The Federal Court has rejected the Australian Patent Office’s historical approach to patent term extension (PTE) applications, upholding a challenge brought by two major pharmaceutical companies against an earlier decision of Australia’s Commissioner of Patents.
KEY TAKEAWAYS
- Justice Beach has confirmed that PTE applications must be filed within six months of the first inclusion on the Australian Register of Therapeutic Goods (ARTG) of the patentee’s own goods, regardless of whether earlier-listed third party goods may also contain a pharmaceutical substance covered by the patent.
- This brings Australia into line with other key jurisdictions, including the US.
- Although the interpretation adopted by the Court represents a more commercial and practical outcome for patentees, reasonable minds may differ as to the correct interpretation of the Patents Act 1990.
- It remains to be seen whether the Commissioner of Patents will seek to appeal the decision to the Full Federal Court.
Click here to read our analysis.
Key contacts
Laura Orlando
Italy Managing Partner, Joint Global Head of Intellectual Property, EMEA Co-Head of Life Sciences, Milan
Disclaimer
The articles published on this website, current at the dates of publication set out above, are for reference purposes only. They do not constitute legal advice and should not be relied upon as such. Specific legal advice about your specific circumstances should always be sought separately before taking any action.