Australian patent litigation strategy
(The following is a set
of speaker notes, so please forgive the truncated style.)
Types of proceedings
The standard proceedings are available in Australia:
namely – infringement / revocation and declarations of non-infringement
In addition to the above, unjustified threats
and re-examination by the Patent Office are also possible, though the
re-examination procedure can be problematic.
As at the date of writing, no application for
a declaration of non-infringement has been made under the 1990 Act. This is for a number of reasons, including
that it is Onerous on the applicant,
who amongst other things, must seek written a admission; pay legal costs &
costs of proceedings and can not challenge validity.
This is unusual due to inconvenience for the
court. However, the court will
entertain such an application if will be determinative of the proceedings.
This is often ordered. The parties will often negotiate a
settlement after liability and before full investigation of quantum.
Streamlined / expedited cases
Increasingly favoured by the courts.
8-10 months from issue to trial is possible.
(Depends on facts & whether parties consent.)
Judgments can still take 12mths or more after
First instance, Court of Appeal, etc
1st instance — Federal Court or a State
Supreme Court. (Fed. Court hears
almost all cases.)
Appeal — 3 Judges — Full Court of the
Federal Court (or Full Court of the Supreme Court as applicable),
Final Appeal – High Court (5 Judges).
Specialist judges, Juries
No formal specialist judges. Certain Judges in Federal Court hear most
Injunction, damages, account of profits,
delivery up etc
Other remedies might include rectification of
the Register of Patents (eg. where invalidity is based on proprietorship of
Time taken from issue of proceedings to trial,
then to appeal
1st Instance: (Issue to trial ~ 1-2
Trial to Judgment ~ 3-12 months
Issue to Judgment ~ 33 months.)
First Appeal: (Hearing ~1 year from 1st
instance judgment; Judgment ~3-6mths).
Costs — how much and is it recoverable?
~AU $2m / ~ï¿½1.25m / ~ US $1.5m —
is a moderate figure for a 1st instance – fully litigated
infringement & invalidity proceedings
Recovery usually ~50% but periodically as low
as 0% or up to 66% depending on conduct of parties.
Discovery / Disclosure
Based on pleadings and narrowed to categories
ordered by court (after negotiation by parties).
Standard practice is that substantial time is
spent on negotiating categories and substantial money on reviewing large
volumes of discovered documents.
Apply for directions from court, which has
discretion about conduct.
Parties negotiate terms (eg. who to be
present, what will be done, etc.)
As per experiments (above).
Evidence from abroad (letters of request)
Depositions outside jurisdiction — both
parties present; independent examiner, transcript etc
Letters of Request — file copy of letter
interrogatories ï¿½ certified translation
Experts / Witnesses of fact
Strict guidelines for communication with
Experts – ability to give evidence from
Skilled Addressee’s perspective: (Issues include: Australian Art, are
they too inventive, actual experience before priority date etc).
Witnesses of fact are rarely required.
Cross-examination of witnesses
Evidence in Chief tendered by affidavit.
Examination in Chief is restricted to correcting typographical errors and
clarifying details if necessary.
Parties inform each other which witnesses they
wish to cross examine.
Re-examination usually required.
What are the requirements?
(1) Serious question to be tried, (2)
Irreparable harm; and (3) Balance of convenience.
Other factors: (delay; are damages
quantifiable; undertakings by respondent; etc).
Pharmaceutical cases – new requirements s
26A-D Therapeutic Goods Act 1989 (Cth):
Certification by generic about infringement of
patents granted ‘in relation to’ the drug
If generic filed a ‘b’ certificate
(ie under s 26B(1)(b)):
Prior to commencing patent infringement
proceedings, patentee must certify to TGA & generic: good faith,
reasonable prospects of success, conduct without unreasonable delay.
AUD $10m penalty — false or misleading,
or breach of undertaking (will take into account profit of patentee &
loss suffered by any person)
ï¿½ compensate Aust. Govt for damages if
interloc. injunction had been granted.
Patentee to notify Attorney General before
seeking interlocutory injunction
Potential enormous damages awards to generic
Australian government if interlocutory granted and proceedings later
dismissed / discontinued / vexatious.