Andrew Brown - Queen's Counsel
Recent case law

Pfizer Inc v Commissoner of Patents

Court of Appeal Of New Zealand

Anderson P, Glazebrook, Hammond, William Young and O’Regan JJ

9-10 February, 28 June 2004

Pfizer filed two patent applications in 1997 and 1998 relating to methods of treatment of psychotic disorders.  Following a hearing, the Assistant Commissioner of Patents found that the claims in both patents relating to methods of medical treatment were “not allowable on policy (moral) grounds (s17(1))” and declined to accept the specifications in the form in which they were submitted. An appeal to the High Court was unsuccessful.  Pfizer appealed to the Court of Appeal.

Pfizer contended that the Court of Appeal should overrule its earlier decision in Wellcome Foundation Limited v Commissioner of Patents [1983] NZLR 385 that methods of treating disease or illness in human beings were not patentable.  Pfizer argued that a series of changes to the Patents Act and dicta in the Court of Appeal decision allowing patents for Swiss forms (Pharmac v Commissioner of Patents (1999) 46 IPR 655) removed the reasons for the ban given in the Wellcome case.  These were:

  • The repeal in 1992 of the compulsory licence provision in s51; 
  • The observations of the Court of Appeal in Pharmac that it was doubtful that the Commissioner could refuse an application under the “generally inconvenient” proviso in s6 Statute of Monopolies;
  •  The recognition in Pharmac that methods of medical treatment were an “invention” under the Act, specifically overruling the Wellcome decision on that point;
  • The amendment to s17 Patents Act 1953 in 1994 and the fact that this did not provide a statutory basis for the medical treatment exclusion;
  • The recognition by the Court of Appeal in Pharmac and by the Ministry of Economic Development in reform proposals that the Patents Act contained no specific exclusion for methods of medical treatment;
  • The fact that appellate courts in Australia had found under comparable legislation that methods of medical treatment claims were within the definition of “invention” and were patentable;
  • The fact that the 1994 amendments to the Patents Act, which were designed to ensure that New Zealand complied with the TRIPs Agreement, did not include amendments to prevent the patenting of methods of medical treatment as was specifically permitted under Article 27:3 TRIPs Agreement.

In the alternative, Pfizer offered to include in each of its patent applications a disclaimer of suit against any medical practitioner.

Held, dismissing the appeal:

(1)  The ratio of the Wellcome case that a method of medical treatment of humans is not patentable remains the law in New Zealand (paras [7, 85 and 94]):

  • The whole of s6 of the Statute of Monopolies forms part of the definition of “invention”.  Section 17 of the Act cannot be said to replace the “generally inconvenient” ground in s6 Statute of Monopolies [7, 51 and 58];
  • There is no breach of Article 27 TRIPs in interpreting the definition of “invention” as preventing patentability of methods of medical treatment [7 and 57];
  • Other than methods of medical treatment of humans, there is little scope for exclusion on the “generally inconvenient” ground [7 and 57-8];
  • The Court in Pharmac was careful not to overrule the exclusion in Wellcome. To the extent that obiter observations in Pharmac may have cast doubt on the exclusion of methods of medical treatment from the definition of “invention”, the Court differed from those observations [60-64];
  • Section 17 could not have been a basis for the medical treatment exclusion [66]; 
  • The scope of the 1994 amendments to the Patents Act dealt only with amendments that were strictly required by the TRIPs Agreement [77-8];
  •  Reform of this area of the law has been undertaken through the Parliamentary process.  The circumstances had not changed so significantly that the Court should overrule the Wellcome decision.  The complexity of this area of the law and the policy choices required were matters best left to legislative reform [83-4, 128].

(2)  While the Court in Pharmac had made observations about disclaimers from patentees, this was directed to the Legislature and to officials considering reform proposals and was not an indication of any intention by the Court to impose such an outcome in a future decision [91].

The decision is attached.