Catalyst Intellectual Property is proud to recognise the achievement of David Koedyk in winning second prize for the prestigious Jon McLaren Emmerson QC Essay Prize for 2018.
David’s essay entitled “Actavis in the Antipodes – A doctrine of equivalents for New Zealand?” was presented at the 2018 conference of the Intellectual Property Society of Australia and New Zealand (IPSANZ) held recently in Queenstown.
The essay examined the United Kingdom Supreme Court decision Actavis UK Limited and others v Eli Lilly and Company  UKSC 48, which introduced the “doctrine of equivalents” to the law of patent claim interpretation in the UK. With Actavis, the English courts abandoned a language-limited approach to patent claim interpretation, and extended protection to include “equivalents” of the claimed invention which may nevertheless be outside the language of a patent claim.
New Zealand is particularly receptive to English developments in patent law, and this attitude opens the door for New Zealand to adopt Actavis and import the doctrine of equivalents now in force in the UK. The essay argues that, while the legal framework in New Zealand allows for a doctrine of equivalents to take hold, New Zealand should refrain from doing so.
The prize was awarded by the Hon. Mr Robert French AC, former Chief Justice of the High Court of Australia, who commented that that the essay was “persuasive in its balanced description of comparative approaches and substantive discussion with respect to the merits of each approach”.
A copy of the essay is available here.