News

Latest Swiss Claims Decision in New Zealand

22 Mar 2007

The Assistant Commissioner of Patents has confirmed that patent protection is available in New Zealand for inventions where the novelty lies solely in a dosage regime (Genentech’s application, 23/1/2007).

The patent claims in the Genentech case were in the “Swiss form”. The patent claimed use of IGF-1 (a known substance) in a medicament made for treatment of various known disorders according to an intermittent schedule.  The claims were refused by the Intellectual Property Office of New Zealand (IPONZ), although the same claims have been allowed in Europe.

We had thought that the law in this area had been settled by an earlier decision of an IPONZ hearings officer, sitting as the Assistant Commissioner of Patents. In the Arrow v Merck, decision (31/1/2006) the hearings officer allowed Swiss-type claims where the novelty lay in the dosage regime.  A J Park, representing Merck in that case, argued that the claims were proper Swiss-type claims relating to patentable subject matter.  The hearings officer accepted this argument.

Surprisingly, IPONZ then issued examination guidelines in September 2006 advising that it would not follow Arrow v Merck.   IPONZ has tended to favour the United Kingdom law in this area, relying on the decision of the UK Court of Appeal in Bristol-Myers Squibb v Baker Norton (the Taxol case) to contend that a dosage regime is an unpatentable method of medical treatment and therefore unallowable.  The guidelines advised that, despite Arrow, IPONZ would continue to apply Taxol.

A J Park took this issue before a hearings officer again on behalf of Genentech Inc.  The hearings officer fully reviewed the United Kingdom, European and New Zealand law on Swiss-type claims, and decided that he should apply the principles outlined by the (different) hearings officer who decided Arrow v Merck.  He allowed Genentech’s claims.

The Genentech decision was initially marked “not open to public inspection”, meaning that it was to be held confidential to IPONZ and Genentech.  We have since been told that IPONZ will be publishing the decision shortly, and all applicants will then be able to rely on it.

We expect that following the result in Genentech, IPONZ will review its guidelines on examination of claims to dosage regimes.  We will keep you informed.

For more information about this decision, please contact Kate McHaffie.

Kate McHaffie
Senior Associate, A J Park Wellington
kate.mchaffie@ajpark.com
DDI +64 4 474 0897