Managing IP is part of the Delinian Group, Delinian Limited, 4 Bouverie Street, London, EC4Y 8AX, Registered in England & Wales, Company number 00954730
Copyright © Delinian Limited and its affiliated companies 2023

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

Indian generics makers claim victory in anaemia drug patent feud

Generic drug.jpg

The Delhi High Court said third parties who use different processes to make a patented product can’t be restricted if the plaintiff’s registration covers a product-by-process patent

The Delhi High Court has denied Swedish drug maker Vifor Pharma’s application to prevent four Indian companies from launching generic versions of its iron-deficiency anaemia drug.

Justice Jyoti Singh ruled on Monday, July 24, that a drug patent only covering process claims could not be used to restrict third parties who derived the same compound through different methods.

The decision marks the first time the court has delved into what constitutes a product-by-process claim.

Vifor had claimed that its patent covered a product featuring ‘ferric carboxymaltose’ (FCM) as well as a process to prepare it. The Swedish drugmaker sells its FCM products in India under the brand names Ferinject, Injectafer and Revofer.

The company argued that its patent was actually for a product even though it described a process. Therefore, irrespective of the defendants’ process, any FCM production would infringe its patent.

However, defendants Dr Reddy’s Laboratories, MSN Laboratories, Corona Remedies, and Virchow Biotech claimed that Vifor’s invention was limited to a product obtained through the specific process mentioned in its patent application.

The court sided with the defendants and found that Vifor’s claims covered a product-by-process patent. It said the process terms were limitations to, and not additional features of, the rights granted to the company.

The court held that Corona and Virchow's products were different from Vifor’s and not infringing. It also found that the processes claimed by Dr Reddy’s and MSN were outside the scope of Vifor’s process and so were also non-infringing.

Corona had already placed its product on the market in 2020. This week’s decision paves the way for the other three companies to launch their products before Vifor’s patent expires in October.

more from across site and ros bottom lb

More from across our site

Cyril Amarchand Mangaldas has hired former Anand & Anand partner Swati Sharma and hopes to compete with specialist IP firms
Rapporteur-Judge András Kupecz ruled that education and training weren’t legitimate reasons for a member of the public to access documents
Searches for comparison prior art will be a little easier, but practitioners will have to put more thought into claim construction and design patent titles
The Helsinki local division rejected AIM Sport’s request for a preliminary injunction in a dispute with rival Supponor
We provide a rundown of Managing IP’s news and analysis coverage from the week, and review what’s been happening elsewhere in IP
The FTC’s plans to scrutinise improperly listed Orange Book patents could make these listings more important in litigation, but firms should be looking at this anyway
Counsel at Debevoise & Plimpton explain how they helped food delivery business Grubhub avoid a preliminary injunction at the Court of Appeals for the Seventh Circuit
European lawyers tell Managing IP how the legal market is reacting to the first few months of the UPC and why cases are set to take off
The ban could be extended or cancelled, depending on whether Judge Pauline Newman cooperates with an investigation, the Judicial Council of the Federal Circuit stated
Sources say some China-based lawyers are prepared to take large pay cuts to join stable practices, but most firms are sceptical about new hires