Federal Court’s Flu Shot for Patent Law

Over 100 years ago Lord Esher, in Ungar v Sugg (1892) 9 RPC 113, opined:

that a man had better have his patent infringed, or have anything happen to him in this world, short of losing all his family by influenza, than have a dispute about a patent. His patent is swallowed up, and he is ruined. Whose fault is it? It is really not the fault of the law; it is the fault of the mode of conducting the law in a patent case. This is what causes all this mischief.

Today it seems little has changed, at least in the minds of the Judges of the Federal Court who have set out to change the way Patent litigation is conducted in Australia.

Following a somewhat informal release back in June, the Victorian and New South Wales district registries of the Federal Court have each now officially released a “Notice to Practitioners – Proceedings under the Patents Act 1990 (Cth)” outlining new procedures for proceedings under that Act.

The procedures are stated to be “deliberately not overly prescriptive, with an emphasis on flexibility of application to each proceeding” and are clearly aimed at narrowing the issues in dispute as early as possible. The specific matters addressed include:

Ground of Invalidity: Particulars of invalidity are to include details of the passages of any prior publication relied upon for novelty purposes and after filing of the particulars, the party seeking revocation must explain how each ground of invalidity can be supported.

Expert Evidence: The Court will enquire whether any expert evidence will be required, whether a single expert is appropriate for all or any part of the evidence, whether any of the evidence can be given orally or by reference to standard texts, or by a combination of summary outline and oral evidence, whether a primer is appropriate and as to the appropriate method of evidence. The last matter may include whether there should be prior meetings of experts to explain or narrow the issues in dispute

Discovery: Before discovery is ordered, the parties must confer to discuss the issues to be addressed by discovery and the nature of the documents sought, and whether evidence should precede discovery

The procedure also provides for procedural mediation or case management conferences to try and narrow the issues in dispute and resolve interlocutory matters.

These procedures will hopefully play an important role in streamlining the conduct of certain patent disputes and may provide SME’s with the prospect of being able to enforce their patents without significant expense. However already this year the Federal Court has handed down patent decisions in relation to the pharmaceuticals Liptor and Plavix, which had global sales of USD13.5 billion and USD7.3 billion respectively in 2007. Where the monopoly rights conferred by a patent are of sufficient value, it is likely that litigants will still wish to fight every point and the procedures may have a limited impact.