Alphapharm Pty Ltd v H Lundbeck A/S

In the case of Alphapharm Pty Ltd v H Lundbeck A/S, the primary dispute centred around whether a section 70 application for an extension of the term of a patent could be filed under section 223 of the Patents Act 1990 (Cth) after the original patent term had expired. The matter was heard and determined by the Delegate of the Commissioner of Patents, Karen Ayers. The crux of the legal issues was whether the provisions of section 223, which allow for extensions of time in certain circumstances, applied to section 70 applications and if so, whether the section 70 application in question could be considered for such an extension despite being filed one day after the original patent term had expired.

The court examined the statutory framework, particularly sections 223, 70, and 71 of the Patents Act, to determine the availability of an extension of time for filing a section 70 application. The court concluded that section 223 did not exclude section 70 applications from its provisions, provided that the application was filed within the term of the patent as required by section 71(2). The court found that the section 70 application in question was filed one day before the original term of the patent expired, thus meeting the statutory requirement. Additionally, the court acknowledged the patentee's misunderstanding of the law, which led to the failure to apply for an extension based on the correct ARTG registration. The court balanced the public interest in encouraging research and development in the pharmaceutical field against the potential disadvantage to the opponents due to their commercial strategy to enter the market despite being aware of the earlier registration.

The court granted the section 223 extension of time to file the section 70 extension of term application, noting that while there was some public disadvantage due to the likely increased cost of the patented drugs for the short period of the extension, this was outweighed by the broader public interest in encouraging research and development. The Commissioner was directed to proceed with processing the section 70 extension of term, subject to any appeal or review. If an appeal or review was initiated within 30 days, the Commissioner was to defer consideration of the extension until the appeal or review was finally disposed of. In relation to costs, the court awarded costs against the opponents as the patentee successfully argued for the section 223 extension.