2.9.2.17.1 New Use of a Known Substance

A new use of a known substance is patentable, provided the use takes advantage of a previously unknown property.

In assessing whether the new use of a known substance is patentable, consideration should be given to what is known on the face of the complete specification (AstraZeneca AB v Apotex Pty Ltd [2014] FCAFC 99; 107 IPR 177 107 IPR 177), i.e. what does the specification disclose or admit was known (common general knowledge) before the priority date.  In this case, the claims were directed to a pharmaceutical composition comprising rosuvastatin and an inorganic salt with a multivalent cation, the latter component preventing degradation of the former.  The composition could further comprise a commercially available ferric oxide coating, such coatings being known to protect against degradation by light.

The Full Bench of the Federal Court held that the specification did not admit or disclose on its face that it was known that ferric oxide coatings could be used to address the stability issues associated with rosuvastatin, and furthermore that it was not known that rosuvastatin was sensitive to degradation.  The specification itself disclosed the fact that rosuvastatin was sensitive to degradation and was not merely reporting on a prior disclosure made by others (AstraZeneca AB v Apotex Pty Ltd supra at [408]-[412]).  The Full Court indicated that the position in this case was distinguished on the facts from that in Commissioner of Patents v Microcell Ltd (1959) 102 CLR 232 (1959) 102 CLR 232.  

In Microcell supra, the claims defined rocket projectors comprising tubes of reinforced synthetic resinous plastic material.  The High Court found that the specification itself indicated that rocket projectors were well known articles of manufacture and that synthetic resinous plastics were well known materials.  Furthermore, the properties of the plastic materials were known generally from matter published before the priority date.  The patent application was refused as there was:

"in truth nothing but a claim for the use of a known material in the manufacture of known articles for the purpose of which its known properties make that material suitable. A claim for nothing more than that cannot be subject matter for a patent, and the position cannot be affected either by the fact that nobody thought of doing the thing before, or by the fact that, when somebody did think of doing it, it was found to be a good thing to do."

In NV Philips Gloeilampenfabrieken and Another v Mirabella International Pty Ltd 24 IPR 1, claims to low pressure mercury vapour discharge lamps having a luminescent layer comprising phosphors were refused.  In this case it was held that the luminescent qualities of phosphors had long been known in the art.