The Privilege of Amending Patents

Section 105 of the Patents Act empowers the Court to direct amendment of a patent which is the subject of pending legal proceedings, including at the request of the patentee. The course of patent litigation may give rise to many good reasons for considering amendment to the patent in suit, however any decision to do so must be very carefully considered, as illustrated by the judgement of Bennett J in Apotex Pty Ltd v Les Laboratoires Servier [2008] FCA 1466.

In considering whether to direct an amendment under s 105, the Court has a wide discretion and will consider the public interest in allowing the amendment but also conduct of the patentee. This gives rise to an obligation on the part of the patentee to disclose information relevant to the amendment. A decision not to disclose relevant documents on the basis that they a privileged may bear on the exercise of the Court’s discretion.

In Apotex v Les Laboratoires Servier, the patentee, Servier, sought to explain the “reasons for and factors impacting on” its decision to seek amendment via affidavits from the solicitor having the conduct of the proceedings. Apotex served a notice to produce, seeking documents recording or referring to the solicitor’s views as expressed in the affidavits, including his views that amendments to the patent were necessary. Servier resisted production, claiming privilege in the documents sought.

Bennett J noted that “Apotex does not presently rely on a primary obligation to waive legal professional privilege as part of the obligation of good faith on the part of a party seeking to amend a patent.” Rather, Apotex relied upon an implied waiver of privilege by Servier due to its reliance on the affidavits which disclosed the giving of advice regarding the amendment. Her Honour, having considered the authorities relating to waiver, concluded that:

It must be accepted that the application to amend was made with instructions from Servier. Accordingly, Servier intentionally presented Mr Hamer’s affidavits and evidence as evidence of its reasons for making that application. In effect, Servier has disclosed the legal advice of Mr Hamer by presenting that advice as the totality of its reasons for seeking amendment. It is then inconsistent with that presentation to claim legal professional privilege with respect to the communications between Servier and Mr Hamer concerning Mr Hamer’s opinion, Servier’s instructions, the application for amendment and Servier’s reasons for making it.

This decision provides another clear illustration of the importance of carefully reviewing a patent with a view to the need for any amendment prior to the commencement of proceedings.