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) [2009] 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 is given."
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.
