The Australian courts have again rejected the notion
that what the applicant says during prosecution can be held against
the patentee during later litigation.
In Bradken Resources Pty Ltd v Lynx Engineering Consultants
Pty Ltd, [2015] FCA 1100, the judge was asked to consider the
meaning of the claim term "integrally formed" for the
purposes of infringement. The defendant pressed upon the judge to
utilise the applicant's correspondence with the Patent Office,
namely the "prosecution history", as an estoppel against
the patentee, and adopt a narrow interpretation.
The judge specifically noted that the weight of authority in
Australia "eschewed recourse to extrinsic materials (such as
correspondence between the patent applicant and the Commissioner of
Patents) for the purpose of ascertaining the true scope of a
claim". The judge refused to consider the correspondence.
However, the judge did adopt the narrow interpretation anyway.
