Merck & Co Inc v Arrow Pharmaceuticals Limited [2006] FCAFC 91

Merck & Co Inc v Arrow Pharmaceuticals Limited [2006] FCAFC 91

The claims were not a manner of new manufacture as required by law because they specified no inventive step—only the known use of a known compound (alendronate) for an analogous dosing regimen anticipated by Strein, Goodship, and prior art. Furthermore, the Lunar News articles were determined to have been made publicly available and to clearly anticipate the claims, thus negating novelty. The appeal was dismissed.

Parties
Appellant: Merck & Co Inc; Respondent: Arrow Pharmaceuticals Limited
Jurisdiction
Australia
Judgment Date
15 June 2006
Procedural Posture
Appeal / Judgment of Full Court on Appeal From a Single Judge of the Federal Court of Australia
Outcome
Appeal dismissed
Legal Topics
Patents, Manner of Manufacture, Novelty, Public Availability of Prior Art, Pharmaceutical Patents
Intellectual Property Law Patents Manner of Manufacture Novelty Public Availability of Prior Art Pharmaceutical Patents

Case Brief

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Parties

Merck & Co Inc

Appellant

Arrow Pharmaceuticals Limited

Respondent

Procedural Posture

Appeal / Judgment of Full Court on Appeal From a Single Judge of the Federal Court of Australia

Legal Issues

  1. 1 Whether the claimed invention constitutes a manner of new manufacture under s 6 of the Statute of Monopolies and s 18(1)(a) of the Patents Act 1990 (Cth)
  2. 2 Whether the prior art (specifically the Lunar News articles) anticipates the claims and thereby destroys novelty under the Patents Act 1990 (Cth)

Ratio Decidendi

The claims were not a manner of new manufacture as required by law because they specified no inventive step—only the known use of a known compound (alendronate) for an analogous dosing regimen anticipated by Strein, Goodship, and prior art. Furthermore, the Lunar News articles were determined to have been made publicly available and to clearly anticipate the claims, thus negating novelty. The appeal was dismissed.

Court Disposition

Appeal dismissed

Orders

  • The appeal be dismissed.
  • The appellant pay the respondent's costs, including reserved costs.