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Patent Enforcement in the
Chemical Arts in Australia
Stephen Sharp
28 October 2013
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Overview
1. “Raising the Bar” Amendments
2. Innovation Patents
3. Contributory Infringement
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Intellectual Property Laws
Amendment (Raising the Bar) Act
2012
 Purposes:
– Simplify the IP system
– Raise the quality of patents by strengthening the
requirements for patentability
– Bring Australian patent law closer to international standards
– Faster resolution of patent applications
 Most changes came into effect on 15 April 2013.
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Raising the Bar cont.
 Many changes to the patents legislation in Australia, including
changes to:
– Prior art base for assessing inventive step
– Sufficiency
– Support
 These changes apply to standard patent applications for which
examination is requested on or after 15 April 2013. (The
previous law will therefore continue to apply to many patents
and pending patent applications).
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Raising the Bar cont.
Inventive Step

Previously
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
Now
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CGK not limited to Australia
The requirements that the prior art information be ascertained,
understood and regarded as relevant have been removed
Consequences
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Assessed against the background of common general knowledge
(CGK) in the art in Australia
Can combine CGK with prior art information that the skilled person
could be reasonably expected to have ascertained, understood
and regarded as relevant
Raises the threshold of patentability for standard patents
May result in grant of narrower claims
No longer need Australia-based experts to prove CGK in Australia
Raising the Bar cont.
Sufficiency

Previously
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
Now
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
Must “disclose the invention in a manner which is clear enough
and complete enough for the invention to be performed by a
person skilled in the relevant art”
Intended to align the disclosure requirement with that in the UK
and EPC
Consequences
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–
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Must describe the invention fully (a low threshold)
Raises the standard for description of the invention
May result in grant of narrower claims
Raising the Bar cont.
Support

Previously
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–

Now
–
–
–

“Fair basis” language in the Patents Act replaced with “support”
Intended to align the Australian requirement with that in other
jurisdictions, such as the UK
Two aspects:
- basis in the description for each claim; and
- claims not broader than is justified by the extent of the
description, drawings and contribution to the art
Consequences
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–
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Claims must be “fairly based” on the specification
Generally just requires conformity between claims and description
More difficult test to satisfy
Judicial interpretation is awaited to confirm this
Innovation Patents
A patentee’s best friend.
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Innovation patents cont.
Key features:
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8 year term
Invention claimed must be novel and involve an innovative
step over the prior art base
No substantive examination before grant
Must be certified (examined) before it can be enforced
Granted for similar subject matter to standard patents
(plants and animals, and the biological processes for the
generation of plants and animals, are excluded)
Limitation on the number of claims
Same remedies for infringement as a standard patent
Innovation patents cont.
Advantages for Enforcement
•Same remedies for infringement as a standard patent
•No inventive step requirement - can be obtained for obvious
“inventions”, and therefore innovation patents can be difficult to
challenge
•Can be granted and certified quickly
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Innovation patents cont.
Innovative Step
“an invention is to be taken to involve an innovative step when
compared with the prior art base unless the invention would, to
a person skilled in the relevant art, in the light of the common
general knowledge as it existed (whether in or out of
[Australia]) before the priority date of the relevant claim, only
vary from the [relevant prior art information] in ways that make
no substantial contribution to the working of the invention.”
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Innovation patents cont.
Examples:
-Roadside post made of sheet spring steel
instead of plastic
-Roadside post having a marker hole to show
depth as it is inserted in the ground
-Roadside post where the base is tapered to
enable the post to be driven into the ground
Delnorth Pty Ltd v Dura-Post (Aust) Pty Ltd
[2008] FCA 1225
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Innovation patents cont.
Comparison of innovation patents filed each year
Source: Advisory Council on Intellectual Property, Review of the
Innovation Patent System Options Paper, August 2013
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Contributory
Infringement
A new weapon for patentees.
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Contributory infringement cont.
Infringement by supply of products
Section 117 of the Patents Act 1990 provides:
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(1)
If the use of a product by a person would infringe a patent, the supply
of that product by one person to another is an infringement of the
patent by the supplier unless the supplier is the patentee or licensee
of the patent.
(2)
A reference in subsection (1) to the use of a product by a person is a
reference to:
(a) if the product is capable of only one reasonable use, having
regard to its nature or design - that use; or
(b) if the product is not a staple commercial product - any use of
the product, if the supplier had reason to believe that the
person would put it to that use; or
(c) in any case - the use of the product in accordance with any
instructions for the use of the product, or any inducement to
use the product, given to the person by the supplier or contained
in an advertisement published by or with the authority of the
supplier.
Contributory infringement cont.
Apotex Pty Ltd v Sanofi-Aventis Australia
Pty Ltd (No. 2) [2012] FCAFC 102
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Sanofi-Aventis’s patent claimed a method of preventing or
treating psoriasis
Apotex’s product information (PI) disclaimed the treatment
of psoriasis “not associated with manifestations of arthritic
disease”, but did indicate its product for the treatment of
psoriatic arthritis (PsA)
Disclaimer: “Apo-Leflunomide is not indicated for the
treatment of psoriasis that is not associated with
manifestations of arthritic disease”
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Contributory infringement cont.
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The evidence established that:
(a) psoriasis is a diagnostic criterion of PsA;
(b) nearly every person with PsA has or will develop psoriasis; and
(c) the administration of leflunomide to a person with PsA will treat
that condition and also treat or prevent psoriasis.
The primary judge found Apotex’s product was not a “staple
commercial product” and that Apotex had reason to believe its
product would be used for the treatment of psoriasis. Subsection
117(2)(b) therefore applied.
The primary judge found the statement of indications in the PI was
an instruction to use the product for the treatment of psoriasis.
Subsection 117(2)(c) therefore applied.
The primary judge’s findings that Apotex’s intended supply of its
product would infringe the patent pursuant to s117 was upheld by
the Full Federal Court of Australia.
The matter has been appealed to the High Court of Australia.
www.griffithhack.com.au
Thank you for your time… any questions?
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