Interpharma Pty Ltd v Commissioner of Patents [2008] FCA 1283

Interpharma Pty Ltd v Commissioner of Patents [2008] FCA 1283

Interpharma had no reasonable prospect of succeeding on its s 52 Trade Practices Act claim because Lilly's alleged representations to the Commissioner in seeking a statutory extension of patent term were not made in trade or commerce. Although the Court was not satisfied that Interpharma had no reasonable prospect on standing, it had no reasonable prospect of prosecuting the ADJR Act, s 192 Patents Act and s 39B Judiciary Act claims because its delay in challenging the extension was unreasonable. As those claims would not proceed, the proposed amendments were pointless.

Jurisdiction
Australia
Judgment Date
21 August 2008
Procedural Posture
Patent, Administrative Law and Trade Practices Act Proceeding / Interlocutory Motions: Application by Lilly for Dismissal Under S 31 a of the Federal Court of Australia Act 1976 (cth), and Application by Interpharma for Leave to Amend
Outcome
Lilly's s 31A dismissal motion succeeded as to the challenged claims; Interpharma's amendment motion was dismissed; Interpharma was ordered to pay the first respondent's costs of the motions specified.
Legal Topics
['misleading and Deceptive Conduct in Trade or Commerce' 'extension of Patent Term' 'standing as a Person Aggrieved' 'delay in Judicial Review Proceedings' 'summary Judgment' 'rectification of Register of Patents']
['trade Practices' 'administrative Law' 'patents' 'practice and Procedure'] ['misleading and Deceptive Conduct in Trade or Commerce' 'extension of Patent Term' 'standing as a Person Aggrieved' 'delay in Judicial Review Proceedings' 'summary Judgment' 'rectification of Register of Patents']

Case Brief

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Procedural Posture

Patent, Administrative Law and Trade Practices Act Proceeding / Interlocutory Motions: Application by Lilly for Dismissal Under S 31 a of the Federal Court of Australia Act 1976 (cth), and Application by Interpharma for Leave to Amend

Legal Issues

  1. 1 ['Whether alleged representations in an application to the Commissioner of Patents for extension of patent term were made in trade or commerce for the purposes of s 52 of the Trade Practices Act 1974 (Cth).' 'Whether Interpharma had standing as a person aggrieved to seek ADJR Act review, rectification under s 192 of the Patents Act 1990 (Cth), and relief under s 39B of the Judiciary Act 1903 (Cth).' 'Whether Interpharma should be denied relief because of delay in instituting proceedings challenging the extension of term.' 'Whether Interpharma should have leave to amend its Amended Application and Amended Statement of Claim.']

Ratio Decidendi

Interpharma had no reasonable prospect of succeeding on its s 52 Trade Practices Act claim because Lilly's alleged representations to the Commissioner in seeking a statutory extension of patent term were not made in trade or commerce. Although the Court was not satisfied that Interpharma had no reasonable prospect on standing, it had no reasonable prospect of prosecuting the ADJR Act, s 192 Patents Act and s 39B Judiciary Act claims because its delay in challenging the extension was unreasonable. As those claims would not proceed, the proposed amendments were pointless.

Court Disposition

Lilly's s 31A dismissal motion succeeded as to the challenged claims; Interpharma's amendment motion was dismissed; Interpharma was ordered to pay the first respondent's costs of the motions specified.

Orders

  • ['Paragraphs 1 to 6, 8 and 10 of the Amended Application and paragraphs 7 to 19 of the Amended Statement of Claim be dismissed pursuant to s 31A of the Federal Court of Australia Act 1976 (Cth).' "The applicant's motion notice of which was filed on 22 July 2008 be dismissed." "The applicant pay the first...