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The latest chapter in the extensive and longstanding litigation around Australian patent no. 623144, belonging to Danish pharmaceutical company H. Lundbeck A/S [1], highlights a practical difficulty for generic manufacturers.


The Decision. Lundbeck sought to increase the term of the patent, but did so only just before the patent expired. It was well beyond the usual deadline, and thus Inventhelp Intromark were required to seek an extension of energy to ensure the application form for extension of term to be considered. Several generic manufacturers, including Sandoz, launched products following the patent expired just before the application extending time in which to apply for an extension of term was considered. Because they launched at any given time when Lundbeck had no patent rights, Sandoz argued that they must have been protected against patent infringement once rights were restored. However, the legal court held that the extension of term needs to be retrospective., and thus Sandoz infringed the patent.

Background. This action arises in unusual circumstances. The anti-depressant drug citalopram is really a racemic mixture of the two enantiomers, the ( ) enantiomer as well as the (-) enantiomer. Lundbeck held patents covering the racemic mixture and had marketed the racemic mixture as CIPRAMIL. The patent in suit claims the greater-effective ( ) enantiomer. Lundbeck sought an extension of term based on the registration of the ( ) enantiomer, as LEXAPRO, on the Australian Register of Therapeutic Goods (ARTG). Inside an earlier chapter in this saga, it absolutely was established the applying for extension of term needs to have been based on the earlier registration on the ARTG of citalopram, as citalopram (CIPRAMIL) has the ( ) enantiomer, and not on the registration in the ( ) enantiomer (LEXAPRO) on the ARTG .

Lundbeck made a new application for extension of term on 12 June 2009, the morning before patent no. 623144 expired. This time the application for extension of term was based on the ARTG registration for How To Submit A Patent. This was accompanied by a software for extension of energy (since the application should have been made within six months in the date of the ARTG registration of CIPRAMIL, making the deadline 26 July 1999) which needed to be successful for your extension of term to become approved. A delegate of Commissioner held that this extension of your time was allowable since the original deadline for producing the applying for extension of term was missed because of a genuine misunderstanding of the law on the part of the patentee.

Sandoz released their generic product for the market on 15 June 2009, just two days right after the expiry of Lundbeck’s patent, and just 3 days following the application for extension of term was created. The Commissioner of Patents approved an extension from the patent term on 25 June 2014 [3]. Lundbeck filed patent infringement proceedings within the Federal Court of Australia on 26 June 2014.

Mind the space. In this instance the government Court held that a decision concerning the extension from the term of any patent may be delivered following expiry in the patent, and the effect of this delivery is retrospective. Even though application for extension of term was filed from time, this was able to be rectified by making use of to prolong the deadline since the failure to submit in time was as a result of an “error or omission” on the part of the patentee. Although Sandoz launched their product at a time when it seemed Inventhelp Patent Services had no patent rights, there is no gap in protection considering that the patent never ceased nor must be restored.

This might be contrasted using the situation in which a patent is restored when, as an example, a renewal fee is paid out of time. In these circumstances, considering that the patent did temporarily cease, steps taken by another party vagrgq exploit the patented invention in the “gap” period will never open the party to infringement proceedings.

The impact on generics. Generic manufacturers who seek to launch soon after the expiry of any patent should take notice of the possibility that the application for the extension of term can be created in a late date America if some error or omission lead to this not done within the prescribed time. Such extensions of patent terms may have retrospective effect if granted right after the expiry of the patent. It really is understood that this decision is under appeal.

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