2016 2:02 PM | Posted by Rebecca Dutkowski | Permalink
The scope of legal protection provided by a patent boils down to the interpretation of the claims. The drafting of claims has certain elements of art and tradition. One tradition is the use of the word "said" (or "the") when referring to a feature which has been previously mentioned in a claim.

This practice provides clarity, because the "said" feature is assumed to be the same as that previously mentioned, thus would have the same characteristics and limitations.

However, despite this traditional practice, in a recent Full Federal Court decision, the majority held that a "said" feature was not limited to the feature previously recited in the same terms, but could include other features not recited in the claims, thus broadening the strict literal meaning of the claim.
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December 21, 2015 4:55 PM | Posted by George McCubbin | Permalink
In its long awaited decision Commissioner of Patents v RPL Central, the Full Federal Court has rejected another computer-implemented invention for failing to constitute patentable subject matter. In doing so, Justices Kenny, Bennett and Nicholas overturned the decision of the trial judge, Justice Middleton, delivered in August 2013. The decision has implications for any software developers. read more
December 21, 2015 12:34 PM | Posted by Amy Surkis | Permalink
In Orion Corporation v Actavis Pty Ltd (No 3) [2015] FCA 1373, the Federal Court has provided practical guidance on drafting an exclusive patent licence to ensure the licensee has standing to sue for patent infringement, while maintaining existing commercial arrangements. read more
December 15, 2015 12:44 PM | Posted by James Patto & Paul Kallenbach | Permalink
December 10, 2015 1:49 PM | Posted by Jonathan Kelp | Permalink
In an exciting year which saw the High Court hand down two patent decisions, we revisit eight of the key developments in Australian patent law this year, in our 2015 Patent Recap, which is available here. read more
September 9, 2015 9:06 AM | Posted by Jonathan Kelp | Permalink

The High Court in Australia last week handed down its decision in the patent dispute regarding blockbuster cholesterol drug rosuvastatin (sold by AstraZeneca as Crestor).  Minter Ellison's clients, Watson Pharma and Ascent Pharma, along with fellow generic pharmaceutical company Apotex, successfully defeated AstraZeneca's appeal against the judgment handed down by an expanded five judge bench of the Full Federal Court last year.

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August 31, 2015 11:30 AM | Posted by Shyama Jayaswal | Permalink
The Full Federal Court of Australia has issued three important decisions regarding provisions in patent licenses.  The decisions underscore the importance of paying attention to the fine detail of patent licences during their negotiation. read more
July 30, 2015 3:15 PM | Posted by Rebecca Dutkowski | Permalink
Old-style 'omnibus claims' are often overlooked in patent infringement disputes. The usual assumption is that these claims are very narrow in scope, and are limited to the  specific examples of the invention shown in the patent. Therefore, if a competing product doesn't infringe any of the other claims, it is presumed not to infringe the narrower omnibus claim. However, in a recent decision of the Federal Court (Reckitt Benckiser Healthcare (UK) Ltd v Glaxosmithkline Australia Pty Ltd (No 5) [2015] FCA 486 (20 May 2015)) Justice Rares turned this reasoning on its head. He found that  a syringe of Glaxosmithkline (GSK) used for the  administration of Children's Panadol infringed Reckitt's patent, but only in respect of the omnibus claim. In effect, the omnibus claim was found to be the broadest claim of the patent, covering the any syringe which took "the substance" of the syringe described in Reckitt's patent. read more
March 26, 2015 9:00 AM | Posted by George McCubbin | Permalink
In Damorgold Pty Ltd v JAI Products Pty Ltd [2015] FCAFC 31, the Full Court of the Federal Court of Australia considered in what circumstances the doing of a single act, prior to the priority date of the patent, will destroy novelty under s 7(1)(a) of the Patents Act 1990 (Cth). read more
March 3, 2015 10:24 AM | Posted by Rebecca Pereira | Permalink
The Federal Court of Australia has dismissed the ACCC's anti-competitive conduct case against Pfizer, finding that Pfizer did not breach the prohibition on misuse of market power. Nor did it engage in unlawful exclusive dealing. The ACCC had alleged in the case that Pfizer misused its market power when it offered significant discounts and rebates on sales of Pfizer's own generic version of atorvastatin direct to pharmacies before Pfizer's blockbuster cholesterol lowering drug, Lipitor came off patent in May 2012. read more
February 18, 2015 7:01 AM | Posted by Rebecca Pereira | Permalink
On 12 February 2015, Ms Yvonne D'Arcy was granted special leave to appeal to the High Court against the decision of the Full Bench of the Federal Court in D’Arcy v Myriad Genetics Inc [2014] FCAFC 115. read more
February 10, 2015 2:02 PM | Posted by Shyama Jayaswal | Permalink

The Full Federal Court in Bristol-Myers Squibb Company v Apotex Pty Ltd [2015] FCAFC 2 has confirmed that the right to exploit a patented invention under the Patents Act 1990 (the Act) is a single indivisible right. Accordingly, a licence which granted the exclusive right to promote, sell and distribute the product to a licensee but reserved to the patentee the right to manufacture the patented product was not an exclusive licence.

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November 11, 2014 8:00 AM | Posted by Jonathan Kelp | Permalink
The High Court's latest foray into patent law wrapped up last Wednesday 5 November 2014, with the Court handing down its judgment in the long running escitalopram litigation between Alphapharm (along with other generic parties) and Lundbeck. The Court dismissed Alphapharm's appeal by a 3-2 majority (Justices Crennan, Bell and Gageler formed the majority, with Justices Kiefel and Keane dissenting). read more
November 10, 2014 4:48 PM | Posted by Stephen Worthley | Permalink
Today, the Full Court of the Federal Court of Australia handed down its decision in Research Affiliates LLC v Commissioner of Patents [2014] FCAFC 150, regarding the patentability of computer software and business methods. read more
September 11, 2014 5:15 PM | Posted by Rebecca Pereira | Permalink
A five-judge bench of the Full Federal Court (Allsop CJ, Dowsett, Kenny, Bennett and Middleton JJ) handed down a highly anticipated decision on Friday in the Myriad Genetics case, unanimously confirming that isolated, naturally occurring DNA and RNA sequences are patentable subject matter under Australian law. This is in contrast to the recent decision of the US Supreme Court on the same subject. read more
August 25, 2014 9:34 AM | Posted by Megan Evetts | Permalink
A five judge bench of the Full Federal Court in AstraZeneca AB v Apotex Pty Ltd [2014] FCAFC 99 (Besanko, Jessup, Foster, Nicholas and Yates JJ) have dismissed AstraZeneca's appeal in relation to two of its rosuvastatin (Crestor) related patents, which concern the treatment of patients with high cholesterol. read more
July 25, 2014 9:19 AM | Posted by Evetts, Megan | Permalink
The recent Full Court decision in Generic Health Pty Ltd v Bayer Pharma Aktiengesellschaft [2014] FCAFC 73 raises some interesting questions about the correct test to be applied when determining whether a patent is obvious under Australian law. read more
July 9, 2014 2:39 PM | Posted by Gilbert Tsang | Permalink
New Zealand’s long-awaited Patents Act 2013 will come into force on 13 September 2014.  The new Act will replace the current Patents Act 1953 and implement substantive changes to New Zealand’s patent laws to more closely align it with those of other similar jurisdictions, including Australia.  In summary, the validity of patent applications filed after 12 September 2014 will be assessed using higher standards and it is expected that the cost to obtain and maintain a patent will increase. read more
July 7, 2014 9:35 AM | Posted by Worthley, Stephen | Permalink

The Advisory Council on Intellectual Property (ACIP) has recently released its Final Report on the innovation patent system. This is the final step in ACIP's review of the innovation patent system, which commenced in February 2011. We have previously blogged on the progress of this review, which investigated the effectiveness of the innovation patent system in stimulating innovation by Australian small and medium enterprises.

The Final Report recommends significant changes to the system to enhance effectiveness and to reduce some unintended consequences arising from its implementation. However, it remains to be seen whether these recommendations will actually make their way into law.

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June 25, 2014 5:48 PM | Posted by Stephen Worthley | Permalink
In March this year, we blogged about a United States case, Alice Corporation Pty Ltd v CLS Bank International, relating to the patentability of business methods and computer-implemented inventions.

Now, the Court has handed down its decision, finding all of the patent claims unpatentable because they were merely directed to an "abstract idea," and so did not constitute patentable subject matter. This has important implications for Australian inventors seeking international patent protection.

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May 23, 2014 4:20 PM | Posted by Surkis, Amy | Permalink
This interlocutory stoush between Pfizer and Apotex has proven interesting on a number of fronts. First, Justice Griffiths refused to grant an interlocutory injunction to restrain Apotex from selling its pregabalin product indicated for the treatment of seizures – a decision that went against the trend of Courts typically granting an interlocutory injunction in pharmaceutical patent cases (see our post on this decision here). Then, Pfizer appealed that decision – a development interesting in itself as we don’t often see interlocutory injunction decisions appealed. Now, the Full Federal Court has overturned almost all aspects of the first instance decision. read more
May 16, 2014 4:38 PM | Posted by Gilbert Tsang | Permalink
The UK Intellectual Property Act (IP Act) received royal assent on 15 May 2014 and makes a number of changes to the UK's design and patent laws. read more
May 14, 2014 4:31 PM | Posted by Amy Surkis | Permalink
On Friday 11 April 2014, Alphapharm was granted special leave to appeal to the High Court against the decision of the Full Federal Court in Aspen Pharma Pty Ltd v H Lundbeck A/S [2013] FCAFC 129. read more
April 29, 2014 8:11 PM | Posted by Megan Evatts | Permalink
The USPTO's recently issued guidance memorandum entitled Guidance For Determining Subject Matter Eligibility Of Claims Reciting Or Involving Laws of Nature, Natural Phenomena, & Natural Products (Guidance) has provoked some strong reactions amongst the US intellectual property community, ranging from "concern" to "horror" at the potential reach of the Guidance. read more
April 2, 2014 12:51 PM | Posted by Stephen Worthley | Permalink
The US Supreme Court heard oral arguments this week about the patentability of business methods and computer-implemented inventions, in Alice Corporation Pty Ltd v CLS Bank International. It is an appeal from a splintered decision of the Federal Circuit, in which 10 judges couldn't reach a majority decision. A decision from the Supreme Court is expected towards the middle of 2014. read more
March 26, 2014 4:23 PM | Posted by Amy Surkis | Permalink
In response to Apotex's intention to launch generic products containing pregabalin, a commonly prescribed nerve pain medication, Warner-Lambert and other companies in the Pfizer group brought urgent interlocutory injunction proceedings to restrain Apotex.  In this swift decision (Warner-Lambert Company LLC v Apotex Pty Ltd [2014] FCA 241), Justice Griffiths of the Federal Court refused to issue that injunction. Pfizer have now appealed. read more
March 24, 2014 3:38 PM | Posted by Paul Kallenbach | Permalink
Our patent team reviews key patent law developments from last year, and provides their predictions for 2014. read more
March 21, 2014 3:04 PM | Posted by Amy Surkis | Permalink
To the ordinary person, a roller blind may just be a convenient means to block out the sun or an aesthetically pleasing interior design feature.  To intellectual property lawyers, roller blinds can provoke intense patent dispute... read more
March 17, 2014 3:58 PM | Posted by Gilbert Tsang | Permalink
The Federal Court has recently explored new territory in considering the statutory right to terminate a contract under section 145 of the Patents Act 1990 (Cth), finding that a licensee was not able to invoke the statutory right because only some, and not all, of the licensed patents relating to the invention had expired. read more
January 20, 2014 3:22 PM | Posted by Nicole Reid and Paul Kallenbach | Permalink
The Federal Government has released an exposure draft of the Intellectual Property Laws Amendment Bill 2014 (Bill) and a consultation paper seeking comments on the draft by 7 February 2014. read more
December 9, 2013 3:11 PM | Posted by Nicole Reid and Paul Kallenbach | Permalink
The High Court has handed down its decision in the litigation between Sanofi-Aventis and Apotex. The case concerns Apotex's proposal to sell a generic version of Sanofi-Aventis' leflunomide drug, ARAVA®, for which Apotex obtained registration on the Australian Register of Therapeutic Goods (ARTG). read more
September 23, 2013 4:02 PM | Posted by Peter Kearney | Permalink
Last month, the Advisory Council on Intellectual Property (ACIP) released an Options Paper outlining a number of options for reforming the Innovation Patent System. read more
February 20, 2013 12:00 AM | Posted by Dennis Schubauer and John Fairbairn | Permalink
On 13 February 2013, the Federal Court of Australia issued a decision relating to the patentability of business methods in Australia (Research Affiliates, LLC v Commissioner of Patents [2013] FCA 71). Emmett J held that the claimed inventions were business methods that were not eligible for patent protection. The patentability of business methods remains a vexed area of law in Australia (and many other countries). While this decision provides some guidance, it seems unlikely to resolve conclusively the uncertainty in this area of the law. read more
February 18, 2013 12:00 AM | Posted by Dennis Schubauer and John Fairbairn | Permalink
On 15 February 2013, the Federal Court of Australia handed down its much anticipated decision in Cancer Voices Australia v Myriad Genetics Inc [2013] FCA 65 relating to whether human genetic material is patentable in Australia. In what is the first Australian judicial consideration of the issue, Nicholas J held that claims for isolated naturally occurring DNA and RNA are patentable subject matter. This decision (and any appeal) will be closely reviewed by the many interested bodies presently debating whether, as a matter of policy, patents covering genetic materials are appropriate. read more
October 19, 2012 4:48 PM | Posted by Daniel Fuller and Peter Kearney | Permalink
On 15 October 2012, the Federal Government announced the appointment of an expert panel to review pharmaceutical patents in Australia (Review). read more
August 31, 2012 5:12 PM | Posted by Rachel Cox and Peter Kearney | Permalink
From 25-31 August, Brisbane will host the Mercedes-Benz Fashion Festival. Emerging and established designers and well-known Australian labels will showcase their latest collections. In an industry where one of the key drivers is to capitalise on popular trends and have the 'it' item, copycat fashion is rife. In these circumstances, how can designers and fashion labels protect their designs and brand from copycats? read more