Alendronate is marketed by Merck as Fosomax, which has annual worldwide sales of over $1 billion.
WO/1999/004773 is a PCT patent application to Merck for a once weekly oral dosage pill for alendronate and other bisphosphonates for the treatment of Paget's disease and osteoporosis. It entered the national phase in Israel as IL 153109. The application claims administering the known drug once weekly or fortnightly in a higher dosage instead of the earlier recommended low quantity daily dosage regime to overcome side-effects.
Upon allowance, both Teva and Unipharm, Israel's leading generic companies, filed oppositions. It should be noted that corresponding applications were disallowed in the UK on grounds of non-patentable subject matter and in the EPO as being obvious.
Interestingly, in the Israel opposition, Commissioner Dr Meir Noam voided the claims as being obvious and lacking inventive step. Nonetheless, contrary to the position adopted by the UK Patent Office, Noam ruled that a specific formulation for a specific dosage regime is, in principle, patentable in Israel, and does not fall foul of section 7(i) of the Israel law which excludes methods of therapeutic treatment for humans.
Which mark should be examined first?
LRC Products Ltd (Durex) filed two marks for condoms: IL 174678 for the word mark Play and IL 174730 for the word mark Durex Play. While these were pending, Life Styles filed application number IL 178348 for Life Style Play, as a graphic mark.
In such cases, legal precedent establishes that a mark that is first filed and in use prior to examination and that was applied for without evidence of inequitable behaviour, should be examined first. The grounds for deciding which mark proceeds to examination are:
1. Date of application.
2. Usage of the mark.
3. Equitable behaviour.
Trade mark filing and examination is an ex parte procedure. Only if and when a mark is allowed is the mark published for opposition purposes, which is an inter partes procedure.
Surprisingly, instead of deciding which mark should be examined first, and leaving the question of apparent distinctiveness for examination by the trade mark examiner and, if necessary, for appealing in an opposition proceedings, the Deputy Commissioner Noach Shalev Shmulovich ruled that both companies may continue to sell Play condoms so long as the respective brand name Durex or Lifestyles is also clearly displayed on the box.
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| Michael Factor |
JMB Factor & Co
1 Hamarpe Street
PO Box 45087
Har Hotzvim, Jerusalem
Israel 91450
Tel: +972 2 571 4777
Fax: +972 2 571 4455
info@israel-patents.co.il
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