PreGrant Opposition: Erlotinib Polymorph B Rejected

In December 2008, the Delhi Patent Office rejected OSI Pharmaceuticals patent application no. IN/PCT/2002/507/DEL for polymorph B form of erlotinib hydrochloride in a pre-grant opposition proceeding filed by Cipla. Cipla challenged the application on the grounds of (1) prior publication, (2) publicly known and used in India, (3) obvious and lack in inventiveness, (4) not an invention/not patentable, and (5) failure to disclose information under section 8. In its [decision], the Patent Office found application lacking comparative data with respect to known substance to prove improvement in therapeutic and subsequently rejected claims for polymorph B of erlotinib hydrochloride under section 3(d) of the Patents Act, 1970. The decision was decided on December 15, 2008. Rejected application has corresponding patent in the United States listed with Orange Book. It is considered that Roche marketed Tarceva tablets contains polymorph B form of erlotinib hydrochloride.

PreGrant Opposition: Erlotinib Polymorph B Rejected

In December 2008, the Delhi Patent Office rejected OSI Pharmaceuticals patent application number IN/PCT/2002/507/DEL for polymorph B form of erlotinib hydrochloride in a pre-grant opposition proceeding filed by Cipla. Cipla challenged the application on the grounds of (1) prior publication, (2) publicly known and used in India, (3) obvious and lack in inventiveness, (4) not an invention/not patentable, and (5) failure to disclose information under section 8. In its [decision], the Patent Office found application lacking comparative data with respect to known substance to prove improvement in therapeutic and subsequently rejected claims for polymorph B of erlotinib hydrochloride under section 3(d) of the Patents Act, 1970. The decision was decided on December 15, 2008. Rejected application has corresponding patent in the United States listed with Orange Book. It is considered that Roche marketed Tarceva tablets contains polymorph B form of erlotinib hydrochloride.

PreGrant Opposition: Crystalline Adefovir Dipivoxil Rejected

The Delhi Patent Office lately rejected Gilead’s patent application no. 712/DEL/2002 for crystalline adefovir dipivoxil in a pre-grant opposition proceeding filed by Ranbaxy. Ranbaxy challenged the application on the grounds of: (1) the subject matter of the application is not novel, (2) the subject matter of the application lacks inventive step, (3) the invention has no utility, (4) the application could not have been filed under section 5(2) of the previous Act, (5) claims are indefinite, (6) no patent can be granted for a new form of a known substance, and (7) no patent can be granted for a composition. In its [decision], the Patent Office found application lacking inventive step and lacking comparative data with respect to known substance to prove improvement in the therapeutic efficacy. The decision was made on March 18, 2009. Adefovir dipivoxil is a diester prodrug of adefovir marketed by Gilead under the brand name Hepsera having therapeutic activity against human hepatitis B virus (HBV).

Roche et al vs. Cipla Ltd.

[Download] the Delhi High Court decision rejecting Roche appeal against the Delhi HC judgment dated March 19, 2008 declining their appeal for grant of an interim injunction to restrain the Cipla from manufacturing, offering for sale, selling and exporting the drug Erlotinib. We will be bringing exclusive analysis on this decision soon.

Note: Our humble request to those having issue with our watermark, please refrain yourself from downloading the decision from our blog. This and other decisions available on our blog are public property and we do not hold any ownership on them, please feel free to download them from other free sources.

Patent Circle To Resume Blogging

Dear Readers,

Thank you for all your support and encouragement to our blog. We sincerely and heartily appreciate your comments and requests to reconsider our decision to stop blogging. After weighing requests made by our readers and well-wishers we have decided to put back this issue and temporarily resume back to blogging. We feel absolutely sorry for the unfortunate incident which could definitely be avoided. Though we have decided to put end to this but still would like to make our position clear in whole episode.

In last few months, particularly after internal circular issued by newly appointed Controller General of Patents, Mr. P.H. Kurian instructing officials to clear pending opposition decisions by the end of March 2009, the Indian Patent Office decided and published number of opposition decisions, both pre- and post-grant. Keeping our usual practice of tracking and bringing notice of patent office decisions and granted patents (though we later stopped reporting granted patents), we kept track of most of the opposition decisions. We particularly took note of notable pharma pre-grant opposition decisions that include (1) rejection of crystalline adefovir dipivoxil application (712/DEL/2002), (2) rejection of tenofovir intermediate application (963/DEL/2002), (3) rejection of erlotinib polymorph application (IN/PCT/2002/507/DEL), rejection of oseltamivir application (396/DEL/1996), (4) rejection of alpha crystalline imatinib application, (5) rejection of amlodipine and atorvastatin combination application (2571/DEL/1998), (and also noted couple of Controller decisions under section 15) (6) rejection of budesonide and formoterol aerosol HFA combination (2145/DELNP/2004) and (7) rejection of rosiglitazone ethane sulphonate salt (295/DELNP/2003). However, we only reported four decisions, namely, (1) alpha crystalline imatinib rejection, oseltamivir rejection, amlodipine-atorvastatin combination rejection, and (4) rosiglitazone salt rejection. We believed that information regarding rejections of these applications (and in sequence) was first made public by our blog.

After a couple of days of our posts on these rejected applications, SpicyIP in its two posts mentioned about these rejected applications (interestingly in same sequence). This gave us an impression that possibly SpicyIP has referred this sequential rejections information from our blog. So in good faith, we wrote a friendly comment to SpicyIP as reproduced below.

“Shamnad,

I would surely be happy if you could acknowledge

Patent Circle

for Caduet and Oseltamivir pregrant oppositions as wellas Glaxo’s rosiglitazone salt decision. Apart from our blog these info is not available anywhere.”

In our comment, we just made friendly request. Obviously it was put to SpicyIP to consider or not. Same day we saw an Anonymous comment being made to our comment --- raising issue of Patent Circle watermark and making personal remarks against us. It was shocking to us. We were not shocked about Anonymous comment but on SpicyIP decision not to moderate the comment and made it public. Immediately we made another comment replying to Anonymous issue of watermark and also requesting SpicyIP to remove the comment made by Anonymous. Following our second comment, Shamnad replied to let us know that his knowledge/information does not come from our blog and also give supporting evidences of DWS website (they also borrowed news from our blog only) and Shamnad personal contacts in law firms who keep him updated about Glaxo’s patents.

We believed Shamnad words (may be it was a big coincidence that same decisions mentioned in similar sequence) but we felt bad that still SpicyIP not removed Anonymous comment. We made yet another comment (third one) yet again requesting SpicyIP to remove Anonymous comment but again no action by SpicyIP. In response we decided to stop blogging and took off all our past posts from

Patent Circle

. Following that we received a partially friendly and partially unfriendly personal email from Shamnad which he later made public on SpicyIP. In his email, he admitted to have extremely sour opinion about us after parallel imports post and also accused us of sending flunkeys or masqueraded myself to post some very disparaging comments about his blog. To put this loud and clear --- someone cannot accuse us of an act which he himself is involved on his blog. We have all the guts and knowledge to comment in our own name. Also, we are hardcore patent practitioners not having time for such stupid gimmickry. One can make facts sound spicy but cannot change the reality. This is not the first time that SpicyIP has unprofessionally targeted us, earlier also SpicyIP targeted us in their post on parallel importation.

All said and done, finally that Anonymous comment is now removed by SpicyIP (that also considering Anonymous comment) after further commenting that the word “selfish” used by Anonymous is very mild. If SpicyIP had issue with acknowledgement then they should have restricted to that only. Why to make personal remarks? And if accidentally such comment got published then why SpicyIP not bothered to remove it after our couple of friendly requests? As far as reporting of patent office decisions are concerned let us consider that it is coincidence that SpicyIP also reported same decisions in same sequence. We hope we have made our stand clear to our readers in whole episode. Yes we do accept that decision to stop blogging was more emotional, irrational and not professional.

However, in whole incident one thing that really concerns us is comment made by SpicyIP that “friends of mine that deal with this case keep me appraised of all the developments re: this patent and other related patents of GSK.” The GSK rosiglitazone salt application was decided on January 06, 2009 and got published soon thereafter. We reported rosiglitazone salt rejection decision on April 16 and SpicyIP reported on April 18 (two days after our post). If SpicyIP had access of rosiglitazone decision through his friends then why SpicyIP posted rosiglitazone information after three months, and that also after our post? Secondly, this is quite concerning and unfortunate to know law firm/agent representing Glaxo’s patent applications in India are indulge in leaking and disclosing confidential information (even undecided matters) to outsiders.

Thank you,---

Patent Circle

Patent Circle Will Stop Blogging

Coincidently three years back Dennis Crouch, a US patent attorney and author of leading patent law blog Patently-O suggested me to start a patent law blog to keep posting my views and articles rather than sending them to other bloggers to publish and from there came the idea of

Recently, SpicyIP in their recent post referred about recent pre-grant oppositions decided by the Indian Patent Office which is incidentally reported by our blog only. We wrote a friendly comment to Shamnad’s post about the fact that these decisions are exclusively reported by our blog and we would surely appreciate if his post can acknowledge our blog. In fact, we too have made same mistake in past when we accidentally and unknowingly used a phrase coined by SpicyIP without acknowledging them, for which we later apologized to Shamnad. In reply to our comment to Shamnad’s post, an Anonymous reader made (what we feel) a derogatory remark against me which we are reproducing below.

“VC,

For your information, these decisions are first available on the Indian patent office..... From where u take and put your water mark to claim its yours....

Don't become so selfish and mean. It's already there in the public domain and how can you claim that its only available in your blog???”

We made a counter reply to above comment which we are reproducing below.

“Anonymous,

No idea who you are but sole purpose of putting watermark is to distinguish the source if someone download the decision from our blog and obviously not to claim ownership. If you have any problem with that then who is asking you to refer and download from our blog (feel free to surf around patent office website). Indeed decisions are available on official website of patent office but why it was still not reported anywhere in media or news even after 15 days of decision made available on official website. Simple nobody knows about the decision even the companies involved in opposition proceedings. In fact, it was our blog that keep monitoring and retrieving such decisions to bring them in notice of our readers. There are more than 15 decisions listed in February and March 2009 but we decided only to cite five of them and incidentally SpicyIP referred those decisions only (except Pegasys) and sufficient to understand that author has referred those decisions from our blog only. Is it wrong to ask author to acknowledge our blog for such info? Yes if you do not feel respecting and acknowledging someone time and effort for bringing such valuable information in public then we have no point of discussion here.”

We do not know how to react to such comments but this is for first time we are showing our displeasure to such activities. In fact, we are very disturb knowing that such comment is not moderated by Shamnad and made public despite having personal remarks against us. In our counter reply we also wrote to Shamnad which we are reproducing below.

“@Shamnad,

We always have great respect for you, both personally and professionally, and your contribution to IP awareness. As you referred in past that you moderate comments made to your blog. We sincerely expect such professionalism at least from you that any comment making personal remarks specific to someone using words like “selfish” and “mean” should be avoided from being posted in public.”

This episode has finally brought us to an understanding that our time, expertise and resources are not appreciated by readers and anyone can anytime disrespect our contribution and hard work. We sincerely feel it is our duty now that we should take reasonable measures to hold our respect and dignity by stopping blogging anymore in future. Readers do have right to criticize our posts/views but they have no right to make personal remarks against us. We appreciate your support and contribution in bringing success to

Patent Circle

and hope you too enjoyed the journey as do we. Thank you.

Patent Circle

. Thanks Dennis!!! And from there on it was a great journey, never thought my views and articles would be widely read by hundreds of readers working in corporate R&D, law firms, news media and universities across the globe. Not only

Patent Circle

became regularly read patent law blog from India but also brought us a decent recognization in patent domain. We started writing posts to create patent awareness and understanding, and to keep our readers updated with latest developments across the globe, particularly India. Obviously we enjoyed doing that and sharing our knowledge without any selfish interest. Over past few months we focused more on Indian patent landscape such as parallel importation, pre-grant and post-grant oppositions, compulsory licensing, patent-drug regulatory linkage, and so on, however, some our posts brought us some criticism which is well understandable. We always encourage constructive debate and positive criticism from our readers but unfortunately some readers rather criticizing our post made personal remarks against us. Some Anonymous readers commented us for showing bias attitude in our writing which is still acceptable as everyone has his/her own way of judging our posts. But there are few readers who made personal remarks against our integrity and questioned our motive behind writing posts. If fact one of the reader (Ajay Chauhan) went ahead to write full-fledged post on his blog against me (which he later deleted) --- accusing me to be manipulative in our posts. He even earlier bluntly pointed fingers on my integrity making comment that our posts are tailored to lure foreign law firms. In other instance, one of his co-author Jeena raised finger on our credibility in writing posts by questioning our motive. Obviously such comments are not tolerable and completely unprofessional. However, we still maintain patience despite such absurd comments because comments made by any Tom, Dick and Harry cannot question the hard work and integrity of our blog.

Glaxo's Application for Rosiglitazone Salt Rejected

After giving GlaxoSmithKline Beecham an opportunity for hearing under section 14 and 15, the Delhi Patent Office has rejected the patent application no. 295/DELNP/2003 (corresponding application of US20040044043A1) for ethane sulphonate salt of anti-diabetic drug rosiglitazone [download]. The application found rejected after Glaxo failed to establish that ethanesulphonate salt of rosiglitazone is better in terms of the efficacy with respect of the rosiglitazone. Though Glaxo provided four supporting Annexures in their written submissions but the Delhi Patent Office do not found them supporting the application efficacy with respect to the known rosiglitazone.

Pfizer Loses Caduet PreGrant Opposition

The Delhi Patent Office has lately ruled against Pfizer in pre-grant opposition [download] filed by Torrent Pharma Ltd. against the patent application no. 2571/DEL/1998 for therapeutic combination of amlodipine and atorvastatin. The combination is marketed as Caduet by Pfizer and has US Patent No. 6,455,574 listed with Orange Book. The Delhi Patent Office rejected the application on grounds of (1) lack of inventive step under section 25 (1) (e), (2) not patentable under section 25(1)(f) and (3) insufficiency of description under section 25(1)(g). The application is also found not patentable under section 3(d) (lack of enhanced efficacy) and 3(e) (lack of synergy).

Roche Wins Post Grant Opposition for Pegasys

Swiss-drug major F. Hoffman-La-Roche has successfully defended its patent for hepatitis drug Pegasys in post-grant opposition [download] filed by Mumbai-based biotech company Wockhardt and Mumbai-based NGO Sankalp Rehabilitation Trust. Interestingly, the recommendation of Opposition Board was to revoke the granted patent for Pegasys, i.e. IN198952 but the Assistant Controller T.V. Madhusudan meritoriously ruled against the recommendation of Opposition Board and upheld the validity of patent. This decision is possibly the first post-grant opposition decided by the Indian Patent Office and we strongly recommend reading it.

Novartis Loses PreGrant Opposition for Imatinib Alpha Form

The Chennai Patent Office lately ruled against Novartis in pre-grant opposition [(download] filed by Sun Pharmaceutical Industries Ltd., Time Cap Pharma Labs Pvt. Ltd. and Okasa Pvt. Ltd. (collectively Opponents) against the patent application no. 799/CHE/2004 for alpha crystalline form of imatinib mesylate. The Chennai Patent Office refuses the grant of patent after Opponents successfully succeeded in (1) establishing the ground of Obviousness under 25(1)(e), (2) proving the ground of ‘not an invention’ under section 25(1)(f), (3) non-patentable under section 3(d), and (4) proving the ground of ‘insufficiency’ under section 25(1)(g). The application is divisional application of the patent application no. 1602/MAS/1998 claiming beta-crystalline form of imatinib mesylate which was also rejected by the Chennai Patent Office but subsequently appealed by Novartis. Currently, Intellectual Property Appellate Board is hearing the beta-crystalline patent application.

Indian Patent Office ruled against Gilead in Tamiflu PreGrant Opposition

California-based Biotech Company Gilead Science Inc. has lately lost crucial pre-grant opposition [download] for its anti-influenza drug Oseltamivir Phosphate marketed as Tamiflu. The Delhi Patent Office decided the pre-grant opposition in favor of Cipla Ltd. after it found that the applicant (Gilead) failed to provide any supportive evidence in the specification by means of comparative data or by way of examples which would have supported the inventive merit of Oseltamivir. The Delhi Patent Office particularly relied on the decision of European Board of Appeal (T-0133/01) stating that alleged but unsupported advantages cannot be taken into consideration in respect of the determination of the problem underline the claimed invention. The Delhi Patent Office also found anti-influenza agent Oseltamivir to fall within the provisions of section 3(d) and not patentable. Tamiflu is marketed by Roche in India and in 2005 entered into sub-license agreement with Hyderabad-based Hetero Drugs for the production of oseltamivir.

From the Desk of Patent Circle: Is Patent-Drug Regulatory Linkage a Necessity? Part II

Case Study – 01

Let us take example of Bristol-Myer Squibb (BMS) patented drug Dasatinib for which Hetero Drugs filed an application with the DCGI for marketing approval of generic dossier of Dasatinib. Suppose the Delhi High Court judgment goes in favor of Hetero and the DCGI gives Hetero the marketing approval but BMS cannot sue Hetero till the generic version is not launched in the market. Now following Hetero’s approval for generic Dasatinib another generic company Cipla too files an application with the DCGI for marketing approval of generic Dasatinib and subsequently obtains the marketing approval. Following Hetero and Cipla, dozens of other generic companies files applications with the DCGI for marketing approval of their generic versions of Dasatinib and subsequently obtains marketing approval. Interestingly BMS cannot stop or sue any of generic company till they launch their generic product in the market.

Now Cipla launches generic Dasatinib in June 2009 and consequently sued by BMS for patent infringement in the Delhi High Court. Now what should be the minimum time period we can expect judgment from the High Court? Let us be too positive to consider such period be around two years. If Cipla wins case then obviously there will be no issue and all other generic companies will be free to enter market without risk. But let us consider judgment is delivered after two years (June 2011) and goes in favor of BMS. Now Hetero launches its generic Dasatinib in August 2011 soon after BMS-Cipla case and sued by BMS for patent infringement. Again let us consider the judgment is made in favor of BMS after two years of court proceedings (around September 2013) and Hetero is prevented for selling generic Dasatinib. Even after BMS wins case each against Cipla and Hetero it doesn’t mean that other companies may not launch their generic launch. Suppose after few months of BMS-Hetero case another generic company launches its generic Dasatinib then again BMS will file and litigate the patent infringement suit. The question is how many times BMS need to go to the Court to enforce its patent for Dasatinib against the generic manufacturers having marketing approval for generic Dasatinib? Does it make any sense that BMS keep fighting multiple infringement lawsuits to enforce the same patent and keep losing crucial patent term and money in just fighting back to back litigations? Is such situation not creating liability on patentees? We know reading this case study seems to be little absurd but one cannot really ruled out such possibility of events. What can be the possible solution to avoid such unjust and unfair liability on patentee? Is such situation not likely to create burden for the Courts and judiciary?

From the Desk of Patent Circle: Is Patent-Drug Regulatory Linkage a Necessity? Part I

Some time back we ran couple of thought provoking posts touching issues pertinent to the Delhi HC Dasatinib order. In our first post we particularly analyzed that both Bristol-Myer Squibb (BMS) and the Delhi High Court acted within the periphery of the law and the Delhi HC order nowhere created any sort of “patent-drug regulatory” linkage, an argument unnecessarily sensationalized and propagandized by newspaper media. In second post we tried to clear distorted arguments that the Delhi HC Dasatinib order contravenes Bolar-provision aka section 107A (1) but at the same time emphasized that exemption under sec. 107A (1) is not a statutory go-ahead for willful infringement. Now continuing from our earlier two posts, we will analyze two important aspects – (1) Enforcement of drug patents, and (2) Patent-drug regulatory linkage.

Enforcement is the heart of drug patents and in absence of proper enforcement policies a patent is not even worth a penny. Proper enforcement is not possible without regulated monitoring mechanism particularly in a country such as India which has vastly fragmented drug industry. Often it is not easy for a company located in some part of India to track and monitor what drugs are been sold in market in other parts of country, for example, any company located in Gujarat or Maharashtra will not be in position to track and monitor what drugs are been marketed in extreme north-eastern states or deep southern cities of India. And, if a company needs to keep account of drugs marketed in all parts of India then obviously need to spend enough time and resources in preparing expert teams or hiring investigation agencies to track such information which will undoubtedly bring undue burden on companies. Even we have witnessed cases where drugs are widely sold to patients loosely (without any packaging/packaging details) by doctors and dispensaries. Such practices make patent enforcement almost improbable as it is not possible to track and monitor such loosed drugs even in metropolitan city like Mumbai then what to say about whole India.

Many countries both developed and developing made enforcement and monitoring of drug patents possible at drug regulatory level. Drug regulatory agencies in countries like Singapore, Thailand, Malaysia, Russia and CIS countries, and European contracting states opt to reject generic dossier outrightly if there is an Innovator patent for the drug compound/product and generic manufacturer is seeking marketing approval before the expiration of patent. The only option for generic manufacturers to submit generic dossier for market approval is to first challenge the validity of patent and get it invalid/non-infringing. Quite understandable any law abiding country will never create a chaotic situation where a legal right granted by the government/sovereign is diluted by its own government body. India too need to frame proper policy for monitoring patent enforcement and that can only be possible at drug regulatory level. The policy should permit the DCGI to reject application for generic dossier of a patented drug before the expiration/validity of patent.

However, there is a strong section of people arguing that a mere marketing approval to a generic manufacturer (for the generic version of a patented drug) by the DCGI is not a violation of patent right under sec. 48 of the Patents Act, 1970 – the infringement is only possible when the generic manufacturer launches its product in market. Though we do have difference of opinion on this but still let us assume that in India the DCGI is not allowed to reject application for generic dossier of patented drug before the expiration of patent and generic manufacturers can obtain marketing approval for generic versions of patented drugs. In other words, obtaining marketing approval for generic version of patented drug is not an infringement of patent right which mean that a patentee has no legal stand for filing patent infringement suit based on presumption that the marketing approval will lead to product launch until and unless the generic manufacturer(s) launches its generic product in market. Now let’s put this situation into hypothetical case studies.

Cipla Files Post-Grant Opposition for Lapatinib Patent

After Erlotinib and Sorafenib, Cipla is targeting yet another anticancer drug Lapatinib marketed by Glaxo under the brand name Tykerb. Moneycontrol reports that Cipla has filed a post grant opposition against Lapatinib patent on grounds of obviousness and lack of inventiveness. Cipla CEO Amar Lulla said: “If we win the opposition, we will begin production of the product, Lapatinib, immediately and launch it within a couple of months. It will also be priced substantially lower than what GSK charges in India.” Last year we hinted that Cipla may possibly target patented drugs, mostly tyrosine kinase inhibitors.

Minor Modification & Structural Similarity Not Sufficient to Establish Obviousness - II

Continuing from our earlier preliminary post on Erlotinib pre-grant opposition, we now discuss the pre-grant opposition judgment in detail. Following Natco’s pre-grant opposition, the Assistant Controller prominently discussed the obviousness arguments in detail. Natco argued that the compound of the present invention is an obvious derivative derived from 4- Anilinoquinazoline nucleus and such compounds have been covered by earlier patents EP 0566226A1, EP0602851A1, EP0635507A1, EP0635498A1, EP0520722A1 published before the priority date of the present invention. Natco further argued that combination of simple functional groups like alkoxy, alkyl, alkynyl, halo to already known basic nucleus or compound is obvious to a person of ordinary skill in the art. Interestingly, while arguing obviousness Natco provided a chemical structure and argued that Erlotinib is easily derived from the structure when a person skilled in the art made obvious substitution of R1 with CH3CH2CH2O (2-methoxy), R2 with CH3OCH2CH2O (2-methoxyethoxy), R3 with H (hydrogen) and R4 with 3-ethynyl (not one, not two there are four conditional substitutions of functional group to render Erlotinib obvious). However, Natco nowhere argued that what may have motivated the person skilled in the art to arrive at obvious substitution of R1, R2, R3 and R4. Natco further broadly argued that prior art compounds are structurally similar to Erlotinib and hence rendering Erlotinib obvious. In counter statement, the Applicant (Pfizer) argued that Natco created their own chemical structure to establish that the claimed compound is an obvious derivation of said structure which is actually not found in any of the prior art citation. Applicant further emphasized inventiveness of substituting an “ethynl group” at methane position of phenyl group. After hearing both Natco and Pfizer (Applicant), the Controller decided that Natco probably failed to properly evaluate the strength of the invention. He further concluded that sometimes the modification in the prior art technologies which appear to be minor may bring great revolutions in the world which could never be predicted by the society of intellectuals. Also adding that a structural similarity as deduced by Natco for a compound (Erlotinib) having great medicine value may not be accepted to establish Erlotinib as obvious. During hearing Natco also brought section 3(d) argument but the Assistant Controller rightly argued that once the invention has been found inventive (non-obvious) it cannot be held non-patentable under section 3(d).

Natco also challenged the issuance of patent on the ground of insufficient disclosure arguing that the Application failed to disclose polymorphic form of Erlotinib. Natco further added that it is very pertinent and relevant to have the details of the current form for the product claimed in the current application. In reply, Applicant strongly objected Natco arguments stating that the object of the invention was to provide a potent EGFR inhibitor Erlotinib and not to provide polymorphic form of the compound of the present invention. The Assistant Controller without any further thought rejected Natco’s insufficient disclosure argument. We, in fact, wonder what can be more frivolous argument than Natco’s objection for insufficient disclosure asking XRD data in the patent application covering the active drug substance (not polymorphic form).

We finally end our post with some intriguing questions for our readers to think about. Why Cipla’s counsel argued the Court to disregard the IPO finding in favor of Roche? Why Cipla argued that the Controller merely addressed arguments on “novelty” and did not even considered obviousness arguments during the pre-grant opposition? Are such arguments misleading to the Court? Was it intentionally done to deceive the Court proceedings? Or was it done to tarnish pre-grant opposition judgment of the Controller?

Minor Modification & Structural Similarity Not Sufficient to Establish Obviousness - I

Erlotinib PreGrant Opposition

Roche lawsuit against Cipla for willful infringement of Indian Patent No. 196774 covering anticancer drug compound Erlotinib still seems to be not reached any conclusion and is likely to be not near from over with next hearing scheduled on February 24, 2009. In counter attack, Cipla raised invalidity and non-infringement defenses against the ‘774 patent. Having earlier lost to obtain temporary injunction order, Roche later appealed against the Delhi High Court order rejecting temporary injunction on the ground of public interest. An Appellate Bench comprising Chief Justice AP Shah and Justice S. Muralidhar finished hearing the arguments and reserved its judgment. Readers interested knowing more detail on this may visit Shamnad’s blog who excellently and extensively covered Erlotinib litigation proceedings.

Recently we just got hold-on Erlotinib pre-grant opposition judgment and thought of posting an analysis over it. This pre-grant opposition is of great significance to Erlotinib litigation proceedings as Cipla’s counsel repeatedly and notably referred to it (read post by SpicyIP) and even argued the Court to disregard the Indian Patent Office (IPO) finding in favor of Roche particularly on the ground that the Controller (of Patents) merely addressed argument on “novelty” and did not even considered obviousness arguments during the pre-grant opposition. However, on reviewing Erlotinib pre-grant opposition judgment we found Cipla’s argument contradicting and fallacious. Not only the Controller considered the obviousness ground but specifically and prominently discussed the same during the pre-grant opposition hearing.

The pre-grant opposition was filed by Natco Pharma Ltd. and decided by the Assistant Controller on 4^th July 2007 after hearing made on 27^th June 2007. In its pre-grant opposition, Natco challenged the issuance of patent against the claims of Erlotinib Application 537/DEL/1996 on the grounds of obviousness and insufficient disclosure. Natco particularly cited EP 0566226A1, EP 06335507A1, EP 0635498A1, and EP 0520722A1 to support its obviousness arguments. However, on the date of hearing Natco filed an interlocutory petition to place additional non-patent literatures on record and to question amendments made in claims during the examination under sections 57 and 59 of the Patents Act, 1970. The Assistant Controller considered the petition to allow additional non-patent literatures to be taken on record to examine the strength of opposition but rejected Natco’s argument against claim amendment. While rejecting argument against claim amendment, the Assistant Controller argued that the amended claims are well within the preview of the original claims and are more restrictive in scope as compared to originally filed claims, and such amendment are not prohibited under section 57 and 59.

Special Thanks!

Patent Circle would personally like to extend a special thanks to Mr. Sandeep Rathod (author of Generic Pharmaceuticals and IP blog) who time to time provided us with valuable information to help us in bringing important piece of news for our readers. He notably provided us with Valganciclovir pre-grant opposition judgment and Sorafenib High Court order. We sincerely acknowledge his contribution to Patent Circle.

Valganciclovir PreGrant Opposition: A Case of Frivolous Objection II

Continuing from our earlier post where we discussed how the NGOs frivolously objected Valganciclovir patent application under section 25 (1) (f) based on their irrational presumption that any compound not published but invented before 1995 is a pre-1995 public disclosure, we now focus on another ground of objection raised by the NGOs under section 25(1)(h). Section 25(1) (h) allows an opponent to challenge the issuance of patent if the applicant –

(1) failed to disclose to the Controller of Patents the information required under section 8, or

(2) furnished the information which in any material was false to his knowledge.

Here again, the NGOs rather than providing evidences to show that Roche failed to disclose the information under section 8 or furnished any false information, argued that Roche delayed in providing information under section 8 (which is, in fact, not a valid ground under section 25(1)(h)). Roche while replying to pre-grant opposition argued that section 25(1)(h) does not give right to the opponent to challenge whether the information required by section 8 has been disclosed within the prescribed time period, especially in the light of the fact that the Patent Applicant has already sought, and obtained, leave of the Controller for the condonation of delay under rule 137 on 23^rd May 2006, which was well before the filing of the Opponent’s Written Statement. Roche also argued that from the filing of the instant application in 1995 and up to the last date of deciding the application, the procedure for filing information and taking extension for filing the said information with a petition to the Controller were changed number of times during the period 1995 to 2007 (around 12 years).

The Chennai Patent Office agreed with Roche’s argument that the ground of opposition under section 25(1)(h) is only limited to (1) the applicant failed to disclose to the Controller the information required by section 8, and (2) has furnished the information which in any material particular was false to his knowledge. The Chennai Patent Office further added that the delay in filing the information to the Patent Office is purely procedural aspect during prosecution of the application and not at all ground for opposition under section 25(1)(h). Also adding that the Controller has the power to extent the time and condone the irregularity in the procedure, if the applicant prays for such an action with a relevant petition and fees. Hence, the opposition under section 25(1)(h) is not maintainable.

Now after reviewing the Valganciclovir pre-grant opposition, we do not find any reasonable ground on which the Assistant Controller would have earlier considered giving a hearing opportunity to the NGOs on such frivolous grounds. Obviously Assistant Controller has sufficient knowledge skills to evaluate such frivolous grounds and to decide whether there is a further need for hearing opportunity or not. If such was the arguments made in the pre-grant opposition then the Assistant Controller was reasonably correct in denying opportunity for hearing to the NGOs and creating unnecessary delay in the issuance of patent. It seems to be this pre-grant opposition was just an attempt to delay the Chennai Patent Office proceedings and/or to mislead the Patent Office with irrational arguments. However, what is quite annoying that when the NGOs failed to convince the Chennai Patent Office they approached the Chennai High Court to assure that the Chennai Patent Office waste its precious time discussing their frivolous arguments. We feel extremely sorry for the Assistant Controller who despite made correct observations got bitter pill from the Chennai High Court.

Valganciclovir PreGrant Opposition: A Case of Frivolous Objection I

It seems to be that the Chennai Patent Office was quite correct in its approach not to consider giving opportunity of hearing for Valganciclovir pre-grant opposition filed by the Tamil Nadu Networking People with HIV/AIDS and the Indian Network for People living with HIV/AIDS (collectively hereinafter referred as ‘the NGOs’) which not only lacked substance to challenge the issuance of patent but also irrationally burdening the Indian Patent Office with legally absurd and unsupported objections. No doubt it takes no special efforts to make public statement quoting Valganciclovir a pre-1995 molecule not qualifying for patent protection but when it comes to patent law one do require pre-dated publications to corroborate the statement. This is what Valganciclovir pre-grant opposition seems to reflect that the NGOs just went on stating pre-1995 objection without any proper understanding and records to prove it. In their application for pre-grant opposition, the NGOs made objections on the following grounds namely:

(1) That the subject of any claim of the complete specification is not an invention within the meaning of this Act, or is not patentable under this Act under section 25(1)(f); and

(2) That the applicant has failed to disclose to the Controller of Patents the information required by section 8 or has furnished the information which in any material was false to his knowledge under section 25(1)(h).

The objections was raised relying on four supporting evidences submitted by the NGOs which include a copy of press release from Hoffman-La-Roche dated 2^nd April 2001, a copy of European Patent No. EP 0694547A2, a copy of online European Patent Register, and a copy of US Patent No. 6083953. What is notably important to note that none of the supporting evidences was published before the priority date (and even the filing date) of Valganciclovir Application 959/MAS/1995 which is sufficiently enough for someone of Assistant Controller rank in the Indian Patent Office to acknowledge the fact that none of the evidences even adequate to uphold the pre-1995 objection. Now before going further into objections raised by the NGOs let us discuss what exactly pre-1995 argument mean? After India amended its patent law to allow patent applications for drug compounds under mail-box provision, it was well considered that drug compounds known prior to 1995 are not eligible for patent protection. In other words, it is consider that any drug compound known or published prior to 1995 (in short pre-1995 public disclosure) is not to be granted patent in India (the argument reasonably acceptable in patent law that any invention publicly known or published in literature cannot be patented). Based on such theory, the NGOs objected Valganciclovir patent application, however, while submitting the pre-grant opposition the NGOs went a step ahead on pre-1995 argument to conclude that any compound even though not published or reported prior to 1995 but was invented before 1995 is a pre-1995 public disclosure and not eligible for patent protection in India. Quoting section 25(1)(f), the NGOs argued that the Valganciclovir patent application ought to be rejected as it claims priority from a pre-1995 convention country application (precisely referring to Valganciclovir priority document i.e. US Serial No. 08/281,893 dated July 28, 1994). Again it is a well-known fact that a patent application is not considered to be in public domain till it is published which is usually made on completion of 18 months from the date of filing of application. Now considering that Valganciclovir priority document was filed on July 28, 1994 then the possible earliest date for its publication would have been January 27, 1996 (reasonably beyond 1995). Further to prove their pre-1995 argument, the NGOs submitted documents which are published on much later date of filing of Valganciclovir Indian Application. Obviously after reviewing the NGOs pre-1995 argument (i.e. an invention not published but invented before 1995 is a pre-1995 public disclosure) and inappropriate documents submitted to corroborate the objection, the Assistant Controller would have been in no better position to dismiss the pre-grant opposition. But what is even more interesting that the NGOs were so damn confident about their arguments that they in fact approached the Chennai High Court to order the Chennai Patent Office to consider their frivolous objections.

Patent Office Rejects Valganciclovir PreGrant Opposition

The Chennai Patent Office has dismissed the pre-grant opposition [download] made by the Tamil Nadu Networking People with HIV/AIDS and the Indian Network for People living with HIV/AIDS (collectively hereinafter referred as the ‘the NGOs’) against the Application No. 959/MAS/1995 claiming antiviral drug compound Valganciclovir. The Chennai Patent Office was hearing the Valganciclovir pre-grant opposition after been directed by the Chennai High Court [download] to consider and hear the pre-grant opposition made by the NGOs who earlier filed a petition against the Chennai Patent Office decision for denying opportunity for hearing under the Section 25 (1) of the Patents Act, 1970 before the issuance of Patent No. 207232 for Valganciclovir. However, Roche later challenged the Chennai High Court order in the Supreme Court of India. The Supreme Court modified the order to add that “while deciding the above application (959/MAS/1995), the Assistant Controller shall take into account the pre-grant opposition filed in this case (which is on record) by respondent nos. 1 and 2 (NGOs) herein.” Also adding “The third respondent (Assistant Controller of Patent & Designs) need not consider any other pre-grant objection pursuant to this judgment.”