The recent decision in Albany Molecular Research Inc v
Alphapharm Pty Ltd  FCA 102 is a useful decision in
determining how a court will deal with allegations of prior
disclosure in relation to compounds where there is not sufficient
information to enable the disclosed compound to be produced.
In summary, the Federal Court held that where a prior art
document discloses a compound, even in the absence of an effective
method to prepare it, that prior art document will anticipate a
later claim to the compound.
Albany Molecular Research, Inc (AMR) commenced
proceedings against a number of generics, including Alphapharm,
claiming that they had infringed Patent No 699799 by making,
selling and otherwise dealing in various pharmaceutical products,
the active ingredient in which was fexofenadine hydrochloride.
Fexofenadine hydrochloride is marketed in Australia by
sanofi-aventis under the trade name Telfast.
Alphapharm contended that the Patent was invalid for want of
novelty, lack of an inventive step, inadequate description of the
invention, failure to define the invention, lack of clarity and
succinctness in the claims, lack of fair basis in the claims and
Alphapharm relied on two patents (the Carr
Patents) which disclosed piperidine derivative compounds
of the classes covered by the Patent, including fexofenadine.
While the judgment deals with a number of grounds of invalidity,
the finding in relation to novelty is of particular interest.
AMR conceded that the Carr Patents disclosed the claimed
piperidine derivatives including fexofenadine. However, AMR argued
that the Carr Patents were not novelty defeating disclosures as
they did not provide sufficient information to enable the claimed
compound to be produced or produced in a substantially pure form.
Alternatively, AMR argued that anticipation could not arise unless
a skilled person would have readily prepared the compound as a
matter of routine.
Applying the Full Federal Court's decisions in H
Lundbeck A/S v Alphapharm Pty Ltd  FCAFC 60 and
Apotex Pty Ltd v Sanofi-Aventis  FCAFC 134, Justice
Jessup rejected AMRI's arguments and held that exact naming of
a compound in prior art is sufficient to constitute anticipation.
Further, he went on to say that the question of enablement did not
the prior art disclosed some but not all of the integers; or
the prior art disclosed a process that may or may not lead to
the subsequently claimed invention.
In considering whether the Carr Patents in fact disclosed an
effective means of preparing the compound, Justice Jessup found
they did not. Consequently, he held that if he were wrong about the
law as established in Lundbeck and Apotex, he "would hold that
the invention, so far as claimed in the claims which are presently
relevant, was not anticipated by [the Carr Patents]."
In light of this decision, it seems that a court will draw a
distinction between cases in which there is a precise disclosure
(such as in this case) and cases in which the prior art
some but not all of the integers; or
a process that may lead to the subsequent claimed invention.
In the former case the disclosure will be novelty-defeating and
in the latter cases the question of enablement or sufficiently of
the prior disclosure will arise.
This was an interlocutory decision about the appointment of a tutor for the child appellant, to carry on his proceedings.
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