Law of patents

BigChem Inc, is a large pharmaceutical firm. Its most successful product is pretenderine. Pretenderine is marketed as a pain-killer. The patent on pretenderine expired at the end of 2011. Pretenderine is one of about 14,000 chemicals in the imagionic acid group. In 1995, Dr Bunsen Burner, a Scientist at the Institute of Studies in Western Australia, was working on a scientific paper about the imaginoic acid family. In it he suggested that some members of the family might be useful for preventing bleeding. He died before the draft paper was submitted to a publisher. Following his death his papers were donated to the Institute’s library, but the imaginoic acid draft paper was misfiled in the children’s literature section.
In December 2013, BigChem discovered that when applied to the skin even very small amounts of pretenderine were very effective at stopping bleeding. In early January 2014 the chief scientist working on finding new uses for pretenderine wrote an email marked ‘HIGHLY CONFIDENTIAL” to a patent attorney in which she detailed the invention. Unfortunately, in April 2014 BigChem suffered a serious data breach and all of the email records for preceding 12 months (i.e. from April 2013-April 2014) for the entire company (over 200million of them) have now been posted to the internet.
In June 2014 BigChem applied for a patent with the following claims:
Claim 1: “the application of a 0.1mg/I solution of pretenderine in water to the skin in order to prevent bleeding” Claim 2: “pretenderine for use in the treatment of bleeding”

BigChem’s patent application was published in December 2015. Since then it has been selling pretenderine soaked bandages and sticking plasters under the name NO-BLEED.
Advise BigChem under the Patents Act 1977 in relation to the following matters:
(a) Chemotech, a rival pharmaceutical firm, has recently started manufacturing generic pretenderine which it is supplying to pharmacists. The packaging of this generic pretenderine only states it is for use as a painkiller. (b) Chemotech is a leader in the field of surgical dressings — it has produced a small quantity of pretenderine soaked bandages to see how well they perform in various surgical situations. (c) Kevin, a pharmacist, is displaying Chemotech’s pretenderine tablets next to supplies of bandages and sticking plaster. He has placed a sign above the display that says “Make your own NO-BLEED”. (d) BigChem wishes to know if either of its patent claims will be open to a validity challenge, and if so, on what grounds.

Sample Solution