BMS Hepatitis Patent Invalidated: A Viral Effect for India?


In a development with significant ramifications for India, a US district court recently invalidated a pharmaceutical patent covering Baraclude (Entecavir), a leading anti-viral drug for Hepatitis B patients. The drug brings in more than a billion dollars each year for BMS! 
The invalidation was pursuant to a law suit bought by BMS (the patentee) against Teva, a leading Israeli generic company. This drug is of particular interest to India, given a roaring patent contest on this front between BMS and Ranbaxy before the Delhi High Court. However, it bears noting that while the US patent (Number 5,206,244) covers the “parent” or “basic” Entecavir compound, the Indian patent only covers an alleged dosage “improvement”. This is owing to the fact that Entecavir is a pre-TRIPS molecule and at the time of BMS’s US patent application (in the year 2000), India did not grant pharma product patents.
As the Indian patent specification notes:
“This invention is directed to pharmaceutical compositions containing a low dose of entecavir and the use of such low dose composition to safely and effectively treat hepatitis B virus infection.”
The Indian judge refused to grant an interim injunction  to BMS at the first instance, noting that the patent was “vulnerable”. The case has since been posted for “trial”, and as I understand it, evidence is currently being recorded. For those interested, the Indian patent number is 213457 and the case details are: Bristol-Myers Squibb Company v. Ramesh Adige & Anr (Ranbaxy) C.S. (O.S) No. 534 of 2010.
 
As I’ve advocated here, in all cases where there is a strong challenge to the patent (which is in 90% of all pharmaceutical patent cases), courts must desist from granting injunctions. Rather, they must dispense with the interim phase and move straight to trial. In most pharmaceutical patent cases at least, this route will ensure that patients and generic manufacturers do not stand to suffer a “bad” patent in the “interim”, a suffering that is well beyond “monetary” computation. 
“Working” of Entecavir:

It bears noting that we’d prominently featured Baraclude (Entecavir) in our Form 27 investigation some years ago, showing that “working” statements had not been filed in full for this drug. However, what we gathered is that the drug brought in more than 20 crores for BMS each year. We’ve not reviewed the recent statements by BMS, but assume that there has been better compliance on this front. As Sai Vinod noted recently, the Indian Patent Office (IPO) has again indicated that it is serious about compliance with working statements and Form 27. However, we need to re-examine the “efficacy” of the current format of the Form 27 statement.
For those interested, well known pharma blog, Pharmalot has a good review of the US invalidity decision, as also a link to the text. The decision is interesting for several reasons:  
1. This is not a classic ever-greening case and the drug compound (a carboxy nucleoside analog) is not a mere new form of a known compound. Rather, it is a new compound altogether and was approved by the FDA as an NCE (new chemical entity). To this extent, section 3(d) of the Indian Patents Act will not apply directly to this case.  
2. The US court applied a rigorous obviousness standard and held that although this may be a new compound, it fails the obviousness test since it was essentially an obvious modification of an existing natural compound. The two part analysis can be summarised as below:

i) it would have been obvious to a person skilled in the art to work with the closest known prior art compound (a naturally-occurring nucleoside commonly referred to as “2-CDG”) with known anti viral properties.

ii) it would then been obvious to modify the existing compound (2-CDG) by substituting the oxygen atom with a carbon carbon double bond at the sugar portion. A skilled person would have a reasonable expectation that this modification would yield improved antiviral properties.

In other words, although the drug is based on a new compound, the said compound is not patentable, since it was obtained by modifying a known natural substance in a “stock in trade” manner.
The judgment which runs into 170 pages is a wonderful read, with a delightful interspersing of snippets of the cross examination. Sample this:

Tevas counsel: Now, you would agree that if you are looking for conservative changes that could be made, one place you would look at is the periodic table, is that right?
 

Dr Schneller (BMS’ key expert witness): Well, you almost have to, because all molecules are made from elements that are on that periodic table. So there no magic lamp someplace that’s going to come up with new ideas.

Tevas’ counsel: And the periodic table…it’s the chemists’ stock in trade?

Dr Schneller: Yes, sir


An “Alien” Patent Standard in India?
 
This decision helps dislodge the now prevalent presumption that the US almost always reflects “low” patent standards. As this case demonstrates (much like its earlier predecessor Pfizer vs Apotex), US courts do apply a rigororous patentability threshold from time to time. And to this extent, one might actually find that the ostensibly high Indian standards are actually not all that “alien”.
Of course, this is a district court decision and will certainly be appealed to the CAFC (Court of Appeals for the Federal Circuit), reputed to be more “patent friendly”. 
One is not certain of the fate of the secondary patent in India. However, one might hazard a guess that, in the light of the “therapeutic efficacy” standard under section 3(d) that now informs most Indian decisions (unless the Supremes alter it in the much awaited Novartis Glivec ruling), BMS’ claim to an improved “dosage” regimen is extremely vulnerable.
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.

7 comments.

  1. AvatarAnonymous

    Dear Shamnad:

    The Indian and US patents have no direct corelation.

    As you noted, the US patent is what is the composition of matter -or for Indians – the compound patent. This is the patent that got invalidated in US by Teva’s efforts. US5206244 had no Indian corresponding file – for reasons noted by you.

    Now let us come to patent being litigated in India – the Indian patent that is being litigated is a much latter patent- which we can put either as a disguised method of use or an apparent composition/ range patent. This Indian patent IN213457 comes from later US patent – US6627224.

    Regards,
    Freq. Anon.

    Reply
  2. AvatarAnonymous

    Dear Shamnad,

    One question that arises considering that the animal test model was a woodchuck is : “How much wood would a woodchuck chuck if a woodchuck could chuck wood:

    On a more serious note, I wonder this would mean a dilution of the levels of Sec 3(d) challenge in similar Indian cases.

    Warm regards,

    Nataraj

    Reply
  3. AvatarAnonymous

    for Freq. Anon

    This raises another interesting question – why did BMS state in the US that the ‘244 patent is for Baraclude… but litigate in India on 213457 which corresponds to US’224!!!!

    Also, i see from the decision, that the operative finding is with respect to claim 8 for the compound per se.

    Interesting times ahead on this case.

    Regards,

    Nataraj

    Reply
  4. AvatarShamnad Basheer

    Thanks for your comments FA and Nataraj,

    The US decision is also illustrative of how the “inventive step” standard can be deployed in India to keep the filter high. With pharma, we’ve had an excessive focus on 3(d)…and less on the other patentability standards…

    Reply
  5. AvatarAnonymous

    @ Shamnad:
    I am not really sure of Indian generic companies can bring in the US inventive step argument – positioned in present US dist ct order – to India – since the BMS team is appealing this to Fed Ct. More so, I do NOT think that this Order will help Indian generic companies at all on the 3(d) front.

    @ Nataraj ji:
    Arre aap yeh sawaal puch rahe hain ya meri khichayi kar rahe hai?
    They are litigating the formulation patent in India since that’s the only patent that they have granted in India. Incase you are asking why was this formulation patent not litigated in US – the answer seems to be that the US patent is NOT listed on the FDA Orange book and so Teva would apparently not have challenged it in the initial litigation.

    Regards,
    Freq. Anon.

    Reply
  6. AvatarShamnad Basheer

    Dear FA:

    I think you’ve misunderstood my point. The District court ruling, while not final, is indicative of the fact that a very patent friendly jurisdiction, can deploy a rigorous inventive step threshold. The framework deployed and the analysis has some merit for countries wishing to deploy strict patent standards …it could well be appealed to the CAFC or even the SC…but surely that does not matter in terms of some lawyer who wishes to bring the “framework” to the notice of an indian court as a point of reference.

    3(d) is completely irrelevant to the main US patent and its decision and i think my post makes that amply clear..

    Reply
  7. AvatarShamnad Basheer

    Also Natarajs’ point and your reference to the Orange book listed patents is an interesting one. We need to dig a bit deeper. What does the current Baraclude product correspond to? Does it correspond with the later “dosage” patent in any way? If so, why was it not listed? And if Teva has only succeeded in knocking off the basic patent, can it introduce any product with this alleged “dosing” benefit?

    Reply

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