In a relief to global pharma major Pfizer, the country’s patent tribunal, Intellectual Property Appellate Board (IPAB), on Wednesday stayed the patent controller’s order revoking a company patent for the drug ‘Detrol’ used in treating old people who suffer from frequent urination.
On the post-grant opposition by Indian pharma company Ranbaxy, the patent controller had revoked the patent in November and subsequently removed it from the registry in December last year.
Aggrieved by the developments, Pfizer moved IPAB, praying for stay on the controller of patent’s order. However, when the matter came up at IPAB on Wednesday, Ranbaxy’s counsel submitted that they have not been given enough by Pfizer to prepare the counter against the appeal and the matter be adjourned, which was refuted by the latter.
The IPAB bench consisting of Justice KN Basha, chairman, and DPS Parmar, technical member (patents), said: ? The balance of convenience is very much favourable to Pfizer and accordingly we are granting an interim stay on the assistant controller’s impugned order of November 27, 2013, which revoked the patent of Pfizer.?
The IPAB bench also observed that Ranbaxy is open to file a counter-affidavit, seeking redressal of grievances under the applicable laws.
The Chennai Patent Office had revoked Pfizer’s patent on Detrol and in an order dated November 27, 2013, the assistant controller of patents and designs, SP Subramaniyan, said the invention claimed in the revoked patent by Pfizer was found to be ‘prior claimed’ by another patent of Pfizer on the same drug.
Pfizer had two patents on Detrol. Though the second patent had been revoked by the patent office, Pfizer’s first patent on Detrol is still valid.
On Wednesday, the counsel for Pfizer, PS Raman, submitted that the controller of patents had removed the patent from the register on December 15, 2013, hardly a month after pronouncement of the revocation order on November 27, 2013. He pointed out this was done even before the limitation period for referring an appeal had expired. According to him, Pfizer had time till February 28, 2014, to appeal against the impugned order.
The IPAB bench said; ?We have carefully considered the contentions of both parties and perused the material, including the impugned order. At the outset, it is to be stated that the petitioner (Pfizer) has been using the subject patent since 1991 at the international level and filed for Indian patent in 2001. It is also seen that Pfizer succeeded in pre-grant opposition by Ranbaxy, but following the post-grant opposition, the controller had revoked the patent.?