Case: Gillette Safety Razor Company v Anglo-American Trading Co Ltd (1913) 30 RPC 465
Outcome: referred to
First, GenRx relies upon what it describes as its Gillette defence (see Gillette Safety Razor Company v Anglo-American Trading Co Ltd (1913) 30 RPC 465). That is to say, the dosage regimen for the GenRx products is the regimen disclosed in the Kelly publication and the Metra publication. GenRx says that, if the supply of its products would infringe the Patent, the Patent must be invalid as lacking novelty because that regimen was anticipated in those publications. On the other hand, if the publications do not anticipate the Patent, GenRx is not infringing because it is doing no more than was disclosed in the earlier publications. 78 However, the argument fails to take account of the matter already referred to above concerning the question of whether the publications do, in truth, anticipate the claimed invention of the Patent. That is to say, the element of ' decreasing mortality ' is not present in the publications but it is at least reasonably arguable that it would be an element in the threatened actions of GenRx. I am not persuaded that the so-called Gillette defence is a clear answer to the Patentees' allegations of infringement such that there is not a serious question to be tried. 79 The Patentees contend that the proposed exploitation by GenRx of its carvedilol products is for decreasing mortality in patients suffering from congestive heart failure and that, accordingly, there will be an infringement of Claims of the Patent. They say that listing of the GenRx products under the Pharmaceutical Benefits Scheme for the treatment of mild to severe congestive heart failure was obtained on the basis that the effect of carvedilol in the products on decreasing mortality arising from congestive heart failure was shown to be cost justified having regard to such a clinical outcome. The Patentees contend, therefore, that, since GenRx obtained listing under the Pharmaceutical Benefits Scheme as a bio equivalent of the Patentees' products, they have done so on the basis that the cost-justification for the listing of GenRx's products under the Pharmaceutical Benefits Scheme is a decrease in mortality for patients suffering from congestive heart failure. The Patentees contend that, having regard to the basis upon which GenRx has obtained listing under the Pharmaceutical Benefits Scheme, the GenRx products are medicaments for decreasing mortality resulting from congestive heart failure in humans. Claims 1 to 13 are for the use of carvedilol for the manufacture of such medicaments. 80 Under the Patents Act , it is an exploitation of an invention as claimed to import, sell or otherwise dispose of a product resulting from the method or process for manufacture that is the subject of the claim. Claim 14 is directed to a method of treatment using carvedilol to decrease mortality resulting from congestive heart failure. The dosages for which registration has been obtained for the GenRx products and the listing under the Pharmaceutical Benefits Scheme that has been obtained in relation to those products are clearly in relation to treating human patients suffering from congestive heart failure. The Patentees say that such treatment is clearly ' with the objective of decreasing mortality resulting from such congestive heart failure '.