• USPTO Building FacadeThe U.S. Patent and Trademark Office has announced a revised agenda for the next biotechnology/ chemical/pharmaceutical (BCP) customer partnership meeting to be held on June 6, 2012.  New to the agenda is an afternoon session on the Recommendation for the Disclosure of Sequence Listings using XML (Proposed ST.26).  The time slots for a number of sessions have also been changed.  The revised agenda is as follows:

    Morning Session

    • Opening Remarks (9:00 – 9:15 am ET):  George Elliott, Wanda Walker, and Dan Sullivan (Acting), Directors, Technology Center 1600

    • AIA Update (9:15 – 10:15 am):  Janet Gongola, Patent Reform Coordinator

    • Break (10:15 – 10:30 am)

    • Cooperative Patent Classification Overview (10:30 – 11:15 am):  Bruce Kisliuk, Deputy Commissioner for Patent Administration

    • Claim Interpretation (11:15 am – 12:00 pm):  Jeffrey Lundgren, SPE, Art Unit 1629

    • Lunch (12:00 – 1:15 pm)

    Afternoon Session

    Mayo v. Prometheus (1:15 – 2:45 pm):  Roberte Makowski, Connolly Bove Lodge & Hutz, LLP,
    and Hans Sauer, Associate General Counsel for BIO

    • Break (2:45 – 3:00 pm)

    • Recommendation for the Disclosure of Sequence Listings using XML (Proposed ST.26) (3:00 – 3:30 pm):  Susan Wolski, PCT Legal

    • Range Limitations in Claims (3:30 – 4:15 pm):  Jean Witz, QAS, TC1600

    • Closing Remarks/Discussion (4:15 – 4:30 pm):  George Elliott, Wanda Walker, and Dan Sullivan (Acting), Directors, Technology Center 1600

    The meeting can be attended in person at the USPTO's Madison Auditorium, 600 Dulany Street, Alexandria, VA, or viewed online here (click "Join Now").  Individuals wishing to join the teleconference only should call +1-408-600-3600 (U.S./Canada, toil number), and use the access code: 991 681 937.  Those wishing to attend the meeting should contact Cecilia Tsang by phone at 571-272-0562, by fax at 571-273-0562, or by e-mail at Cecilia.Tsang@uspto.gov by June 4, 2012 to confirm their attendance.  Additional information regarding the BCP customer partnership meeting can be found here.

  • By Kevin E. Noonan

    Bioeconomy BlueprintIn April, the White House released a policy paper what was styled the "National Bioeconomy Blueprint."  Its presumptions are based on the idea that the portion of the economy "fueled by research and innovation in the biological sciences" is a "large and rapidly growing segment of the world economy that provides substantial public benefit."  This has caused innovation in the biological sciences to become a priority of the Obama Administration, promising not only economic development but to "live longer, healthier lives, reduce our dependence on oil, address key environmental challenges, transform manufacturing processes, and increase the productivity and scope of the agricultural sector while growing new jobs and industries."  Successes of the bioeconomy touted by the Blueprint include $76 billion in revenues from genetically engineered crops and $100 billion in revenues from "industrial biotechnology" (including "fuels, materials, chemicals, and industrial enzymes derived from genetically modified systems").  The Blueprint identifies genetic engineering technology, DNA sequence analysis and "automated high-throughput manipulations of biomolecules" as "foundational technologies," while identifying "synthetic biology," proteomics and bio-informatics as "emerging technologies."

    The result of the "bioeconomy" becoming an Administration "priority" is a directive (Executive Memorandum (M-10-30)) to all Federal agencies to "support research to establish the foundations for a 21st century bioeconomy," an effort that the Blueprint says has made "significant early progress."  While these efforts also "raise important ethical and security issues that are also top priorities for the Administration," discussions of these concerns are expressly deemed to be outside the scope of the Blueprint itself.

    The first chapter of the Blueprint sets out the broad goals, citing the National Research Council's 2009 report, A New Biology for the 21st Century, for a recognition of the importance of biological research for addressing societal needs for foods, fuel, and medicines (echoing BIO's motto of "Healing, Fueling and Feeding the World").  The Blueprint enunciates "key elements" of the recommended national effort, including:

    • a full spectrum of basic and applied R&D activities performed by academic, government, and private sectors
    • public-private partnerships
    • a supportive commercialization system for bioinventions
    • innovative regulatory policies that reflect government awareness of needs for and impediments to progress
    • a skilled and creative workforce
    • public support for technological advances
    • flexibility to accommodate the evolving needs, discoveries, and challenges

    The second chapter enumerates several examples of efforts to achieve the goals.

    The Blueprint sets forth "five strategic objectives" for achieving the promised bioeconomy:

    1. Support R&D investments that will provide the foundation for the future U.S. bioeconomy.

    This objective includes "[c]oordinated, integrated R&D efforts will help strategically shape the national bioeconomy R&D agenda"; "[e]xpand[ing] and [d]eveloping essential bioeconomy technologies"; "[i]ntegrat[ing] approaches across fields"; and "[i]mplement[ing] Improved Funding Mechanisms."  In this effort, "the President has called for agencies to identify strategic R&D investments, as well as increase the use of flexible funding mechanisms to improve program efficiency and provide the best opportunity to enhance economic growth."  The rationale is that "[a] robust biological/biomedical R&D enterprise, backed by government, foundations, and for profit investments, is necessary to produce the new knowledge, ideas, and foundational technologies required to develop products and services that support businesses and industries and help create jobs."

    Much of what is cited in the Blueprint are efforts like the NIH Center for Regenerative Medicine, to accelerate the development and testing of new clinical protocols using iPS-cell-based treatments, and the use of FDA data on drug products clinical data ("[t]he FDA currently houses one of the largest known repositories of clinical data, including safety, efficacy, and performance information, and an increasing amount of post-market safety surveillance data").  While technology-based, such efforts do raise their own questions, such as whether translational activities are the best use of NIH resources and the extent to which clinical and other data submitted in support of regulatory approval can be expropriated by the government for its own, alternative uses without raising constitutional concerns.  The Blueprint also cites several biofuels efforts by Advanced Research Projects Agency-Energy, Department of Agriculture (USDA) and Department of Energy's (DOE) Biomass Program, USDA-DOE Plant Feedstock Genomics for Bioenergy Program, National Science Foundation's (NSF) Engineering Directorate Sustainable Energy Pathways (SEP) effort, as well as government programs supporting biomanufacturing.

    2. Facilitate the transition of bioinventions from research lab to market, including an increased focus on translational and regulatory sciences.

    This objective includes "[a] dedicated commitment to translational efforts will accelerate movement of bioinventions out of laboratories and into markets, specifically: [a]ccelerat[ing] progress to market; enhance[ing] entrepreneurship at eniversities; and utilize[ing] federal procurement authority."  The Blueprint identifies programs intended to help start-ups negotiate the "valley of death" of investment, including the Startup America initiative, specifically naming "five areas highlighted for action: unlocking access to capital; connecting mentors with entrepreneurs; reducing regulatory barrier; tax relief; and other economic incentives for small businesses"; the National Institute of Standards and Technology (NIST) Hollings Manufacturing Extension Partnership (MEP); the National Innovation Marketplace; BioInnovation Initiative; Executive Order 13514, Federal Leadership in Environmental, Energy, and Economic Performance; reauthorization of the Small Business Innovation Research (SBIR) and Small Business Technology Transfer (STTR) programs; translational biomedicine efforts such as the National Center for Advancing Translational Sciences (NCATS), established in December 2011, and cooperative programs between FDA and NIH.  In addition, the Blueprint advocates enhanced entrepreneurial activities in universities and improved technology transfer, which includes exclusive licensing of NIH-developed innovation, "to companies developing drugs, vaccines, or therapeutics from NIH-patented or patent-pending technologies."  But the Bleuprint also contains statements like "[t]he America Invents Act provides entrepreneurs the tools they need to obtain patents more quickly and to defend them against litigation challenges, both at lower costs" which reduces a reader's confidence that the Administration has accurately assessed the important components of bio-innovation.

    3. Develop and reform regulations to reduce barriers, increase the speed and predictability of regulatory processes, and reduce costs while protecting human and environmental health.

    This objective includes "[i]mproved regulatory processes [that] will help rapidly and safely achieve the promise of the future bioeconomy, specifically: improve[ing] regulatory processes and regulations; and collaborat[ing] with stakeholders."

    This initiative is actually directed to "reducing regulatory barriers":  specifically, regulations that "have become inadequate or unnecessarily restrictive because technology and its associated products and services, as well as our national interests, have evolved and regulations may not have kept pace."  The Blueprint also cites Executive Orders, Improving Regulation and Regulatory Review and Regulation and Independent Regulatory Agencies and revisions to FDA regulations that "increase transparency, consistency, and predictability of the regulatory processes and help drive medical product innovation forward."  Specific regulatory changes are directed to medical devices and regulation for "emerging technologies."

    4. Update training programs and align academic institution incentives with student training for national workforce needs.

    This objective includes the directive that "Federal agencies should take steps to ensure that the future bioeconomy has a sustainable and appropriately-trained workforce," specifically enumerating "employer-educator partnerships" and "reengineer[ing] training programs."  A large portion of this objective is directed towards an emphasis on minority-serving institutions (including community colleges).

    5. Identify and support opportunities for the development of public-private partnerships and precompetitive collaborations — where competitors pool resources, knowledge, and expertise to learn from successes and failures.

    This objective includes the directive that "Federal agencies should provide incentives for public-private partnerships and precompetitive collaborations to benefit the bioeconomy broadly, specifically directed to "catalyz[ing] public-private partnerships."  "Models" for collaboration are listed as:

    • Open-source initiatives
    • Industry consortia for process innovation
    • Discovery-enabling consortia
    • Public–private consortia for 
knowledge creation
    • Prizes
    • Innovation incubators
    • Industry complementors
    • Virtual pharmaceutical companies

    Citing "Overview of Precompetitive Collaboration for Institute of Medicine Workshop."

    This portion of the Blueprint sets out public-private partnerships for "rescuing" or repurposing" abandoned pharmaceutical compounds and smarter drug design.

    The next portion of the Blueprint sets forth purported "successes" of the Administration's efforts to stimulate the bioeconomy, which include:

    • "Broad Spectrum Anti-Viral: Researchers at the Massachusetts Institute of Technology's Lincoln Laboratory reported in 2011 creation of a broad-spectrum antiviral technology that selectively kills any virus-infected cell but does not harm uninfected cells." ("Broad-Spectrum Antiviral Therapeutics")

    • "Diesel from CO2: Through photosynthesis, plants, algae, and some bacteria use the energy of sunlight to convert CO2 into a variety of organic compounds needed for growth and survival A Massachusetts-based company re-engineered photosynthetic organisms to synthesize, from sunlight and CO2, molecules that form the chemical basis of diesel fuel."

    • "Designing Biological Systems for Next- Generation Biomanufacturing: Synthetic biology is enabling scientists to rapidly design organisms that can be used in the production of renewable chemicals, biofuels, renewable specialty and fine chemicals, food ingredients, and health-care products. Bioacrylic acid heralds the advent of synthetic-biology-enabled manufacturing: acrylic acid ingredients are used to make adhesives stronger, paints more durable, and diapers more absorbent, and today petroleum-based acrylic is an $8 billion global market" ("Current Uses of Synthetic Biology")

    • "Allergen-Free Peanuts: Researchers at a number of institutions in the United States have made inroads towards eliminating or inactivating allergenic proteins in peanuts. If successful, these approaches could lead to significant health benefits for Americans and economic opportunities for the peanut industry."

    • "Biodegradable Plastics from Biomass: A major commercial "polylactic acid" bioplastic is already made today from cellulose However, the ability to replace petroleum-based plastics with this bioproduct is constrained by the limited availability of the specific cellulosic source material. To address this limitation, USDA scientists discovered a bacterium that can ferment a broader range of cellulosic biomass materials into polylactic acid, enabling commercial production on a much larger scale. With an estimated $375 billion market for chemical, plastic, and rubber products based on petroleum, this represents a substantial bioeconomy opportunity." ("Sustainable Polymers")

    • "Biosensor Pollution Monitoring: Biosensors are devices composed of a biological sensing component linked
to a signaling component, working together to reveal the presence of an element, molecule, or organism of interest. In 2011, a team at the Virginia Institute of Marine Science reported creation of a portable biosensor that could detect marine pollutants, including oil, much faster and more cheaply than current technologies. If deployed near oil facilities, such sensors could provide early warning of spills and leaks and track dispersal patterns in real time." ("Near real-time, on-site, quantitative analysis of PAHs in the aqueous environment using an antibody-based biosensor")

    More naïve (or perhaps idealist) portions of the Blueprint posit "trends" in the bioeconomy such as "sharing:"

    Non-traditional research collaborations that feature the
sharing of information, resources, and capabilities are
transforming the bioeconomy.  Precompetitive collabora
tions — where "competitors" partner and pool resources — are growing as partners seek new ways to leverage constrained resources and surmount shared problems.  Partnerships for innovation are increasingly observed as a response to changing economic and technological conditions.

    In agriculture, as the public and private sectors seek increased information for the bioeconomy on potential crop characteristics, there is increased sharing, both domestically and internationally, of genetic information.  The sharing of genetic information enhances U.S. agricultural competitiveness for food, energy, chemical production in plants, and other biobased-product crop species.

    In the health sector, precompetitive collaborations are having significant impacts in clinical-trial design and biomarker discovery, among other areas.  Combined industrial R&D has contributed to transformative progress despite major challenges such as increased management costs due to "outside" collaborations and the need to develop effective communication networks across companies.

    Similarly idealistic (or perhaps fantastical) portions of the Bleuprint include the idea for "using the power of prizes to drive innovation," specifically with regard to enactment of the "America COMPETES Reauthorization Act[,] granting all Federal agencies broad authority to conduct prize competitions as called for by the President" in December 2011 ("Implementation of Federal Prize Authority: Progress Report").

    The Blueprint contains some important information, such as the "30-year decline in new molecular entities per dollar spent on R&D":

    FIG1Figure 1. 30-year decline in new molecular entities per dollar spent on R&D There has been a 30-year decline in pharmaceutical industry productivity, as measured by new molecular entities per dollar spent
on R&D, normalized to 5-year rolling average of 1970 
to 1975 While R&D costs have increased 50-fold during this time period, the output of investigational new drug candidates and new drug application products has stayed flat.  Figure Source: IOM (Institute of Medicine) 2010 Extending the spectrum of precompetitive collaboration in oncology research: Workshop summary Washington, DC: The National Academies Press.

    The Blueprint interprets this data, by asserting that "[o]ne issue that government and industry must address is that increased investment in research has not resulted in a concomitant increase in approved drugs.  Figure 1 shows that the number of FDA-approved new molecular entities has not kept pace with the pharmaceutical sector's spending over time have cited internal drug pipeline productivity declines, delays in application review caused by both industry and regulators, and a decreasing number of tractable medical challenges as reasons for this decline in productivity.  Advances in translational and regulatory sciences, improvements in the transfer of technology from the public to the private sector, regulatory process improvements, Federal workforce enhancements, and innovative public-private partnerships have potential to help overcome these challenges."

    On the other hand, the Blueprint identifies certain sectors of the bioeconomy that are rapidly advancing, such as genomic sequencing as illustrated in the following Figure:

    FIG2
    Figure 2. "Cost per Genome" — the cost of sequencing a human-sized genome
    Data from 2001 through October 2007 represent the costs of generating DNA sequence using first generation sequencing technology.  Beginning in January 2008, the data represent the costs of generating DNA sequence using 'second-generation' (or 'next-generation') sequencing platforms.  The change in instruments represents the rapid evolution of DNA sequencing technologies that has occurred in recent years. www genome gov/sequencingcosts.

    The Blueprint asserts that "[w]hile the sequencing of the first human genome took 13 years and cost $2.7 billion, researchers can now sequence a human genome for a fraction of that cost (~$7,700) and within two weeks' time" and considers the implications of these rapid increases in speed and decreases in cost for "whole-genome" human genomic sequencing.

    The Blueprint concludes:

    The Administration has made great strides in harnessing biological research innovations to address national challenges in health, energy, food, environment, and manufacturing via the commercial economy.  But there is much more to be done.  The Administration plans to explore additional creative ideas for promoting U. S. leadership in the bioeconomy, such as innovative financing for translational research, increasing the impact of the SBIR program, and improving the ability of faculty and students to move from "idea to IPO," and will continue to accept public input by email at bioeconomy@ostp gov.

    By strategically shaping future R&D investments, improving commercialization of bioinventions, updating workforce training programs for new bioeconomy careers, reforming regulatory processes, and building new bioeconomy public-private partnerships, the Administration will help stimulate the growth of a high-wage, high-skill sector while improving the lives of all Americans.

    Politics aside, publication of the Blueprint indicates that the Obama Administration recognizes the importance of the bioeconomy to the nation's economy as a whole.  Provided that the government is receptive to the input and information from all stakeholders (and not just government policy wonks, academics or think tank, armchair entrepreneurs, the Blueprint may actually provide a roadmap for progress.

  • By Donald Zuhn

    USPTO Releases Certain AIA Implementation Dates

    Gongola, JanetThe U.S. Patent and Trademark Office recently updated its Leahy-Smith America Invents Act Implementation micro-site to announce several AIA implementation dates.  On the micro-site, USPTO Patent Reform Coordinator Janet Gongola (at right) indicated that the Office will submit its genetic testing study to Congress (pursuant to § 27 of the AIA) on June 15; will issue a Federal Register notice making the Patent Ombudsman Program permanent in June or July; will issue three notices of proposed rulemaking on First-Inventor-to-File, Fee Setting, and Micro-entity provisions and one guidance document on the First-Inventor-to-File provisio in June or July; will open the Detroit satellite office on July 13; will issue final rules for the Inventor's Oath/Declaration, Supplemental Examination, Preissuance Submissions, Citation of Patent Owner Statements, Post Grant Review, Inter Partes Review, and Covered Business Method Review provisions, the Technological Invention Definition, the Umbrella Administrative Trial Rules, and a trial practice guide for the administrative trials by August 16.  Ms. Gongola also indicated that the Office was planning a roundtable discussion on its First-Inventor-to-File proposal in the late summer, and a second series of cross-country roadshows in the early fall to teach stakeholders about the final rules.


    USPTO Posts Comments on AIA Implementation

    USPTO SealThe U.S. Patent and Trademark Office has posted comments it has received in response to the Office's several notices on AIA implementation.  The comments have been divided by subject as follows:

    Inter Partes Review
    • Post-Grant Review
    • Transitional Program for Covered Business Method Patent Review
    • Definition of Technological Invention
    • Derivation Proceedings
    • Umbrella Administrative Trial Rules and Practice Guide
    • Genetic Diagnostic Testing
    • Statute of Limitations Provisions for Office Disciplinary Proceedings
    • Patent Public Advisory Committee Public Hearings on the Proposed Patent Fee Schedule
    • Satellite Offices for the Nationwide Workforce
    • Supplemental Examination and Revision of the Nationwide Workforce
    • Inventor's Oath or Declaration
    • Preissuance Submissions by Third Parties
    • Post Patent Provisions
    • Leahy-Smith America Invents Act Implementation

    The comments page on the AIA microsite also outlines the process by which the public can submit comments to the final rules to be published by the Office by August 16.


    Rospatent Given Authority to Act as ISA/IPEA for PCT Applications Filed with RO/US

    RospatentLast month, the U.S. Patent and Trademark Office and Federal Service on Intellectual Property, Patents & Trademarks of Russia (Rospatent) concluded an agreement that permits Rospatent to act as an International Searching Authority (ISA) and International Preliminary Examining Authority (IPEA) under the Patent Cooperation Treaty (PCT) for international applications filed with the USPTO as a Receiving Office (RO/US) provided that the applications are filed in English and Rospatent has been selected as the ISA and IPEA.  The agreement became effective January 10, 2012.

    In announcing the agreement, the USPTO noted that it would collect a search fee of $415 for Rospatent acting as an ISA (with the fee increasing to $453 effective June 1, 2012), and then transmit the fee to Rospatent.  The Office also noted that all correspondence between Rospatent and the USPTO will be in English.

    With the addition of Rospatent, applicants can now choose among five offices to act as ISA or IPEA:  the USPTO, European Patent Office (EPO), Korean Intellectual Property Office (KIPO), IP Australia, and Rospatent.  Currently, the search fees for electing one of these offices are:  $2,426 (EPO), $2,080 (USPTO), $2,041 (IP Australia), $1,101 (KIPO), and $415 (Rospatent).  Applicants should keep in mind that the National Stage search fee will depend on whether the international search report (ISR) was prepared by another office ($490) or by the USPTO ($120).


    Java Update Not Supported By EFS-Web and Private PAIR

    EFS-WebEarlier this month, the U.S. Patent and Trademark Office issued an e-mail alert notifying EFS-Web and Private PAIR users that neither system would support the Java 7 update 4 (7u4) released by Oracle Corp. on May 2.  The Office has recommended that users not install this update until the Office resolves issues with that update and the EFS-Web and Private PAIR.

  • By Sherri Oslick

    Gavel In an effort to catch up with recently filed biotech and pharma cases, Patent Docs presents this additional installment of Court Report. 

    Janssen Products, L.P. et al. v. Lupin Ltd. et al.
    2:12-cv-02840; filed May 10, 2012 in the District Court of New Jersey

    • Plaintiffs:  Janssen Products, L.P.; Janssen R&D Ireland; G.D. Searle, LLC
    • Defendants:  Lupin Ltd.; Lupin Pharmaceuticals Inc.

    Infringement of U.S. Patent No. RE42,889 ("α- and β-Amino Acid Hydroxyethylamino Sulfonamides Useful as Retroviral Protease Inhibitors," issued November 1, 2011) following a Paragraph IV certification as part of Lupin's filing of an ANDA to manufacture a generic version of Janssen's Prezista® (darunavir, used to treat human immunodeficiency virus (HIV-1) infection).  View the complaint here.


    Depomed, Inc. v. Zydus Pharmaceuticals (USA), Inc. et al.

    3:12-cv-02813; filed May 9, 2012 in the District Court of New Jersey

    • Plaintiff:  Depomed, Inc.
    • Defendants:  Zydus Pharmaceuticals (USA), Inc.; Cadila Healthcare Ltd.

    Infringement of U.S. Patent Nos. 6,340,475 ("Extending the Duration of Drug Release Within the Stomach During the Fed Mode," issued January 22, 2002), 6,488,962 ("Tablet Shapes To Enhance Gastric Retention of Swellable Controlled-Release Oral Dosage Forms," issued December 3, 2002), 6,635,280 ("Extending the Duration of Drug Release Within the Stomach During the Fed Mode," issued October 21, 2003), 6,723,340 ("Optimal Polymer Mixtures for Gastric Retentive Tablets," issued April 20, 2004), 7,438,927 ("Methods of Treatment Using a Gastric Retained Gabapentin Dosage," issued October 21, 2008) and 7,731,989 ("Gastric Retained Gabapentin Dosage Form," issued June 8, 2010) following a Paragraph IV certification as part of Zydus' filing of an ANDA to manufacture a generic version of Depomed's Gralise® (gabapentin, used for the management of postherpetic neuralgia).  View the complaint here.


    Shire Development LLC et al. v. Watson Pharmaceuticals, Inc. et al.

    0:12-cv-60862; filed May 8, 2012 in the Southern District of Florida

    • Plaintiffs:  Shire Development LLC; Shire Pharmaceutical Development Inc.; Cosmo Technologies Ltd.; Giuliani International Ltd.
    • Defendants:  Watson Pharmaceuticals, Inc.; Watson Laboratories, Inc. – Florida

    Infringement of U.S. Patent No. 6,773,720 ("Mesalazine Controlled Release Oral Pharmaceutical Compositions," issued August 10, 2004) following a Paragraph IV certification as part of Watson's filing of an ANDA to manufacture a generic version of Shire's Lialda® (mesalamine, used to induce remission in patients with active, mild to moderate ulcerative colitis).  View the complaint here.


    Valeant International (Barbados) SRL v. Sandoz Inc.

    1:12-cv-00536; filed April 30, 2012 in the District Court of Delaware

    Infringement of U.S. Patent Nos. 7,241,805 ("Modified Release Formulations of a Bupropion Salt," issued July 10, 2007), 7,569,610 (same title, issued August 4, 2009), 7,572,935 (same title, issued August 11, 2009), 7,585,897 (same title, issued September 8, 2009), 7,645,802 ("Bupropion Hydrobromide and Therapeutic Applications," issued January 12, 2010), 7,649,019 ("Modified Release Formulations of a Bupropion Salt," issued January 19, 2010), 7,662,407 (same title, issued February 16, 2010), 7,671,094 ("Bupropion Hydrobromide and Therapeutic Applications," issued March 2, 2010), and 7,553,992 ("Modified Release Formulations of a Bupropion Salt," issued June 30, 2009) following a Paragraph IV certification as part of Sandoz's filing of an ANDA to manufacture a generic version of Valeant's Aplenzin ER (bupropion, used to treat depression).  View the complaint here.


    Monsanto Co. et al. v. Alexander et al.

    4:12-cv-00751; filed April 27, 2012 in the Eastern District of Missouri

    • Plaintiffs:  Monsanto Co.; Monsanto Technology LLC
    • Defendants:  Myron Alexander; John Sullivan; Jamon Andreasen

    Infringement of U.S. Patent Nos. 5,352,605 ("Chimeric Genes for Transforming Plant Cells Using Viral Promoters," issued October 4, 1994) and RE39,247 ("Glyphosate-tolerant 5-enolpyruvylshikimate-3-phosphate Synthases," issued August 22, 2006) based on defendants' use of soybean seed produced from earlier planted Roundup Ready® soybean seed.  View the complaint here.

  • By Donald Zuhn

    USPTO SealAs part of its efforts to implement the Leahy-Smith America Invents Act, the U.S. Patent and Trademark Office issued a Federal Register notice (77 Fed. Reg. 3748) earlier this year indicating that the Office had begun to collect information on independent second opinion genetic diagnostic testing where patents and exclusive licenses exist that cover primary genetic diagnostic tests (see "USPTO News Briefs," January 26, 2012).  This collection of information was needed in order for the Office to fulfill its obligations under § 27 of the AIA to prepare a report on genetic diagnostic testing for submission to the Committee of the Judiciary for both the Senate and House.

    In the first phase of the Office's information gathering process on genetic diagnostic testing, the Office held two public hearings on the matter.  Readers may recall that Patent Docs author Kevin Noonan testified at the first of these hearings in February (see "Patent Docs Author Testifies at Genetic Diagnostic Testing Hearing"; "USPTO Holds First Hearing on 'Second Opinion' Genetic Testing").  In the second phase of this process, the Office asked members of the public to submit written comments on several topics presented in AIA § 27 or any of the additional issues presented in the Office's Federal Register notice.

    To provide the public with access to comments that were submitted in response to the Office's request, a webpage on genetic diagnostic testing has been established as part of the Office's AIA implementation site.  The Office has divided the thirty submissions into those from:

    • Intellectual property organizations — includes comments from the American Bar Association (ABA) Section of Science and Technology Law and Section of Intellectual Property Law, American Intellectual Property Law Association (AIPLA), Association of University Technology Managers (AUTM), Intellectual Property Owners Association (IPO), and Pharmaceutical Research and Manufacturers of America (PhRMA).

    • Academic and Research Institutions — includes comments from Duke Institute for Genome Sciences and Policy.

    • Companies — surprisingly includes comments from organizations such as the American Civil Liberties Union (ACLU), American Medical Association (AMA), and Myriad plaintiffs American Society for Clinical Pathology (ASCP), Breast Cancer Action, and College of American Pathologists (CAP), along with those from companies such as Myriad Genetics and Prometheus Laboratories; other commenters include Bio-Reference Laboratories, Cancer Legal Resource Center, Genspace, Knowledge Ecology International, National Society of Genetic Counselors, and joint comments from Roche Molecular Systems and Abbott Laboratories.

    • Individuals — divided into "practitioners" and "others," with the latter including Dr. Wendy Chung, a plaintiff in the Myriad case, and Dr. Luigi Palombi, who spearheaded a campaign against the BRCA gene patents in Australia, which resulted in an Australian Senate Inquiry into gene patents, and six other commenters (James Evans, Sharonmoyee Goswami, Lori Pressman, Pamela Scudder, Rochelle Shoretz, and Brenda Simon), and the former including comments from three practitioners (Christine Gritzmacher, Siu Lo, and Suzannah Sundby).

    IPO #2It would be difficult to adequately cover the full range of comments submitted in response to the Office's notice in a single post, so Patent Docs plans to examine a number of the submissions in subsequent posts.  Today, we look at the comments submitted by the IPO.  In its submission, the IPO focuses on the issues raised in Questions 8 and 9 of the Office's notice, which are as follows:

    (8) What effect would providing more widespread access to independent second opinion genetic diagnostic tests have on existing owners and license holders of patents that cover genetic diagnostic tests?  How should policy makers consider the relationship of patents, which may cover purified genetic substances, to proprietary data derived from conducting tests, each of which may be useful in both improving high quality and wide access to testing but may also provide important competitive advantages that can drive investments in research and development?

    (9) What effects, if any, do patents and exclusive licenses have on genetic diagnostic testing?
        (a) What effects, if any, do patents and exclusive licenses on genetic diagnostic tests have upon the development of new testing procedures?
        (b) What effects, if any, do patents and exclusive licenses on genetic diagnostic tests have upon how new testing procedures are performed?
        (c) What effects, if any, do patents and exclusive licenses on genetic diagnostic tests have upon the interpretation of testing results?
        (d) What effects, if any, do patents and exclusive licenses on genetic diagnostic tests have upon the further improvement of testing procedures?

    With respect to Question 8, the IPO contends that "compelling patent owners to grant licenses for the purpose of permitting third parties to provide second opinion genetic diagnostic tests would have a detrimental effect on the U.S. patent system," by "undermin[ing] the incentive created by the patent system to create new tests, as well as to design around existing patents to provide tests that are comparable to existing tests."  In response to Question 9, the IPO states that "exclusive licenses do not materially reduce the availability of second opinion genetic diagnostic tests, as these tests are usually available from the patent owner or another licensed provider."

    The IPO notes that the phrase "confirming genetic diagnostic testing activity" in the AIA encompasses a "very narrow category" of activity, namely providing an individual with independent confirmation of results obtained from another test provider’s prior performance of a test on the individual.  According to the IPO, this is not the type of second opinion that most patients seek.  The IPO suggests instead that "most patients who are seeking second opinions are asking for second medical opinions, not for second diagnostic tests performed by a different testing facility," adding that "[t]he existence of patents and exclusive licenses does not impair in any way patients’ access to second medical opinions" (emphasis added).

    In addition, the IPO points out that "while labs [that conduct genetic diagnostic testing and utilize genetic diagnostic products] can be affected by the enforcement of patents, it is diagnostic companies that are most directly affected."  The IPO explains that "[i]f a diagnostic company is excluded from offering a genetic diagnostic test, in most cases, hospitals and reference labs can obtain the desired test from another genetic diagnostic company that is not excluded (either the patentee or the licensee)."

    The IPO also notes that "[i]t is rare that a single type of test for a single gene provides independent diagnostic capability," adding that "due to evolving case law in the area of biotechnology, patents for these types of diagnostics are increasingly difficult to obtain and are even more difficult to obtain with a broad claim scope."  However, when confronted with these rare situations, the IPO contends that a diagnostic company has many options:  "It can look for alternative markers (which is typically done), license a number of patents needed to make the complete diagnostic, or choose to license and sell a diagnostic that comprises part of the diagnostic solution sought."  In addition to encouraging diagnostic companies to design around a patented test, "[f]orcing those who have not invented to license provides an economic incentive to invent in the first place and rewards the inventor for doing so."  The IPO argues that if such patents are unavailable or required to be licensed on a compulsory basis, "there will be little incentive for diagnostic companies to conduct or sponsor research in these areas."

    The IPO concludes its comments by declaring that it would be "a mistake to weaken the patent system in the area of genetic diagnostic testing."

  • By Donald Zuhn

    USPTO SealLast week, the U.S. Patent and Trademark Office published a notice if the Federal Register (77 Fed. Reg. 28331) proposing another increase in patent fees.  The newly proposed adjustment in fees, which would go into effect on October 1, 2012, is intended to reflect fluctuations in the Consumer Price Index (CPI).  Pursuant to 35 U.S.C. § 41(f), the Office is authorized to adjust patent fees annually based on the CPI in order to recover higher costs of providing services, but only if the CPI is higher than 1%.  The notice uses a hypothetical 2.9% increase in fees to demonstrate the impact of the increase, but "proposes that the patent statutory fees established by 35 U.S.C. 41(a) and (b) be adjusted to reflect the most recent fluctuations occurring during the twelve-month period prior to publication of the final rule implementing this CPI adjustment, as measured by the Consumer Price Index for All Urban Consumers (CPI–U)."  Thus, the actual fees increases will be set prior to publication of the new fees.

    In addition to annual increases in patent fees to account for increases in the CPI, patent applicants were hit with a 15% surcharge last September as a result of the enactment of the Leahy-Smith America Invents Act (see "USPTO Updates Fee Schedule, But Does Not Yet Offer Micro Entity Discount"), and the Office, exercising its new fee setting authority under § 10 of the AIA, submitted another set of patent fee changes to the Patent Public Advisory Committee (PPAC) in February (see "USPTO Proposes Fees Changes").  The latter increases have yet to go into effect, and last week's notice indicates that those increases "will be implemented in a future separate rulemaking."  The Office called the newly proposed increase an "interim increase" which would serve as "a bridge to provide resources until the USPTO exercises its fee-setting authority [under § 10 of the AIA] and develops a new fee structure that will provide sufficient financial resources in the long term."

    Taking note of last year's 15% surcharge and this year's proposed fee re-structuring under the AIA, USPTO Director David Kappos stated on his blog that "it is quite understandable that I am sometimes asked why we need the additional fee increase, given the 15 percent surcharge already in place and plans to implement a revised fee schedule by the first quarter of next year."  In response to this question, the Director writes that:

    The answer is: leveling, cash flow, continuity — much like with any large enterprise.  Think of the CPI adjustment as ensuring "bridge funds."  This planned CPI adjustment will provide a small but needed increase in funding, allowing the USPTO to continue reducing the backlog and pendency until our new fee schedule — which will provide long-term financial resources — is in place.

    Written comments regarding the Office's notice of proposed rulemaking must be submitted by June 13, 2012.  Comments can be submitted through the Federal eRulemaking Portal, by e-mail to Gilda.Lee@uspto.gov, by facsimile to 571-273–8698 (marked to the attention of Gilda Lee), or by regular mail to:  Director of the United States Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313–1450, marked to the attention of Gilda Lee.  Comments should also be identified by the Regulatory Information Number (RIN) RIN 0651–AC55.

  • By Sherri Oslick

    Gavel About Court Report:  Each week we will report briefly on recently filed biotech and pharma cases.

    Orion Corp. v. Mylan Pharmaceuticals Inc.
    1:12-cv-00523; filed April 26, 2012 in the District Court of Delaware

    Infringement of U.S. Patent Nos. 5,446,194 ("Pharmacologically active catechol derivatives," issued August 29, 1995), 6,500,867 ("Pharmaceutical Composition Comprising Entacapone, Levodopa, and Carbidopa," issued December 31, 2002), and 6,797,732 (same title, issued September 28, 2004) following a Paragraph IV certification as part of Mylan's filing of an ANDA to manufacture a generic version of Orion's Stalevo® (marketed by Novartis in the U.S.) (entacapone, levodopa, and carbidopa mixture, used to treat Parkinson's disease).  View the complaint here.


    Warner Chilcott Co., LLC et al. v. Ranbaxy, Inc. et al.

    2:12-cv-02474; filed April 26, 2012 in the District Court of New Jersey

    • Plaintiffs:  Warner Chilcott Co., LLC; Warner Chilcott (US), LLC
    • Defendants:  Ranbaxy, Inc.; Ranbaxy Laboratories Ltd.

    Infringement of U.S. Patent Nos. 7,645,459 ("Dosage Forms of Bisphosphonates," issued January 12, 2010) and 7,645,460 ("Dosage Forms of Risedronate" issued January 12, 2010) following a Paragraph IV certification as part of Ranbaxy's filing of an ANDA to manufacture a generic version of Warner Chilcott's Atelvia (risedronate sodium delayed-release, used to treat osteoporosis in women after menopause).  View the complaint here.


    Otsuka Pharmaceutical Co., Ltd. v. Amneal Pharmaceuticals, LLC. et al.

    3:12-cv-02487; filed April 26, 2012 in the District Court of New Jersey

    • Plaintiffs:  Otsuka Pharmaceutical Co., Ltd.
    • Defendants:  Amneal Pharmaceuticals, LLC.; Amneal Pharmaceuticals of New York, LLC.; Amneal Pharmaceuticals Co. India Private Ltd.

    Infringement of U.S. Patent No. 6,977,257 ("Aripiprazole Oral Solution," issued December 20, 2005) following a Paragraph IV certification as part of Amneal's filing of an ANDA to manufacture a generic version of Otsuka's Abilify® (aripiprazole, used to treat bipolar disorder and schizophrenia).  View the complaint here.


    Teva Neuroscience, Inc. et al. v. Sandoz Inc.

    2:12-cv-02494; filed April 26, 2012 in the District Court of New Jersey

    • Plaintiffs:  Teva Neuroscience, Inc.; Teva Pharmaceuticals USA, Inc.; Teva Pharmaceutical Industries Ltd.
    • Defendant:  Sandoz Inc.

    Infringement of U.S. Patent No. 5,453,446 ("Use of the R-Enantiomers of N-Propargyl 1-Aminoindan Compounds for Treating Parkinson's Disease," issued September 26, 1995) following a Paragraph IV certification as part of Sandoz's filing of an ANDA to manufacture a generic version of Teva's Azilect® (rasagiline mesylate, used to treat idiopathic Parkinson's disease).  View the complaint here.


    Exela Pharma Sciences, LLC et al. v. Kappos et al.

    1:12-cv-00469; filed April 26, 2012 in the Eastern District of Virginia

    • Plaintiffs:  Exela Pharma Sciences, LLC; Exela Pharmsci, Inc.; Exela Holdings, Inc.
    • Defendants:  David J. Kappos; United States Patent and Trademark Office

    Reversal of the decision made by the U.S. Patent and Trademark Office to refuse to act on Exela's Petition requesting that the USPTO vacate its decision to revive the application leading to U.S. Patent No. 6,992,218 ("Method for Obtaining Aqueous Formulations of Oxidation-Sensitive Active Principles," issued January 31, 2006), which relates to licensee Cadence's Ofirmev® (acetaminophen injection, used for the management of mild to moderate pain, the management of moderate to severe pain with adjunctive opioid analgesics, and the reduction of fevers).  View the complaint here.

  • By James DeGiulio

    FDALast week, the U.S. Food and Drug Administration held a public hearing on the Draft Guidance on Biosimilar Development, where researchers, payors, patient and physician groups, and industry advocates provided their thoughts on the FDA's first attempt to clarify the logistics as to the operation of the Biologics Price Competition and Innovation Act of 2009 (BPCIA).  The panel was headed by Dr. Rachel Sherman, M.D., Associate Director for Medical Policy at CDER, and comprised other agency members Dr. Leah Christl, Ph.D.; Denise Esposito, J.D.; Dr. Steven Kozlowski, M.D.; Diane Maloney, J.D.; Heidi C. Marchand, PharmD; Maryll Toufanian, J.D.; and Robert A. Yetter, Ph.D.  The public hearing follows a 60 day period for comment, where the FDA dockets saw more than 44 different stakeholders represented.

    With only eight minutes allotted, most of the speakers used their time to hit the key points of contention from their submitted comments.  As expected, innovator representatives advocated for more clinical studies and stricter standards for identity of products, but what was not expected was the strong support for this position from patient groups as well.  Indeed, patient advocacy groups seemed to be unconvinced that biosimilars would represent products that were just as effective and safe as the brand competitors.  While the groups want the price breaks the follow-on drugs might offer, they are far more concerned about safety, and want to see additional clinical trials.  Representatives from the National Kidney Foundation, Colon Cancer Alliance, and the Alliance for Safe Biologic Medicines warned that seemingly insignificant changes in manufacturing, packaging, handling, and storing of biologics can have unintended consequences that produce a drug that does not work or can be unsafe.

    Biosimilar developer representatives used this opportunity to request resources from the FDA for patient education.  Representatives from Momenta focused the discussion on what is demanded in the statute:  clinical trials to establish biosimilarity to the reference product; there is no requirement to independently establish the safety and efficacy of the biosimilar product.  The FDA has stood fast on its position that human clinical trials should not be repeated.  Therefore, clinical trials on a product the FDA determines to be biosimilar could not be justified.  Proving biosimilarity represents an unconventional approach to drug approval.  Indeed, any argument suggesting that a drug's safety and efficacy do not need to be tested will cause unease from patient groups.  Patient advocates and physician groups stated that their constituents will need additional educational materials, including lay summaries of the Guidances, and are interested in interactive presentations from FDA on the appropriate use of these new products.  All of the stakeholders share support for the implementation of an education and communication plan to help the public and other entities understand biosimilars.  For example, the representative from the American Pharmacists Association said pharmacists are unaware of the proper process to follow when they start seeing prescriptions for biosimilar products.

    All of the speakers agreed that the FDA should be commended for its scientific and safety-oriented approach in the draft guidance, which begin to pave the way to meeting the need to protect patient safety, encourage product innovation, and create meaningful cost-savings in the biosimilars field.  There were other points of substantive agreement at the hearing, which provides some level of optimism for the FDA's chances of establishing a working protocol for biosimilar approval.  Interestingly, it seems that industry players on both sides of the field are in favor of deferring to the EMA's guidances, which provide detailed guidance for biological products according to classes.  This would provide for harmonization with the rest of the world, as well as preserving FDA resources and speeding approvals.  Despite this supposed harmonization, innovator companies would not agree that referencing a non-US product should be permissible, as it is under the Draft Guidance in certain situations.  Abbott suggested that this was not permitted, citing the language of the statute noting a "single biological product" for biosimilar comparison — not multiple biological products as would be required.

    Stakeholders advocated changes to a wide variety of issues, but biosimilar naming was prominent throughout the hearing.  Patient groups and innovator representatives encouraged the FDA to require unique names for biosimilars, which would help hold manufacturers accountable for their products.  If a common nonproprietary name were used, patients wouldn't know which drug they're getting.  Advocates for a common name raised the possibility of overdosing or misdosing if different names were used, as a patient could inadvertently be prescribed two versions of the same biosimilar.  The FDA has voiced its intent to publish a future guidance on naming, as well as interchangeability, which may account for the extensive testimony on these two key issues, despite their minimal coverage in the Draft Guidance.

    The panel was peppered with suggestions for how to improve the Draft Guidances, but few speakers had research available to support their proposed improvements.  For example, several speakers took issue with the FDA's definition of the term "protein," finding that the 40 amino acid cutoff is totally arbitrary.  While some speakers advocated for a more functional definition, such as peptides produced in a cell, the panel stood firm on this definition, emphasizing the need for a bright line rule dictating where polypeptides come under the exclusive coverage of the PHSA.  Without any evidence showing a problem with the current definition, the FDA noted that no matter which definition was chosen, someone would always find it to be arbitrary.  With several topics, the panel charged many of the speakers to support their testimony with additional commentary, including any research that can be located to support their proposed changes to the Guidance.  The panel encouraged these groups to submit their findings and other suggestions on implementation to the docket (FDA-2011-D-0618) at http://www.regulations.gov.  The FDA will continue to accept comments through May 25.

  • Calendar

    May 21, 2012 – Patent Institutions Summit (Stanford Program in Law, Science & Technology and the Berkeley Center for Law & Technology) – Stanford Law School

    May 22-23, 2012 – Biosimilars*** (American Conference Institute) – New York, NY

    June 1, 2012 – Understanding the America Invents Act: A Sweeping Change of U.S. Patent Prosecution Practice (American Bar Association (ABA) Section of Intellectual Property Law, Young Lawyers Division, and Center for Continuing Legal Education) – 1:00 – 2:30 pm (EDT)

    June 5, 2012 – Orange Book Use Codes: Impact of Caraco v. Novo Nordisk (Strafford) – 1:00 – 2:30 pm (EDT)

    June 6, 2012 – Biotechnology/chemical/ pharmaceutical (BCP) customer partnership meeting (U.S. Patent and Trademark Office) – 9:00 am – 4:30 pm (ET)

    June 8-12, 2012 – 2012 MidYear Meeting (Association of American Law Schools) – Berkeley, CA

    June 13-15, 2012 – Fundamentals of Patent Prosecution 2012: A Boot Camp for Claim Drafting & Amendment Writing (Practising Law Institute) – New York, NY

    June 18-21, 2012 – BIO International Convention (Biotechnology Industry Organization) – Boston, MA

    June 20-21, 2012 – International Forum on Pharma Patent Lifecycles*** (C5) – London, England

    June 24-26, 2012 – IP Business Congress (Intellectual Asset Management (IAM) magazine) – Cascais, Portugal

    June 25-26, 2012 – Hatch-Waxman Boot Camp*** (American Conference Institute) – San Diego, CA

    July 11-13, 2012 – Fundamentals of Patent Prosecution 2012: A Boot Camp for Claim Drafting & Amendment Writing (Practising Law Institute) – San Francisco, CA

    July 17-19, 2012 – Product and Pipeline Enhancement for Generics*** (marcus evans) – Washington, DC

    July 30 to August 1, 2012 – Intensive Patent Law Seminar (Chisum Patent Academy) – Seattle, WA

    ***Patent Docs is a media partner of this conference or CLE

  • Washington - Monument #2Conference producer marcus evans will be holding its 5th Product and Pipeline Enhancement for Generics conference on July 17-19, 2012 in Washington, DC.  The conference will enable attendees to:

    • Assess the most recent FDA proposals regarding biosimilars development and user fees for generic companies;
    • Develop key strategies to balance and diversify a company's global portfolio;
    • Instill more innovative approaches for the drug pipeline to heighten a competitive edge;
    • Implement techniques to sustain product portfolios and increase a company's bottom line; and
    • Understand regulatory nuances of global markets and how to frame and prepare for potential expansion.

    In particular, the conference will offer presentations on the following topics:

    • Implementing strategies to meet current and heightened Abbreviated New Drug Application (ANDA) standards to gain product approval;
    • Evaluating the impact of the proposed FDA Generic Drug User Fee Act (GDUFA) to dictate preparation and implementation strategies;
    • America Invents Act: Assessing the impact on generics;
    • Adopting techniques and regulatory compliance strategies to ensure global competitiveness in the generics market;
    • Analyzing recent updates to the Hatch-Waxman Act to grasp future impacts and challenges (intellectual property/patent track);
    • Developing key patent strategies to protect intellectual property and ensure market sustainability (intellectual property/patent track);
    • Identifying strategies to strengthen Paragraph IV patent filings and litigation to maintain exclusivity (intellectual property/patent track);
    • Identifying tactics to improve strategic API (active pharmaceutical ingredient) sourcing;
    • Identifying approaches to help overcome the drug shortage and deliver products to consumers;
    • Studying the impact of the FDA's guidance on biosimilars for the generics industry to ensure regulatory compliance;
    • Leveraging novel drug delivery technologies to drive innovation and differentiation;
    • Generics in emerging markets: Analyzing the benefits and risks of expanding to new markets; and
    • Assessing global manufacturing possibilities to increase efficiency and explore business opportunities.

    A pre-conference workshop, entitled "Overcoming the Challenges of Global Portfolio Management to Improve Decision-Making," will be offered from 3:00 to 5:00 pm on July 17, 2012.

    Marcus evansA complete brochure for this conference, including an agenda, detailed descriptions of conference sessions, and list of speakers can be requested here.  Registration information can be obtained by e-mailing Michelew@marcusevansch.com or by calling 312-540-3000 ext. 6625.

    Patent Docs is an official conference blogger of marcus evans' 5th Product and Pipeline Enhancement for Generics conference.