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ANDA Patent Talk - Partially Updated For 2016
ANDA Patent Talk - Partially Updated For 2016
2
Overview of talk:
1: Cultural and legal differences between the US
and Japan
2: Review of US Food and Drug Administration
(FDA)
3: Review of US patent office (USPTO) and
patent rules
Break
3
Overview of talk:
4: Hatch-Waxman act: connecting the FDA and the
USPTO (continued)
5: Drug patent extension and regulatory exclusivity
rules
6: Patent issues during drug R&D, and the Bayh-
Dole act
7: Recent changes in US patent law: impact of KSR
v Teleflex
Break
4
Overview of talk:
Questions
5
1: US and Japan differences
• US still has some Wild West
influences:
• Japan has a higher
preference for mediation
and conciliation. US is
more likely to litigate.
• US tends to view patent Tombstone, Arizona, 1882
7
Where common law is used
8
2: Review of the US FDA
• History:
• In 1902, Biologics Control Act. started regulating
vaccines
• In 1906, FDA started regulating drugs
• In 2008, the two parts are still somewhat
separate: the biologics division is called CBER
and handles biotech drugs, and the drug division
is called CDER, and handles drugs and antibiotics.
They don’t always use the same rules!
9
FDA organization
10
FDA Drug approval stages
• Drug approval stages:
– Investigational new drug (IND)
– Phase I (small numbers of humans for safety)
– Phase II (small numbers of humans for efficacy)
– Phase III (large numbers of humans for
safety/efficacy)
– Phase IV (post marketing studies)
11
New drugs & generic drugs
• New (first time) drugs filed by New Drug
applications (NDA) – massive effort
• Generic (copy) drugs filed by Abbreviated New
Drug Applications (ANDA).
• ANDA are easier to file because they can make
use of previous NDA clinical studies and data.
12
Hatch-Waxman act
• History
• 1980’s crisis: FDA drug approval time became
so long that drugs were almost off-patent by
the time of FDA approval.
• At the same time, generic drug companies
could not start studies before patent
expiration due to patent infringement issues.
• Both sides suffered.
13
Hatch-Waxman act
• 1984 Hatch-Waxman act: Extended exclusive
lifetime (patent, FDA exclusivity) for new drugs
• … in exchange for allowing generic drug
companies to start FDA approval studies
before patent expiration.
14
Hatch-Waxman rules:
• Patent extension starts on day of initial filing,
ends on FDA approval,
• get 1 day credit for every day of FDA delay,
and ½ day credit for every day of applicant
delay, up to a maximum of 5 years, for the
claims directed to the approved drug only.
• FDA communicates dates to patent office,
which publishes patent term extension dates.
15
Effect of Hatch-Waxman
16
The “orange book”
• The “Orange book” is the nickname for the
FDA’s “Approved Drug Products List with
Therapeutic Equivalence Evaluations”
• First published in 1979
• In 1984, FDA started adding patents to the
“Orange book” to keep track of which drugs
are covered by patents
• We will come back to this later in more detail
17
3: Review of the USPTO
• Patents are part of US constitution. First patent
granted soon after federal government formed in
1790. Initially run by Thomas Jefferson, who
stored patents in his old shoeboxes!
• Prior to 1995, US patent term was 17 years after
issue
• After 1995, US conformed to WIPO rules
of 20 years after filing, but a US inventor
can file a “provisional patent” to get an
extra year (21 years total).
18
US patent rules
• US has a modified “first to file” system
• US rules allow for continuations, new patents
based on old patents.
• Japanese patent applications treated favorably
using PCT system
19
US patent requirements
• Utility: - 35 USC 101 (compounds and targets
must have a plausible function)
• Novel: - 35 USC 102 (defeated by single
reference)
• Non-obvious: 35 USC 103 (defeated by a
combination of references) – the 2007 KSR
decision now makes it easier to challenge on
the basis of obviousness
20
US patent requirements
• Contain detail: - 35 USC 112 described with
enough detail (how to manufacture)
• Be invented by the applicant for the client
(must get proper assignment)
• Must be filed within 1 year of publication
anywhere or first US sale.
21
Public use bar:
• Patent aspects of clinical trials in the US: the
public use bar: Although filing before public
use is best, patents can be filed within one
year of first public use or sale in the US.
22
Patents relevant to drugs
1: Compound patents (broadest –drug, salts,
esters, hydrates)
2: Medical use patents (treating specific
diseases)
3: Formulation patents (stabilizers,
preservatives
4: Other (manufacturing, device, etc.)
23
Types of drug patents
• US drug patents can be on the form of the
active compound: sterioisomers, polymorphs,
salt forms, in-vivo conversion, particle size,
formulations, manufacturing process,
combination of therapies, methods of
treatment, drug delivery systems, and other
areas.
24
Other US patent aspects
• US Patent office overburdened and patents take
years to issue
• Patents may have continuations and
continuations in part
• Patents may be reissued – sometimes may have
broader claims
• No opposition, but patents can be reexamined –
only publications used
• Main way to challenge patents is in the courts
25
Trademarks
• The US patent office also handles trademarks
-- drug color, pill size and shape, name can
also be protected
http://tess2.uspto.gov/bin/gate.exe?f=searchss&state=b9nsj7.1.1
25 trademarks with the words “skin cream”
26
Break one
Question:
27
Answer
• Legend has it that he stored them in his
shoeboxes under his bed.
28
4: Hatch-Waxman act: connecting the FDA
and the USPTO
• The “Orange book”: FDA list of approved drugs,
approval dates, indication, regulatory exclusivity, and
the patents that cover each drug.
• The patent list includes active drug, formulation,
inactive ingredients or excipients, approved medical
indications.
• The patent list does not cover manufacturing
method patents, metabolites of the active drug,
manufacturing intermediates, packaging and
container patents
29
Generic drug approval
• Generic drugs can get approval if they show
that their drug is bioequivalent to original
drug by filing an ANDA that can reference the
original drug NDA
30
Generic drugs and patents
• When a generic drug company files an ANDA
application, it must examine the status of the drug
patents from the Orange Book, and certify that
either:
1: There is no patent information listed
2: There is a listed patent but it is expired
3: That the listed expired will expire on a stated date
(usually soon)
4: That the listed patent is invalid or will not be
infringed.
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Examples:
1: There is no patent information listed
2: There is a listed patent but it is expired
32
Examples:
3: That the listed patent has expired or will
expire on a stated date (usually soon)
33
The start of a patent fight!
4: That the listed patent is invalid or it will not be
infringed.
– ANDA filer notifies patent holder within 20 days
– Patent holder must sue for infringement within 45 days
– If the patent holder sues, FDA must withhold approval
for 30 months (one time only)
– If the patent holder does not sue, FDA may approve
ANDA at any time
– If a court rules that the patent is not infringed or
invalid, FDA may proceed after decision.
34
Be careful…
• A US company may also wait, and then sue
after the generic drug is approved.
35
5: Drug patent extension and regulatory exclusivity rules
36
5: Drug patent extension and regulatory
exclusivity rules
D: Orphan drugs (use less than 200,000 US
patients) get a 7 year hold on other NDA and
ANDA applications
E: New therapeutic use or new formulation gets
a 3 year hold on ANDA FDA approval
F: Pediatric exclusivity gets a 6 month additional
hold on FDA approval of any ANDA
applications
37
Research using drugs under patent
• Research using drugs still under patent: US 35 USC
271(e)(1)
39
6: Patent issues during drug R&D, and the Bayh-Dole act
41
The Bayh-Dole act
• Before Bayh-Dole, the US government owned
all US government-funded research.
• But nobody did anything with the inventions!
• After Bayh-Dole, university/business owns
government funded research, if the institution
complies with law 35 USC 200 – 212. These
rules are that the institution must:
42
The Bayh-Dole act
1: Promptly disclose invention to the funding
agency
2: Ask for title to the invention within two years
3: File a patent application before it is too late
4: Give the funding agency license to the
invention
5: Periodically (annually) file reports to the
agency
43
The Bayh-Dole act
6: State that the government has rights on the
patent application
7: Preferably license to small US firms
8: If there is exclusive license, licensee must
agree to manufacture in the US!
44
35 USC 204 Preference for US industry:
45
The Bayh-Dole act
E: Failure to comply with Bayh-Dole:
• a competitor may use the failure to comply
with Bayh-Dole as an excuse to attack the
drug’s patents
46
Obviousness in US patent law: impact of
KSR v Teleflex
• Patent crisis in US – computer and electronics
products covered by so many patents that it is
difficult to make new products. These companies
want fewer and weaker patents.
• However drug and biotech companies depend on
small number of strong patents, and do not want to
make patents weaker.
• US Supreme Court decided that it was too easy to get
obvious patents, and decided to make obvious
patents both harder to get and easier to challenge.
47
KSR v Teleflex
The patent claimed a
electronic throttle control
mounted to a pedal support
48
KSR v Teleflex
• KSR v Teleflex (2007): Old US rules were that to be
obvious, the examiner had to find proof of a prior
art, “teaching, suggestion or motivation” (TSM) to
produce the invention
• There was none here, but the patent still looked too
obvious anyway
• Supreme Court made it easier to invalidate patents
by stating that this old TSM rule was not sufficient.
Even without prior art TSM, some patents may still
be obvious.
49
KSR v Teleflex
• Supreme Court Justice Steven Breyer joked
that if he had to move a sensor on his garage
door because raccoons were gnawing on it,
should he be able to patent this?
50
KSR v Teleflex
The Supreme Court ruled: “ And as progress beginning from
higher levels of achievement is expected in the normal course,
the results of ordinary innovation are not the subject of
exclusive rights under patent laws.” 127 S. Ct. at 1745.
“The combination of familiar elements according to known
methods is likely to be obvious when it does no more than yield
predictable results.” 127 S. Ct. at 1739.
“A person of ordinary skill is also a person of ordinary creativity,
not an automaton.” 127 S. Ct. at 1742.
51
KSR v Teleflex
“One of the ways in which a patent’s subject matter can be proved
obvious is by noting that there existed at the time of invention a
known
problem for which there was an obvious solution encompassed by
the
patent’s claims.” 127 S. Ct. at 1742.
“Common sense teaches, however, that familiar items may have
obvious uses beyond their primary purposes, and in many cases a
person of ordinary skill will be able to fit the teachings of multiple
patents together like pieces of a puzzle.” Id.
52
KSR v Teleflex
“When there is a design need or market pressure
to solve a problem and there are a finite number
of identified, predictable solutions, a person of
ordinary skill has good reason to pursue the
known options within his or her technical grasp.
53
KSR v Teleflex
• Impact of KSR still being felt. As a guideline, a
patent is likely to be non-obvious if prior art
“teaches away” from the claimed invention or
if the patent has advantageous properties
unexpected from the prior art.
54
KSR v Teleflex
D: Some examples of drug patents that now
may be obvious:
“[S]tructural similarity between claimed and
prior art subject matter, proved by combining
references or otherwise, where the prior art
gives reason or motivation to make the claimed
compositions.
55
KSR v Teleflex
D: Some examples of drug patents that now may
be obvious:
The court ruled: “Not obvious because prior art had toxic side effects that
taught away from its use, and no reasonable expectation that the modification
would reduce toxicity.
In order for it to be obvious, there must be some reason that would have led a
chemist to modify a known compound in a particular manner, and a suggestion
to have made this specific modification.”
57
KSR v Teleflex: Aventis v. Lupin (Altace®)
58
KSR v Teleflex: Pfizer v. Apotex (Norvasc®)
59
KSR v Teleflex: Pfizer v. Apotex (Norvasc®)
60
Break two
What do raccoons
have to do with US
patent law?
61
Answer
• US Supreme Court Justice Breyer, during
review of KSR v. Teleflex, compared the
invention to a problem he had with raccoons
chewing on the sensor part of his garage door
opener. If he moved the sensor up out of the
reach of the raccoons, would the (pre KSR v.
Teleflex) patent law let him get a patent on
that?
62
8: Orange Book examples of FDA & USPTO
interconnections (topical drugs)
Examples:
A generic company
wants to produce a
new topical generic
drug. What might be a
good possibility?
63
An example of a topical drug listing
64
Another topical drug listing
65
Generic drugs and patents
• When a generic drug company files an ANDA
application, it must examine the status of the
patents from the Orange Book, and certify that
either:
1: There is no patent information listed
2: There is a listed patent but it is expired
3: That the listed expired will expire on a stated date
(usually soon)
4: That the listed patent is invalid or will not be infringed.
66
The start of a FDA patent fight!
4: That the listed patent is invalid or will not be
infringed.
– ANDA filer notifies patent holder within 20 days
– Patent holder must sue for infringement within 45 days
– If the patent holder sues, FDA must withhold approval
for 30 months (one time only)
– If the patent holder does not sue, FDA may approve
ANDA at any time
– If a court rules that the patent is not infringed or
invalid, FDA may proceed after decision.
67
US patent check
• Have any other generic drug companies
decided to challenge the validity of any drug
patents for topical drugs?
• Can check this by going on the web at:
http://www.fda.gov/CDER/ogd/ppiv.htm
68
Paragraph IV issues
Paragraph IV Patent Certifications
69
Topical drugs in a FDA patent fight
Drug Name Dosage Form Strength RLD Date of
Submission
Calcipotriene Topical Solution 0.005% Dovonex 5/19/2006
Clobetasol Topical Foam 0.05% Olux 6/27/2005
Propionate
Clobetasol Lotion 0.05% Clobex 3/27/2006
Propionate
Imiquimod Cream 5% Aldara 10/17/2006
Mometasone Topical Solution 0.1% Elocon
Furoate (Cream)
Mometasone Topical Solution 0.1% Elocon 6/10/2004
Furoate (Lotion)
Silver Cream 1% Silvadene
Sulfadiazine
Tretinoin Cream 0.025%, 0.05% Retin-A
and 0.1%
70
Mometasone furoate (Mometasone)
71
Check patent status in Orange book
http://www.accessdata.fda.gov/scripts/cder/ob/
Go here to
search by
ingredient
72
http://www.fda.gov/cder/ob/docs/queryai.htm
73
Mometasone Furoate cream
http://www.accessdata.fda.gov/scripts/cder/ob/docs/obdetail.cfm?Appl_No=019625&TABLE1=OB_Rx
74
No FDA listed patents
Mometasone Furoate cream
The FDA will not delay an ANDA filing for this drug
75
Calcipotriene cream
76
Calcipotriene cream
77
Calcipotriene cream does have patents
78
What is going on here?
• Why did the generic drug company file a
category IV (4) ANDA application for the
Calcipotriene topical cream if the drug was
covered by a patent(s) 5,763,426 and RE39706
that do not expire until June 9, 2015?
79
Now we go to the USPTO web site
http://patft.uspto.gov/netahtml/PTO/srchnum.htm
80
Download patent 5,763,426
81
Look at 5,763,426 claims:
• 1. Calcipotriol monohydrate characterized by its storage stability at 40.degree. C. after 12 months, its ready
wettability and wet ball milling characteristics.
Claim 3 covers the cream
2. Pharmaceutical composition containing the compound of claim 1.
5. Pharmaceutical composition according to any one of claim 4, with a content of the active component of 1-
100 .mu.g/g of the composition.
6. The method of preparing calcipotriol monohydrate which comprises dissolving calcipotriol in organic solvent
and then adding water to the resulting solution to precipitate the hydrate, said hydrate being characterized by
its storage stability at 40.degree. C., its ready wettability and wet ball milling characteristics.
7. In the preparation of a gel formulation which involves wet ball milling a calcipotriol component and adding
the wet milled calcipotriol component to a gel base, the improvement which comprises wet milling calcipotriol
hydrate as said component and using this wet milled hydrate for addition to said gel base, said hydrate being
characterized by its storage stability at 40.degree. C. after 12 months, its ready wettability and wet ball milling
characteristics.
82
5,763,426 covers the cream
• Since 5,763,426 covers the topical cream form
of Calcipotriene, and the patent doesn’t expire
until 2015, why did the generic drug company
file the category (IV) (4) ANDA?
83
The ANDA was for Topical Solution
Drug Name Dosage Form Strength RLD Date of
Submission
Calcipotriene Topical Solution 0.005% Dovonex 5/19/2006
Clobetasol Topical Foam 0.05% Olux 6/27/2005
Propionate
Clobetasol Lotion 0.05% Clobex 3/27/2006
Propionate
Imiquimod Cream 5% Aldara 10/17/2006
Mometasone Topical Solution 0.1% Elocon
Furoate (Cream)
Mometasone Topical Solution 0.1% Elocon 6/10/2004
Furoate (Lotion)
Silver Cream 1% Silvadene
Sulfadiazine
Tretinoin Cream 0.025%, 0.05% Retin-A
and 0.1%
84
5,763,426 covers the cream
• 1. Calcipotriol monohydrate characterized by its
storage stability at 40.degree. C. after 12 months, its
ready wettability and wet ball milling characteristics.
Look at RE39706
87
Claims for RE39706
1. Calcipotriol monohydrate characterized by its storage 40 stability at 40° C. after 12 months, its ready wettability
and its suitability for wet ball milling [characteristics].
2. Pharmaceutical composition containing the [compound] calcipotriol monohydrate of claim 1.
3. Pharmaceutical composition according to claim 2 which is a cream.
4. Pharmaceutical composition according to claim 2
which is a gel.
5. Pharmaceutical composition comprising calcipotriol monohydrate according to any one of [claim 4] claims 2-4
and a pharmaceutically acceptable vehicle, with a content
of the [active component of] calcipotriol monohydrate being 1-100 ug/g of the composition.
… The newer claims
12. Pharmaceutical composition according to claim 2 which is an ointment. are broader and
cover a topical
13. Pharmaceutical composition according to claim 2 which is a lotion.
solution!
14. Pharmaceutical composition according to claim 2 which is a solution.
88
What might have happened
• When the generic ANDA was filed on
5/19/2006, the 5,763,246 patent only covered
creams.
• On June 26, 2007 however, the reissue of
RE39706 of this patent issued, which now also
covers topical solutions.
• Is the generic company’s ANDA in trouble?
We will have to wait and see
89
References:
Courses:
Pharmaceutical and Biotech
Patent Law, by Kaye Scholer, LLP
http://www.pli.edu/product/book_detail.asp?ptid=501&stid=59&id=EN00000000040242
IP conferences:
(2007 Conference)
http://www.americanconference.com/Pharmaceuticals_Biotech_Life_Sciences/PBPatentBC.htm
Books:
The generic challenge,
By Martin. A. Voet
http://www.amazon.com/Generic-Challenge-Understanding-Pharmaceutical-Life-Cycle/dp/1581124309
Societies:
American Intellectual
Property Law Association
http://www.aipla.org/
90
Disclaimer:
This talk was originally prepared in 2008. Although many of the
issues discussed here have not changed significantly since 2008,
certain sections may be dated. Thus you should check to for
changed regulations or laws.
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Contact information:
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