Swiss-type claims – Use of a local anaesthetic in a patch adapted for use adjacent to a surgically closed wound allowed by IPONZ
Swiss-type claims provide patent protection for new second therapeutic uses of known pharmaceuticals. Swiss-type claims have been allowable in New Zealand for some time, the allowability being confirmed by the Court of Appeal in Pharmaceutical Management Agency Limited v Commissioner of Patents & Others [2002] 2 NZLR 529 (Pharmac). Since the decision in Pharmac there has been uncertainty regarding the boundaries of what constitutes a new therapeutic use patentable by way of a Swiss-type claim.
Recently, there have been a number of cases heard by Assistant Commissioners regarding subject matter patentable by way of Swiss-type claims. The decisions in recent cases have confirmed the allowability of Swiss-type claims where the novelty lies in a dosage regime and Swiss-type claims where the novelty lies in the patient population to be treated. The decisions have tended to follow European cases.
Most recently, the decision of Assistant Commissioner Popplewell, Epicept Corporation’s Application 518608 (P29/2007) was published on 25 March 2008 at the Applicant’s request.
The claims at issue in P29/2007 relate to the use of a local anesthetic for the manufacture of a pharmaceutically acceptable topical drug formulation contained in a patch for treating pain from a surgically closed wound, the patch being adapted for administration on or adjacent to an exterior surface of the wound.
Assistant Commissioner Popplewell applied the long-standing test for prior publication, as set out in The General Tire and Rubber Company v The Firestone Tyre and Rubber Company Limited [1972] RPC 457, 485-486, to the therapeutic use defined in the Swiss-type claim . Thus, it is clear that the usual test for novelty of Swiss-type claims is the test of General Tire, ie, the prior publication must have planted the flag at the precise destination before the current application.
Additionally, Assistant Commissioner Popplewell comments that defining a class of compounds by their pharmaceutical properties, such as “local anaesthetic or salts thereof” rather than by chemical structures should not be a bar to the allowability of the claims.
Rachelle Beale - May 2008
