By James Cherry* & Adam Denley** --
The scope for enforcement of Swiss-style claims may be broader in Australia than for method of medical treatment claims. Second medical use inventions can be claimed in an ever increasing number of claim formats depending on the jurisdiction. While such inventions in Europe are now claimed in purpose-limited-product format, or so called 'EPC2000' format, and in the U.S. are pursued in method of medical treatment format, the humble Swiss-style claim has been again shown to be of immense value in Australia even though methods of treatment claims are also an allowable format. So much so, that an injunction against a competitor was granted solely on the basis of infringement of Swiss-style claims.
How did this occur?
The basic legal test is that the exclusive patent rights conferred on a patentee in Australia includes the right to offer an invention for sale. Should a patentee have a product or composition of matter claim then an offer by a third party of a product which falls within the scope of that granted claim will, or course, be an infringement. However, it is less clear what conduct infringes a patent for a second, or subsequent, medical use invention.
In the recent pregabalin court case1 it was held that for method of medical treatment claims, an offer to sell a product referred to in those method claims cannot be an infringement as infringement requires the actual method of treatment to be performed. Australia does have statutory contributory infringement provisions which are enlivened where the supply of a product occurs and the use of that product by a person would be an infringement. However, these contributory infringement provisions were found not to apply where a third party merely offers to supply a product, but does not in fact supply that product.
This then leaves the often forgotten Swiss-style claim which arose in Europe to circumvent the exclusion of methods of medical treatment as patentable subject matter. This claim format, "Use of substance X in the manufacture of a medicament for the treatment of condition Y", is often overshadowed by method of treatment format as it avoids claiming the medical treatment in a rather unusual way by claiming the manufacture but obtaining novelty and inventiveness from the condition to be treated. The injunction granted in the pregabalin case was on the basis that it was an infringement of a Swiss-style claim to offer to supply a pharmaceutical product that results from the use of a method of manufacture the subject of the granted Swiss-style claims. This clearly highlighted a benefit of the granted Swiss-style claims that was not afforded by the granted method of medical treatment claims.
Australian courts have confirmed that Swiss-style claims have different scope than method of medical treatment claims (see our previous article here), and this pregabalin decision shows that the scope for enforcement of Swiss-style claims is also different and perhaps broader.
1 Apotex Pty Ltd v Warner-Lambert Company LLC (No 3)  FCA 94.
This article was reprinted with permission from FPA Patent Attorneys.