Case: ICI Chemicals &amp; Polymers Ltd v Lubrizol Corp Inc [2000] FCA 1349 ; (2000) 106 FCR 214
Outcome: cited
Section 233 of the 1990 Act has been applied on the basis that a 1952 Act patent can now only be revoked on a ground provided for by the 1990 Act but as if it corresponds with the similar ground available under the 1952 Act (eg NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd [1993] FCA 404 ; (1993) 44 FCR 239 per Lockhart J at 250 254 (agreed in by Northrop J at 241 and Burchett J at 268); ICI Chemicals &amp; Polymers Ltd v Lubrizol Corp Inc [2000] FCA 1349 ; (2000) 106 FCR 214 at [22] [23]; and Abbott Laboratories v Corbridge Group Pty Ltd [2002] FCAFC 314 , (2002) 57 IPR 432 at [81] ). This is a somewhat strange result as the grounds do not correspond, particularly in relation to lack of novelty and obviousness. Uninstructed by authority, I should have thought that the intention was to maintain the status quo in relation to revocation for 1952 Act patents with time to run under the 1990 Act in other words, the grounds for revocation would be those set out in s 100(1) of the 1952 Act. That would maintain the status quo and neither advantage nor disadvantage the 1952 Act patentee. However, that approach is not reflected in the authorities and has not been contended for by either party. 125 As I have found that claim 1 and dependent claims lack novelty, this ground adds nothing to that result. The 1990 Act contemplates revocation claim by claim (s 138(3)); the 1952 Act ground is "that the patent was obtained on a false suggestion or representation" (s 100(1)(k)). Nonetheless, the Full Court in ICI Chemicals &amp; Polymers Ltd v Lubrizol Corp Inc [2000] FCA 1349 ; (2000) 106 FCR 214 at [93] held that the opening words of s 100(1) of the 1952 Act contemplated claim by claim revocation. 126 It was submitted for the patentee that the descriptions "unexpected" and "interesting" are expressions of opinion and can only be falsified or made misleading by establishing that they were not genuinely held. That distinction is well-known in the fields of misrepresentation, misleading conduct contrary to s 52 of the Trade Practices Act 1974 (Cth) and defamation. There is a good deal to commend the approach in this context. There is material in the internal documents of Sanofi-Aventis that would provide some support for such a case. However, it was pointed out on behalf of Sanofi-Aventis that such a case had not been pleaded or presented by the applicants. Further, that does not appear to be the way in which the issue was approached by the Full Court in Ranbaxy [2008] FCAFC 82 at [131] [141] where it was considered objectively. The decision of the Full Court in ICI Chemicals [2000] FCA 1349 ; 106 FCR 214 may support an objective approach as it was held that a false suggestion or representation may be made in good faith although the false statement in that case could possibly be regarded as a statement of fact not a statement of opinion (see ICI Chemicals [2000] FCA 1349 ; (2000) 106 FCR 214 at [88] [91]). 128 Even if the statements were false, it must be asked whether the suggestion or representation was "a material inducing factor which led to the grant" ( ICI Chemicals [2000] FCA 1349 ; (2000) 106 FCR 214 at [88] citing Prestige Group (Aust) Pty Ltd v Dart Industries Inc (1990) 26 FCR 197 at 201 per Lockhart J and 218 per Gummow J, with whom Northrop J agreed). 130 However, in the present case the Patent Office file shows no indication that the examiner was conscious of any potential problem or raised one with the patentee. That being so, the approach of the Full Court in Ranbaxy [2008] FCAFC 82 would require a negative answer to the question as to whether the false statements did materially induce the decision (see also ICI Chemicals [2000] FCA 1349 ; 106 FCR 214 at [92] ). In any event, I would be inclined to think that by the time this application was being considered, patent officers would have regarded the description of a finding as "unexpected" or "interesting" in the field of selection patents as likely to be a patent attorney's "puff" rather than a serious statement of fact.