4 April, 2017
Merial, Inc. v Intervet International B.V. (No 3) [2017] FCA 21 (25 January 2017)*
What you need to know
The Federal Court upheld Merial’s opposition to Intervet’s patent application for a veterinary soft chew on the grounds of lack of entitlement and lack of inventive step.
The Court found that Intervet did not derive title to the alleged invention from one of the inventors named on the patent application.
What you need to do
When applying for a patent, it is critical to ensure there is a chain of title transferring all rights in the invention from the named inventors to the patent applicant.
Make sure you retain copies of all documents required to prove the chain of title.
Background
Merial appealed to the Federal Court following its unsuccessful opposition in the Patent Office to Intervet’s Australian patent application no. 2009203180. The alleged invention claimed in Intervet’s patent application was a veterinary soft chew containing active ingredients for the treatment of worms and other parasites.
Lack of entitlement
Merial argued that Intervet did not derive title to the alleged invention from one of the named inventors on the patent application, Mr Mark Pieloch.
Mr Pieloch was not an Intervet employee. Intervet had collaborated with Mr Pieloch and his company from early 2002 in relation to the development of soft chews for horses and dogs. In mid-2002, during the course of the collaboration, Intervet filed the patent application in suit.
Intervet contended that Mr Pieloch had executed a written assignment of his rights in the alleged invention to Intervet, but that due to a number of mergers and organisational changes since 2002, a copy of the assignment could not be located. Mr Pieloch, who gave evidence in the case, denied that he had executed an assignment. Justice Moshinsky accepted Mr Pieloch’s evidence and found that it was consistent with the other evidence before the Court, including the contemporaneous documents that were available.
Intervet contended in the alternative that, even if there was no written assignment, an assignment should be implied because Mr Pieloch was “hired to invent” a soft chew formulation. Justice Moshinsky found there was no basis to imply an assignment for a number of reasons, including:
- the relevant soft chew technology had already been developed by Mr Pieloch prior to his engagement by Intervet (ie there was nothing left for Mr Pieloch to be “hired to invent”); and
- an implied term would be inconsistent with the provisions of other agreements between the parties at the relevant time, one of which provided for an assignment only when certain conditions (which had not been met) were satisfied.
Lack of inventive step
Merial also opposed the patent application on the ground of lack of inventive step (or obviousness). Justice Moshinsky found that some, but not all of the claims of the patent were obvious in light of the closest prior art considered together with the common general knowledge in the field. This was because the combination of features claimed was either disclosed by the prior art or would have been made as a matter of course by the notional skilled team.
Implications
This case is a rare example of a patent opposition being successful under the regime in place prior to the “Raising the Bar” amendments, under which opponents were required to show that, if granted, the patent would be clearly invalid.
This case serves as a reminder that, when applying for a patent, you should ensure that there is a chain of title transferring all rights in the invention from the named inventors to the patent applicant. This is especially critical when the inventor is not an employee but a third party who is collaborating with your organisation. It is also important to ensure that documents proving the chain of title are retained, particularly if corporate restructuring occurs.
* Ashurst acted for Merial in this proceeding.
For further information, please contact:
Grant Fisher, Partner, Ashurst
grant.fisher@ashurst.com
