Actavis v Merck

The IPKat draws your attention to yesterday's Court of Appeal decision, delivered by Lord Justice Jacob, in Actavis v Merck. The case concerns the second medical use of a substance called finasteride, which inhibits the conversion of testosterone into one of its metabolites. Merck already had a patent over the substance for the treatment of benign prostatic hyperplasia, which led to a challenge to its patent for the use of a different dose of the same substance for androgenic alopecia. Cue a detailed consideration of "Swiss Claims", including an examination of novelty, inventive step, and unpatentability for being a method of treating the human body.

Also at issue was the place of EPO decisions under the doctrine for stare decisis .

More to follow from the IPKat when he has had time to digest the case but, in the meantime he notes [in a fit of shameless self-promotion] that those who want to know more about the issues could do worse than come along to UCL Institute of Brand and Innovation Law's launch seminar (details
here), where Lord Justice Jacob will be speaking about claims limited by use and Actavis.
Actavis v Merck Actavis v Merck Reviewed by Anonymous on Thursday, May 22, 2008 Rating: 5


  1. As a barrister I'm working with has noted, this judgment is potentially very significant, as it takes the 64-year-old rules in Bristol Aeroplane on when the Court of Appeal can depart from its own precedent, as learned by every first-year law student, and adds a new one: 'if the EPO Board of Appeal now says otherwise'.

  2. Am I missing something obvious? From what I understand, the Court of Appeal has seen fit to depart from its own precedent in favour of "settled" EPO case law, which is, in fact, very far from settled - this very issue has been referred to the EBA! As I said, am I missing something obvious? Elucidation appreciated.

  3. Richard, you contend that the EPO is "very far from settled". But is that really the case?. How do you get to that (except by drawing an inference from the event of referral of Kos to the EBA)? Have you read Jacob LJ's Decision yet?

  4. Hi

    I'm a first year law student and we've been asked to read this case. but I dont really understand it at all and we're meant to discuss it at our next seminar, help?


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