Parke Davis Pty Ltd v Sanofi - [1981] FCA 216

Re: PARKE DAVIS PTY. LIMITED
And: SANOFI, a French Corporation and THE COMMISSIONER OF PATENTS (1981) 54
FLR 122
No. G108 of 1981
Patents

COURT

IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY
GENERAL DIVISION
Bowen C.J.(1), Deane(1) and Ellicott(1) JJ.

CATCHWORDS

Patents - Practice and Procedure - Application for leave to appeal - Applicant not party to decision below - Decision below directing regrant of patent after expiration of patent - Whether applicant had standing to appeal - Whether important question of law justifying leave to appeal.

Patents Act 1952, s.90(1)

Federal Court Rules, Order 52 r.15(2)

Patents - Practice and procedure - Application for leave to appeal - Applicant not party to primary decision - Decision directing regrant of patent after it had expired - Whether applicant had standing to appeal - Whether important question of law justifying leave to appeal - Patents Act 1952 (Cth), s. 90 (1) - Federal Court Rules, O. 52, r. 15 (2).

HEADNOTE

After the expiry of its letters patent the respondent applied for and was granted by the Supreme Court of Victoria an extension of time in which to petition for an extension of the patent, and an order was made directing the grant of new letters patent from the date of expiry of the original grant. The applicant, in the belief that the patent was about to expire, had spent money in preparing to market a product which could not be marketed if there were an extension or regrant of the respondent's patent. Being unaware of the respondent's applications the applicant had not filed any caveat against the extension of the patent, and nor was it a party to the proceedings in the Supreme Court.

Held: (1) The applicant was a "person interested" within s. 91 of the Patents Act and so had locus standi to apply for leave to appeal from the orders of the Supreme Court, although it had not been a party to those proceedings.

Cuthbertson v. Hobart Corporation (1921), 30 CLR 16; R. v. Rhys Jones Mactaggart & Burch Ltd. (1915), 20 CLR 544; Attorney-General (Q.) v. Wilkinson (1958), 100 CLR 422, referred to.
(2) The applicant had demonstrated "special reasons" within O. 52, r. 15 (2) of the Federal Court Rules, and would be granted leave to appeal, limited to the question of whether under s. 90 (1) of the Patents Act the Supreme Court had jurisdiction to extend the time for petitioning for an extension of a patent, or to extend a patent, when the petition for extension and the application for extension of time for petitioning were both made after the patent had expired.

HEARING

Sydney, 1981, November 23-24, 26; December 1-2. #DATE 2:12:1981

APPLICATION FOR LEAVE TO APPEAL.

The facts appear from the judgment.

K. R. Handley Q.C., J. J. Garnsey and J. Harris, for the applicant.

J. F. Lyons Q.C. and R. Merkel, for the respondent.

P. J. Deakin, for the Commissioner of Patents.

Cur.…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

Keep reading for free

Create a free CaseChat account to read Parke Davis Pty Ltd v Sanofi and more:

Read every judgment in full
Ask AI and get answers linked to paragraphs
See how each paragraph was cited in later cases
Download judgments as PDF or Word

Continue with Google

One click creates your free account or signs you in.

By continuing you agree to the Terms and Privacy Policy.

Details

Case: [1981] FCA 216
Decision Date: 02 DECEMBER 1981

CaseChat Overview and Summary

Parke Davis Pty Ltd sought leave to appeal against a decision of Fullagar J, which directed the regrant of a patent after it had expired. Sanofi, who was not a party to the decision below, was the respondent. The central issue before the court was whether Parke Davis had standing to appeal the decision, as it was not a party to the original decision. Additionally, the court needed to determine whether there was an important question of law justifying leave to appeal.

The court found that Parke Davis did not have standing to appeal as it was not a party to the decision below. However, it did grant leave to appeal on the basis of the important questions of law involved. The court held that an extension of time within which to lodge a petition under s.90 of the Patents Act 1952 could not be granted on an application filed after the patent had expired. Furthermore, the court ruled that an order extending the term of a patent or directing a regrant of a patent for a further term could not be made under s.90 unless proceedings for extension of the term of the patent were commenced either by petition or by application for extension of time for filing a petition prior to the expiration of the patent.

The court granted leave to file and serve within 14 days a notice of appeal from the orders of Fullagar J, limited to the grounds that an extension of time within which to lodge a petition under s.90 of the Patents Act 1952 cannot, on the proper construction of the section, be granted on an application filed after the patent has expired and that, upon the proper construction of the section, an order extending the term of a patent or directing a regrant of a patent for a further term cannot be made under s.90 of the Patents Act 1952 unless proceedings for extension of the term of the patent are commenced either by petition or by application for extension of time for filing a petition prior to the expiration of the patent. The application by Parke Davis Pty. Limited for special leave to appeal from the order of Murray J was stood over to the hearing of the limited appeal from the orders of Fullagar J. The application for special leave to appeal was dismissed, subject to the provisions above, and costs were reserved.

Orders

Orders of the court

1. Leave to file and serve within 14 days a notice of appeal from the orders of Fullagar J. of 24 June 1981 be granted to Parke Davis Pty. Limited, limited to the grounds:

(a) That an extension of time within which to lodge a petition under s.90 of the Patents Act 1952 cannot, on the proper construction of the section, be granted on an application filed after the patent has expired.

(b) That, upon the proper construction of the section, an order extending the term of a patent or directing a regrant of a patent for a further term cannot be made under s.90 of the Patents Act 1952 unless proceedings for extension of the term of the patent are commenced either by petition or by application for extension of time for filing a petition prior to the expiration of the patent.

2. The application by Parke Davis Pty. Limited for special leave to appeal from the order of Murray J. of 10 June 1980 be stood over to the hearing of the limited appeal from the orders of Fullagar J.

3. Subject to (1) and (2) above, the application for special leave to appeal be dismissed.

4. Costs be reserved.

Background

Background to the litigation

Full text does not contain this section.

Evidence

Evidence Before The Court

Full text does not contain this section.

Decision

Reasons for decision

Full text does not contain this section.

Ratio Decidendi

Legal Principle Established

Full text does not contain this section.