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25 February 2005

Proposed regulations to adjust generic balance

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The Canadian government has proposed changes to the regulations governing patented medicines and data exclusivity. David Heller and Adrian Zahl of Ridout & Maybee explain how the reforms will affect the research-based and generic industries

The Canadian government has recently proposed amendments to the Food and Drug Regulations and the Patented Medicines (Notice of Compliance) (PM(NOC)) Regulations that benefit and also hinder both generic and innovative drug manufacturers. The proposed regulations would increase the data exclusivity period for new drugs, but decrease the patent list eligibility in many instances under the PM(NOC) Regulations. Also recently published are draft regulations under the "Pledge to Africa" Act, to allow generics to produce patented drugs for export to developing nations. The new rules are new regulations and not legislation. Thus, approval by Parliament is not required for their passage. The government had set a period of public consultation that has now expired, and the proposed rules may now be amended or passed in their current form.

Data exclusivity

The proposed regulatory changes would greatly strengthen data exclusivity, an important form of protection available to innovative drug companies against generic competition. Until now, Canada's data exclusivity protection regime has been relatively toothless.

Pharmaceutical innovators place a high importance on obtaining data exclusivity for new drugs. This form of protection prevents others from using scientific data generated by a drug company to establish the safety and efficacy of a new drug. It is distinct from patent protection relating to the drug. In the absence of data exclusivity, a generic competitor can avoid the costly and time-consuming generation of its own safety and efficacy data and instead refer to the prior approval of the original drug. The generic company must also establish that its product is the equivalent of the original drug. In many countries, data exclusivity rules give the drug originator a head start against generic competition by prohibiting the generic company from relying on the originator's data for a fixed period of time, usually five to 11 years. This exclusivity period can be of critical commercial importance if it outlasts patent protection for the drug.

The Food and Drugs Act (FDA) provides a limited form of data exclusivity in a regulation which states that if in the course of approving a generic drug the Minister of Health both examines and relies on data submitted by a drug originator, the Minister shall not issue a Notice of Compliance (NOC) to the generic drug for five years after the NOC of the original drug. In Bayer Inc v Canada (Attorney General) (1999) the Federal Court effectively rendered this provision toothless by ruling that it does not apply in most cases since the usual approval process of a generic drug does not entail actual examination and direct reliance on the originator's data. The existing regulation does not apply to "indirect" reliance on the originator's data.

The absence of effective data exclusivity places Canada at odds with the major industrial countries of Europe, United States, Japan and others that provide effective data exclusivity for between five and 11 years, unless the generic manufacturer develops its own original data. This is highly unlikely, given the costs and time required.

The proposed regulatory changes would bring Canada's laws into general alignment with those of other developed countries. The proposed changes would accomplish two results. First, they would eliminate the requirement that data exclusivity applies only if the Minister both examines and relies on the originator's data. Thus, the basis for the Court's rejection of data exclusivity in Bayer effectively disappears. Second, the length of data exclusivity would be extended from five years to eight years, with an additional six months if studies are submitted that show paediatric applications for the drug. Time begins to run from the date the new drug is approved in Canada.


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