This week the Federal Court of Australia (Nicholas J)
delivered a significant judgment in Apotex Pty Ltd v Warner-Lambert Company LLC (No 3) 
FCA 94, confirming that an Australian patent will be infringed
by offers made during the term of the patent, without the
patentee's consent, to supply infringing products after the
patent has expired. The reasons of Nicholas J observe that the
exclusive rights of a patentee under section 13 of the Patents
Act 1990 (Cth) include the right to offer the invention for
sale, and confirm that the mere making of such an offer constitutes
exploitation and therefore infringement of an invention. This
outcome is likely to restrict the marketing activities of potential
infringers (such as generic pharmaceutical companies) in seeking to
secure customers for their products in the lead-up to patent
Importantly, Nicholas J found that applying to list a generic
(infringing) product on the Pharmaceutical Benefits Scheme
(PBS) from a date after patent expiry "would
fall short of offering to sell or otherwise dispose of the
products". This is consistent with previous decisions that the
act of applying for PBS listing of a generic pharmaceutical product
does not itself constitute patent infringement, but that obtaining
a PBS listing which starts before the patent expires arguably
constitutes patent infringement because the generic party must
guarantee supply of the product from the first day of PBS listing
under the provisions of the National Health Act 1953
The patentee (Pfizer) succeeded in establishing infringement and
validity and obtained a permanent injunction restraining the
infringing products (pregabalin) of the generic party (Apotex)
until the expiry of the asserted patent. It is notable that Pfizer
sought to be released from the "usual undertaking as to
damages" it had given as a condition of obtaining an
interlocutory injunction in March 2014, but that Nicholas J refused
to make such orders and left the usual undertaking in place because
of the possibility of a successful appeal by Apotex (in which case
the interlocutory injunction would ultimately be found to have been
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