Injunction granted to block protected second medical use

Often, a single pharmaceutical may be effective in the treatment of multiple aliments. The issue therefore arises where some of those treatments are separately patented as ‘second medical uses’ of the original pharmaceutical.

Recent Australian cases have restricted whether contributory infringement can be found for the supply of a pharmaceutical which has a patented second medical use, generally favouring the generic supplier. Especially, where the first use of the product is non-patented and substantial. However, the operation of this principle only goes so far.

Recently, in Warner-Lambert Company LLC v Apotex Pty Ltd [2014] FCAFC 59, the full court of the Federal Court, allowed an interlocutory injunction where the first use medical market was very small, the second medical use market was large and it would be reasonable to expect the supplier had reason to believe that substitution would take place. The court was swayed by the fact that substitution in the case of the second medical use was likely to occur and granted an overall interlocutory injunction for the supply of the product in any form.

This article by Shelston IP Partner, Peter Treloar, first appeared in Managing Intellectual Property magazine, July/August 2014.