Federal court decision on lack of entitlement

The Federal Court of Australia decided in favour of our client, Merial, Inc., that Merial’s lack of entitlement ground of opposition was clearly established and that Intervet is not entitled to the grant of Australian patent application No. 2009203180 (Merial, Inc. v Intervet International B.V (No 3) [2017] FCA 21). This decision arises from an appeal of a patent office decision.

Decision

The application is directed to soft chew formulations for the administration of pharmaceuticals to a broad range of animals in a palatable form. The application lists three inventors and Intervet as the sole applicant. One of the inventors, Mark Pieloch, was not an employee of Intervet and was the owner of Pharma Chemie Inc.

Intervet filed a notice of entitlement in connection with the Australian patent application stating that Intervet “…by virtue of a contract with Pharma Chemie has entitlement to the invention from the actual inventor Pieloch”.

Under section 59(a) of the Patents Act 1990, one of the grounds of opposition is made out if the applicant for the patent is “not entitled to a grant of a patent for the invention”.

The concept of entitlement is dealt with under section 15(1) of the Patents Act 1990, where a patent for an invention may only be granted to a person who (a) is the inventor; (b) would, on the grant of a patent for the invention, be entitled to have the patent assigned to the person; or (c) derives title to the invention from the inventor or a person mentioned in paragraph (b).

The Court concluded that Merial’s lack of entitlement ground was clearly established and Intervet is not entitled to the grant of a patent for the invention described in the Patent Application on the basis that it does not derive title to the alleged invention from Mr Pieloch.

The findings of the Court included:

• Pharma Chemie was engaged by Intervet not for the broad purpose of developing a soft chew dosage form, but to incorporate Intervet's active ingredients into a formulation, using Pharma Chemie's soft chew technology. Further, Pharma Chemie had already developed the soft chew technology described in the patent applications prior to the engagement with Intervet.
• There was no express assignment from Pharma Chemie to Intervet of an invention in terms of any of the claims in the Patent Application. If such an express assignment did exist, given the nature of Intervet's business, the Court noted that it is likely that they would have retained records of that assignment.

Take home message

This decision highlights the importance of retaining evidence of how an applicant derives title to an invention from the actual inventor.