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ARTICLE · 26 JANUARY 2016

Commonwealth damages claim for overpaying on patented products continues

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If damages are awarded to the Commonwealth, this will concern patentee companies considering interlocutory injunctions.

AustraliaIntellectual Property
Katrina Crooks
Katrina Crooks
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The Full Court of the Federal Court of Australia has rejected an argument that the Commonwealth is precluded by provisions of the Therapeutic Goods Act 1989 (Cth) from seeking damages pursuant to undertakings given by two patentees when obtaining interlocutory relief preventing the launch of generic pharmaceutical products. The Commonwealth's claims, in one case including a claim for AU$54.8 million, continues.

Key Points

  • Sections 26B-D of the Therapeutic Goods Act require generic pharmaceutical suppliers to provide certain certificates relating to relevant patents when applying for registration of therapeutic goods and relying on another party's data to support the application. The owners of the relevant patents may then also be required to provide certain certificates if commencing legal action for patent infringement. The provisions also provide for the Commonwealth to recover damages/a pecuniary penalty in certain circumstances, effectively where the

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