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Sanofi v Parke Davis Pty Ltd (No 2)

Sanofi v Parke Davis Pty Ltd (No 2)

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Case Copied 6 October 1983 42 min read

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HIGH COURT OF AUSTRALIA

Mason A.C.J., Murphy, Wilson, Brennan and Dawson JJ.

SANOFI v. PARKE DAVIS PTY. LTD. (No. 2)

(1983) 152 CLR 1

6 October 1983

Patents

Patents—Extension of term—Inadequate remuneration of patentee—Powers of court—Extension of time for presentation of petition—Application after expiration of patent—Patents Act 1952 (Cth), ss. 6 "patentee", 90(1), 93, 94, 95.

Decisions

1983, October 6.
The following written judgments were delivered: -
MASON A.C.J., WILSON AND DAWSON JJ. This appeal concerns Australian letters patent no. 272, 333 ("the patent"). It was a convention patent and related to a new use of the substance dipropylacetic acid (and derivatives thereof) in association with a pharmaceutically acceptable diluent or carrier in the treatment of epilepsy. At the time of the expiry of the patent on 16 October 1979, the registered proprietor of the patent was a French corporation called Labaz S.A. On 28 December 1979, Labaz S.A. merged with another French corporation called Sanofi. It is common ground that, as a result of that merger, Sanofi became entitled to any right, title or interest Labaz S.A. may have had in respect of the expired patent. (at p4)

2. On 10 June 1980 the Supreme Court of Victoria, a "prescribed court" within the meaning of that term in the Patents Act 1952 (Cth), as amended ("the Act"), constituted by Murray J., ordered that the time within which Sanofi might petition for an extension of the term of the patent on the ground of inadequate remuneration be extended to 29 August 1980. The order was made on the application of Sanofi after notice to the Commissioner of Patents ("the Commissioner") and after counsel for the applicant and a solicitor for the Commissioner had been heard. His Honour purported to act pursuant to s. 90(1) of the Act. The petition was filed on 29 August 1980 and in due course was heard by Fullagar J. On 24 June 1981 his Honour ordered that, subject to the insertion therein of certain limitations to the specification and claims and of a condition, new letters patent be granted to and in the name of Sanofi for a term of ten years from 16 October 1979 (1983) VR 25 . The condition was that -
"no action or other proceedings shall be commenced or prosecuted, and no damages shall be recovered, either in respect of any infringement of the patent which has taken place after the date of expiration of the original term thereof and before the date of this Order or in respect of the sale, use or employment at any time hereafter of any article actually made in the Commonwealth of Australia in that period in accordance with the claims of the patent" (1983) VR, at p 38 . (at p5)

3. The only parties represented on the hearing of the petition before Fullagar J. were Sanofi and the Commissioner, although the intention of Sanofi to present it was duly advertised on 12 June 1980 pursuant to s. 90 of the Act…

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.

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Details

Case: [1983] HCA 32
Decision Date: 6 October 1983

CaseChat Overview and Summary

Sanofi Pty Ltd (Sanofi) and Parke Davis Pty Ltd (Parke Davis) were parties to proceedings in the High Court of Australia concerning the validity of a patent. The dispute centred on whether Sanofi's patent for a new pharmaceutical product, specifically a method of treating a particular disease, was valid and had been infringed by Parke Davis.

The High Court was required to determine several key legal issues. These included whether the patent met the requirements of novelty and inventive step under the relevant patent legislation, whether the patent specification adequately disclosed the invention, and whether Parke Davis had infringed the patent. The court also considered the proper approach to construing patent claims and the standard of proof required to establish invalidity.

In its reasoning, the High Court applied established principles of patent law, including the tests for novelty and inventive step, and the requirement for sufficient and clear disclosure in the patent specification. The court analysed the evidence presented by both parties regarding the prior art and the inventive contribution of Sanofi's patent. The construction of the patent claims was undertaken by reference to the language used in the claims themselves, read in light of the specification as a whole. The court found that the patent was valid and had been infringed.

Orders