IPAB stays revocation of Pfizer's patent on drug Detrol

Justice K N Basha says that Ranbaxy had enough time to appear and argue the matter of stay petition

The Intellectual Property Appellate Board (IPAB) has issued an interim stay on an order issued by the Indian Patent Office removing a patent of Pfizer Health AB, for its extended release drug Detrol (tolterodine), which is used for treatment of overactive bladder symptoms of urinary frequency, urgency, and incontinence in old age patients. The Assistant Controller of Patents and Designs, in an order issued on November 27, 2013, revoked the patent based on a post-grant opposition filed by Ranbaxy Laboratories.

The Assistant Controller has revoked the said patent of Detrol stating its obviousness and that it was prior claimed by another patent of Pfizer. The official also rejected the report of the opposition board, on the post-grant opposition, which was favourable to Pfizer, argued the learned senior counsel appeared for the US-based pharma giant.

Considering the petition, IPAB Chairman Justice K N Basha and Technical Member (Patents) DPS Parmar ordered, "...the balance of convenience is very much in favour of the petitioner for granting the relief of stay. Accordingly, we are granting interim stay on the operation of the impugned order dated November 27, 2013 passed by the Assistant Controller of Patents and Designs". The order was on a miscellaneous petition of Pfizer for an interim stay.

A mail sent to Ranbaxy seeking a comment on the order was not answered till the time of going to press.

While Pfizer informed the Board that it has served the notice to Ranbaxy on the hearing of the miscellaneous petition through courier-post on March 13, 2014, the latter in a letter dated March 21, 2014, stated that they have received the notice from the registry only on March 19, and sought a relief of adjournment.

"We are of the considered view that the second respondent (Ranbaxy) having received the notice from the petitioner as early as on March 13, 2014, had enough time to appear and argue the matter of stay petition. There is no justification for seeking further time, more particularly in view of the urgency involved in this matter as per the submission of the petition of the learned senior counsel for appellant," said the Board.

P S Raman, senior counsel appeared for Pfizer argued that it has succeeded in the pre-grant opposition proceedings and Ranbaxy has raised substantially the very same grounds in the post grand opposition. Further he added that the registry revoked the patent on December 5, 2013 itself, soon after the order of revocation was passed, and even before the expiry of the period for filing an appeal, which expired on February 28, 2014.

Pfizer has been using the patent in respect of the drug, which is used for geriatric incontinence drug, from the year 1999 at the international level and has sought for registration of the patent in India by filing an application in 2001. He also argued that even the opposition board report also completely in favour of the petitioner's claim, but overlooking those materials, the controller has allowed the post grant opposition.

"...we are not inclined to go deep into the said factor at this stage," said the Board. Justice K N Basha added that it is open for Ranbaxy to file a counter remedy and seek any further relief in accordance with the law, on the interim order.

According to earlier reports, Pfizer had two patents for the product, of which the patent covering the extended release formulation was revoked by the patent office as the patent found to be obvious and "do not involve any technical advancement as compare to the existing knowledge".