Local oncology firm wins patent fight
The University of California’s (UC) governing board has suffered a legal setback in SA after the Court of the Commissioner of Patents revoked its patent over a lucrative life-extending prostate cancer drug.
A Business Day report says the drug is marketed and sold in SA as Xtandi by Japanese pharmaceutical major Astellas Pharma.
UC and Astellas made an unsuccessful attempt to interdict SA generic oncology firm and JSE-listed pharmacy chain DisChem from infringing on the patent.
Johannesburg-based Eurolab recently launched a drug called Enzutrix, a generic enzalutamide-containing medicine approved for the treatment of certain kinds of prostate cancer. The medication is distributed by Dis-Chem.
Eurolab did not dispute that making, using, importing, marketing, distributing and selling Enzutix constituted an act of infringement of the patent in SA. However, the company argued that UC was not entitled to apply for the patent because it had not acquired the right to do this from the inventors of the patent at the date on which the patent was filed in 2006.
The generic oncology drugmaker also argued that there had been a material misrepresentation about the priority date in applying for the patent, which makes the patent liable to be revoked under SA’s patents regime.
Eurolab’s arguments carried the day, with the Court of the Commissioner of Patents dismissing UC’s counter-argument that the wording of the Patents Act opened the door for it to apply for the patent.
According to the Business Day report, the court found that for UC to have had the right to apply for the patent, it needed to have acquired the right to do so from all the inventors before launching the application.
‘Under UC’s interpretation, any person could apply for a patent as long as it “is acquiring” the right at some point in the future,’ reads the judgment.
‘This would lead to an absurd result: a patentee who obtained a patent under such circumstances could simply argue, when challenged, that it is still in the process of acquiring the right (the test to be applied, I have not even tried to consider), all while benefiting from the invention to the detriment of both the inventor (if the latter ever intended to secure a patent) and the public, who would be forced to pay a monopoly price,’ it said.
The court accepted DisChem’s counter-application to have UC’s patent revoked.
Article disclaimer: While we have made every effort to ensure the accuracy of this article, it is not intended to provide final legal advice as facts and situations will differ from case to case, and therefore specific legal advice should be sought with a lawyer.
