Australian Courts have
repeatedly rejected1 the notion that what the
applicant says during prosecution can be held against the patentee
during later litigation. However, the general absence of a doctrine
of prosecution history of estoppel in Australian practice should,
in no way, be taken as tolerance by the Courts for representations
which stray into misdirection.
This is well exemplified in the recent decision by the full
Federal Court of Australia in Morellini v Mizzi Family Holdings
Pty Ltd2 which highlights the extent to which
Courts may go to revoke a patent under
Section 138(3), if they believe it was granted due to false
suggestion or misrepresentation.
The specification of Innovation Patent No
2010100955 (the patent) employed the phrase "It is
found..." in a statement suggesting that a claimed
feature of the invention provided a particular functional
advantage. The Court took the view that the phrase implied the
patentee had established a level of
