The Federal Court recently confirmed, in Apotex v Les Laboratoires Servier (No 2), that a patentee’s conduct is a crucial element considered by the Court in relation to the exercise of judicial discretion to amend a patent. In particular, a patentee applying for an amendment must make a full and frank disclosure of all the reasons for seeking the amendment. The amendment must be sought in good faith and without delay. Patentees should also disclose relevant developments in relation to equivalent patents in proceedings in other jurisdictions.
Servier’s amendment application
In this case, the Court found that Servier did not provide full and frank disclosure of the reasons for seeking an amendment under s 105 of the Patents Act 1990 (Cwlth):
• Servier disclosed that the reason for seeking the amendment was the presence of additional claimable matter within the specification of the disputed patent.
• However, Servier did not disclose that another reason for seeking the amendment was to mitigate the invalidity risk associated with the unamended claims of the disputed patent. Servier was alert to the invalidity risk as a result of equivalent proceedings in the UK where the equivalent UK patent was held to be invalid for lack of novelty and obviousness.
On this basis, the Court found that Servier did not make the required good faith disclosure and that the amendment may give Servier an unfair advantage. In making this finding, Justice Bennett held that “Servier intend[ed] knowingly to take advantage of the wider claims which do not reflect the invention described in the AC Patent, while at the same time seeking amendment to better defend the validity of the AC Patent and prove infringement by Apotex”.
The case is a reminder that when applying for an amendment to a patent:
• Patentees should make full and frank disclosure of all the relevant reasons for seeking to have a patent amended.
• If developments in equivalent proceedings in other jurisdictions have a bearing on the application, these developments should be disclosed promptly.
