Last Friday the USPTO issued a Notice of Intent to Issue a Reexamination Certificate (NIRC) for U.S. Patent 4,847,265, directed to the well known blood thinner Plavix.® The Plavix Patent was challenged by Apotex Inc, a Canadian manufacturer of a generic version of the drug.
Apotex was unsuccessful in their challenge of the patent in district court, resulting in a court injunction against Apotex’s sale of a generic Plavix until after the patent expires. The reexamination was an attempt to dislodge the injunction prior to expiration of the patent. As a result of the successfully concluded reexamination, it appears Apotex will just have to wait for expiration (2012).
–Pick a Winner–
The revised version of S. 515 has introduced provisions that will serve to preclude the instituting or maintaining of an inter partes review or post-grant review proceeding under certain circumstances. These circumstances are set forth in proposed changes to §§ 315 and 325 in title 35 of the United States Code.
§§ 315 and 325 provide that an inter partes review or post-grant review may not be instituted or maintained if the petitioner or real party in interest has filed a civil action challenging the validity of a claim of the patent. In other words, you cannot file a Declaratory Judgment and seek to prove invalidity at the USPTO at the same time. Moreover, an inter partes review or post-grant review may not be instituted if the petition requesting the proceeding is filed more than 3 months after the date on which the petitioner, real party in interest, or his privy is required to respond to a civil action alleging infringement of the patent. Thus, you cannot answer a complaint for infringement and then seek to prove invalidity at the USPTO at the same time; you must file at the earliest possible time before answering. Thus, the new post grant provisions are really designed to be alternatives to litigation, not after thoughts Read the rest of this entry »
English
