H.Lundbeck A/S and Commissioner of Patents

This matter concerned an application for review of a decision by the Commissioner of Patents to grant a licence pursuant to s 223(9) of the *Patents Act 1990* (Cth). The applicant, H. Lundbeck A/S, was the patentee of a patent for which an extension of time had been granted to apply for an extension of term. The dispute arose because another party had allegedly exploited or taken definite steps to exploit the invention due to the patentee's failure to apply for the extension of term within the prescribed time. The Honourable Justice Jackman, Deputy President, presided over the appeal.

The central legal issues before the court were whether the conditions for the Commissioner to exercise discretion under s 223(9) of the *Patents Act 1990* (Cth) had been met. Specifically, the court had to determine if the other party had exploited, or taken definite steps to exploit, the invention concerned because of the patentee's failure to apply for an extension of term within the time allowed. This involved considering the meaning of "exploited or took definite steps to exploit" and whether the circumstances warranted the exercise of the Commissioner's discretion to grant a licence for the protection or compensation of such parties.

The court's reasoning focused on the interpretation of s 223(9) of the *Patents Act 1990* (Cth). The provision requires that for the Commissioner to grant an extension of time and for the prescribed provisions to have effect for the protection or compensation of third parties, the third party must have exploited, or taken definite steps to exploit, the invention because of the patentee's failure to do a relevant act within the allowed time. The court considered the evidence presented regarding the actions of the other party in relation to the invention. The court noted the extensive litigation between the parties concerning the patent, indicating its significant commercial value. The court applied the principles of statutory interpretation to ascertain the scope and application of s 223(9), particularly concerning the causal link required between the patentee's delay and the third party's exploitation.

The court ultimately upheld the Commissioner's decision to grant a licence. The Deputy President found that the evidence established that the other party had indeed exploited, or taken definite steps to exploit, the invention due to the patentee's failure to apply for an extension of term within the statutory timeframe. Consequently, the court affirmed the Commissioner's exercise of discretion under s 223(9) to protect the interests of the exploiting party.