Novartis Patent Challenged in the US: More light…


Readers will recollect an earlier post dealing with a potential challenge to Novartis’ Glivec patent in the US. A patent expert who wishes to remain anonymous (we’ve labeled him “X” for the sake of brevity) throws more light on this case. We thank X for taking the time to share these extremely incisive comments.

“The first P-IV ANDA was filed in March 2007. From the Livemint report, it appears that the FDA did not accept the ANDA (this could happen if the ANDA did not meet certain technical requirements). But it did not reject it outright either. Assuming Sun is that FTF party, a back and forth discussion must have gone one between the FDA and Sun for about 3-4 months before the FDA accepted the file and assigned a number to the ANDA. The filing was publicly listed by the FDA on Aug 20, 2007.

The exact date of acceptance is not clear. Assuming again that this was around Aug 1, 2007, Sun had 20 days from the date of acceptance to notify the patent owner / NDA holder (Aug 20, 2007). The NDA holder had 45 days from the date of receipt of the notice – i.e. till about October 05, 2007 to sue, if the 30-month automatic bar on approval was to be in place. So, far, there has been no news of litigation. It is possible that Sun filed P-IV only on the later expiring polymorph patent with a non-infringement position and Novartis decided not to sue based on the information provided by Sun.

This happens many times. This would mean that Sun will have to get at least a tentative approval within 30-months of filing, or they forfeit any 180-day exclusivity that they may have. We’ll need to wait and watch.

On the story itself:

1. No one outside the FDA or the parties involved knows (or can know) for sure that the first filer is Sun. Since there is no litigation yet, this information is not public. Livemint may indeed have insider information.

2. I am not sure what this 6 month ‘surveillance’ is. There is no such thing. May be this refers to the back and forth between the FDA, referred to as an ‘appeal’ by the insider.

3. As you will know, the US patent claims both alpha and beta crystalline forms. To that extent, it is not strictly comparable to the case in India. Moreover, if the P-IV has a non-infringement argument, the difference widens. As you have said, invalidation in the US will certainly help the India case.”

We are very grateful to X for his sharp insights and for helping “spice up” this debate even more.

Readers will recollect that our earlier post had noted:

“Another possibility is that Sun is not actually challenging the ’97 patent (as being invalid) but is only claiming that it’s particular drug does not infringe this patent. As we stated in one of our earlier posts, the ’97 patent covers only one polymorphic form i.e the beta crystalline form. Therefore generics can enter the market with other forms….”

This view was reiterated by Sandeep Rathod, who’s been covering this case very well on his blog. He wrote to let me know that “Sun is arguing non-infringement for the polymorph patent since it too has an application for a polymorph form”

If this is indeed true, we may not see any legal action in the US to invalidate Novartis’ polymorph patent (at least not yet…).

However, a Novartis spokesperson has confirmed to Ed Silverman of Pharmalot that Sun has filed a Para IV certification. This is a clear indication that Sun intends to challenge the validity of the Glivec patent.

“Sun filed the Paragraph IV certification against a Gleevec patent that expires in the US in 2019. The basic compound patent, which expires in 2015 in the US, is not being challenged. So the earliest a generic could be launched – and this is only if Sun is successful in its challenge – would be after the expiry of the compound patent in 2015. We have full confidence in the integrity of these patents.”

Shamnad Basheer

Shamnad Basheer

Prof (Dr) Shamnad Basheer founded SpicyIP in 2005. He is currently the Honorary Research Chair of IP Law at Nirma University and a visiting professor of law at the National Law School (NLS), Bangalore. He is also the Founder of IDIA, a project to train underprivileged students for admissions to the leading law schools. He served for two years as an expert on the IP global advisory council (GAC) of the World Economic Forum (WEF). In 2015, he received the Infosys Prize in Humanities in 2015 for his work on legal education and on democratising the discourse around intellectual property law and policy. The jury was headed by Nobel laureate, Prof Amartya Sen. Professional History: After graduating from the NLS, Bangalore Professor Basheer joinedAnand and Anand, one of India’s leading IP firms. He went on to head their telecommunication and technology practice and was rated by the IFLR as a leading technology lawyer. He left for the University of Oxford to pursue post-graduate studies, completing the BCL, MPhil and DPhil as a Wellcome Trust scholar. His first academic appointment was at the George Washington University Law School, where he served as the Frank H Marks Visiting Associate Professor of IP Law. He then relocated to India in 2008 to take up the MHRD Chaired Professorship in IP Law at WB NUJS, a leading Indian law school. Prof Basheer has published widely and his articles have won awards, including those instituted by ATRIP and the Stanford Technology Law Review. He is consulted widely by the government, industry, international organisations and civil society on a variety of IP issues. He also serves on several government committees.

One comment.

  1. Hafiz Aziz

    Dear Shamnad

    Thanks for updating IPSpicy regularly and providing us with your quick and handy analysis. This is with reference to my earlier mail about the international law aspect of Novartis judgement of the Madras High Court. I’ll be waiting for your article in this regard. However, in the meanwhile, I‘ll be grateful if you could clarify and comment about the following.

    • I think that Novartis courts should have differentiated between the questions of “jurisdiction” per se and the absence of “direct effect” in the given situation. The Court has categorically declined its jurisdiction and thus refrained from entertaining the question of direct effect. It is pretty clear that TRIPS obligations will not get the recognition of having direct effect in a jurisdiction like India but does is essentially mean that Court does not have jurisdiction as well? I think Court’s jurisdiction is not essentially linked with the question of (not)/having direct effect. In this regard I am relying upon the cases of ECJ though I appreciate the contextual and structural differences but the guiding principle should be the same i.e. Court has a jurisdiction over a question of interpretation of treaty obligation (in this case TRIPS) though by the end of the day Court declines standing to a party on the basis of direct effect theory. What do you think about this?
    • I am coming from Pakistan where traditionally court are jealously safeguarding their jurisdictions even in cases pertaining to the private international law, e.g. pure contractual matters of enforcing foreign arbitration clauses where courts have maintained that parties must go for the forum designated in the agreement but it does not mean that court lacks jurisdiction in absolute terms because after the completing of arbitration proceedings, matters may come back to the courts which have inherent jurisdiction. I cannot recall the case law precisely but in this regard, reliance has been made mostly on Indian case law. What I am trying to establish is related to earlier point of jurisdiction.
    • Thirdly, our courts say that treaty obligations don’t have direct application (disregarding the controversy around the terminology of direct effect or direct application). That’s OK! Now in Novartis case, WTO-DSU is referred and recognized as an appropriate forum to contest matters pertaining to (non) compatibility of patent law with the TRIPS obligations and I understand that there is no domestic law in India which has acknowledged DSU as a sole forum and it remains merely State’s international obligation. In this case why Novartis court has readily compromised on its jurisdiction without pressing upon its inherent constitutional jurisdiction? To me, it has in fact given a sort of direct effect to WTO-DSU by declining its jurisdiction!

    Best regards

    aziz

    Reply

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