Prejay Holdings Ltd v Commissioner of Patents

Prejay Holdings Ltd and Woco Investments Ltd appealed against a decision of Heerey J, which dismissed their application under the Administrative Decisions (Judicial Review) Act 1977 for review of a decision of a delegate (Dr Gillian Jenkins) of the Commissioner of Patents. The delegate had refused to accept an application by the appellants for an extension of the term of patent number 582540, held by them. The basis of the delegate’s decision was that she found the relevant pharmaceutical substance did not fall within the scope of the patent’s claims. The patent contains a number of claims, all of which are method claims, not product claims. The parties agreed that the application of the relevant law to claim 14 was sufficient to dispose of the case, one way or the other. Claim 14 reads: “A method of hormonally treating menopausal or post-menopausal disorders in a woman, comprising administering to said woman continuously and uninterruptedly both progestogen and estrogen in daily dosage units of progestogen equivalent to laevo-norgestrel dosages of from about 0.025 mg to 0.05 mg and of estrogen equivalent to estradiol dosages of about 0.5 mg to 1.0 mg.” The court had to decide whether the relevant pharmaceutical substance fell within the scope of the patent’s claims and if the appellants’ application satisfied the requirements set out in s 70(2) of the Patents Act 1990. The court concluded that the conclusion of Heerey J was correct. Although there is a difference between the patent under consideration in Boehringer and the subject patent, the ratio of Boehringer is directly in point. In para 42 of its reasons, the Full Court in Boehringer said: “... in the context of s 70(2)(a), we think that falling within the scope of a claim in a patent specification means included amongst the things claimed. Here, the substance, in itself, is not a thing claimed in the patent sense.” The policy adopted in s 70 was to confine extensions to patents that claim invention of the substance itself. The appeal should be dismissed with costs.

The court dismissed the appeal and ordered that the appellants, PreJay Holdings Ltd and Woco Investments Ltd, pay the costs of the respondent, Commissioner of Patents.