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Patent law

Patent infringement proceedings require resources, excellent legal skills, and technical expertise. The Kensington Swan team brings together this combination to provide unparalleled advice on New Zealand law in this area.

Potential patent infringement

We provide advice to our clients on the potential for patent infringement. We are enthusiastic about analysing factual situations and formulating creative and tailor-made arguments.
 

Patent invalidity

Most patent infringement cases also involve invalidity issues. We are up-to-date with all potential grounds of invalidity, can advise on revocation as a defence to infringement proceedings, and can run complex invalidity arguments.
 

Changes to the Patents Act

New Zealand’s Patents Act will soon be updated and significantly changed. One of the important changes will be an absolute novelty requirement. We are following these changes and are well versed in areas that affect our clients’ business interests.
 

Pharmaceutical patents

Pharmaceutical patent litigation, including interim injunction applications, is on the rise. This is a particular area of patent law where our well resourced litigation department comes into its own.
 

Patent oppositions

Should you wish to oppose the granting of a patent, we can help you complete the steps involved. An opposition must be commenced within three months from the publication date of the patent application.
 

Recent experience


InterPharma New Zealand Limited

InterPharma distributes chemotherapy products in New Zealand and was involved in a patent infringement claim by Sanofi-Aventis in which, at the outset, we successfully defended an interim injunction application.

We also successfully applied for judicial review of a Commissioner of Patents decision which allowed amendments to the patent Sanofi-Aventis was relying on. The outcome of that application has made new law in New Zealand. The successful defence of the injunction application meant our client could continue distributing its product, and the case was subsequently settled.


Eli Lilly & Co

Our client was sued by Pfizer for alleged breach of two patents relating to Pfizer’s well known Viagra product. Eli Lilly counterclaimed for revocation of the patents on various grounds of invalidity.

We advised our client at all steps of this complex litigation including dealing with numerous expert witnesses, researching and preparing legal arguments, and formulating strategies.

The litigation was extremely hard-fought and our client was ultimately successful. Pfizer abandoned its claim weeks before a lengthy High Court trial was scheduled to begin. Eli Lilly was able to continue selling its Cialis product in New Zealand without interference by Pfizer.


 

Related legal services

Enforcement of IP rights
Dispute resolution
Commercialisation and licensing

 

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