In Australia, the Raising the Bar amendments to the Patents Act were designed to raise the threshold needed to have a patent granted.
However the Full Court of the Federal Court of Australia’s ruling in Meat and Livestock Australia Limited v Branhaven LLC [2020] FCAFC 171 demonstrates that the Raising the Bar amendments also provided valuable updating of procedural matters, especially concerning the ability to amend a patent which is the subject of an appeal to the Federal Court. The Court has confirmed that it is able to consider amendments to a patent application that it is already considering on appeal. This is a welcome simplifying of the amendment process.
The Federal Court of Australia Full Court was asked to consider the allowability of amendments to Patent Application No. 2010202253, which related to the use of the genetics in genetic improvement and molecular breeding programs for cattle.
While the opponent, Meat and Livestock Australia Limited (Meat and Livestock) had failed on most of its grounds of opposition before the Delegate, it did succeed on a lack of clarity of claim 13. Regardless Meat and Livestock appealed to the Federal Court, arguing that the disputed claims also lacked clarity, novelty, inventive step, sufficiency and fair basis. The Federal Court rejected Meat and Livestock’s appeal except on the narrow issue that claim 1 also lacked clarity in addition to claim 13. However the Federal Court judge also made orders permitting the patent applicant to amend the application to overcome this deficiency. In a second judgment, the Federal Court judge found that those amendments were allowable and sufficient to overcome the deficiencies in the application.
Undeterred, Meat and Livestock appealed to the Full Federal Court. The first ground of appeal concerned the meaning of ss 105(1A) and s 112A of the Australian Patents Act, which were introduced in the Raising the Bar amendments. Meat and Livestock submitted that s 105(1A) did not permit a Court to direct amendments to overcome the Court’s own ruling on the question of the validity of the patent (at [79]).
Quite reasonably, The Full Court strongly disagreed. At [91], the Court said that the purpose of s 105(1A) was clearly “to confer power on the Court to deal with an application to direct amendment of a patent application in an appeal under s 60(4) of the Act from a decision of the Commissioner.” Further the Full Court referred to the explanatory memorandum to the Raising the Bar Amendments (at [92]), which noted that previously the Court could not consider new amendments proposed by the applicant, which added unnecessary complexity to the amendment process. According to the Full Court, section 105(1A) was designed to give the Court power to consider amendments “while an appeal is on foot.” The Full Court concluded that, in finding that the original specification lacked clarity, the primary Judge had not ended the appeal, and the appeal was still on foot while his Honour considered the amendments (at [90]). As construed by the Full Court, s 105(1A) provided the primary Judge with clear jurisdiction to consider and rule on the amendments.
This is a relatively minor clarification as to the new provision by the Full Court, but still an important one. It is also a reminder for parties in litigations to be alive to the possibility that the Court can direct amendments at any stage where validity is in play, and they should incorporate this possibility into their strategies.
Meat and Livestock also appealed the Federal Court’s ruling on the pre-Raising the Bar amendment ground that the amendments were not allowable because they lacked fair basis under s 40(3). The Court dismissed this appeal, citing the well-established line of jurisprudence on fair basis at [97] of the judgment. The patent application was granted in it amended form.
