Southern Cross Pharma Ltd v Euro-Celtique S.A.

In the matter of Southern Cross Pharma Ltd versus Euro-Celtique S.A., the dispute centred on the validity of extensions to the term of three Australian patents. The case was heard and decided by Dr Barbara Akhurst, a delegate of the Commissioner of Patents in Australia. The primary issue before Dr Akhurst was whether the applications for the extension of term for the three patents met the statutory requirements as set out in the relevant sections of the Australian Patents Act 1990.

The court was required to determine whether the applications for the extension of patent terms satisfied the conditions under sections 70(3)(a) and 71(1)(c). Specifically, the court had to assess if the extensions were granted in compliance with the procedural and substantive criteria laid out in the legislation. The decision involved a detailed examination of the applications and the evidence provided by both parties to ascertain whether the statutory prerequisites were met.

Dr Akhurst concluded that while the application for the extension of term for patent 2004229058 met the statutory requirements, the applications for patents 2002300863 and 2009243527 did not. However, recognising potential oversights in the latter applications, Dr Akhurst granted the patentee an opportunity to provide further information to rectify the deficiencies. This decision was made under the authority provided by regulation 6.11. Consequently, the oppositions concerning patents 2002300863 and 2009243527 were not finally determined at this stage, pending the submission of additional information.

The court also addressed the issue of costs, determining that they should follow the event, a common practice in proceedings before the Commissioner. Southern Cross Pharma Pty Ltd was awarded costs for the successful oppositions relating to patents 2002300863 and 2009243527 against Euro-Celtique S.A., while costs for the unsuccessful opposition concerning patent 2004229058 were awarded to Southern Cross Pharma Pty Ltd. The costs were to be assessed in accordance with Schedule 8, with proportional division of shared costs across the three hearings.