Boehringer Ingelheim Animal Health USA Inc v Elanco New Zealand

Boehringer Ingelheim Animal Health USA Inc brought an appeal against the decision of a delegate of the Commissioner of Patents to allow amendments to a patent application. The application, filed by Elanco New Zealand, was for an anti-infective formulation intended to prevent or ameliorate mammary gland infections, including mastitis, in animals. The application disclosed an invention that comprised an oil-based physical barrier material mixed with at least one antiseptic compound. The original specification allowed for any antiseptic to be used, but also detailed preferred characteristics and properties of suitable antiseptics. The appellant opposed the application, successfully arguing that the invention lacked both novelty and an inventive step, citing prior art that disclosed the use of acriflavine, an acridine, in a teat seal formulation. The delegate found that the use of acriflavine as an antiseptic was part of the common general knowledge, leading to the conclusion that the claims lacked novelty and inventive step. Following the opposition decision, the respondent applied for amendments to the patent application, excluding acridines from the class of antiseptics that could be used in the formulation. The appellant opposed these amendments, arguing that they were not allowable under the Patents Act, among other reasons. The court was tasked with deciding whether the amendments exceeded the scope of the original disclosure, and whether excluding acridines from the claims was inconsistent with the original specification.

The court considered the legal issues of whether the amendments exceeded the scope of the original disclosure and if the exclusion of acridines was inconsistent with the original specification. The court noted that the appeal was not an appeal in the strict sense but a rehearing in the original jurisdiction of the court, which approaches the matter afresh. The court examined the original specification to determine if it disclosed the use of acridines in the formulation and if it was common general knowledge that acridines had antiseptic properties. The court also had to consider whether the parties were bound by the findings of the delegate in the previous opposition decision, particularly the finding that the use of acriflavine as an antiseptic was part of the common general knowledge.

The court concluded that the original specification did not disclose the use of acridines in the formulation, nor did it suggest that acridines were a preferred antiseptic. The court found that the exclusion of acridines in the amended claims was not inconsistent with the original specification. The court further held that the parties were not bound by the findings made in the previous opposition decision, as the respondent had not appealed from that decision. Consequently, the court dismissed the appeal and upheld the delegate’s decision to allow the amendments to the patent application.

The final orders of the court required the respondent to file and serve draft minutes of order reflecting the conclusions in the court's reasons. The entry of orders was to be dealt with in accordance with Rule 39.32 of the Federal Court Rules 2011.