H. Lundbeck A/S v Commissioner of Patents [2017] FCA 56

H. Lundbeck A/S v Commissioner of Patents [2017] FCA 56

Section 223(9) of the Patents Act 1990 (Cth) encompasses three independent scenarios ('failure to do the relevant act within the time allowed', 'lapsing of the patent application', or 'ceasing of the patent'), and 'ceasing' includes expiry. Therefore, the prescribed provisions apply to acts taken during the gap between expiry and grant of extension, and the applications for licences by the Generics are valid. No reviewable error occurred in the Deputy Commissioner's procedural decision.

Parties
Applicant: H. Lundbeck A/S; First Respondent: Commissioner of Patents; Second Respondent: Alphapharm Pty Ltd; Third Respondent: Apotex Pty Ltd; Fourth Respondent: Aspen Pharma Pty Ltd; Fifth Respondent: Sandoz Pty Ltd
Jurisdiction
Australia
Judgment Date
03 February 2017
Procedural Posture
Judicial Review and Declaratory Relief / Final Judgment
Outcome
Application dismissed with declaratory relief granted
Legal Topics
Patents, Statutory Construction, Administrative Law, Extension of Time, Extension of Patent Term, Compensation and Protection Provisions
Intellectual Property Patents Statutory Construction Administrative Law Extension of Time Extension of Patent Term Compensation and Protection Provisions

Case Brief

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Parties

H. Lundbeck A/S

Applicant

Commissioner of Patents

First Respondent

Alphapharm Pty Ltd

Second Respondent

Apotex Pty Ltd

Third Respondent

Aspen Pharma Pty Ltd

Fourth Respondent

Sandoz Pty Ltd

Fifth Respondent

Procedural Posture

Judicial Review and Declaratory Relief / Final Judgment

Legal Issues

  1. 1 Construction of s 223(9) of the Patents Act 1990 (Cth)
  2. 2 Meaning of 'ceasing' and 'expiry' of patent
  3. 3 Jurisdiction for review and declaratory relief

Ratio Decidendi

Section 223(9) of the Patents Act 1990 (Cth) encompasses three independent scenarios ('failure to do the relevant act within the time allowed', 'lapsing of the patent application', or 'ceasing of the patent'), and 'ceasing' includes expiry. Therefore, the prescribed provisions apply to acts taken during the gap between expiry and grant of extension, and the applications for licences by the Generics are valid. No reviewable error occurred in the Deputy Commissioner's procedural decision.

Court Disposition

Application dismissed with declaratory relief granted

Orders

  • The prescribed provisions in s 223(9) of the Patents Act 1990 (Cth) (regs 22.21(2) to 22.21(5) of the Patents Regulations 1991 (Cth)) have effect in relation to Australian Patent No. 623144 and the licence applications by the second to fifth respondents for the period 13 June 2009 to 9 December 2012.
  • Declaration that the licence applications by the second to fifth respondents in relation to the Patent are valid.