AIPPI Hyderabad 2011– Patent Linkage
Patent Linkage - general
Allowing the patent status of an original product to affect regulatory decisions concerning generic products in respect of marketing approval, pricing, reimbursement etc.
Patent Linkage - general
Starting point for applicable EU regulations that market authorizations shall not be refused, suspended or revoked except on the grounds set out in such regulations.
Article 81 of Regulation (EC) No 726/2004, Article 126 of Directive (EC) No 2001/83 and Recital 3 of Regulation (EEC) 2309/93.
Patent protection is not included as a ground for refusal
Variants of Formal Patent Linkage
Notification to IP holder of application for marketing approval
File declaration of non-infringement with MA application
Restrictions in respect of earliest date for filing of MA application in relation to lapse of patent
Generic MA suspended until lapse of patent rights
’Indirect’ Patent Linkage
When the actions necessary or desirable in order to obtain a relevant regulatory decision concerning a pharmaceutical product can be actionable under patent law either as infringement by themself or considered proof of imminent infringement warranting interlocutory measures.
Marketing Authorisations pre Bolar
Swedish case law to the effect that the paper filing did not involve infringement
Importation of samples for regulatory purposes infringed patent rights.
Bolar provision
Directive 2001/83/EC as amended by 2004/27/EC introduced exemption from patent protection in respect of measures necessary to obtain generic marketing authorisation
Marketing Authorisation
Directive not directly valid in all EU member states and the precise scope of the national legislation implementing the Directive varies
Only generics or all pharmaceuticals?
EU/EEA marketing authorisations only or a wider scope?
Marketing Authorisation
Portugal – actions before the administrative courts using a specific provision of the Portuguese constitution against grant of marketing approval
Price approval/reimbursement
Not infringing according to Swedish Supreme Court in Pfizer v Stada (ref NJA 2008 p 1192)
Should it be viewed as an indication of imminent infringement warranting interim measures according to the Enforcement Directive?
Generic substitution
Specific MPA decision establishing substitutability between original and generic product.
Triggers mandatory substitution at pharmacy level – switch prescribed pharmaceutical to pharmaceutical with the lowest price
Risperidal (Janssen-Cilag) - MPA cannot decide on substitutability for products protected by patent and alleging contributory infringement by the MPA – rejected by the court.