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Blake Dawson - Consequences of a finding of a lack of novelty of an independent claim not applying to dependent claims

Felicity Dougherty and Grant Fisher of Blake Dawson reviews E I Du Pont de Nemours & Co v Imperial Chemical Industries Plc [2007] FCAFC 163, an important decision on issue estoppel for patent prosecutions. According to Felicity Dougherty and Grant Fisher, in circumstances where an independent claim of a parent patent application was held to be anticipated, divisional applications (which were amended to avoid the independent claim and rely only on dependent claims) were not automatically considered to be anticipated.

Felicity Dougherty and Grant Fisher note that this case is a reminder to those opposing a patent on the basis that it has been anticipated to ensure that the novelty of all claims is addressed. Importantly, an estoppel on the basis of a finding of anticipation, for example, for related divisional applications, will only cover the claim or claims in respect of which the finding of lack of novelty was made.

Blake Dawson - Consequences of a finding of a lack of novelty of an independent claim not applying to dependent claims


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Issue estoppel in patent case

Alexia Mayer, Lawyer of Allens Arthur Robinson, reviews E I Du Pont de Nemours & Co v Imperial Chemical Industries Plc [2007] FCAFC 163 in which the Full Federal Court considered whether a finding that a parent application lacked novelty necessarily encompassed a finding that a specific dependent claim within that application also lacked novelty, so as to raise an issue estoppel in subsequent proceedings relating to a claim of that scope in a divisional application.

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