Relief for Pfizer as IPAB stays Revocation on Drug Tolterodine

In a positive development for US drug giant Pfizer, the country’s Intellectual Property Appellate Board (IPAB) has issued an interim stay on an order stated by the Indian Patent Office removing a patent of Pfizer, for its extended release drug Tolterodine (Detrol), which is used for treating old age patients who suffer from frequent urination. On the post-grant opposition by Indian pharmaceutical company Daiichi Sankyo owned Ranbaxy Laboratories, the Assistant Controller of Patents and Designs had revoked the patent in November 2013 under section 25(2)b, 25(2)c, 25(2) and 25(2)e of the Patent Act, and subsequently removed it from the registry in December last year.

Background:

The turf war between the two multinationals started when the Chennai Patent Office revoked Pfizer’s claims on a formulation of its best-selling drug Tolterodine(Detrol).The patent on the drug was challenged by Ranbaxy Laboratories. In India, Pfizer has two patents on Tolterodine (Detrol), the first patent IN211539 was filed in August 1999, and the second (IN229260) three months later in November which cover its extended release capsule formulation. It is believed that the invention claimed in the revoked patent (IN 229260 ) was found to be “prior claimed” by another patent of Pfizer (IN 211539 ) on the same drug under Section 25(2)(c) of prior claiming. A comparison of claims of the two patents is given below. picture3The invention claimed in the revoked patent was also found to be obvious, and not involving any technical advancement compared to existing knowledge under Section 25(2)(e) of obvious over prior art. Ranbaxy relied on three prior documents i.e.; US 4800084, WO 98/03067 AND WO 96/12477. US 4800084 discloses the use of seal coat between the core and the drug layer in a multilayer medicated formulation whereas, WO 98/03067 discloses a method of use of Tolterodine in urinary voiding disorder in which various possible formulations of Tolterodine including the controlled release formulation are disclosed, but does not discuss any formulation in detail.WO96/12477 discloses a controlled release oral delivery system for oxybutynin, comprising a bead system of core and coatings. Oxybutin is a tertiary amine antiuscarinic used to treat urinary incontinence. The controller said that the “person skilled in the art would have been motivated to prepare controlled release bead for tolterodine with the teachings of preceding prior art together with common general knowledge in the art at that time of filing the application without undue experimentation”. Further, the study carried out by the patentee on ‘effect of sealcoat thickenss’ does not possess any inventive merit. The Controller further held that it is common general knowledge in the art when thickness of layer increases, release rate of the drug or permeability of water decreases. Workable range of sealcoat layer neither suggested nor described in the complete specification. Therefore, present patent do not involve any technical advancement as compare to the existing knowledge. However, the opposition board sided with the patentee and opined that inventive skill is involved in selecting quantity of the drug, core medium and compatible polymers for coating to arrive at a controlled release formulation as claimed in the instant patent IN 229260. The Assistant Controller revoked the said patent (IN 229260) of Tolterodine (Detrol) stating its obviousness and that it was prior claimed by another patent (IN211539) of Pfizer.

Further Developments:

Aggrieved by the developments, Pfizer moved to IPAB, requested for stay on the controller of patent’s order. However, when the matter came up at IPAB in March 2014, Ranbaxy’s counsel submitted that they have not been given enough time by Pfizer to prepare the counter against the appeal and the matter be adjourned, which was refuted by the latter. Considering the petition, IPAB Chairman held: “The balance of convenience is very much favourable to Pfizer and accordingly we are granting an interim stay on the assistant controller’s impugned order of November 27, 2013, which revoked the patent of Pfizer.” The order was on a miscellaneous petition of Pfizer for an interim stay. The IPAB bench also observed that Ranbaxy is open to file a counter-affidavit, seeking redressal of grievances under the applicable laws. Further in March 2014, the counsel for Pfizer, PS Raman, submitted that the controller of patents had removed the patent from the register on December 15, 2013, hardly a month after pronouncement of the revocation order on November 27, 2013. He pointed out this was done even before the limitation period for referring an appeal had expired. According to him, Pfizer had time till February 28, 2014, to appeal against the impugned order. While Pfizer informed the Board that it has served the notice to Ranbaxy on the hearing of the miscellaneous petition through courier-post on March 13, 2014, the latter in a letter dated March 21, 2014, stated that they have received the notice from the registry only on March 19, and sought a relief of adjournment. IPAB held that Ranbaxy having received the notice from the petitioner as early as March 13, 2014, had enough time to appear and argue the matter of stay petition. Hence there should not be any justification for seeking further time.

Conclusion:

Since 1991, Pfizer has been using the subject patent at the international level and filed for Indian patent in 2001, and also seen that Pfizer did succeed in pre-grant opposition. In my opinion, this revocation decision has only reduced the Tolterodine patent term by three months ( IN 229260 expires on November 2019) since the other patent IN211539 is still valid till August 2019, but since both patents covering Tolterodine claim the same invention and one of the patents is revoked as being obvious over prior art, the second patent is now susceptible to revocation under same grounds of obviousness and lack of inventive step and hence will be an inspiration for other competitors as well to attack the first patent.

About the Author: Sugandhika Mehta, Patent Intern at Khurana and Khurana and can be reached at: sugandhika@khuranaandkhurana.com

Leave a Reply

Archives

  • September 2021
  • August 2021
  • July 2021
  • June 2021
  • May 2021
  • April 2021
  • March 2021
  • February 2021
  • January 2021
  • December 2020
  • November 2020
  • October 2020
  • September 2020
  • August 2020
  • July 2020
  • June 2020
  • May 2020
  • April 2020
  • March 2020
  • February 2020
  • January 2020
  • December 2019
  • November 2019
  • October 2019
  • September 2019
  • August 2019
  • July 2019
  • June 2019
  • May 2019
  • April 2019
  • March 2019
  • February 2019
  • January 2019
  • December 2018
  • November 2018
  • October 2018
  • September 2018
  • August 2018
  • July 2018
  • June 2018
  • May 2018
  • April 2018
  • March 2018
  • February 2018
  • January 2018
  • December 2017
  • November 2017
  • September 2017
  • August 2017
  • July 2017
  • June 2017
  • May 2017
  • April 2017
  • March 2017
  • February 2017
  • January 2017
  • December 2016
  • November 2016
  • October 2016
  • September 2016
  • August 2016
  • July 2016
  • June 2016
  • May 2016
  • April 2016
  • March 2016
  • February 2016
  • January 2016
  • December 2015
  • November 2015
  • October 2015
  • September 2015
  • August 2015
  • July 2015
  • June 2015
  • May 2015
  • April 2015
  • March 2015
  • February 2015
  • January 2015
  • December 2014
  • November 2014
  • October 2014
  • September 2014
  • August 2014
  • July 2014
  • June 2014
  • May 2014
  • April 2014
  • March 2014
  • February 2014
  • January 2014
  • December 2013
  • November 2013
  • October 2013
  • September 2013
  • August 2013
  • July 2013
  • June 2013
  • May 2013
  • April 2013
  • March 2013
  • February 2013
  • January 2013
  • December 2012
  • November 2012
  • September 2012
  • August 2012
  • July 2012
  • June 2012
  • May 2012
  • April 2012
  • March 2012
  • February 2012
  • January 2012
  • December 2011
  • November 2011
  • October 2011
  • September 2011
  • August 2011
  • July 2011
  • June 2011
  • May 2011
  • April 2011
  • March 2011
  • February 2011
  • January 2011
  • December 2010
  • September 2010
  • July 2010
  • June 2010
  • May 2010
  • April 2010