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.

  • 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.

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Shaun McVicar
Shaun McVicar
Partner, Melbourne
+61 3 9288 1587