H. Lundbeck A/S v Sandoz Pty LtdCNS Pharma Pty Ltd v Sandoz Pty LtdCitation:[2022] HCA 4Before:Kiefel CJ, Gageler, Edelman, Steward, Gleeson JJDate:09 Mar 2022Case Number:S22/2021, S23/2021Read more

H. Lundbeck A/S v Sandoz Pty LtdCNS Pharma Pty Ltd v Sandoz Pty LtdCitation:[2022] HCA 4Before:Kiefel CJ, Gageler, Edelman, Steward, Gleeson JJDate:09 Mar 2022Case Number:S22/2021, S23/2021Read more

The Court held that the non-exclusive licence did not extend to acts during the extended term of the patent, and the exclusive licensee had standing to bring infringement proceedings for acts done during the extended term under s 79 of the Patents Act 1990 (Cth). The respondent was not found to have engaged in misleading or deceptive conduct by failing to disclose the possibility of patent term extension.

Parties
Appellant: Appellants; Respondent: Respondent
Jurisdiction
Australia
Judgment Date
09 March 2022
Procedural Posture
Civil / Judgment
Outcome
appeal allowed in part
Legal Topics
Patent Infringement, Settlement Agreement Construction, Non Exclusive Licence, Extension of Patent Term, Misleading or Deceptive Conduct
Contract Law Intellectual Property Law Patent Infringement Settlement Agreement Construction Non Exclusive Licence Extension of Patent Term Misleading or Deceptive Conduct

Case Brief

Summary, issues, holding and outcome

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Parties

Appellants

Appellant

Respondent

Respondent

Procedural Posture

Civil / Judgment

Legal Issues

  1. 1 Whether the non-exclusive licence in the settlement agreement applied to acts during the extended term of the patent
  2. 2 Whether the exclusive licensee had rights to bring infringement proceedings under s 79 of the Patents Act 1990 (Cth) for acts done during the extended term
  3. 3 Whether the respondent engaged in misleading or deceptive conduct by not disclosing the possibility of patent term extension

Ratio Decidendi

The Court held that the non-exclusive licence did not extend to acts during the extended term of the patent, and the exclusive licensee had standing to bring infringement proceedings for acts done during the extended term under s 79 of the Patents Act 1990 (Cth). The respondent was not found to have engaged in misleading or deceptive conduct by failing to disclose the possibility of patent term extension.

Court Disposition

appeal allowed in part

Orders

  • The non-exclusive licence does not apply to acts during the extended term of the patent.
  • The exclusive licensee is entitled to bring infringement proceedings for acts done during the extended term.