Actavis UK Ltd v Merck & Co Inc [2008] EWCA Civ 444 (21 May 2008)

A Swiss form claim specifying a novel dosage regime for a known substance and indication is patentable and not excluded as a method of treatment under EPC and UK law; BMS does not contain a clear ratio decidendi precluding such patentability, and UK courts should follow settled EPO jurisprudence allowing novelty for dosage regime claims.

Citation: [2008] EWCA Civ 444
Parties: Claimant/respondent: Actavis UK Limited; Defendant/appellant: Merck & Co Inc
Jurisdiction: England and Wales
Judgment Date: 21 May 2008
Procedural Posture: Patent Appeal / Court of Appeal Judgment
Outcome: Appeal allowed; High Court decision reversed
Legal Topics: Patent Validity, Novelty, Swiss Form Claims, Dosage Regime, Method of Treatment, Precedent

Intellectual Property Patent Law Patent Validity Novelty Swiss Form Claims Dosage Regime Method of Treatment Precedent

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Parties

Actavis UK Limited

Claimant/respondent

Merck & Co Inc

Defendant/appellant

Procedural Posture

Patent Appeal / Court of Appeal Judgment

Legal Issues

1 Whether a Swiss form claim specifying a novel dosage regime for a known substance and known indication is patentable under EPC and UK law
2 Whether such a claim constitutes a method of treatment excluded from patentability
3 Whether prior Court of Appeal precedent (BMS case) precludes patentability of dosage regime Swiss form claims

Ratio Decidendi

Court Disposition

Appeal allowed; High Court decision reversed

Orders

Merck's patent claim 1 is valid as a Swiss form claim specifying a novel dosage regime
Patent is not invalid for lack of novelty or as a method of treatment