When did your patent portfolio last have a health check?

Introduction 
Like all other assets, intellectual assets require proper care and maintenance. In the case of patents, there is more to this than just paying periodic renewal fees. As your business and associated patent portfolio evolve, you should regularly turn your attention to the continuing health of that portfolio. Aside from managing the content of your patent portfolio to ensure that it has continuing relevance to your commercial strategy, you must also review your important patent assets to ensure that they remain valid and useful.

One often-neglected area of patent management is post-grant amendment. Any organisation that is building a substantial portfolio within a particular area of technology will inevitably expand its awareness of key publications and other prior art in that area. This may occur as a result of ongoing in-house research and development activities, patent searching and/or the examination of relevant patent applications in patent offices in various countries. Therefore, it is entirely probable that from time to time you may become aware of prior art that would invalidate one or more claims of your granted patents. When this occurs, you need to think carefully about what action, if any, you need to take.

If a correctable deficiency is identified at any time, it is important to bear in mind that it may be too late to take appropriate corrective action once a potential infringement of the patent is identified.

This article reviews the Australian post-grant amendment provisions and illustrates their strategic importance through three recent exemplary court decisions.

Amendment provisions 
An amendment may be made to a granted patent for any reason, provided that it does not:

• Broaden the scope of the patent.
• Add and claim new subject matter.
• Introduce certain other defects into the description or claims.

Depending on the precise circumstances, amendment may be requested before the Patent Office or by application to a court.

The advantages of requesting amendment through the Patent Office are the relatively low cost and the fact that if the amendment is allowable, the commissioner has no discretion and must allow the request.

However, any decision by the commissioner to allow an amendment request is open to opposition by third parties. If an opposition is filed, the process can become protracted, involving evidentiary rounds leading to a hearing and decision. A decision in an opposition is also subject to appeal to the Federal Court.

Importantly, the commissioner cannot allow an amendment if there are "relevant proceedings" pending in relation to the patent. These include court actions relating to infringement or invalidity of the patent. Once relevant proceedings have commenced in relation to a patent, the patentee must apply to the court for an order directing the commissioner to make any desired amendments.

The court has discretion to refuse an amendment that is otherwise allowable. Exercise of this discretion is guided by equitable considerations and it is generally the conduct of the patentee that is under scrutiny in these cases. Factors to be considered include the candour of the patentee in explaining the need for amendment and whether any delay in amending has been unreasonable in all the circumstances.

Recent examples 
In Apotex Pty Ltd v Les Laboratoires Servier (No 2) ([2009] FCA 1019) Les Laboratories Servier sought to add narrower claims to its granted patent. Specifically, Servier's solicitor swore an affidavit in which he stated that he had “reviewed the … Patent and formed the view that the specifications disclosed matter which could be the basis of additional claims”.

Despite opposition by Apotex Pty Ltd, the court found the requested amendments to be allowable and went on to consider the exercise of its discretion. On the available evidence, the court concluded that Servier had not been entirely open and honest about its reasons for requesting amendment. In particular, Servier failed initially to disclose to the court the outcome of proceedings in the United Kingdom, in which all the original claims had been found invalid. Furthermore, Servier had resisted discovery of documents which showed that the UK proceedings had significantly influenced the decision to amend its Australian patent.

On this basis, the court exercised its discretion to refuse Servier's application to amend, thereby leaving the claims in the state in which they had been found invalid in the UK proceedings.

In Zetco Pty Ltd v Austworld Commodities Pty Ltd ([2010] FCA 235) Zetco Pty Ltd initially requested amendment before the Patent Office in order to overcome objections raised by an examiner in a re-examination that had been requested by Austworld Commodities Pty Ltd. Having successfully overcome the objections, and with its patent attorneys being informed by the examiner (via telephone) that this was the case, Zetco commenced infringement proceedings against Austworld without waiting for the amendments to be formally allowed. The proceedings prevented the commissioner from entering the approved amendments.

As a result, Zetco had no choice but to apply to the court in order to make the amendments. It provided the court with copies of correspondence with its patent attorneys, so as to account for the events leading to the application. The court found that it was appropriate to exercise its discretion considering that Zetco had, without undue delay, fully discharged its obligations to provide a full and frank disclosure of its reasons, going so far as to waive privilege in communications with its patent attorney.

Bristol-Myers Squibb Company v Apotex Pty Ltd ([2010] FCA 814) was a further case in which a request to amend before the Patent Office was prompted by a re-examination request made on behalf of the respondent (Apotex). In this instance, Apotex filed an opposition to the amendments that had been approved and advertised by the Patent Office.

Bristol-Myers Squibb Company immediately commenced proceedings against Apotex, which effectively halted the opposition proceedings. The patentee subsequently applied to the court for an order directing that the amendments be made. Apotex did not oppose the amendments before the court, which strongly suggests that its opposition before the Patent Office was a strategic attempt to delay the proceedings.

The requested amendments, which would bring the Australian claims into conformity with corresponding European claims, could have been made earlier. However, the court was satisfied on the evidence that while conformity with the European claims might have been desirable, it was neither a "pressing nor necessary objective". The court applied the principle that mere delay, in itself, is insufficient reason to exercise the discretion to refuse an amendment request. There being no indication of any improper conduct, or other relevant factors in this case, the court allowed the amendments.

Conclusion and strategic considerations
These recent cases illustrate that it will generally be preferable to request amendment before the Patent Office at the earliest opportunity and before any dispute arises with another party. Our experience is that amendments are rarely opposed unless the opposing party has some existing apprehension of an infringement action and is therefore monitoring the patent.

If an approved amendment request is opposed by an infringer, the patentee can seize back the initiative by filing suit, thereby removing the matter from the Patent Office. An application may then be filed with the court for an order to make the same amendment already approved by the Patent Office.

In any circumstances in which it becomes necessary or desirable to apply to the court for amendment, it is essential that the patentee provides a full and frank disclosure of all relevant circumstances, even if this involves a waiver of privilege in advice regarding the need for amendment.

Finally, the court may exercise its discretion to refuse an amendment application if there has been unreasonable delay. For example, if you have known for years that your patent claims are invalid, but have nonetheless enjoyed the benefits of allowing the unamended patent to remain on the register, it is entirely possible that the court will refuse a request to amend after commencing infringement proceedings.