Patents: Duty of Disclosure Needed When Amending Claims

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.