On 18 September 2024, the Honourable Justice Jackman, in his capacity as a Deputy President of the Administrative Appeals Tribunal (AAT), granted Sandoz a licence pursuant to section 223(9) of the Patents Act 1990 (Cth) (Act). In doing so, his Honour set aside an earlier, 2019 decision, in which the Commissioner of Patents (Commissioner) had also…
Artificial Intelligence Systems or Devices cannot be “inventors” under the Australian Patents Act, the Full Federal Court has confirmed. The inventor of a patent must be a natural person. Does there need to be legislative change to address the role of Artificial Intelligence in the Australian patents scheme? An expanded five judge appeal bench of…
In two separate judgments, the Full Court has provided much needed clarity on how to identify the pharmaceutical products that can support a valid patent term extension in Australia, as Natalie Shoolman, Kent Teague and Rose Jenkins explain in this article. Takeaways: Patent term extensions must be based on the “earliest first regulatory approval date”…
The article “One small step for “artificial intelligence”, and a giant leap for the Australian patent system? The Federal Court decision in Thaler v Commissioner of Patents” analyses the reasoning of Beach J in the Thaler decision at first instance, noting that this decision is the first judicial consideration in Australia relating to the impact…
[KEYPOINT]: A historic Federal Court decision says an artificial intelligence system is capable of being named as an “inventor” under the Patents Act 1990, with potentially significant ramifications for technological innovation and the patent system in Australia. In the first judicial determination in the world of its type, the Australian Federal Court has held that…
In a surprising decision, the Federal Court has modified the law of patent term extensions in Australia, by clarifying that it’s only the patentee’s goods that are relevant to the proposed extension – not those of a competitor, even if the competitor’s goods came first and also contain a “pharmaceutical substance per se” that is…
Legal Analysis In Australia, the law with respect to compulsory licenses is framed to prevent useful inventions from remaining unworked in Australia. A person who wishes to exploit a patented invention may apply to the Federal Court for an order requiring the patentee to grant the applicant a license. Such an application can only be…
On 5 July 2019, the Full Court of the Federal Court of Australia (Full Court) handed down its judgment in the appeal and cross-appeal in Calidad Pty Ltd v Seiko Epson Corporation [2019] FCAFC 115. The judgment considers in-depth the extent to which a patentee can: prevent those who have acquired title to a patented…
Two recent decisions in the UK and Australia in the long-running pregabalin litigations demonstrate the different approaches in these jurisdictions to determine if a patent specification has sufficiently disclosed an invention. Readers will recall that the judgments concerned Warner-Lambert’s Swiss-style claims for the use of the compound pregabalin (marketed as Lyrica) in the treatment of…
On 20 September 2018, the Treasury Laws Amendment (2018 Measures No. 5) Bill 2018 (Bill) was tabled in Australia’s House of Representatives. Among the amendments proposed was the repeal of Section 51(3) of the Competition and Consumer Act 2010 (Cth) (CCA), a change that could significantly impact IP licensing and assignment arrangements within Australia. The…
