In a groundbreaking decision, the New Zealand Court of Appeal has found against Pharmac and for the pharmaceutical
industry to allow 'Swiss-type' claims in a patent. A Swiss-type patent is a form of patent that gives protection to the
results of research into new uses for known pharmaceuticals.
Greg Arthur, litigation Partner at A J Park & Son and leading counsel for many of the pharmaceutical company's in the case, said the Court of Appeal Judgment is
significant both in New Zealand and internationally.
"This judgment is significant internationally because while most overseas jurisdictions have allowed the pharmaceutical
industry the right to patent the results of their research into new uses for existing drugs through Swiss-type patents,
it has never been tested in a court of law at Appellate level. This case will now provide a legal precedent if
Swiss-type patents are put to the test in overseas jurisdictions."
"The case is significant in New Zealand because international pharmaceutical companies may now be more willing to launch
new drugs in New Zealand. The existence of patent protection is a significant factor for companies when deciding whether
or not to launch new drugs here."
Greg Arthur said some of the drugs for which new patents for new medical uses were lodged, would be drugs that had never
got to the market in their original form.
"This is not just about commonly known drugs where a new usage is found, but it gives patent protection to
pharmaceutical companies which undertake further research on drugs that never made it to the market in the first place."
Greg Arthur said there were some 800 existing patent applications for this type of patent protection that were on hold
in New Zealand pending the outcome of the Court of Appeal decision. They would now be able to proceed.
The Commissioner of Patents decided to allow Swiss-type patent claims in January 1997, which was a radical departure
from the previous position.
Pharmac sought a judicial review of the decision from the High Court in June 1997. In December 1998, the High Court
declined the application for judicial review.
Pharmac took an appeal to the Court of Appeal. Their decision on Pharmac v Commissioner of Patents & Others was issued on Friday 17 December. The Others were some 25 Pharmaceutical companies, the majority of which were
represented by A J Park & Son.
The Court of Appeal decision was by the full bench of five Judges and was unanimous.