Date:
Court:
Judge:
8 February 2024
Australian Patent Office
L. F. McCaffery
Zoetis Services LLC opposed two Australian patent applications (one standard and one innovation patent application) in the name of Boehringer Ingelheim Vetmedica GmbH. The applications claim a method of treating heart failure due to asymptomatic myxomatous mitral valve disease (MMVD) in a patient (including a dog) by administering pimobendan (also known as Vetmedin®).
A key question for the delegate on inventive/innovative step was whether information contained in a press release reporting interim clinical trial results of the use of pimobendan to treat MMVD in dogs was common general knowledge (CGK) amongst veterinary cardiologists. The delegate found that, while the existence of the clinical trial itself may well have been widely known amongst veterinary cardiologists, key information in the press release reporting the interim clinical trial results (and other announcements) was not CGK amongst veterinary cardiologists at the priority date of the applications. Furthermore, evidence before the delegate showed that some earlier studies had suggested a potentially detrimental effect of the use of pimobendan in dogs at the early stages of MMVD, thus pointing away from the hypothesis being tested in the clinical trial.
The delegate held that, to constitute CGK, information must be generally assimilated and accepted without question by persons skilled in the art. In this case, the evidence indicated that, while the existence of the clinical trial (and even the hypothesis that was being tested) formed part of the public knowledge of veterinary cardiologists, the technical information relating to the clinical trial (for example at what stage pimobendan can be safely administered to dogs with MMVD) had been more contentious, and less well-accepted, in the art.
The delegate, however, did go on to find the claims of the standard application obvious in light of the CGK of veterinary cardiologists when combined with the information in the press release. By contrast, the claims of the innovation patent were found to contain an innovative step on the basis that reducing the size of an already pathologically enlarged heart clearly makes a substantial technical or functional contribution and is a significant aspect of the operation of the invention over the prior art disclosures.
Zoetis was unsuccessful on all other grounds of opposition to the standard application, including lack of novelty, prior use, support, clarity, sufficiency of the disclosure, utility and manner of manufacture. However, the delegate saw potentially patentable subject matter in the standard application and provided Boehringer with an opportunity to amend its claims.
The opposition to the innovation patent application failed on all grounds.
About Pearce IP
Pearce IP is a boutique firm offering intellectual property specialist lawyers, patent attorneys and trade mark attorneys to the life sciences industries (in particular, pharmaceutical, biopharmaceutical, biotech, ag-tech and food tech). Pearce IP is the 2021 ‘Intellectual Property Team of the Year’ (Lawyers Weekly Australian Law Awards) and was shortlisted for the same award in 2022. Pearce IP is ranked in IAM Patent 1000 and Managing IP (MIP) IP Stars, in Australasian Lawyer 5 Star Awards as a ‘5 Star’ firm, and the Legal 500 APAC Guide for Intellectual Property.
Our leaders have been recognised in virtually every notable IP listing for their legal, patent and trade mark excellence including: IAM Patent 1000, IAM Strategy 300, MIP IP Stars, Doyles Guide, WIPR Leaders, 5 Star IP Lawyers, Best Lawyers, and Australasian Lawyer 5 Star Awards, and have been honoured with many awards including Australian Law Awards – IP Partner of the Year, Women in Law Awards – Partner of the Year, Women in Business Law Awards – Patent Lawyer of the Year (Asia Pacific), Most Influential Lawyers (Changemaker), among other awards.
Chris Vindurampulle PhD
Executive, Patent & Trade Mark Attorney
Chris is a senior Patent and Trade Mark Attorney who is registered to practice before the intellectual property offices of Australia and New Zealand. He is experienced in patent drafting, patent and trade mark prosecution and opposition, and freedom to operate, opinion and due diligence work. Through his experience and delivery of highly-regarded client service, Chris has been recognised as a leading patent practitioner having been listed in the IAM Patent 1000 as a recommended individual for patent prosecution, and a Rising Star in 2021, 2022 and 2023 by Managing IP.
Helen Macpherson
Executive, Lawyer
Helen has over 25 years’ experience as an intellectual property specialist and is recognised as an industry leader. Helen advises on all forms of intellectual property including patents, plant breeder’s rights, trade marks, copyright and confidential information across a wide range of industries, including the pharmaceutical/biopharmaceutical, biotechnology, medical device, life sciences, agricultural, manufacturing and tech sectors.
Julie Ballance
Special Counsel (NZ), Patent Attorney, Lawyer & Notary
Julie is a senior Trans-Tasman patent attorney, and a New Zealand registered lawyer and notary public with more than 30 years’ experience across a range of technology areas and a first class honours degree in chemistry. Julie is internationally renowned for her considerable patent/trade mark/designs/legal prowess, including being ranked in IAM Patent 1000.