Fenwick & West life sciences patent litigation partner David Tellekson was quoted in a Chicago Tribune story regarding the risks pharmaceutical companies face in employing a new tactic to avoid costly legal battles over patent disputes. The companies are appealing to the U.S. Patent and Trademark Office (USPTO) to nullify patents on time-release formulas and other innovations that they’re accused of violating.
The relatively new stratagem takes advantage of a streamlined review process passed by Congress that took effect in 2012, and was meant to serve as a faster and less costly alternative to litigation. OxyContin and Cialis are among the high-profile drugs with patents before the USPTO.
This review process has quickly become the second-most popular forum for patent disputes in the country. The article points out, however, that for cases involving multibillion-dollar drugs with only one or two patents, the stakes can be particularly high.
"You'd better win or you're in real trouble," warned Tellekson. “You can have a huge percentage of the company's portfolio at risk in some of these blockbuster drugs."
While a review by the USPTO can streamline the issues, Tellekson noted that it’s not always readily apparent where it has done so.
"It may just weed out some of the claims that would naturally fall by the wayside," Tellekson said. "When you go to trial, you go with your best claims. The claims that sailed through may have been the best ones anyway."