Actavis UK Ltd v Merck & Co Inc

Actavis UK Ltd v Merck & Co Inc

A Swiss form claim specifying a novel and inventive dosage regime for a known medical use confers novelty and is patentable under the EPC. Such a claim is not excluded as a method of treatment under Article 52(4) EPC. The Court of Appeal is not bound by its prior decision in BMS where settled EPO Board of Appeal jurisprudence is to the contrary. The invention was not obvious at the priority date given the state of scientific knowledge.

Parties
Claimant/respondent: Actavis UK Limited; Defendant/appellant: Merck & Co Inc
Jurisdiction
England and Wales
Judgment Date
21 May 2008
Procedural Posture
Civil Appeal (patents) / Appeal From Chancery Division (patents Court) to Court of Appeal
Outcome
Appeal allowed; order for revocation of the patent rescinded.
Legal Topics
Patent Validity, Novelty, Obviousness, Swiss Form Claims, Second Medical Use, Dosage Regime, Method of Treatment Exclusion, Precedent and EPO Jurisprudence
Intellectual Property Law Patent Law Patent Validity Novelty Obviousness Swiss Form Claims Second Medical Use Dosage Regime +2 more

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Parties

Actavis UK Limited

Claimant/respondent

Merck & Co Inc

Defendant/appellant

Procedural Posture

Civil Appeal (patents) / Appeal From Chancery Division (patents Court) to Court of Appeal

Legal Issues

  1. 1 Whether a Swiss form claim specifying a novel and inventive dosage regime for a known medical use confers novelty and is patentable under the EPC
  2. 2 Whether the claim is excluded as a method of treatment under Article 52(4) EPC
  3. 3 Whether the invention was obvious at the priority date

Ratio Decidendi

A Swiss form claim specifying a novel and inventive dosage regime for a known medical use confers novelty and is patentable under the EPC. Such a claim is not excluded as a method of treatment under Article 52(4) EPC. The Court of Appeal is not bound by its prior decision in BMS where settled EPO Board of Appeal jurisprudence is to the contrary. The invention was not obvious at the priority date given the state of scientific knowledge.

Court Disposition

Appeal allowed; order for revocation of the patent rescinded.

Orders

  • Order for revocation of the patent rescinded.
  • Injunction suspended unless Merck gives a cross-undertaking in damages.