Circadin patent extended in Israel despite opposition

Neurim's conduct was found, on the facts,
not to be a "baa" to patent extension

"Unipharm Challenges Validity of Patent Term Extension for Neurim’s Circadin in Israel" is the title of this blogpost by Israeli patent attorney Michael Factor on his eponymous blog The IP Factor ("Opinionated Intellectual Property News Blog with an Israel Slant").

To cut a long story short (the full tale is there for all to read on Michael's weblog), Unipharm opposed the patent term extension of Neurim's Circadin patent and Commissioner King was required to consider three issues:

• Whether an extension could lawfully be granted on account of Neurim's inequitable behaviour 
• Whether the patent in question was to be considered the “basic patent” under Section 64a of Israel's Patent Law 
• Whether Circadin was the first drug containing the active ingredient as required by 64d of the Israel Law

The Commissioner rejected the opposition and extended the patent till 22 April 2017.  A large part of the IP Factor report deals with inequitable conduct, in particular the allegation that, in its ex parte application for patent extension, the company had behaved improperly and withheld or suppressed relevant information.  The Commissioner confirmed that an applicant was required to behave in an equitable manner, but did not consider that any breach by Neurim of that requirement was sufficient to prevent the extension.

Eli Lilly: another batch of SPC questions for CJEU

The UK Intellectual Property Office is soliciting comments from interested parties that might persuade it to become involved in Case C-493/12 Eli Lilly & Co, the latest SPC case to go to the Court of Justice of the European Union for a preliminary ruling. There have been so many cases involving Eli Lilly in recent times that this blogger is uncertain precisely which of them has led to this reference, but he suspects that this reference is of British origin, emanating from the Patents Court ...

 The questions posed of the Luxembourg tribunal have at least some familiarity to them:

" (1) What are the criteria for deciding whether the product is protected by a basic patent in force in Article 3(a) of Regulation 469/2009/EC;

(2) Are the criteria different where the product is not a combination product, and if so, what are the criteria?

(3) In the case of a claim to an antibody or a class of antibodies, is it sufficient that the antibody or antibodies are defined in terms of their binding characteristics to a target protein, or is it necessary to provide a structural definition for the antibody or antibodies, and if so, how much?".

If you would like to comment on this case, please email policy@ipo.gsi.gov.uk by 17 December 2012. This may interfere with your end-of-year partying urgent work, but not too much!