Full Court Minute Books

Case S22/2021

H. Lundbeck A/S & Anor v. Sandoz Pty Ltd
CNS Pharma Pty Ltd v. Sandoz Pty Ltd

Case Nos.

S22/2021; S23/2021

Case Information

Lower Court Judgment

04/08/2020 Federal Court of Australia (Nicholas, Yates and Beach JJ)

[2020] FCAFC 133


Patents – Patent extension – Contract construction – Where s 79 of Patents Act 1990 (Cth) provides if patentee applies for extension of term of patent and patent expires before application determined and extension is granted, patentee has same rights to commence infringement proceedings during extension period as if extension had been granted when alleged infringement was done –Where applicants patentee and exclusive licensees of pharmaceutical compound – Where patent expired in 13 June 2009 – Where, on 25 June 2014, patent extension granted to 9 December 2012 – Where, from 15 June 2009 onwards, respondent supplied generic version of compound – Where, in 2007, patentee and respondent entered into Settlement Agreement, giving respondent licence to exploit patent prior to expiry – Where Agreement specified possible commencement dates of licence conditioned on whether extension granted, but did not specify end date – Where applicants commenced infringement proceedings in Federal Court on 26 June 2014 in respect of acts done during extension period – Where Federal Court held Agreement gave licence only for two weeks prior to original expiry date (31 May 2009) until original expiry (13 June 2009) but not extension period – Where respondent successfully appealed to Full Court, which held Agreement gave licence from 31 May 2009 to extended expiry date (9 December 2012) – Whether licence applied in relation to acts occurring after patent original expiry date and before term extended – Whether, on respondent’s construction, Agreement produced commercially nonsensical result – Whether exclusive licensee may commence infringement proceeding for acts done between original date of expiry and date on which term subsequently extended.


11/02/2021 Hearing (SLA, Canberra)

24/02/2021 Notice of appeal – S22/2021

25/02/2021 Notice of appeal – S23/2021

15/04/2021 Written submissions (Appellants - H. Lundbeck)

15/04/2021 Written submissions (Appellant - CNS Pharma)

15/04/2021 Joint Chronology (Appellants)

13/05/2021 Written submissions (Respondent - H. Lundbeck)

13/05/2021 Written submissions (Respondent - CNS Pharma)

03/06/2021 Reply (S22/2021)

03/06/2021 Reply (S23/2021)

04/08/2021 Hearing (Full Court, Canberra) VACATED

08/10/2021 Hearing (Full Court, Canberra) (Audio-visual recording)

08/10/2021 Outline of oral argument (Appellants - joint)

08/10/2021 Outline of oral argument (Respondent - H. Lundbeck)

08/10/2021 Outline of oral argument (Respondent - CNS Pharma)

09/03/2022 Judgment (Judgment summary)