In Alphapharm Pty Ltd v H Lundbeck AS the High Court held in a majority decision that section 223(2) confers power on the Commissioner of Patents to extend the time within which Lundbeck could apply for an extension of term for its patent.
The day before the original term of its escitalopram patent would have expired Lundbeck filed an extension of term application under section 70 along with an extension of time application under section 223 within which to file the extension of term application. Alphapharm opposed the application for an extension of time, which was unprecedented in being for 10+ years.
While Lundbeck made the application during the term of the patent, it was made more than six months after the latest of the three dates specified in section 71(2). In 2013 the Commissioner’s delegate granted Lundbeck the extension of time sought. Appeals against that decision were unsuccessful in the Administrative Appeals Tribunal and the Full Court of the Federal Court of Australia. The High Court granted Alphapharm special leave to appeal.
However, the High Court dismissed the appeal. The Court held, by majority, that section 71(2) of the Act imposed two cumulative time requirements. The first was that an application under section 70(1) for an extension of the term of a patent be made during the term of the patent. The second was that such an application be made within six months after the latest of the three dates specified in section 71(2). Properly understood, the extension of time provisions in section 223(2) permitted the Commissioner to enable an application under section 70(1) to be made during the term of the patent but more than six months after the latest of the three dates specified in section 71(2). In particular, while regulation 22.11(4)(b) precludes section 223 from applying in circumstances where the patent term had expired, it did not preclude an extension of time in respect of an application made more than six months after the latest of the three dates specified in section 71(2).
