Sanofi v Parke Davis Pty Ltd [No 2] [1983] HCA 32

High Court of Australia Mason A.C.J. Murphy, Wilson, Brennan and Dawson JJ. Sanofi v Parke Davis Pty Ltd [No 2] [1983] HCA 32

ORDER Appeal allowed. Order of the Full Court of the Federal Court of Australia made on 21 July 1982 set aside and in lieu thereof order that the appeal to that Court be dismissed. Restore declaration and orders of Fullagar J. Order that the first respondent pay the costs of the appellant and of the second respondent in the Full Court of the Federal Court of Australia and in this Court.

Cur. adv. vult.

The following written judgments were delivered:—

1983, Oct. 6 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.

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 [1] . The condition was that —