Swiss-tupe claims – Novelty may now reside in an administration regime

A decision of Assistant Commissioner Popplewell, in the case of Genentech’s Application (P1/2007), published on 28 March 2007, confirms that claims in the Swiss-type format where the medical activity of the active ingredient is known, and novelty lies in the dosage regime used for administration, are now allowable in New Zealand.

The patent application considered in P1/2007 corresponds to the EP application considered in the EPO Technical Board of Appeal case Genentech (T 1020/03).

The Assistant Commissioner reviewed the New Zealand law regarding the allowance of Swiss-type claims, and also the law in the UK and the EPO and adopted the EPO approach.

Significantly, the Assistant Commissioner considered the guidelines for Swiss-type claims published by the Intellectual Property Office on 15 September 2006. Operating under these guidelines the Intellectual Property Office to date has objected to Swiss-type claims where the novelty lies in the way in which the medicament is administered. This approach is based on Abbott Laboratories Application No 510328 (P16/2003, dated 11 August 2003) that approved Bristol-Myers Squibb v Baker Norton Pharmaceuticals [2001] RPC 1 “Taxol UK”.

In comparing the two cases, the Assistant Commissioner observed that the earlier case was concerned with the particular case in which novelty was claimed solely in the fact of co-administration and should not be offered as authority for a general principle. He also notes that P16/2003 was decided without reference to Bristol-Myers Squibb Company Application No 93 401 978.7 “Taxol EPO”, T 1020/03 or the comments of Jacob J questioning “Taxol UK” in the Merck & Co Inc’s Patents [2003] FSR 498 case in the British Patents Court.

In this new decision, the Assistant Commissioner provides a clear statement that he does not agree with the examination guidelines and we expect that the examination guidelines will be reviewed in due course.

Rachelle Beale - April 2007