Australia: Is there an Australian rocket docket for pharma?

Australian Federal Court judges are prepared to expedite patent disputes when they are satisfied that the commercial reality requires it, and to use case management strategies to avoid foreseeable litigation quagmires. While there is no “rocket docket” in Australia, we have seen complex pharma patent disputes set down for hearing within five, ten and 11 months of filing in the New South Wales and Victorian registries.

This is applauded by parties and practitioners who recognise that swift resolution of patent disputes avoids unnecessary costs and induces market certainty for pharmaceutical companies, payers and patients.

For Australian pharma patent litigation, the selected forum will—almost always—be the Federal Court (over the state based Supreme Courts), and “forum shopping” will involve selecting between the various registries of the Federal Court. The Federal Court operates an IP practice area, with 17 patent judges nationwide each sitting within a certain state/s. Most patent judges sit in NSW and/or Victoria so most patent cases are filed there. Before selecting a registry, sophisticated applicants will consider various attributes of judges in each registry pool, including:

• Speed to judgment: recent statistics regarding time from filing to judgment for judges in the registry pool. Have judges been prepared to expedite in similar circumstances previously?
• Approach to case management: do judges use case management strategies to avoid litigation quagmires?
• Technical background: how familiar are the judges with the relevant technology/science?
• Judicial capacity: what capacity exists in the judges’ docket to deal with the matter?

Given a case may be allocated to any judge within the relevant pool, choosing a forum will involve weighing up the likelihood that a preferred judge in the registry pool will be allocated the matter, against the likelihood that it will be allocated to a less preferred judge. Although on current averages the Victorian registry is faster than the NSW registry, often the considerations between the two registries are finely balanced, and secondary considerations such as convenience of the legal team may also sway the parties one way or the other. The impact of Justice Rofe in Victoria, who was appointed in July 2021, on this is yet to be seen.

“Before selecting a registry, sophisticated applicants will consider various attributes of judges in each registry pool.”

Four recent cases illustrate approaches to expedition and case management that may be taken into account by applicants:

• Vic (Moshinsky J), Teva v Boehringer Ingelheim VID1617/2018, Dec 2018 (tiotropium): 11 months to hearing.
  • Set for hearing 11 months after commencement, including experiments.
  • Discontinued in June 2019, at which point it was on track for the expedited hearing date.
• Vic (Beach J), Juno & Natco v Celgene VID718/2020, Nov 2020 (lenalidomide): 10 months to hearing, judgment in 4–6 weeks.
  • Expedited trial on a compound patent 10 months after commencement, the court noting that otherwise the applicants would lose the opportunity to test the validity of the compound patent sufficiently in advance of expiry.
  • Trial occurred in August 2021, with indications that judgment would follow within 4-6 weeks.
• Vic (Jagot J), MSD v Sandoz VID63/2021, Feb 2021 (sitagliptin): five months to hearing, judgment one month later.
  • Merck brought proceedings for patent infringement. Sandoz conceded infringement but challenged the patent term extension.
  • Justice Jagot (who operates in both NSW and Victorian registries) listed the matter for hearing five months after commencement and delivered judgment one month later.
• NSW (Burley J), Novartis v Pharmacor NSD183/2021, Mar 2021 (fingolimod): creative case management to keep case moving.
  • Justice Burley limited the evidence to 45 pages (excluding annexures) per expert.
  • Earlier, Burley made orders requiring an agreed primer to be filed regarding the field of the patents, limiting the potential for another litigation quagmire.

While Australia does not yet have a “rocket docket”, judges in the two key registries for pharma patent litigation have shown an understanding of the commercial realities of pharma industries and a preparedness to expedite and appropriately manage patent litigation to timely conclusions.

Naomi Pearce is an executive lawyer and a patent and trademark attorney at Pearce IP. She can be contacted at: naomi.pearce@pearceIP.law

Katrina Crooks is an executive lawyer and patent attorney at Pearce IP. She can be contacted at: katrina.crooks@pearceIP.law

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