Injunctive relief - preparation on procedural and substantive fronts

Sigma Pharmaceuticals (Australia) Pty Ltd (ACN 004 118 594) v Wyeth [2009] FCA 595 (3 June 2009):
http://www.austlii.edu.au/au/cases/cth/FCA/2009/595.html

Law

With a raft of patent cases working through the Federal Court, the Hon. Justice Sundberg has recently handed down a decision involving injunctive relief. The decision is one that analysed the the traditional principles involved with respect to interlocutory injunctions.

Of interest to the author was the overlapping nature of the general principles involved when granting an interlocutory injunction. His Honour relevantly said at [15]:

"[W]hether there is a serious question or a prima facie case should not be considered in isolation from the balance of convenience. The apparent strength of the parties’ substantive cases will often be an important consideration to be weighed in the balance: Tidy Tea Ltd v Unilever Australia Ltd (1995) 32 IPR 405 at [416]; Interpharma Pty Ltd v Commissioner of Patents (2008) 79 IPR 261 (Interpharma). "

At [16], his Honour reiterated the principle espoused by Jessup J in Interpharma that "special considerations apply where, as here, the party seeking interlocutory relief alleges infringement and the other party alleges invalidity."

Implications

The decision is an important one. It confirms the complexity of interlocutory injunctions in patent cases during their infancy. It also demonstrates the importance of preparing (in advance) on procedural and substantive fronts. The latter in this case being of some significance, where his Honour's judgment closely examined the relevant infringement and validity grounds (albeit in a prima facie sense).

The case is also noteworthy as one citing the leading cases on the threshold issue of inventiveness - including NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd [1995] HCA 15, (1995) 183 CLR 655 at 661-666 and Merck & Co Inc v Arrow Pharmaceuticals Ltd [2006] FCAFC 91; (2006) 154 FCR 31 at [63],

Despite debate as to whether this validity ground survived Lockwood (as suggested by some commentators), one of Australia's senior Federal Court judges has now, in this case, reinforced its application in Australian law. Whether disclaimers and the Gerber defence are relevant to that cause of action will, presumably, be points for trial and/or other recently filed Federal Court proceedings. Both those issues have been addressed on this site in earlier posts. The author intends to track this issue with interest given the unique nature of the threshold question to Australia's IP landscape. See posts - Bilski's relevance to Australia http://www.blogger.com/www.ipaustralia.gov.au/resources/news_new.shtml#29http://www.iproo.net/2008/11/bilskis-relevance-to-australia-acip.html

Amendments to Designs Regulations 2004

IP Australia Official Notice

http://www.ipaustralia.gov.au/pdfs/news/Official%20Notice%20-%20Online%20-%20Designs%20-%20IP%20Law%20Amendment%20Regulations%202009.doc

On 24 June 2009, the Federal Executive Council made the Intellectual Property Law Amendment Regulations 2009 (No.1) (the IP Regulations). The IP Regulations will shortly be registered on the Federal Register of Legislative Instruments and copies will be available from the ComLaw website (www.comlaw.gov.au).

Amongst other matters, the IP Regulations will amend regulation 11.26 of the Designs Regulations 2004 to align the various requirements for declarations in the designs, patents and trade marks legislation in accordance with current government recommendations.

Amendments to Trade Marks Regulations 1995

IP Australia Official Notice

http://www.ipaustralia.gov.au/pdfs/news/Official%20Notice%20-%20Online%20-%20Trade%20Marks%20-%20IP%20Law%20Amendment%20Regulations%202009.doc

On 24 June 2009, the Federal Executive Council made the Intellectual Property Law Amendment Regulations 2009 (No.1) (the IP Regulations). The IP Regulations will shortly be registered on the Federal Register of Legislative Instruments and copies will be available from the ComLaw website (www.comlaw.gov.au).

Amongst other matters, the IP Regulations will amend the Trade Marks Regulations 1995 to align the various requirements for declarations in the designs, patents and trade marks legislation in accordance with current government recommendations and make a number of minor typographical corrections.

PCT Rule Changes and Other Patents Regulation Changes

IP Australia Official Notice

http://www.ipaustralia.gov.au/pdfs/news/Official%20Notice%20-%20Online%20-%20Patents%20-%20IP%20Law%20Amendment%20Regulations%202009.doc

On 24 June 2009, the Federal Executive Council made the Intellectual Property Law Amendment Regulations 2009 (No.1) (the IP Regulations). The IP Regulations will shortly be registered on the Federal Register of Legislative Instruments and copies will be available from the ComLaw website (www.comlaw.gov.au).

Amongst other matters, the IP Regulations will amend the Patents Regulations 1991 and update the English text of the Regulations under the Patent Cooperation Treaty (PCT Rules) to reflect the changes which were agreed to at the PCT Union meeting of September 2008. They will also align the various requirements for declarations in the designs, patents and trade marks legislation in accordance with current government recommendations and make a number of minor typographical corrections.

IP Australia PCT administrative changes

Changes to the Administrative Instructions Under the PCT –
Filing and Processing Sequence Listings
Effective – 1 July 2009

http://www.ipaustralia.gov.au/resources/officialnotices_p2009.shtml#8

Amendments to the Administrative Instructions under the Patent Cooperation Treaty (PCT) (‘the Admin Instructions’) are due to come into force on 1 July 2009. The amendments relate to the filing and processing of international applications that contain nucleotide and/or amino acid sequence listings.

No inventive step

Fw: Electrowatt Technology Innovation Corp v ABB Inc [2009] APO 9 (1 June 2009)

http://www.austlii.edu.au/au/cases/cth/APO/2009/9.html

By earlier decision, a Delegate of the Commissioner found that all claims of patent application 688711 lacked inventive step.
An opportunity was provided for the applicant to rectify the situation and the applicant filed amendments. However, it was reported to the applicant that the amendments were considered not allowable as the specification would not comply with subsection 40(3). No further correspondence in relation to the amendments was received and no amendments have ever been allowed.
The Commissioner believed that it was reasonable to conclude that the applicant did not intend to propose an amendment that overcame the adverse findings of the earlier decision and wrote to the parties inviting comment. No comments were received. The Commissioner decided that it was appropriate for this matter be finally determined.
As no amendments have ever been allowed, the claims are in the same form that the Delegate found to lack inventive step.
Patent application number 688711 together with each and every one of claims 1 to 37 is refused.

Trade mark removal for non-use

E & J Gallo Winery v Lion Nathan Australia Pty Limited [2009] FCAFC 27 (24 March 2009)

http://www.austlii.edu.au/au/cases/cth/FCAFC/2009/27.html

In this decision of the Full Federal Court, the court addressed the question of removal of a trade mark from the register for non-use removal when branded goods had been available in the jurisdiction during the relevant period.

The Full Federal Court ruled that there had not been use within the statutory meaning as the sales had occurred without the knowledge of the owner of the registered trade mark.

“Justice Windeyer, in our respectful opinion, correctly focused upon the definition of "trade mark" in the Act. Relevantly, that same enquiry ought to be made here. Section 17 of the TM Act provides: ‘A trade mark is a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person.’
Accordingly, the use of a trade mark is not use in a vacuum but rather it is use "in the course of trade by a person". The remarks of Windeyer J in the above passage relied upon by Gallo require them to be understood in the context of a course of trade in Australia between a person, in that case the registered owner, and someone else not being the ultimate consumer.
In this case the course of trade was between Gallo and the wholesale company in Germany. There was, objectively considered, no course of trade between Gallo and BAW or any other party in Australia. The primary judge was, in our respectful opinion, correct in so finding.

The court also held that the removal of the mark from the register was not retrospective and the use of the mark by Lion Nathan for the period prior to its removal was infringing use.