Background
Telix sought declarations that specified claims of Purdue’s Australian patent for PSMA binding ligand-linker conjugates were invalid and should be revoked. Purdue cross-claimed, alleging infringement of certain claims and seeking relief to restrain it.
Purdue filed an interlocutory application seeking leave to amend the patent, including claim 1. It later limited the application to a correction to the specification, abandoned the proposed claim amendments, and then elected not to proceed with the amended application. Purdue accepted it should pay Telix’s costs.
The Court’s Holding
Justice Burley ordered Purdue to pay Telix $25,000 in lump-sum costs, within 14 days. Although Telix claimed $44,581.60 under a costs statement referring to the Intellectual Property Practice Note IP-2, the Court substantially reduced that amount.
The Court held it was appropriate to apply IP-2 even though its standard directions had not been made in the proceeding. IP-2 permits lump-sum interlocutory costs orders and is intended to encourage parties to resolve or narrow such disputes. The Court accepted Purdue’s criticisms that the claimed costs were excessive, insufficiently particularised in material respects, and disproportionate to the limited work involved.
Key Takeaways
- A party abandoning an interlocutory patent-amendment application may be ordered to pay the other party’s costs promptly.
- IP-2 may guide a lump-sum costs assessment even where its standard directions were not formally made.
- Costs statements may be substantially discounted where work, staffing, claimed solicitor-client components, or rates are excessive for party-party recovery.
Why It Matters
The decision reinforces the Federal Court’s willingness to assess and order prompt payment of interlocutory costs in patent litigation. It also signals that IP-2 cost claims must be proportionate and supported by adequate detail, particularly where an application is abandoned before determination.