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Australia: Best mode fully enforceable

The patentee's obligation to fully describe their invention, including the best mode of implementation, has recently been found to be fully enforceable in Australia.

In Les Laboratories Servier v Apotex Pty Ltd [2016] FCAFC 27, the application dealt with a 'salt of perindopril' which had particular application in the treatment of hypertension. The actual invention appeared to be the discovery of the salt's suitability for use in treatment. The patentee seemed unconcerned how to make the salt, noting that "it has been prepared according to a classical method of salification of organic chemistry".

In practice the applicant had prepared three different classical methods of salification, but failed to disclose the actual techniques in the specification. The potential infringer successfully attacked the patent for failing to disclose the actual method of production of the salt as used by the patentee.

The Full Court found the applicant was under a strict obligation to disclose the actual best method that they were aware of. Even though the patentee may not have considered any of the methods to offer any advantages over other classical salification methods, the fact that they had not disclosed their actual method was fatal to the patent.

The effective take away from the case is that Australia will strictly enforce the patentee's need to describe the best mode of implementing the invention when filing an Australian complete application (or, more likely, on the PCT filing date). This is to be distinguished from other jurisdictions, notably the United States, where the best mode attack has recently been substantially eliminated.

Peter Treloar

Shelston IPLevel 21, 60 Margaret StreetSydney NSW 2000, AustraliaTel: +61 2 9777 1111Fax: +61 2 9241

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