Actavis UK Ltd. v Merck & Co. Inc Rev 1 [2007] EWHC 1311 (Pat) (06 June 2007)

Actavis UK Ltd. v Merck & Co. Inc Rev 1 [2007] EWHC 1311 (Pat) (06 June 2007)

The patent claims are invalid for lack of novelty because the therapeutic application (treatment of androgenic alopecia with finasteride) was disclosed in prior art, and the only difference is the dosing regimen, which cannot confer novelty under binding authority. Even if the claims were novel, they would be...

Source-derived case information.

Citation
[2007] EWHC 1311 (Pat)
Parties
Claimant: Actavis UK Limited; Defendant: Merck & Co. Inc.
Jurisdiction
England and Wales
Judgment Date
06 June 2007
Procedural Posture
Patent Revocation Action / First Instance Judgment
Outcome
Patent revoked
Legal Topics
Patent Validity, Second Medical Use Claims, Obviousness, Novelty, Swiss Type Claims
Intellectual Property Law Patent Law Patent Validity Second Medical Use Claims Obviousness Novelty Swiss Type Claims

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Parties

Actavis UK Limited

Claimant

Merck & Co. Inc.

Defendant

Procedural Posture

Patent Revocation Action / First Instance Judgment

Legal Issues

  1. 1 Whether the patent for the use of low-dose finasteride for androgenic alopecia is novel over prior art
  2. 2 Whether the patent involves an inventive step (obviousness)
  3. 3 Whether the claims are invalid as methods of medical treatment under UK and EPC law

Ratio Decidendi

The patent claims are invalid for lack of novelty because the therapeutic application (treatment of androgenic alopecia with finasteride) was disclosed in prior art, and the only difference is the dosing regimen, which cannot confer novelty under binding authority. Even if the claims were novel, they would be obvious in light of the prior art and common general knowledge at the priority date.

Court Disposition

Patent revoked

Orders

  • European Patent (UK) 0724 444 is revoked for lack of novelty and obviousness.