Merial, Inc. v Bayer New Zealand Limited

In the case of Merial, Inc. v Bayer New Zealand Limited, the dispute arose from an opposition to the grant of a patent for a single formulation intended to prevent mastitis in animals by administration to the teat canal or lower portion of the teat cistern. The Federal Court of Australia was tasked with determining whether the claims in the patent application met the requirements for novelty and inventive step under the relevant sections of the Patents Act. The court had to assess the sufficiency of the quantity of antiseptic in the formulation and whether it provided a bacteriostatic or bactericidal effect in vivo.

The legal issues centred around whether the claims in the patent application were novel and involved an inventive step. The key question was whether the prior art, including a document disclosed by the applicant (GB 1,441,747) and other common general knowledge, rendered the claims lacking in novelty and inventive step. The court considered the testimony of experts, including Professor Whittem, who concluded that the quantity of acriflavine in the formulation was sufficient to act effectively as an antiseptic.

The court found that the claims were not novel as they were anticipated by the cited prior art. Additionally, the claims lacked an inventive step when considering the prior art and common general knowledge. The court noted that the prior art demonstrated the use of acriflavine in teat seal formulations and that the commercially available teat seal formulation in Australia and New Zealand did not contain an antiseptic. The opposition was successful on the grounds of both novelty and inventive step.

The court allowed Bayer New Zealand Limited two months to propose amendments to the specification and awarded costs against the applicant, Bayer New Zealand Limited, in accordance with Schedule 8. This decision underscores the importance of assessing prior art and common general knowledge when evaluating the novelty and inventive step of patent claims.