Fisons Ltd, Petition of

JurisdictionIreland
CourtSupreme Court
JudgeMcCARTHY j.
Judgment Date01 January 1984
Neutral Citation1983 WJSC-SC 2573
Docket Number[S.C. No. 62 of 1982]
Date01 January 1984

1983 WJSC-SC 2573

THE SUPREME COURT

O'Higgins C.J.

Hederman J.

McCarthy J.

No. 62/82
FISONS PHARMACEUTICALS LTD. & THE PATENTS ACT
IN THE MATTER OF THE PATENTS ACT, 1964

AND

IN THE MATTER OF LETTERS PATENT NO. 29563 DATED THE21ST DAY OF MARCH 1966 GRANTED TO FISONS PHARMACEUTICALS LIMITED INRESPECT OF AN INVENTION ENTITLED "SUBSTITUTED BIS-(2 -CARBOXY-CHROMONYL-OXY) DERIVATIVES AND PREPARATIONS AND PHARMACEUTICALCOMPOSITIONS THEREOF"

Subject Headings:

PATENTS: term

1

JUDGMENT delivered on the 29th day of July 1983by McCARTHY j. (NEW Diss)

2

Fisons Pharmaceuticals Limited or its successor Fisons Limited Pharmaceutical Division (Fisons) are under the Patents Act, 1964, ("the Act") the owners of Patent No. 29563 dated the 21st March 1966 in respect of a particular invention which, for the purpose of this judgment, may be identified as INTAL. There are a number of sodium cromoglycate products of Fisons that are sold in Ireland but it is clear that the large scale seller is INTAL. The term of the Patent, in accordance with s. 26, subs. 3 of the Act was for sixteen years from the date of the Patent and, accordingly, it expired on the 21st March 1982. Pursuant to s. 27 of the Act, Fisons presented apetition to the High Court praying that the patent may be extended for a further term. This petition was dismissed in that the High Court (Costello J.) refused to extend the Patent after the period of expiration. S. 27 gives to a patentee the option of petitioning the Controller of Patents, Designs and Trade Marks or proceeding directly to the High Court. If the petition is to the Controller, an appeal lies to the High Court under s. 27, subs. 8, and a further appeal to the Supreme Court on a specified question of law under s. 75, subs. 7. Fisons have, as it were, telescoped the procedure by petitioning the High Court directly and appealing to this Court from the refusal of the petition. For convenience, however, Fisons have, through their solicitors provided a statement of the question of law arising as follows:-

3

"The question of law is whether the Judge at first instance correctly interpreted s. 27 of the Patents Act, 1964, in particular subsections 5 and 6 thereof, by excluding from his consideration in assessing the remuneration and profit of the Patentee as such under the said section a proportion of costs to the Patentee of research and development wheresoever incurred."

4

This question is more elaborately set out in the twelve grounds of appeal detailed in the notice of appeal. In argument before this Court, the sole contention made on behalf of Fisons was that raised by the question of law which I have cited. Mr. McCracken S.C. relied upon the judgment of Costello J. in J.R. Geigy A.G's Irish PatentExtension (1982) F. St. R. 278 where the learned Judge referred with approval to Flemings Patent (1918) 35 RPC 55 and a particular passage from the judgment of Whitford J. in NationalResearch Development Corporations Patent (1972) RPC 829 at 836, to which latter passage, Mr. McCracken directed the attention of this Court. He also referred to Vidal's Patent (1981) F. St. R. 493, a decision of the Supreme Court of Victoria, Australia by Fullagar J., in which the discretionary nature of the remedy sought is emphasised. Unlike some other branches of our law, it is highly appropriate in Patent cases and the like to refer to English and Commonwealth decisions on statutes similar to the Patents Act, 1964or the Industrial and Commercial Property (Protection) Act, 1927, much of which was repealed by the Act of 1964. It is proper, in my view, to point also to the very wide experience of Costello J., both at the Bar and on the Bench, in dealing with Patent matters. Formyself, certainly on a question of discretion, I would be very loath to interfere with any decision of his.

5

The form of the stated question of law is not in terms depended upon the exercise of such discretion but on the true construction of s. 27 and in particular subss. 5 and 6 thereof. The section reads:-

6

2 "(1) A patentee may, after advertising in manner...

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  • Beecham Group Plc
    • Ireland
    • High Court
    • 8 Julio 1994
    ...Group Plc.| Citations: PATENTS ACT 1964 S27 PATENTS ACT 1964 S27(1) PATENTS ACT 1992 FISONS PHARMACEUTICALS LTD & PATENTS ACT, IN RE 1983 IR 129 .Mr. Justice Barron Mr. Justice Barron 1 This application is made pursuant to the provisions of Section 27 of the Patents Act,1964.Subsection (1) ......

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