Case: Beecham Group Limited v Bristol Laboratories Pty Ltd [1968] HCA 1 ; (1968) 118 CLR 618
Outcome: followed
What is the general approach to the grant of an interlocutory injunction to restrain the infringement of a patent? In Beecham Group Limited v Bristol Laboratories Pty Ltd [1968] HCA 1 ; (1968) 118 CLR 618 the High Court laid down this approach to the grant of an interlocutory injunction there are two inquiries: the first is whether the plaintiff has made out a prima facie case in the sense outlined, and the second is as to the balance of convenience. That case also happened to be a patent case. However it was, as the High Court said (118 CLR at 623 624): "not complicated by the special considerations which generally arise in a patent action where there is a substantial issue to be tried as to the validity of the patent. In such an action the plaintiff's prima facie case must be a strong one so far as the question of validity is concerned, for he asserts a monopoly and must give more proof of the right he claims than as afforded by the mere granting of the patent ... The general practice in that kind of case has long been to refuse an interlocutory injunction unless either the patent has already been judicially held to be valid or it has stood unchallenged for a long period". In the result, the decision of McTiernan J to decline an interlocutory injunction was reversed. 4 There was much discussion occasioned by the apparent difference in approach between those two decisions. The most influential consideration of the issue in relation to patents was that by Gummow J in Martin Engineering Co v Trison Holdings Pty Ltd (1988) 81 ALR 543. In the course of that judgment his Honour pointed out that the authorities referred to by the High Court in Beecham Group [1968] HCA 1 ; 118 CLR 618 for not attributing great significance to the grant of a patent were old cases from England based upon a different system for grant than that which had developed in Australia by that time. The system of examination of patents prior to grant in Australia was more stringent than had been the case in England the century before. The practical effect of this decision was to give greater weight to the grant of a patent thereafter than might have been deduced from Beecham Group [1968] HCA 1 ; 118 CLR 618. 6 Counsel for GenRx also submits that the authority of Beecham Group [1968] HCA 1 ; 118 CLR 618 has been fully restored by the decision of the High Court in Australian Broadcasting Corporation v O'Neill (2006) 227 CLR 57, particularly per Gleeson CJ and Crennan J at [19] and Gummow and Hayne JJ at [65] [72]. However, this reaffirmation of Beecham Group [1968] HCA 1 ; 118 CLR 618 lies in the explanation of what is involved in establishing a prima facie case rather than any consideration of the application of the principles to patent infringement. It would be surprising if Gummow J had joined in an exercise which would effectively overrule Martin Engineering 81 ALR 543 without any acknowledgement of that. I propose to direct myself in accordance with Beecham Group [1968] HCA 1 ; 118 CLR 618 as it is explained by both Martin Engineering 81 ALR 543 and O'Neill 227 CLR 57.