ARTICLE
25 January 2007

New Zealand - New Practice Guidelines For Claims Directed To Methods Of Medical Treatment Of Humans & Swiss-Style Claims

SF
Spruson & Ferguson

Contributor

Established in 1887, Spruson & Ferguson is a leading intellectual property (IP) service provider in the Asia-Pacific region, with offices in Australia, China, Indonesia, Malaysia, Philippines, Singapore, and Thailand. They offer high-quality services to clients and are part of the IPH Limited group, which includes various professional service firms operating under different brands in multiple jurisdictions. Spruson & Ferguson is an incorporated entity owned by IPH Limited, with a strong presence in the industry.
The Intellectual Property Office of New Zealand (IPONZ) has recently issued amended guidelines for the examination of claims directed toward both methods of medical treatment of humans and second medical use claims.
New Zealand Intellectual Property

The Intellectual Property Office of New Zealand (IPONZ) has recently issued amended guidelines for the examination of claims directed toward both methods of medical treatment of humans and second medical use claims.

Under New Zealand patent law, a second medical use of a substance can be protected by a claim to the use of such substance in the manufacture of a medicament for a specified medical use. Such claims are termed Swiss-style claims, and usually take the form: "Use of (substance X) in the manufacture of

a medicament for the (therapeutic and/or prophylactic) treatment of (disease Y)".

Recent New Zealand case law, in which Swiss-style claims that are distinguished from the prior art by the way in which the medicament is administered, as opposed to the purpose of the administration, includes Abbott Laboratories (P16/2003) and Merck & Co v Arrow Pharmaceuticals (P3/2006). Unfortunately, these two decisions are conflicting: Abbott approves the UK case Bristol-Myers Squibb [2001] RPC 1 ("Taxol"), which essentially invalidates Swiss-style claims granted for novel and inventive dosage regimes of an existing medicament, whereas Merck follows a contrary European case, Genentech (T1020/03), which allowed Swiss-style claims directed to any new method of treatment.

IPONZ’s current position relating to Swiss-type claims, where the patentability resides in a new method, time, frequency or dosage, is unclear. Until the different approaches of Assistant Commissioners in Abbott and Merck are resolved, IPONZ have indicated that neither decision is necessarily and unequivocally binding upon New Zealand patent examiners.

IPONZ will proceed to implement their amended practice guidelines, notwithstanding that parts of this may be inconsistent with the Merck decision.

It is considered that the Swiss-style claims guideline represents the correct position, where the patentability resides in a new method, time, frequency or dosage.

Shelston IP would be pleased to offer further advice as to the allowability of claims directed toward both methods of medical treatment of humans and Swiss-style claims in New Zealand.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

Mondaq uses cookies on this website. By using our website you agree to our use of cookies as set out in our Privacy Policy.

Learn More