Patentee Rights During Pendency Of Post-Grant Opposition

Issues:

In the case of Novartis AG & ANR v Natco Pharma Ltd, Swiss Pharma major Novartis has been granted patent for novel and inventive compound “Certinib” for treatment of non-small cell lung cancer. The suit patent was filed claiming priority since 2007, and was granted on 28th September, 2015.

Novartis came across NOXALK (Natco Pharma’s product) at a pharmaceutical conference at Kolkata and noticed the launch of “Certinib Capsules”.

Natco Pharma claimed that the Certinib molecule is neither novel nor inventive as it is covered under the broad “Markush” formula which is disclosed in the patent granted to AstraZeneca ortwo other patents granted to Rigel. Based on such contentions Natco Pharma opposed Novartis’s patent by post-grant opposition.

Novartis filed a case in High court against Natco Pharma seeking permanent injunction, damages, rendition of accounts and delivery up in respect of its granted patent and restraining Natco Pharma from manufacturing and selling “Certinib” capsules.

Judgement:

Justice Pratibha M Singh passed an order on May 2, 2019 directing Natco to file a response to the injunction moved by Novartis within 2 weeks.

Referring to the decision of the Supreme Court in Aloys Wobben, the judge held that though the patent rights may be crystallized once the opposition is actually decided, during the pendency of the post-grant opposition, the rights of a patentee subsist. Thus, confirming that Section 48 of the Patents Act grants rights in favour of a patentee, are not affected during the pendency of a post-grant opposition.

The court remarked that Natco Pharma ought to have waited for the decision of the court on the post-grant opposition instead of launching the product.

In an interim the court allowed selling of the stock that is already manufactured by Natcounder the mark NOXALK (Certinib) considering the interest of the patient community holding that stopping the sale of defendant’s product would only harm the patient community.

The Delhi court restrained Natco Pharma from manufacturing any fresh stock of drugs comprising “Certinib” compound.

The court also directed the Controller General of Patents, Designs and Trade Marks with a request to pass the order on the post grant opposition before the next date of hearing so that the Court can have the benefit of the decision of the Patent Office.

Author: Ms. Mita Sheikh – Associate Director  and Co- Author- Siddhi Mundada , Intern at Khurana & Khurana, Advocates and IP Attorneys. In case of any queries please contact/write back to us at mita@iiprd.com .

Leave a Reply

Archives

  • October 2021
  • 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