Latest updates to Patent Law in Australia
Commissioner of Patents (Cth) v Thaler [2022] FCAFC 62
In Commissioner of Patents (Cth) v Thaler [2022] FCAFC 62, the Full Court reversed the finding of the primary judge on the question of whether an inventor named on a patent application must be a natural person, and held that it is not possible for an inventor, for the purposes of the Patents Act, not to be a natural person. See [36060] and [PA 15.80].
Commissioner of Patents v Ono Pharmaceutical Co Ltd [2022] FCAFC 39 and Merck Sharp & Dohme Corp v Sandoz Pty Ltd [2022] FCAFC 40
In each of Commissioner of Patents v Ono Pharmaceutical Co Ltd [2022] FCAFC 39 and Merck Sharp & Dohme Corp v Sandoz Pty Ltd [2022] FCAFC 40, a Full Court of the Federal Court held that the relevant “first regulatory approval date” is the earliest date on which any substance falling within the scope of the claims of the patent (or goods containing any such substance) was included in the Australian Register of Therapeutic Goods (ARTG) or received official marketing approval, whether or not that substance is the same as the one on which an application for extension of term is based and whether the first inclusion on the ARTG was sponsored by the patentee or by some other person. See [71530] and [PA 70.290].
H. Lundbeck A/S v Sandoz Pty Ltd [2022] HCA 4
H. Lundbeck A/S v Sandoz Pty Ltd [2022] HCA 4 concerned what rights exist in respect of a patent whose term has been extended, if the extension of term was not granted before the end of the patent’s normal term. The High Court affirmed the finding of the Full Court of the Federal Court, that rights to sue for infringement accrue to the patentee only, and not to a licensee, and only at the date of grant of the extension. However, the patentee may sue for infringement in respect of any acts done between the end of the normal term of the patent and the date of grant of the extension of its term. See [71810] and [PA 79.40].
The Patent Law in Australia online service continues to be an indispensable guide to obtaining, maintaining, enforcing and challenging the validity of patents in Australia. Balancing both the practical nature of IP Australia processes and in-depth analysis of statute and case law, Patent Law in Australia navigates every aspect of the patenting process, with detailed commentary on the law pertaining to each stage and therefore provides relevant and effective advice for patent attorney's, intellectual property lawyers and barristers. The publication launched in 2008 and is published both as an online subscription service and as a book. The third edition of Patent Law in Australia was published in 2018.
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Colin Bodkin holds a BSc (Hons) in chemistry, a doctorate in organic chemistry, an MBA and a Master of Industrial Property degree. He is a former Fellow of the Institute of Patent and Trademark Attorneys and a former registered patent attorney, having practised as a Principal of Spruson & Ferguson in Sydney. Colin Bodkin has been the author of Patent Law in Australia since the publication of its first edition in 2008. The publication is published both as an online subscription service and as a book. The third book edition of Patent Law in Australia was published in 2018.