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ARTICLE · 17 MAY 2017

Amendments to a patent during court proceedings – how much transparency is required?

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The onus to establish that amendment is needed is on the patentee, who must make full disclosure of all relevant matters.

AustraliaIntellectual Property
Kieran Williams
Kieran Williams
Katrina Crooks
Katrina Crooks
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In Apotex Pty Ltd v ICOS Corporation [2017] FCA 466, the Federal Court has provided guidance regarding the level of disclosure required by a patentee in order for a court to exercise its discretion in allowing amendments to the specification during court proceedings.

Eli Lilly and Company (Lilly) is the holding company of ICOS Corporation (ICOS) and holds a number of patents worldwide that relate to a compound known as tadalafil (a PDE5 inhibitor that is useful in the treatment of erectile dysfunction).

As part of a Federal Court proceeding brought by Apotex relating to the validity of AU 773666 (the "666 Patent", relating to compositions containing tadalafil, including in micronised particle sizes, and methods of treatment using such compositions) and the AU 769946 (the "946 Patent", relating to compositions containing particular daily dosages of tadalafil for oral administration and methods of treatment using such dosages), ICOS sought orders to amend the

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