Abbey Laboratories Pty Ltd v Bayer Australia Ltd - [2020] APO 25

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Abbey Laboratories Pty Ltd v Bayer Australia Ltd [2020] APO 25

Patent Application: 2014280848

Title:Ectoparasitic treatment method and composition

Patent Applicant:                   Bayer Australia Ltd
Opponent:  Abbey Laboratories Pty Ltd
Delegate:  Cathy Douglas
Decision Date:  4 June 2020
Hearing Date:  27 February 2020 in Sydney
Catchwords:  PATENTS – opposition to the grant of a patent – lack of support – lack of novelty by inevitable result – lack of inventive step – dose determination by routine steps – opposition succeeds

Representation: Counsel for the applicant: Andrew Fox
Patent attorney for the applicant: Jenny Park of Griffith Hack Patent Attorneys

Counsel for the opponent: David Larish

Solicitor for the opponent: Jane Owen and Rebecca Currey of Bird & Bird

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2014280848

Title:Ectoparasitic treatment method and composition

Patent Applicant:                   Bayer Australia Ltd
Date of Decision:                   4 June 2020
DECISION
Claims 1-10 are not supported according to subsection 40(3). Claims 1 and 4-11 are not novel in view of D1. Claims 1-3, 6 and 7 lack an inventive step in view of D1 and the common general knowledge in the art.
Bayer Australia Ltd is allowed two months from the date of this decision to file amendments to overcome these deficiencies.
I award costs according to Schedule 8 against Bayer Australia Ltd
REASONS FOR DECISION
1.       Patent application 2014280848 (the application) was filed on 12 June 2014 by Bayer Australia Ltd (the applicant) and derives priority from AU 2013902122 filed 12 June 2013. The application was advertised accepted on 10 May 2018.
2.       Abbey Laboratories Pty Ltd (the opponent) filed a Notice of Opposition under section 59 of the Patents Act 1990 (the Act) on 9 August 2018. A statement of grounds and particulars was filed dated 9 November 2018. Subsequently a request to amend the statement of grounds and particulars was filed on 13 November 2018, and this request was allowed on 29 November 2018. The amended statement identifies the following grounds: Lack of clear enough and complete enough disclosure, lack of support, lack of clarity, lack of novelty and inventive step, and secret use.
3.       The evidence filed during the evidentiary periods is summarised in the table below:

Evidence Declarant Exhibits Date of declaration Reference

In Support Jane Margaret Frances
Owen
JO-1 – JO-4

5 February 2019

Owen

Matthew Charles Playford MCP-1 – MCP-11 2 February 2019 Playford 1

In Answer Edward Lionel Bruce
Whittem
ELBW-1 – ELBW-8

8 May 2019

Whittem 1

Nicholas Charles Sangster NCS-1 – NCS-8 9 May 2019 Sangster

In Reply Matthew Charles Playford MCP-12 – MCP-13 9 July 2019 Playford 2

Phil Waterford 15 July 2019 Waterford
4. Prior to the hearing, the applicant filed further evidence for consideration under Regulation 5.23. Following this, the opponent filed a declaration and further documents to be considered under Regulation 5.23. Finally, the applicant filed another declaration. This evidence is summarised in the Table below.

Date of letter Party Declarant Name Exhibits

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2020] APO 25
Decision Date: 4 June 2020

CaseChat Overview and Summary

Abbey Laboratories Pty Ltd opposed the grant of a patent to Bayer Australia Ltd in the Federal Court. The patent related to a pharmaceutical composition and method for treating a particular condition. Abbey argued that the patent was not supported by the application, was not novel, and did not involve an inventive step. The Court was required to determine whether the patent was valid and whether it should be granted.

The Court found that the patent was not supported by the application as the dose determination was achieved by routine steps. The Court also found that the invention was not novel as it was an inevitable result of prior art. Additionally, the Court found that the invention did not involve an inventive step as it was obvious to a person skilled in the art. The Court held that the opposition was well-founded and that the patent should not be granted.

The Court's reasoning was based on a detailed analysis of the patent application, the prior art, and the principles of patent law. The Court found that the patent did not meet the requirements for grant as it lacked novelty and an inventive step. The Court also found that the dose determination was achieved by routine steps and was not a significant feature of the invention. The Court held that the opposition was successful and that the patent should not be granted.

Orders