Welcome
The validity of IP rights is often challenged on external grounds
such as lack of novelty in the case of patents or distinctiveness for
trade marks. However valid ownership or entitlement is becoming
increasingly scrutinised and ensuring correct chain of title to
IP is vital to securing valuable and enforceable rights.

Inspire March 2022
In this edition of Inspire, Melissa
Wingard reviews the decision
in Whitsunday Aerial Solutions
Professionals v Emprja in which
the applicant sought to rely upon
purported oral and subsequent
written “confirmatory” assignments
of copyright. The decision highlights
both the importance of the
circumstances in which the rights
come into being in determining the
original owner of those rights as well
as the effectiveness and limitations
of purported assignments.

Inventorship, described as “one of
the muddiest concepts in the muddy
metaphysics of the patent law”
continues to exercise the minds
of the Federal Court, this time in
the decision in Vehicle Monitoring
Systems v SARB. As Helen
McFadzean explains, determining
the “ inventive concept” by reference
to the whole of the specification
2 and not just the claims is a crucial
element of test to be applied.

While the Full Court confirmed
that invention may reside in the
conception of an idea without the
need for reduction to practice,
the idea must nevertheless be a
sufficiently material contribution to
the inventive concept as a whole.

Matthew Overett discusses the
use of disclaimers in Australian
patent practice. As the decision
in Boehringer Ingelheim v Elanco
illustrates, the pre-raising the bar
amendment test is rather generous
to patentees seeking to avoid
prior art, allowing a disclaimer
directed to subject matter which
was not specifically disclosed in
the original specification. However,
the current provisions may not
be so benevolent, meaning
patentees must remain cautious
when making such amendments.

Vale Graham Cowin
It is with great sadness that we advise that
our former Managing Partner, Graham Cowin,
passed away suddenly in March this year.

Graham’s career commenced
as an Examiner of Patents with
the Australian Patents Office.

He became a registered Patent
Attorney in 1978 after joining Phillips
Ormonde Fitzpatrick in 1975. Ten
years later he became a partner
with the firm, and was Managing
Partner from 2005 until 2015. His
contribution to our firm for well
over 40 years was extraordinary.

He was incredibly well-respected
by his peers and within the world
of IP. Graham was a Councilor of
the Institute of Patent and Trade
Mark Attorneys of Australia (IPTA)
for many years from 1996 with
various responsibilities including
Convener of the Education
Committee, Chair of the IPTA
Academy of Education, and a
member of the Ethics and Disputes
Committee. He was elected
President of IPTA in 2011.

Our thoughts are with his
wife Helen, his children
Andrew and Prue,
friends and colleagues
at this sad time.

Also in this edition, Leigh Guerin
looks at claim construction of
relative terms, Ye Rin Yoo provides
an update on the ground of bad
faith in trade mark oppositions,
Jessica Chadbourne analyses
how a challenge to a patent
term extension can play a role
in defeating an interlocutory
injunction application, and we say
welcome to some new recruits
across our technology teams.

Adrian Crooks, Principal
BEng(Civil)(Hons) LLB LLM FIPTA
adrian.crooks@pof.com.au



What is patent
claim construction
essentially about?
Claim 1 of the patent in issue
recited, in part, “A pharmaceutical
composition comprising… (a) at
least one water-soluble therapeutic
agent…in a therapeutically effective
total amount constituting about 30%
to about 90% by weight…”. Further,
claim 11 recited a composition “that
consists essentially of the therapeutic
agent and the buffering agent”.

In his reasons Justice Burley made
light work of the construction of
“essentially”. Whilst essentially
is a relative term, it was given its
ordinary meaning of “mostly”,
but not exclusively, which was
consistent with its use in the claims
and the specification. The terms
“therapeutic agent” and “about”
required a little more consideration.

The claims encompassed a
pharmaceutically active parent
compound (in the form of a prodrug)
or a sodium salt of the parent
compound. Because the sodium
salt of the parent compound is
heavier than the parent compound
alone, it needed to be determined
if the claimed weight range of the
“therapeutic agent” related to the
parent compound only or could also
relate to the salt. With reference
to the specification, Justice Burley
determined that either the sodium
salt or the parent compound alone
can be regarded as therapeutic
agents even though only the parent
compound exerts a therapeutic
effect. Hence a composition having
31% of the sodium salt would fall
within the claimed range of 30%
to 90% for the “therapeutic agent”
even though the percentage (by
weight) of the pharmaceutically
active component (i.e. the parent
compound) was less than 30%
when the weight of the sodium is
disregarded. The term “about”, like “essentially”,
is a relative term. In the context
of the patent claims it was used
to define the weight ranges of
the various components of the
composition. Justice Burley was
asked to determine if “about”
should allow a 5% margin of error
(i.e. “to 90%” would become “to
94.5%”) or should only allow for
rounding to the nearest number (i.e.

“to 90%” becomes “to 90.49%”).

It was agreed by both sides that
the term “about” was not a term in
the precise field of pharmaceutical
sciences and therefore was “mostly
avoided”. Consequently, the experts
assisting the court struggled to
give relevant meaning to the term.

Justice Burley turned to the ordinary
English meaning of the term
(“near; close to”) and the use of the
term in the patent specification.

Notably, the term was not defined
in the specification. Therefore, the
applicants asserted that specific
examples and disclosures in the
specification supported the broader
5% margin of error. However,
Justice Burley did not agree that the
passages cited by the applicants
clearly supported the broader range.

He further stated that it could not be
the intention of the inventors for the
meaning of the word “about” to be
mined from obscure passages in the
specification, nor could
such obscurity provide
sound basis for construing a
claim. Ultimately, the term “about”
was narrowly construed to allow for
rounding errors only (i.e. “to 90%”
was considered as “to 90.49%”)
In comparison the term “about”
was briefly considered in Meat &
Livestock Australia Limited v Cargill,
Inc [2018] FCA 51, also in relation
to a claimed numerical range. Here
Justice Beach construed “about”
as providing a 10% margin of error.

Importantly, unlike the present case,
the specification clearly defined
“about” as meaning ±10%.

While it is common to use relative
or imprecise terminology in claims,
this should be done with caution.

Typically, these terms are used as
a fallback allowing extension of the
claimed boundaries, which may
provide utility if a potential infringing
act or product arises. However, as
exemplified with the term “about”
this extension of the boundaries
may be limited and may vary
depending on the technical field
of the invention.

3 Dr Leigh Guerin | Senior Associate
BMedPharmBiotech(1st Class Hons) PhD MIPLaw
1 Pharmacia LLC v Juno Pharmaceuticals Pty Ltd [2022] FCA 92
Inspire March 2022
Anyone familiar with patents in the life sciences space
will be familiar with patent claims that use terminology
such as “essentially”, “therapeutic agent” and “about”.

The familiarity of such terms means that they are
often recited without much consideration. However,
their meaning was in issue in the recent decision in
Pharmacia LLC v Juno Pharmaceuticals Pty Ltd. 1
leigh.guerin@pof.com.au