ALIMTA's Patent: A stronger foothold?

Pharmaceutical patents have always been in the limelight worldwide. While the drug manufacturers face a stiff competition from the ever-expanding generics market, acquiring timely patents on new drugs ensure firm market foothold and pose potential barriers to entry. The much talked about Eli Lilly’s lung cancer drug patent on ALIMTA set to expire in 2016 , raising questions on the overall market sales and stringent competition from the generics drug market thereafter. But thanks to ALIMTA’S “method of use patent” (popularly known as '209 patent) aimed at the method of administering antifolate to mammals. 

 Even though the basic patent on the lung cancer drug ALIMTA is about to expire in the year 2016, Eli Lilly’s latter patent ('209) which is set to expire by the end of 2021 could potentially keep ALIMTA’s generics on hold. Reason being the very fact that '209 patent covers the specific method of administering the lung cancer drug ALIMTA and its dosage procedure which apparently happens to be mentioned on the drug’s label as well. Eli’s attempt to safeguard its popular drug by "method of use" based supporting patent ‘209 could prove to be a smarter move when annual sales of ALIMTA are expected  to rise to $3.5 billion by 2016. 

On the other hand defendants and generic drug manufacturers tend to legally argue the validity of the ‘209 patent. Details can be accesses here. Recently many Pharmaceutical giants faced massive competition from the generic drug industry upon patent expiry thereby leading to slashed sales and overall revenues. Eli’s efforts to protect its basic drug patent with supporting “method of use" based patents could potentially hit the bull’s eye and possibly initiate a trend of such supporting patents. 

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Wishing our Readers

We wish our readers a very prosperous and enlightened New Year ahead. This year we plan to bring more interesting and informative blog posts on global IP, grabbing insights on IP matters across the globe. For guest blog post contributions and queries, drop an email at guestblogadd@gmail.com  Stay tuned!

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Indian Patent Office launched Comprehensive e-Filing services

Following an initiative to offer transparent, user friendly and improved patent application e-filing services, Indian Patent office launched Comprehensive e-Filing services on  15.12.2012. Some of the key features offered under this service include: Dual way login (password and digital signature based), facility to update digital signatures, simplified e-filing process, elimination of transaction errors, validation with IPO patent database, etc. The user manual can be accessed here. This is a welcoming step offered by the Indian Patent Office, thus making the patent application e-filing process more efficient and streamlined. e-Filing services of the older version will be correspondingly discontinued w.e.f. 12:00 hrs IST on 31.12.2012. Readers may check the IPO website for any further updates.

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Provisional or Non-Provisional !

 

It is often seen that inventors are perplexed with the idea of filing a provisional patent application or a non-provisional one.  Interestingly the solution lies in the hands of inventors themselves. Here are a few points that may help you decide which one to file:

   1.   The stage of your invention plays a crucial role in whether you end up filing a provisional or a non- provisional patent application. If you are in the preliminary stages of finalizing your invention concept, it is better to file a provisional one.  Apart from that filing a provisional application gives you  an early priority date and an additional 12 months to file a non-provisional application. This time could be utilized to hone your application and invention research .

2.   For start ups and sole businesses , filing a provisional application proves to be beneficial when financial resources are limited and the invention or concept is in the nascent stages of development . In this case, the only benefit that a provisional application provide is an early priority date. 

3.   In case your invention is thorough and well defined, every detail  is tested and foremost if the funding is sufficient , one may think of filing a complete specification i.e. a non-provisional application . The filed non-provisional application will be eventually examined by the examiner on payment of requisite fee and if accepted, an inventor may get a patent granted for a span of twenty years in general.

4.  There is a misconception  amongst inventors that a provisional application will qualify for a patent. This is not true. The fact is that a provisional patent application has a life span of 12 months , within which an inventor is required to file a non provisional patent application disclosing the invention in the best possible manner.  The provisional application is not examined  by the USPTO. One has to file a regular or a non-provisional application with requisite fee to get their applications examined in order to qualify for the patent.

5.  There is an interesting thing to note here. If an inventor files a provisional followed by a non- provisional patent application within 12 months, then in case if a patent is granted on your invention, you will enjoy the patent rights for a span of twenty years from  the actual filing date of your non- provisional patent application . Hence filing a provisional gives you an additional year of patent term and the priority date benefit from the provisional application.

6.    Some inventors wish to save overall time and cost, hence prefer filing the non-provisional applications directly. However  if an inventor directly files the non-provisional application then the term of twenty years will be applicable from the filing date of non-provisional application and the priority date will be the effective filing date of the non-provisional one.

I hope inventors now find it easier to decide which application to go ahead with.

  

( Note: The article is not intended to give any legal advice to the readers.)

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Patent pool offers common hub for Technologies

 

These days technology based patents are all over the place. Firms are more concentrated on the permutations and combinations of tapping infringements, filing lawsuits, remuneration for damages etc. Amidst all this, there is a compelling need to implement a system which could act as a one-stop hub for licensing all technology related patents. This will potentially act as a marketplace for all future related IP licensing needs. In short, the concept of Patent pool shall be utilized for pooling technology based patents and thereby giving substantial opportunities to the member parties who are potentially willing to license-out or cross-license their patented technologies , alongwith the ones who are willing to be potential licensees of such technologies. Such Patent pools not only enhance technology based collaborations but also reduce the risk of litigation for other organizations offering or manufacturing products and services related to such patents.

In the past, we have seen many such Patent pooling consortiums. For example, Open Innovation Network® founded in 2005, founding members being IBM, NEC, Novell, Philips, Red Hat and Sony. Open Invention Network® operations include acquiring patents and making them available royalty-free to companies, institutions or individuals who agree not to assert their patents against the Linux System. Thus promoting technology based collaboration. Potential licensees of Open Innovation Network® agrees not to assert their patent rights on Linux based Systems on becoming OIN licensees. On the other hand, licensees can fruitfully benefit from the royalty free access to the valuable Linux based Patent portfolio.

Other such technology based patent pools include OpenPatent Alliance founded in 2008 by Alcatel-Lucent, Cisco Systems, Clearwire, Intel, Sprint and Samsung for patents related to WiMAX standard ( Worldwide Interoperability for Microwave Access). Another such consortium being the Medicines Patent Pool which aims to improve access to affordable and appropriate HIV medicines in middle or low income countries. More information on Medicine Patent Pool can be accessed from our earlier blog post here.

The recent addition to the patent pool consortium is Via Licensing's LTE ( Long Term Evolution ) Patent pool ( announced on October 3, 2012 ) for the wireless industry which aims at accelerating innovation by providing efficient, transparent and cost-effective access to LTE standard essential patents. The members offering their patents through this LTE Patent pool are AT&T, Clearwire Corporation, DTVG Licensing, HP, KDDI Corporation, NTT DOCOMO, SK Telecom, Telecom Italia, Telefónica, and ZTE Corporation.

Analyzing all this, we can hope additions of more such Patent pools in the near future enhancing technology based collaborations and building a stronger ecosystem for licensing present and upcoming technologies. 

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