Is It Inevitable? ‘Inherency’ in Australian Patent Law

One of the most fundamental requirements for an invention to be validly patentable is that it must be novel, i.e. new.  An invention lacks novelty or, in other words, is anticipated by a prior art  reference, only when a single reference discloses each and every element of the claimed invention.  If there is some difference between the claimed invention and the single reference, then the invention is novel – though it may nonetheless lack an inventive step if the difference is insignificant or would have been obvious to the skilled person.

Finding lack of novelty is straightforward when a prior art reference clearly and unambiguously discloses exactly the same thing that an inventor claims to have invented.  However, the situation can be more complex if the reference arguably contains an implicit or inherent disclosure of one or more elements of the claimed invention.

Questions of inherent disclosure most commonly arise in the chemical and pharmaceutical fields, particularly where an invention is based upon some newly-discovered property of a previously-known compound.  If the compound always had the ‘new’ property, and it is only that nobody had noticed, then can the invention be novel?

The issue of what, exactly, is ‘implicitly’ disclosed in a prior art reference arises in a decision of a full bench of the Federal Court issued on 23 January 2015 (Bristol-Myers Squibb Company v Apotex Pty Ltd [2015] FCAFC 2) in an appeal relating to a long-running dispute over the validity of a patent covering the antipsychotic drug aripiprazole.  The drug is marketed in Australia by Bristol-Meyers Squibb (BMS) as ABILIFY, under license from the patentee Otsuka Pharmaceutical Co., Ltd.

The Full Court has upheld the earlier finding of a single judge of the court that the patent is valid, notwithstanding that there is prior art teaching which, if carried out in a particular manner, could result in the claimed product.  On the other hand, it seems that there are many ways in which it could be carried out that would not result in the claimed product.

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Tags: Australia, Infringement, Inherency, Pharmaceuticals, US

Contact Lens Cleaning Method ‘Inherently’ Anticipated by Prior Use

Abbott Medical Optics, Inc v Alcon Laboratories, Inc [2011] APO 79 (26 September 2011)

Opposition – novelty – whether claimed method anticipated by prior published instructions and prior use where benefits of method previously unrecognised – whether ‘strict proof’ of prior use required

This decision, issued by Delegate Dr B. Akhurst, concerns methods for the care of contact lenses.  In particular, the invention at issue is directed to the use of a single solution for cleaning and disinfecting contact lenses.

The interesting aspect of the decision is its analysis of novelty in the case that the claimed method may have been taught/performed before the relevant priority date, even though the actual inventive contribution or discovery of the later inventor may not have been previously disclosed or recognised.

In some other jurisdictions, such as the US, this situation would fall under the ‘doctrine of inherency’.  In Australia, there is no formal legal ‘doctrine’ of inherency although – as this decision demonstrates – this does not mean that it is necessarily possible to obtain a patent based merely on the discovery of a previously unknown property of a known process or composition.  In place of any distinct doctrine, the notion of inherency is itself inherent in the established tests for novelty of a claimed invention.

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Tags: Australia, Inherency, Novelty, Opposition