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Minter Ellison’s patents team has a wealth of experience across all aspects of domestic and international patent advisory and dispute matters – ranging from strategy to licensing, freedom to operate, opposition, infringement and revocation proceedings. We are particularly experienced in working as part of global litigation teams coordinating strategy across jurisdictions. Our clients span the biotechnology, pharmaceutical, medical, consumer, industrial and agricultural industries.
Our multidisciplinary team includes dual-qualified lawyers with scientific qualifications and experience in chemistry and biotechnology. Many have worked in the United Kingdom with global firms, bringing with them substantial experience in UK patent litigation and pan-European intellectual property issues, including in the fields of transdermal drug delivery systems, monoclonal antibodies and mechanical patents.
Following a spate of decisions in 2014 on patent licences the Federal Court of Australia announced two further decisions which provide additional guidance to parties to a patent licence. Both of these decisions are a reminder that in addition to contract law, the parties to a licence of Australian patents should consider the relevant provisions of the Patents Act 1990.
It's been an unusually busy period for patent licensing, with the Federal Court of Australia issuing a number of important decisions in 2014. The decisions, which consider the issues of exclusivity, termination rights and obligations to fund litigation, provide useful guidance to licensors and licensees alike. They also underscore the importance of paying attention to the fine detail of patent licences during their negotiation and in court proceedings.
2014 is already shaping up to be a big year in the world of patents. In anticipation of what's to come, we've taken the opportunity to reflect on and examine the trends emerging from 2013, which was also a bumper year for patents in Australia.
In one of the few decisions of its kind, the UK High Court recently assessed the damages to be paid to a generic pharmaceutical company under a cross-undertaking in damages. While some aspects of the decision are specific to the UK pharmaceutical reimbursement scheme, the judgment will be a useful reference point for parties involved in similar litigation in Australia. In particular, the case involved the generic claiming to have lost the 'first mover advantage' as a result of the interlocutory injunction obtained by the patentee.
The Australian Government has launched another inquiry into the compulsory licensing provisions in the Patents Act 1990 (Cth). This alert outlines the scope of the inquiry by the Productivity Commission, and how you can make a submission.
The Full Federal Court of Australia recently found that the majority of Wyeth's patent claims covering a method of administering an antidepressant compound were invalid, based on a finding that the patent was not entitled to its earliest priority date. The decision highlights the care required when amending patent claims to ensure they are not broadened to the extent that they cease to be fairly based on the specification and any priority documents.
Once their compound patents have expired many blockbuster drugs remain protected by secondary 'method of treatment' patents. The validity and enforceability of these secondary patents can be less certain in many jurisdictions. In Sanofi-Aventis Australia Pty Ltd v Apotex Pty Ltd (No.3)  FCA 346, the Federal Court found that the secondary patent protecting Sanofi-Aventis' blockbuster leflunomide drug was valid and infringed – a surprising outcome, at least initially, based on the facts of the case.