The Need for Intelligent IP management

Haydn Evans

Haydn Evans looks at the role of intellectual property (IP) management in protecting pharmaceutical company products.

Patents help pharmaceutical companies secure market exclusivity and create greater opportunities for return on investment but the fight for market exclusivity has led to a number of patent challenges.

In 2015 for example, global pharmaceutical company Novartis AG lost a patent fight with Torrent Pharmaceuticals over its blockbuster multiple sclerosis drug Gilenya.  With $2.5 billion annual sales in 2014, Gilenya is the highest revenue generating drug for Novartis worldwide and contributes significant value to the business. However, the US Patent and Trademark Office (USPTO) concluded that certain claims made by Novartis were “obvious” and did not merit patent protection.  The first series of Gilenya patents will begin to expire in the US in 2019, leaving the market open for competitors and cheaper drugs.

Patent disputes following copycat activity is an active threat and pharmaceutical companies aim to obtain patents for the entire lifecycle of a drug including methods of manufacture and active ingredients, to minimize the likelihood of disputes. 

Unique challenges

The high cost involved in R&D means the majority of pharmaceutical companies apply for patent protection during research stages and before clinical trials. The average effective patent life for medicines is just 11.5 years.

Pharma companies should consider obtaining patents for the broadest possible scope during the R&D process. ‘Methods of use’ and ‘Formulation’ patents can be filed later – at the clinical trial stage of drug development and when the products use is properly defined.

The issue of reduced patent life has been addressed in legislation in the US, where patent applicants can now apply for a term extension. However, the time periods permitted for such extensions do not always equal the time lost.  In the US, patents can only be extended for half the time period that was consumed by the regulatory approval process and for a maximum effective patent term of 14 years.

Trade secrets are becoming an increasingly useful tool for pharma, particularly in the US where recent changes to guidelines for examination at the US Patent and Trademark Office have applied severe limitations on the patentability of natural products and methods using laws of nature. While patent protection in many territories is limited to 20 years from the date of filing, the period of protection conferred by a trade secret can be indefinite.

The great patent divide

With a strong patent system and a market free of price controls, the US pharma industry is rarely short of investment.  The private sector, which focuses heavily on R&D, is largely protected by patents. But the public sector is far more open. If a pharma company cannot secure private investment, it may be forced to develop a new product in the public arena, making it harder to protect its ideas. Alternatively, it would need to resort to protection via trade secrets. The combination of poor patent protection and a lack of experience licensing IP to the private sector, means the development of commercial enterprises is much more difficult. Generic ‘copycat’ companies also have access to a company’s drug development process when it is forced to take place in public.  With little chance of patents being an obstruction, companies can quickly reproduce drugs cheaply and in large volumes. 

In developing countries, successful pharma R&D is occurring in markets such as Brazil, China, Cuba, Egypt, India, Kenya, South Africa, and South Korea. These nations are at varying points of economic development, but each is considered an “innovating developing country”. Until the Trade-Related Aspects of Intellectual Property Rights (TRIPS) Agreement in 1994, however, many developing countries provided little opportunity for patent protection for pharmaceutical products.  While the countries that joined the World Trade Organization (WTO) committed to providing stronger patent protection, less developed countries were not required to meet this obligation until last year.

To patent or not to patent?

Generic companies such as Ranbaxy Laboratories are increasingly taking advantage of the tedious pharma patent lifecycle. Ranbaxy reportedly reaped $500 million in sales from its knockoff of Pfizer's cholesterol pill Lipitor during its first six months on the market. The competitive nature of the market makes patents a critical form of IP management and protection. It is important that pharma companies seek an intelligent intellectual property management solution to provide competitor insight, manage the lengthy protection process and fuel insightful research and development. Patents can significantly reduce the risk of revenue loss and safeguard the pharma industry’s development and innovation for the future.  

Haydn Evans is Global Director, Planning & Insight at CPA Global.