H Lundbeck A/S v Commissioner of Patents

In the case of H Lundbeck A/S v Commissioner of Patents, the primary issue before the court was the validity of Regulation 10.7(7) of the Patents Regulations 1991. Lundbeck A/S, the applicant, sought prohibition, an injunction, and declarations regarding the Commissioner of Patents' decision to extend the term of a patent. Specifically, Lundbeck challenged the validity of Regulation 10.7(7) on grounds of being ultra vires, retrospective, and injurious to substantive rights.

The legal issues involved interpreting the scope of the Governor-General's power under section 228 of the Patents Act 1990 to make regulations for the conduct of business relating to the Patent Office, including the amendment of the Register of Patents. Lundbeck argued that Regulation 10.7(7) was beyond the power granted by the Act, as it purported to amend the Register in a way that was not strictly ancillary to the Act's operation. Additionally, Lundbeck contended that the regulation was retrospective and prejudicial to their substantive rights.

The court examined the language of section 228, noting that it allows the Governor-General to make regulations for any purpose related to the amendment of the Register. The court found that Lundbeck's argument that the regulation was ultra vires was not supported by the text of the enabling Act, which clearly provided for regulations to be made for any purpose. The court also rejected Lundbeck's claims regarding retrospective operation and substantive rights, finding that these arguments did not undermine the validity of the regulation.

Ultimately, the court dismissed Lundbeck's application, holding that Regulation 10.7(7) was valid and within the scope of the Governor-General's regulatory power under the Patents Act. The court ordered that Lundbeck pay the Commissioner's costs.