Parke Davis Pty Ltd v Sanofi (No 2)

Case [1982] FCA 139

Re: PARKE DAVIS PTY. LIMITED
And: SANOFI, a French Corporation and THE COMMISSIONER OF PATENTS
(1983) 67 FLR 110
No. G198 of 1981
Patents

COURT

IN THE FEDERAL COURT OF AUSTRALIA


VICTORIAN DISTRICT REGISTRY
GENERAL DIVISION
Bowen C.J.(1), Deane(2) and Ellicott(1) JJ.
CATCHWORDS

Patents - Extension of term - Petition presented after expiration of patent - Whether jurisdiction to order extension of term - Effect of order after expiration of patent allowing further period within which to present petition.

Patents Act 1952 ss. 90(1), 94(1).

Patents - Expiration of term - Extension - Petition presented after expiration of term - Whether jurisdiction to order extension of term - Effect of order after expiration of patent allowing period within which to present petition - Patents Act 1952 (Cth), ss 90(1), 94, 95, 98, 160 - Acts Interpretation Act 1901 (Cth), s. 15AA.

HEADNOTE

The respondent applied to the Supreme Court of Victoria for an extension of its letters patent at a time when the term of the patent had expired. The Supreme Court, acting under s. 90(1) of the Patents Act 1952, allowed the first respondent a time before which to lodge its petition to extend the term of its patent which was after the date when that patent expired and granted an extension of the patent.

On appeal,

Held: Per Bowen C.J. and Ellicott J., Deane J. dissenting - (1) On the true construction of s. 90(1) of the Patents Act 1952 the Supreme Court had no power to authorize the lodgment of the petition in the manner after the date of the expiry of the letters patent and accordingly had no power to grant an extension of letters patent.

Consideration by Bowen C.J. and Ellicott J. of the purpose or object underlying the Patents Act 1952 and of the legislative background of s. 90.

Re Brown's Patent (1920) 37 RPC 52, distinguished.

Re Robinson's Patent (1918) 25 CLR 116, explained.

Re Stamicarbon Naamloze Vennootschap's Patent unreported (High Court, Walsh J., 22nd March, 1971); Re General Tire & Rubber Co.'s Patent unreported (High Court, Windeyer J., 1966), not followed.

(2) The order of the Supreme Court extending the time for lodging the petition could not validate the petition when lodged.

(3) Although the order of the Supreme Court had been given effect to by an entry in the Register of Patents, the register could be rectified.

Wilde v. Australian Trade Equipment Co. Pty Ltd (1981) 145 CLR 590, discussed.

(4) Appeal allowed.

HEARING

1982, April 19-21; July 16. #DATE 16:7:1982

APPEAL.

The appellant appealed from orders of the Supreme Court of Victoria.

The facts appear from the headnote and judgment of Deane J.

K. R. Handley Q.C. and J. D. Heydon, for the appellant.

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

B. Pearson, for the second respondent.

Cur. adv. vult.

Solicitors for the appellant: Minter Simpson & Co.

Solicitors for the first respondent: Moules.

Solicitor for the second respondent: B. J. O'Donovan, Commonwealth Crown…

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Details
AGLC
Parke Davis Pty Ltd v. Sanofi & Anor [1982] FCA 139 ((1983) 67 FLR 110)
Case
[1982] FCA 139
Decision Date

CaseChat Overview and Summary

The matter before the court involved Parke Davis Pty Ltd, the appellant, and Sanofi, the respondent, concerning the extension of a patent term. The dispute centred on whether the court had jurisdiction to order an extension of the patent term when the petition for such an extension was presented after the patent had already expired. The case was heard in the High Court of Australia.

The central legal issue before the court was whether the Federal Court had the jurisdiction to order an extension of a patent term when the petition for the extension was filed after the patent had expired. Additionally, the court had to determine the effect of an order granting an extension of the patent term after the patent had expired, allowing a further period within which to present the petition. The case hinged on the interpretation of the relevant statutory provisions and the court's jurisdiction in such matters.

The court found that the Federal Court did not have the jurisdiction to order an extension of the patent term once the patent had expired, as the statutory provisions did not provide for such an extension in such circumstances. The court held that the Federal Court's jurisdiction was limited to cases where the petition for extension was presented within the prescribed period. Furthermore, the court ruled that an order granting an extension of the patent term after the patent had expired would have no effect as it would be beyond the court's jurisdiction. Consequently, the appeal was allowed, and the petition for extension was dismissed. The court also ordered the rectification of the Register of Patents and the removal of the extended patent from the register.

Orders

Orders of the court

1. The appeal be allowed.

2. The declaration and orders of Fullagar J. of 24 June 1981 be set aside.

3. The petition for extension of the term of Letters Patent No. 272,333 be dismissed.

4. The Register of Patents be rectified and that the Commissioner of Patents remove from the Register Australian Letters Patent No. 272,333 purported to be given and granted by way of extension of the term thereof and standing in the name of Sanofi (a French Corporation) as patentee.

5. Sanofi pay to Parke Davis Pty. Limited and to the Commissioner of Patents their costs of this appeal and of the application for leave to appeal (No. G108 of 1981).

Background

Background to the litigation

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Evidence

Evidence Before The Court

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Decision

Reasons for decision

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Ratio Decidendi

Legal Principle Established

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