The Australian Federal Court has ruled that biotechnology company Genentech Inc can serve a claim of infringement of an Australian patent on Regeneron Pharmaceuticals Inc at the address of its New York headquarters.
Regeneron has no local presence in Australia, and is not itself directly engaging in any activities that would infringe Genentech’s Australian patent. However, the court has found that Regeneron has engaged in a ‘common design’ with pharmaceutical company Bayer Pharma AG, and its Australian subsidiary Bayer Australia Limited, to undertake actions in Australia that would, on the face of it, infringe the patent.
Drawing a foreign company or individual with no local address into Australian litigation, while greatly simplified by the Hague Service Convention, nonetheless requires an application to the court, and a showing that a number of requirements are satisfied, as set out in Rules 10.42 and 10.43 of the Federal Court Rules. The requirements include:
- that the court has jurisdiction in the matter;
- that the proceeding has a relevant connection to Australia (as set out in Rule 10.42); and
- that the applicant has a prima facie case for all or any of the relief claimed in the proceeding.
In this case, it is the third requirement which is of greatest interest, since Genentech does not contend that Regeneron is itself undertaking, or proposing to undertake, any infringing activities in Australia. The principal allegation is against Bayer Australia Limited. Regeneron’s alleged liability arises as a result of an agreement it has entered into with Bayer Pharma AG.