Alendronate Approx. 750 mill. € Trihydrate sodium salt Anticipation Further details on the patent
4) Time of expiry of basic patent: Family of the GB 2118042, SPC would expire on
5) Opposition filed: formally still valid, the patent is not enforceable due to
6) National Nullity action filed: GB 2 118 042 revoked on 10.02.2003 (product and
composition claims), Israel (the product claim was cancelled) , several national equivalents limited to route of synthesis patents
7) Scope of claim(s) which shouldn’t have been granted: Product claims 8) Why not: prior art clearly anticipates preparation and use of alendronic acid as
9) Type of mistake at PO/the examiner: overlooking prior art
10) Why was this patent relevant for your or any other company? Preparing the
sodium salt of alendronic acid, inevitably forms the trihydrate, therefore it prevents competition even after the expiry of the basic patent.
11) Picket fence: EP 0 690 719 (formulation), EP 0 998 292 (2nd medical indication).
Finasteride Over 300 million € Processes for preparation of the polymorphic forms offinasteride Anticipation
Further details on the patent 1) Patent Number:
5) Opposition filed: by Richter on 08.01.1999. The first instance cancelled and restricted some of the process claims, and after appeal this decision was maintained
by the Board of Appeal. 6) National Nullity action filed: ------------- 7) Scope of claim(s) which shouldn’t have been granted: all claims relating to form (I). 8) Why not ? a) The polymorphic form (I) of finasteride is not new, because i.) it is precisely defined and characterized in the cited prior art “AICHE*”, and ii.) reproducible methods are given for its preparation in this document, too. b) The claimed processes are not new, because they are described - for crystallizing of finasteride - in the cited prior EP documents. [EP-A-0 367 502, EP-A-0 428 366, EP-A-0 298 652, EP-A-0 461 930.] 9) Type of mistake at PO/the examiner:
Misinterpretation of the skilled persons knowledge, neglecting general knowledge, lack of scrutiny relating the teaching covered in the prior arts, etc.)
10) Why was this patent relevant for your or any other company? The processes of legal remedy cost a lot of money and time. The divisional application EP 0 823 436 is still a threat after rejection was successfully appealed by the applicant 11) Picket fence: have other related patents been filed in the same field? Divisional application EP 0 823 436.
* American Institute of Chemical Engineers, Symposium Series 284, Vol. 87., 1991, pages 58-63. New York, NY (US)
Oral contraceptives containing desogestrel Over 1 000 million € Formulation Obviousness
Further details on the patent
5. Opposition filed: on 01.09.1999. The first instance rejected opposition.
appeal filed, later 3 further companies intervened. The Board of Appeal
revoked the patent (T 0583/01 ) on 26.07.2005
6. National Nullity action filed: ------------
7. Scope of claim(s) which shouldn’t have been granted: product-by-process for
granules and tablets in addition to wet granulation process using lubricant in the inner phase.
8. Why not: wet granulation of desogestrel (US 4 914 089) combining with the
inner-phase application of lubricant (US 4 180 560) was obvious.
9. Type of mistake at PO: overestimating the teaching of the invention.
10. Why was this patent relevant for your or any other company? : Patentee
started litigation in Germany, France and Denmark against generic companies. Grünenthal and Hexal were forced to stop marketing in
11. Picket fence: have other related patents been filed in the same field? EP
0 688 565, EP 0 707 848 (claiming different types of formulation).
Comments: The product was available on the market (Marvelon and Mercilon) long before the filing date and its composition was disclosed.
The invention solves an artificially created problem that does not exist in the real world, namely it prevents “migrating” the steroid from the tablet. The solution is the usage of stearic acid (lubricant) in the inner phase, namely dissolving it together with
the steroid as a first step of granulation. Practically the same process is described in EP 0037740, but due to a slight difference the Board accepted novelty. Grünenthal opposed the patent alone and provided evidence about public prior use but the opposition was rejected. Grünenthal appealed.After the decision, infringement proceedings have been started in Germany against Grünenthal and
Hexal. Hexal intervened. Biogaran in France and Durascan in Denmark were also sued for infringement, both companies intervened at the opposition.
Alendronate Approx. 750 mill. € Method of treatment / dosing regimen Method of treatment, not new Further details on the patent:
4. Time of expiry of basic patent: Family of the GB 2118042. The GB 2118042 was
revoked, otherwise its SPC would expire on 29.03.2008
5. Opposition filed: revoked on 14.03.2006
6. National Nullity action filed: UK –revoked
7. Scope of the claims which shouldn´t have been granted: dosage range/dosing
9. Type of mistake at the PO/the examiner: overlooking prior art
10. Why was this patent relevant for your or any other company? the 70 mg/once a
week formulation is the most important dosage form for alendronate; marketing would have been prevented until 2018 where the first Hoechst alendronate patent was filed 1981
11. Picket fence: EP 1 132 088, EP 1 151 752, EP 1 175 903, EP 1 175 904. All of
them are under EPO examination, for EP 1 175 904 communication under rule 51 (4) has been
issued. See also other secondary alendronate patents .
Tibolone 80 million € High purity compound
Further details on the patent:
4. Time of expiry of basic patent: Expired
5. Opposition filed: Yes – revoked (decision under appeal)
6. National Nullity action filed: UK – revoked
7. Scope of claim(s) which shouldn’t have been granted: Product claim
8. Why not: a product is disclosed in all grades of purity, if not special
precautions or purification methods are necessary to achieve this grade of purity. In that case, purification method, but not substance claims would have been possible
9. Type of mistake at the PO/the examiner? Ignoring current case law stating
that any compound is disclosed in any grade of purity from the beginning
10. Why was this patent relevant for your or any other company? It would have
prevented marketing of any Tibolone formulation since the European Pharmacopeia demands high purity Tibolon
Citalopram 750 million € (2004) Purification of Citalopram by precipitation of crystalline Citalopram base from a solvent Lack of novelty and inventive step Further details on the patent:
EP 1 169 314 B1 and divisional patent EP 1 227 088 B1
4. Time of expiry of basic patent: SPC expiry January 2002
application EP 1 227 088 revoked 25.10.2006
German equivalent (utility model) revoked
7. Scope of claim(s) not have been granted: Purification of known compound
8. Why not: Citalopram base was mentioned as crystalline substance in prior art
(EP 0 347 066 and WO 00/11926). (Re-)Crystallization of a solid to purify can not constitute novelty/inventive step as it is a standard procedure for a skilled person
9. Type of mistake at PO/of the examiner: The originator stated that the earlier
disclosure was erroneous and Citalopram base was always obtained as oil. Corresponding expert statements and experiments filed by the originator and an oral hearing convinced the examiner. Extremely short time from filing to grant
10. Why was this patent relevant for your or any other company? The originator
initiated legal actions in 9 different countries throughout Europe resulting in more than 30 court cases. Allegedly, the Citalopram contained in the generic
product was purified by crystallization of base. Although the evidence filed was
based on confused trace analysis, some injunctions were granted in Denmark. Several companies decided not to enter the market.
11. Picket fence: have other related patents been filed in the same field?
Approx. 30 patents covering the preparation and/or compositions of Citalopram have been file between 1999 and 2002 as the expiry of the basic SPC approaches (and it was obvious that the successor product Escitalopram will not
be registered early enough to reach the market prior to that). See table below
Citalopram patents filed between 1999 and 2002
Alendronate Approx. 750 mill. € Dry mix formulation Obviousness Further details on the patent: 1. Patent Number:
4. Time of expiry of basic patent: Family of the GB 2118042. The GB2118042 was
revoked, otherwise its SPC would expire on 29.03.2008
5. Opposition filed : revoked on 11.05.2006
6. National nullity action filed: -----------------
7. Scope of claim(s) which shouldn’t have been granted: Composition claims
8. Why not: the patent claims a simple dry mixed formulation containing lactose
as diluent. Alendronic acid is a very stable, small molecule and no problem is to be expected by using lactose and other common excipients
9. Type of mistake at PO/of the examiner: ignoring textbook knowledge
10. Why was this patent relevant for your or any other company? in general, dry
mixed, directly compressed tablets are cheap and efficient to produce. If a competitor has to switch to (wet) granulation for patent reasons he will have a
significant disadvantage for a commercial point of view
11. Picket fence: divisional application EP 1 051 975 other secondary alendronic
Product concerned: Oxaliplatin Approx. 400 million € Formulation Obviousness
Further details on the patent:
4. Time of expiry of basic patent: No basic patent
6. National Nullity action filed: UK court revoked national equivalent of this
7. Scope of claim(s) which shouldn’t have been granted: all claims
8. Why not? An attack was made on the basis of the common general knowledge
and on the basis of US 5,455,270 (Kaplan).
9. Type of mistake at PO/the examiner : neglecting general knowledge, “The
patent is merely an application of well-known principle”, it was found invalid in the light of the common general knowledge.
10. Why was this patent relevant for your or any other company? First patent claim
is very broad, for that reason it is relevant for any company who wants to produce oxaliplatin formulation on the basis of the same principle.
11. Picket fence: have other related patents been filed in the same field? many
other companies filed the patent applications related to composition of oxaliplatin (details on request).
Oxaliplatin Approx. 400 million € Obviousness
Further details on the patent:
4. Time of expiry of basic patent: no basic patent
6. National Nullity action filed: UK court revoked national equivalent of this
7. Scope of claim(s) which shouldn’t have been granted: whole document
8. Why not? According to UK court patent was revoked on the basis of
common general knowledge (Kidani 1970s): obvious to the skilled person that the degree of dissociation of oxalic acid in aqueous solution can be controlled by controlling the pH of that solution by addition of alkali; also obvious that the rate of production of oxaliplatin depends upon the concentration of the oxalate anion; impurities are obvious etc.
9. Type of mistake at PO/the examiner: neglecting general knowledge,
10. Why was this patent relevant for your or any other company? litigation in
11. Picket fence: have other related patents been filed in the same field?
Yes, many companies filed the patent applications related to process of
oxaliplatin synthesis (details on request).
Product concerned: Simvastatin, lovastatin Simvastatin 1,5 -2 billion €, lovastatin 50- 100 million €1. Scope of the patent: Specific degree of purity Not new and not inventive
Further details on the patent
4. Time of expiry of basic patent: 2003 (SPC extension)
6. National Nullity action filed: Nederland 8.8.2001-first instance decision that the
product claims are not valid; nullity action also filed in Germany, Austria, UK –the patentee renounced the product claims 16-21
7. Scope of claim(s) which shouldn’t have been granted: claims 16-21, more
specifically: simvastatin or lovastatin containing less than 0.2% of dimeric impurity
8. Why not: Conventional methods for purification of low molecular organic
compounds are within common general knowledge of a person skilled in the art, therefore the document disclosing a low molecular chemical compound and its manufacture makes this compound available in all desired grades of purity. The plaintiffs have shown by experimental evidence that conventional purification and purification already described in prior art for the claimed
products provides products containing less than 0.2% of dimeric impurity.
1 Just rough estimation of legal department based on avaiabel data in our files;
9. Type of mistake at PO/the examiner: The examiner has not requested the
applicant to show that all prior attempts to achieve a particular degree of purity by conventional purification have filed
10. Why was this patent relevant for your or any other company? Our product
contained less than 0.2% of dimeric impurity, because the manufacturing
method developed by our company enabled production of product containing less than 0.2% of dimeric impurity without any additional purification steps, therefore this patent was an obstacle to enter the market (in fact we should make the quality of our product worse in order to avoid patent infringement). Patentee started litigations based on the counterparts of this patent in SI, LV, HR, YU, obtained temporary injunctions in Slovenia and Latvia. In Slovenia the injunction was later on overruled and we didn’t suffer substantial damages. In Latvia the injunction remained in force until the patent was invalidated, and
we suffered very high damages in comparison to the value of the market. The court refused to grant security for eventual damages; as patentee was U.S. based company under Latvian law we were instructed to file a motion for damages in the U.S.
11. Picket fence: The applications related to degree of purity in this field: WO
01/30773; however, the patent itself, containing product claims 16-21, is good
example of picket fence strategy, as originator on the regulatory side tried to include in the regulatory specification 0,2 figure as limit for said impurity; on the top of that, a priority U.S. application referred only to the manufacturing process and only process claims were also granted; at EPO the initial application which contained only process claims were subsequently amended by adding also hereinabove mentioned product claims.
Actonel® (Risedronate)
Annual turnover in the EU: 235 million € Scope of the patent: Formulation Obviousness
Further details on the patent
4. Time of expiry of basic patent: the basic patent is the number EP 0 186 405
and the expiry date, included SPC, is the 15.12.2010
5. Opposition filed: Yes, the opponents are Hexal and Hoffmann-La Roche
6. National Nullity action filed: ------------------
7. Scope of claim(s) which shouldn’t have been granted: The invention is an
oral dosage form with oval form and film coated
8. Why not: This type of formulation is common in many marketed products
(i.e. klacid, zitromax, augmentine, clamoxil, baycip, antalgin, neobrufen, etc)
9. Type of mistake at PO/the examiner: Unawareness of the use of oval and
film coated tablets (oral dosage form). General textbook knowledge: a film is generally applied to avoid the bad taste, to cover deficiencies, to facilitate the ingestion, etc.
10. Why was this patent relevant for your or any other company? It prevents the
launching of generic version until 08.06.2018.
Esomeprazol
more than 1 billion € The magnesium salt of (-) enatiomer of omeprazol Lack of inventive step Further details on the patent
no basic patent for (-) enatiomer of omeprazol
5. Opposition filed: opposition filed on 19.07.2001, patent was upheld in the
granted form; appeal filed on 16.03.2004, revocation of the patent with the decision dated 19.12.2006 (T 0401/04)
6. National Nullity action filed: none 7. Scope of claim(s) which shouldn’t have been granted: all claims relating to
magnesium salt of (-) enatiomer of omeprazol.
8. Why not: forming the magnesium salt of (-) enantiomer of omeprazol is obvious
to the skilled person as the magnesium salt of omeprazol and the (-) enantiomer of omeprazol was state of
9. Type of mistake at PO/the examiner: misinterpretation to what is the closest
prior art, false problem solution approach.
10. Why was this patent relevant for your or any other company? EP 652872, expiry
date in 2014, is the key patent for patentee’s blockbuster Nexium®
11. Picket fence: EP 773940 covers processes for the synthesis of (-) enantiomer of
IUED Comments to the Public Hearing held on June 16, 2010 Introduction Adam Teva V'Din - the Israel Union for Environmental Defense (IUED) is a non-governmental organization of lawyers, scientists, urban planners and environmental specialists dedicated to protecting Israel's natural resources and public health. Since its founding in 1990, IUED has amassed a long record of achievements
Curriculum Vitae Date of Birth: 20/10/1980 Nationality: Iranian Marital Status: Married Address: Department of Medicinal Chemistry, Mobile Phone: +98-918-735-0619 E-mail: [email protected] Education: BSc.: Department of chemistry, Faculty of Science, Razi University, Kermanshah, IRAN (2004). MSc.: Department of chemistry, Faculty of Science, Razi Univ
Alendronate 
Finasteride 
10) Why was this patent relevant for your or any other company? The processes of legal remedy cost a lot of money and time. The divisional application EP 0 823 436 is still a threat after rejection was successfully appealed by the applicant 11) Picket fence: have other related patents been filed in the same field? Divisional application EP 0 823 436.
* American Institute of Chemical Engineers, Symposium Series 284, Vol. 87., 1991, pages 58-63. New York, NY (US)
Oral contraceptives containing desogestrel 
Comments: The product was available on the market (Marvelon and Mercilon) long before the filing date and its composition was disclosed.
The invention solves an artificially created problem that does not exist in the real world, namely it prevents “migrating” the steroid from the tablet. The solution is the usage of stearic acid (lubricant) in the inner phase, namely dissolving it together with
the steroid as a first step of granulation. Practically the same process is described in EP 0037740, but due to a slight difference the Board accepted novelty. Grünenthal opposed the patent alone and provided evidence about public prior use but the opposition was rejected. Grünenthal appealed.After the decision, infringement proceedings have been started in Germany against Grünenthal and
Hexal. Hexal intervened. Biogaran in France and Durascan in Denmark were also sued for infringement, both companies intervened at the opposition.
Alendronate 
Tibolone 
Citalopram 
product was purified by crystallization of base. Although the evidence filed was
based on confused trace analysis, some injunctions were granted in Denmark. Several companies decided not to enter the market.
11. Picket fence: have other related patents been filed in the same field?
Approx. 30 patents covering the preparation and/or compositions of Citalopram have been file between 1999 and 2002 as the expiry of the basic SPC approaches (and it was obvious that the successor product Escitalopram will not
be registered early enough to reach the market prior to that). See table below
Citalopram patents filed between 1999 and 2002
Alendronate 
Oxaliplatin 
9. Type of mistake at PO/the examiner: The examiner has not requested the
applicant to show that all prior attempts to achieve a particular degree of purity by conventional purification have filed
10. Why was this patent relevant for your or any other company? Our product
contained less than 0.2% of dimeric impurity, because the manufacturing
method developed by our company enabled production of product containing less than 0.2% of dimeric impurity without any additional purification steps, therefore this patent was an obstacle to enter the market (in fact we should make the quality of our product worse in order to avoid patent infringement). Patentee started litigations based on the counterparts of this patent in SI, LV, HR, YU, obtained temporary injunctions in Slovenia and Latvia. In Slovenia the injunction was later on overruled and we didn’t suffer substantial damages. In Latvia the injunction remained in force until the patent was invalidated, and
we suffered very high damages in comparison to the value of the market. The court refused to grant security for eventual damages; as patentee was U.S. based company under Latvian law we were instructed to file a motion for damages in the U.S.
11. Picket fence: The applications related to degree of purity in this field: WO
01/30773; however, the patent itself, containing product claims 16-21, is good
example of picket fence strategy, as originator on the regulatory side tried to include in the regulatory specification 0,2 figure as limit for said impurity; on the top of that, a priority U.S. application referred only to the manufacturing process and only process claims were also granted; at EPO the initial application which contained only process claims were subsequently amended by adding also hereinabove mentioned product claims.
Actonel® (Risedronate) 
Esomeprazol 