Decision Nº O/016/99 from Intellectual Property Office - (Patent decisions), 18 January 1999
| Judge | Mr D L Wood |
| Court | Intellectual Property Office (United Kingdom) |
| Patent Number | GB9412950.9, GB9507929.9, GB9822734.1, GB9822737.4 |
| Date | 18 January 1999 |
| Administrative Decision Number | O/016/99 |
| Parties | Kenneth F Prendergrast |
1
PATENTS ACT 1977
IN THE MATTER OF
Patent Applications GB 9412950.9;
GB 9507929.9; GB 9822734.1 and
GB 9822737.4 in the name of
Kenneth F Prendergast.
STATEMENT OF REASONS
1. These are the reasons for my decision of 17 December 1998 refusing all four applications.
2. The applications in suit comprise (a) parent application GB 9412590.9 of priority date 28
June 1994 and its divisional application GB 9822734.1 and (b) parent application GB
9507929.9 of the same priority date and its divisional application GB 9822737.4.
3. During the course of the pre-grant proceedings the claims of the applications have been
considerably amended and in the form rejected by me in my decision all relate to new
pharmaceutical uses of either ondansetron or granisetron, both of these compounds being
well-known pharmaceutical compounds. Briefly, according to the applications as filed, both
ondansetron and granisetron are widely accepted as potent 5HT, serotonin, inhibitors. They
have a dual site of action in the ileum and, more centrally, in the area postrema. In the
treatment of cancer they have the particular use of treating the nausea associated with
chemotherapy and radiotherapy.
4. Since both compounds have a known pharmaceutical use the claims available to an
applicant who has discovered a new use for them must, according to well established practice
in Europe, including the United Kingdom, be in the "Swiss form" format.
5. Thus, the claims in GB 9412950.9 are worded as follows:-
2
"1. The use of ondansetron to obtain a medicine for intended therapeutic use in the
treatment of battle fatigue.
2. The use of ondansetron to obtain a medicine for intended therapeutic use in the
prevention of or treatment of combat stress reaction.
3. The use of ondansetron to obtain a medicine for intended therapeutic use in the
prevention of or treatment of post traumatic stress disorder especially associated with
combat or body handling or service personnel coping with civilian or military
emergencies."
and those of its divisional GB 9822734.1 as follows:-
"1. The use of ondansetron to obtain a medicine for intended therapeutic use in the
prevention or treatment of neurological symptoms provoked by chemical warfare
agents, for example nerve gas.
2. The use of ondansetron to obtain a medicine for intended therapeutic use in the
prevention of or treatment of nausea, provoked by chemical or biological warfare
agents in soldiers or civilians in circumstances where it may be hazardous to vomit."
6. The claims in GB 9507929.9 and its divisional GB 9822737.4 mirror those of GB
9412950.9 and GB 9822734.1 respectively with the difference that they relate to granisetron
rather than ondansetron.
7. As I said in my decision there is no argument remaining about the format of the claims but
for some time during the pre-grant proceedings there has been a dispute between the
Examiner in the case and the Applicant about whether the claims are supported by the
description as required by section 14(5)(c) of the Act. It was for this reason that the matter
came before me at a Hearing on 8 December 1998 where Dr Prendergast, the Applicant,
appeared in person and Mr Jenkins attended as Examiner on behalf of the Office. Following
the Hearing, on 17 December, I issued a brief decision, without reasons, finding for the Office
that the description did not support the claims in all four applications.
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