The Federal Court has provided some useful guidance on the new patent entitlement provisions which came into effect on 15 April 2013 via the Intellectual Property Laws (Raising the Bar) Act 2012 (CTH).

Justice Rares of the Federal Court has granted Reckitt Benckiser an interlocutory injunction to restrain GlaxoSmithKline Australia from using a bottle neck liner in its dosing system: Reckitt Benckiser Healthcare (UK) Ltd v GlaxoSmithKline Australia Pty Ltd [2013] FCA 583. The case concerned a patent owned by Reckitt for a liquid dispensing apparatus implemented in a dosing system for its Nurofen for Children product. Reckitt alleged that Glaxo infringed its patent through the use of a similar dosing system in its Panadol for Children 1-5 years product. Glaxo contended that there was no infringement and that Reckitt's patent was invalid on the grounds of novelty and entitlement.

After rejecting the novelty argument due to a lack of evidence, Justice Rares also held that there was insufficient evidence to find that the inventors were not entitled to convey their rights to Reckitt's predecessor, Boots, so as to feed the chain of title to Reckitt. In addition, Justice Rares found that the new entitlement provisions precluded Glaxo from asserting invalidity on this basis also. Under the new section 22A of the Patents Act 1990 (CTH), a patent will not be invalid merely because it was or was not granted to a person who was or was not entitled to it. Further, section 138(4) of the Patents Act provides that a court may only make an order for invalidity if it is satisfied that in all the circumstances, it is just and equitable to do so. Justice Rares held that, if the issue of entitlement was tested, justice and equity would regard the position that the two parties with an interest in the invention had arrived at in their agreement in 2006 should not be disturbed at the suit of a third party (Glaxo).

Upon finding a prima facie case for infringement and rejecting the two grounds of invalidity, Justice Rares granted interlocutory relief in favour of Reckitt.

Justice Rares subsequently granted Reckitt another interlocutory injunction restraining Glaxo from marketing products with a bottle neck liner used in conjunction with an alternative syringe: Reckitt Benckiser Heatlhcare (UK) Ltd v GlaxoSmithKline Australia Pty Ltd (No2) [2013] FCA 736. The alternative syringe was a 'design-around' the product which was the subject of the first injunction.

The decision to grant the second injunction, on the basis that there was a prima facie case that the alternative syringe infringed Rickett's patent, was overturned this month by the Full Federal Court. The Full Federal Court discharged the second injunction on the basis that Reckitt's case for infringement, while arguable, had significant weaknesses which weighed against Reckitt in the balance of convenience. The Full Federal Court also took into account evidence as to the balance of convenience which it held had been wrongly excluded by Justice Rares. See: GlaxoSmithKline Australia Pty Ltd v Reckitt Benckiser Healthcare (UK) Limited [2013] FCAFC 102.