Under Australian practice, it is possible to lodge amendments to
add claims during litigation in order to further target a potential
infringer's product. This is particularly useful,
especially when the product has appeared on the market after the
patent has been granted.
While of great strategic value, the Federal Court has recently
placed an onerous burden on patentees wishing to make use of this
strategy. In Apotex Pty Ltd v Les Laboratoires Servier (no 2)
 FCA 1019, her Honour, Justice Bennett refused the
amendments on a discretionary basis.
Justice Bennett found that an overriding discretion lay with the
Court in allowing the amendments. The exercise of the discretion
may be refused unless the patentee had provided "full and
frank disclosure" of the reason for the amendments. Her Honour
found that this had not been the case in the present instance.
While the logic of requiring a full and frank disclosure at this
stage might be considered by some as somewhat flawed, this now
appears a strict requirement, somewhat akin to the USPTO "duty
of good faith and candour".
Surprisingly, the duty may also extend to revealing privileged
attorneyclient communications. In the words of Justice Bennett:
"There is no obligation on a patentee to disclose privileged
documents, although there may be a need to do so to satisfy the
obligation for full and frank disclosure. Failure to disclose
documents in those circumstances may result in the exercise of
discretion to refuse the amendments unless a reasonable explanation
The unfortunate consequence of the decision is that patentees
may be very wary of using the post-acceptance amendment provisions
to capture infringing activities.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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