Allergan Australia Pty Ltd (‘Allergan’) manufactures Botox and is the registered owner of the BOTOX mark. The Applicant, Self Care Holdings (‘Self Care’) supply cosmetic anti-wrinkle creams under the branding elements ‘instant Botox alternative’ and Protox. In the first proceeding brought by Allergan against Self Care, it was alleged that Self Care infringed the BOTOX trade mark, and had conveyed misleading representations concerning the efficacy of their product. The primary judge found Self Care not guilty of the allegations, but this decision was overturned by the Full
The patent application in question, filed by BASF Plant Sciences GmbH (‘BASF’), relates to genes from a species of unicellular algae that encode enzymes which may be used to generate transgenic plants for the production of fatty acids (‘the application’).
Upon acceptance of the application, CSIRO lodged a Notice of Opposition and BASF subsequently applied to amend the application and introduce new dependent claims. The Australian Patent Office initially refused the proposed amendments on the basis that, as a result of the proposed amendments, the specification would not comply with the requirements of s 40(3) of the Act. However, BASF submitted further proposed amendments (‘the amendments’) which were subsequently allowed. CSIRO subsequently appealed to the Federal Court under s 104(7) of the Act.
The issue was whether the amendments were allowable in accordance with s 102(1) of the Act. Section 102(1) of the Act, as amended, provides that “an amendment of a complete specification is not allowable if, as a result of the amendment, the specification would claim or disclose matter that extends beyond that disclosed in the complete specification as filed”. 1
On the basis of that the ‘Raising the Bar’ amendments to s102(1) of the Act were intended to align the law in Australia with UK and European law, Justice Beach analysed various UK and European authorities and confirmed that when determining the allowability of amendments to specifications in accordance with s 102(1) of the Act, “added matter” and “intermediate generalisation” (i.e., a process that takes a feature which is only disclosed in a particular context and seeks to introduce it into a claim deprived of that context) should be taken into account.
Ultimately, Justice Beach refused the amendment on the basis that the amendment isolated a feature that was originally only disclosed in combination with other features, and therefore, would claim subject matter that was out of context such that it would constitute an impermissible intermediate generalisation.
This decision confirms that the law regarding allowable amendments in accordance with s102(1) of the Act as amended under the ‘Raising the Bar’ amendments closely mirrors the law of the United Kingdom and Europe.
1 Patents Act 1990 (Cth) s 102(1).