Merck & Co Inc v Arrow Pharmaceuticals Ltd

Merck & Co Inc appealed against the decision of the primary judge, who held that claims 1-3 of the patent were invalid. Arrow Pharmaceuticals Ltd sought to revoke claims of the patent, which was related to a method of inhibiting bone resorption by administering an effective amount of alendronic acid to a patient. The dispute centred on the validity of the claims of the patent, which related to the administration of alendronate for the treatment of osteoporosis. The Full Court of the Federal Court of Australia was tasked with determining the validity of claims 1-3 of the patent. The court needed to decide whether the claims were novel and involved an inventive step, and whether they were a manner of manufacture as required by statute.

The Full Court held that the appeal should be dismissed. The court found that the claims did not involve an inventive step, as they were based on known substances and methods. The court also held that the claims did not constitute a manner of manufacture, as they were directions for use of a known substance for a known purpose. The court further found that the claims were not novel due to prior publication of articles in Lunar News, which anticipated the claims. The Full Court held that the primary judge's decision was correct, and that the claims were invalid. The appeal was dismissed, and the appellant was ordered to pay the respondent's costs, including reserved costs.