The Netherlands: Ascertaining inventive step in a dosage of tadalafil

Managing IP is part of Legal Benchmarking Limited, 1-2 Paris Gardens, London, SE1 8ND

Copyright © Legal Benchmarking Limited and its affiliated companies 2026

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

The Netherlands: Ascertaining inventive step in a dosage of tadalafil

Cialis® is a pharmaceutical product for the treatment of erectile dysfunction developed by Lilly ICOS, a joint venture of ICOS Corporation and Eli Lilly and Company. The active pharmaceutical ingredient (API) of Cialis®, tadalafil, inhibits the PDE5 enzyme, just like sildenafil in the better-known Viagra®.

Recently, the District Court of The Hague had to decide whether a pharmaceutical unit dosage composition for a maximum daily dosage of 5mg of tadalafil for the treatment of a sexual dysfunction, as claimed in ICOS's patent EP1173181, involves an inventive step. Teva Pharmaceuticals Europe, claiming invalidity of the patent before the court, argued that this dosage composition is obvious in view of an earlier patent publication by ICOS (WO 97/03675).

Contrary to ICOS's submissions, by disclosing the use of tadalafil for sexual dysfunction, this earlier document incentivises the skilled person to develop a second in class drug for this indication and the skilled person would accordingly start clinical trials. As such, the court reasoned that the case comes down to the question of which dosages would be tested in a phase IIb clinical trial and whether 5mg would be part of this trial.

Following this reasoning, the court judged that the skilled person could then walk down two one-way streets, which would both inevitably lead to the dosage unit composition of 5 mg. Going down a first street, the skilled person would find pharmaceutical data in phase I clinical trial studies which would, together with known efficacy data for sildenafil in Viagra®, enable him to make the calculated estimation that a 5mg daily dosage should be included in phase IIb clinical trial tests. The court then further argued that, even if the skilled person would not take this street, but instead would turn into phase IIb clinical trial studies with daily dosages of 25, 50 and 100 mg, the skilled person would have found a constant efficacy of tadalafil at these dosages and would accordingly have lowered the dosage to reduce side effects. As such, either street would lead the skilled person to an effective daily dosage of 5mg with minimal side effects.

Therefore, in the court's decision, all roads obviously lead to Cialis®.

Henri van Kalkeren


V.O.Carnegieplein 5, 2517 KJThe HagueThe NetherlandsTel: +31 70 416 67 11Fax: +31 70 416 67 99info@vo.euwww.vo.eu

more from across site and SHARED ros bottom lb

More from across our site

A future opt-out has not been ruled out, but practitioners warn that the UK could fall behind in the AI race
US patent lawyers say they are increasingly advising clients on China strategies as corporations seek to gain leverage in enforcement, licensing, and supply chain management
Mike Rueckheim reunites with 12 of his former Winston & Strawn colleagues as King & Spalding continues aggressive hiring streak
As global commerce continues to expand through e-commerce platforms and digital marketplaces, protecting brands has become a growing challenge for organisations worldwide. Counterfeiting, intellectual property infringement, and online brand abuse are increasing across industries, making brand protection strategies a critical priority for businesses.
Henrik Holzapfel and Chuck Larsen of McDermott Will & Schulte explain why a Court of Appeal ruling could promote access to justice and present a growth opportunity for litigation finance
A co-partner in charge says the UK prosecution teams are a ‘vital’ part of the firm’s offering, while praising a key injunction win
A team from White & Case has checked in on behalf of Premier Inn Hotels in a UK trademark and passing off case against a cookie brand
Litigation team says pre-trial work and a Section 101 defence helped significantly limit damages payable by ride-sharing firm Lyft in patent case
News of Avanci hiring a senior vice president and the EPO teaming up with a French AI startup were also among the top talking points
Explosm, the independent Texas studio behind the hit webcomic Cyanide & Happiness, partnered with Temu’s IP protection team to combat counterfeiters infringing on its brand
Gift this article