Warner-Lambert Company LLC v Apotex Pty Ltd

Warner-Lambert Company LLC initiated legal proceedings against Apotex Pty Ltd in the Federal Court of Australia, challenging a decision that an application for a Pharmaceutical Benefits Scheme (PBS) listing did not infringe upon their patent. Warner-Lambert argued that the mere act of filing an application for PBS listing constituted an offer to supply the patented product, thereby infringing their patent rights. Apotex, on the other hand, contended that filing such an application did not amount to an infringement and was merely a procedural step in the PBS approval process.

The central legal issue before the court was whether the act of applying for a PBS listing constituted an offer to supply and an exploitation of the claimed invention, thereby infringing the patent. The court was required to determine the legal nature of the PBS listing application process and its implications for patent law. Specifically, the court needed to examine whether the application process, in and of itself, was an act of infringement or if it required further steps, such as approval and subsequent supply, to constitute an infringement.

In addressing these issues, the court found that an application for PBS listing does not, by itself, constitute an offer to supply or an exploitation of the claimed invention. The court reasoned that the PBS listing process involves multiple steps, including evaluation, approval, and potential supply, and that the mere act of filing an application is not sufficient to infringe upon a patent. The court held that an application for PBS listing must be accompanied by actual supply of the product to constitute an infringement. Consequently, the court dismissed the appeal and ordered that the appellants pay the respondent's costs of the appeal as agreed or taxed.