British American Tobacco (Investments) Limited v Philip Morris Products S.A

In the case of British American Tobacco (Investments) Limited v Philip Morris Products S.A, the dispute involved an opposition to the grant of a patent application relating to a container for storing cigarettes or cigars. The matter was heard in the Australian Patent Opposition Division. The central legal issues revolved around whether the invention met the criteria for patentability under the relevant sections of the Australian Patents Act, including whether it disclosed the best method of performing the invention, whether it involved an inventive step, and whether it was useful and clear.

The court considered whether the invention disclosed the best method of performing the invention under section 40(2)(aa) and found that there was insufficient evidence to conclude that the specification did not disclose the best method. The court also evaluated whether the invention lacked an inventive step under section 18(1)(b)(ii) and concluded that this was not established, as there was no motivation to combine the prior art documents in the manner suggested by the Opponent. Furthermore, the court determined that the claims were clear and did not lack support or clarity under section 40(3). The utility of the invention was found to be established under section 18(1)(c), and the court dismissed the suggestion that the claims suffered from 'parameteritis'.

Ultimately, the court found that none of the grounds of opposition were made out, and the opposition was unsuccessful. The application was granted permission to proceed to grant, and costs were awarded to the Applicant.