The applicant attempted to patent the use of two known pharmaceuticals to treat the folowing: ‘battle fatigue, combat stress reaction, post-traumatic stress disorder in civilian and military emergency situations, neurological symptoms associated with chemical warfare and nausea associated with chemical or biological warfare.’
Held: The specification contained no information to support the claim that the products in question would have any effect on these ailments. Neuberger J upheld the Comptroller’s rejection of the claim on the ground that it was not supported by the description.
The specification must include some basis for supposing that the claim to therapeutic efficacy was true: ‘In relation to a ‘Swiss-type’ application, it appears to me that, in the absence of any practical evidence of the idea working (that is the idea of using a well-established drug for the treatment of a condition for which it has not so far been used), the absence of any evidence of the idea working involves the absence of a description . . whether or not there is a description or an adequate description, for the purposes of section 14(5)(c) of the 1977 Act, must be judged by reference to the nature of the application. There is obvious force in the contention that, where you have a claim for the use of a known active ingredient in the preparation of a medicament for the treatment of a particular condition, the specification must provide, by way of description, enough material to enable the relevantly skilled man to say this medicament does treat the condition alleged, and that pure assertion is insufficient.’
Neuberger J
[2000] RPC 446
Patents Act 1977
England and Wales
Cited by:
Cited – Conor Medsystems Inc v Angiotech Pharmaceuticals Inc and others HL 9-Jul-2008
The respondents had applied for and obtained an order to revoke the appellant’s patent of a stent for obvousness. Though the parties had settled, the public law element required the intervention of the Comptroller General. The House was asked about . .
Cited – Warner-Lambert Company Llc v Generics (UK) Ltd (T/A Mylan) and Another SC 14-Nov-2018
These proceedings raise, for the first time in the courts of the United Kingdom, the question how the concepts of sufficiency and infringement are to be applied to a patent relating to a specified medical use of a known pharmaceutical compound. Four . .
Lists of cited by and citing cases may be incomplete.
Updated: 18 October 2021; Ref: scu.270829