The Myth of ‘Trivial’ Drug Patents

By David Forman
May 31, 2018

Critics of drug patents often claim that when initial drug patents expire, drug companies stuff their patent portfolios with trivial drug patents that unjustifiably extend their patent monopoly to keep the prices up.  For example, one critic, who urges readers to “fight drug patent abuse with a fury,” contends that “rather than representing true innovation, we find drug patents that emerge through loopholes in our drug-patent system, which artificially extend patent term on rather trivial differences over the original drug.”

This argument perpetuates common myths and misunderstandings that fail on several levels.  It derives from a view that the only meritorious patents on drugs should be the initial “marvelous and heroic innovations.”  But this is not a requirement for patents on pharmaceuticals or any other type of invention.  The patent law clearly states that any invention should receive a patent if it meets the legal requirements, such as novelty and non-obviousness.  Patents are not limited to marvelous initial innovations.  Indeed, patents on improvements are expressly endorsed in the patent act, which encourages follow-on patents that improve on initial inventions.  These are important for both small-molecule drugs and biological drug products.

Attacks on follow-on drug patents as being “trivial” imply that they cover obvious variations of the original drug patent.  But follow-on drug patents, like all other patents, must meet the same statutory criteria.  The legal test whether any invention is not entitled to a patent is whether “the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious . . . to a person having ordinary skill in the art to which the claimed invention pertains.”  If a modification or variation of an invention produces results that a person having ordinary skill in the art would not reasonably have expected, then the invention is non-obvious and is patentable, no matter how large or small the difference is from the patented invention.

Determining what would not have been obvious to persons in the field is a difficult technical decision.  In my experience the evidence showing that a pharmaceutical improvement invention is patentable because it would not have been obvious is commonly that it has unexpected beneficial results.  If a modification or variation produces entirely unexpected beneficial results, then the invention is patentable even if the difference between the original invention and the improvement appears to be small.  Critics of follow-on drug patents may criticize them as “trivial” because on cursory inspection the difference between the original invention and the improvement patent may look small.  This ignores the actual unexpected benefits that led to the improvement being found patentable.

Types of follow-on drug patents which are often criticized include those covering formulations, dosage regimens, variations in the chemical form of the drug, and treatment of new indications.  These improvements necessarily come after the first discovery of the chemical entity that becomes a new drug, so they necessarily will have patent applications that are filed later and thus will usually expire later than the original drug patent.  As a drug is developed, efficacy or safety sometimes require a particular type of formulation or dosage schedule.  An example is the formulation that is needed to keep omeprazole from being destroyed in the acid environment of the stomach.  While formulations and dosage regimens that persons in the field would usually choose with predictable results are not patentable, if they yield significant unexpected beneficial results then they are separately patentable.  In my experience, patent examiners apply the same stringent legal standards to these follow-on patents as to any other patent application.  Such inventions are not “trivial.”

Follow-on patents are improvements on the original drug.  Well-known examples of an improved formulation are modified release formulations that may allow a patient to take a single pill rather than several pills a day.  Sometimes these are made by applying what may have become well-known methods for making modified release pills, and as such may not be patentable.  But if a new modified-release formulation would not have been obvious and predictable from the prior art methods of making modified-release formulations, then it can be separately patentable.  Once the original patent expires the patent law does not prevent a generic competitor from making a generic version of the original drug.  Some critics complain that they should have the right to make not merely the previously patented FDA-approved drug, but also the still-patented improvements.  This argument ignores that the public can choose between the generic version of the older but effective drug and the convenient but more expensive patented version.  There is nothing unfair about this market choice.  If the generic manufacturer is dissatisfied it can challenge the validity of the modified-release patent in an ANDA case in district court or file an IPR in the USPTO.  Challenging the patent in these forums is expensive but the costs are small compared to the amount that the generic manufacturer has saved in the costs of discovering, developing, and gaining FDA approval of a pharmaceutical.

In the last decade, large molecule biological drugs have come to the fore.  They provide dramatic new treatments for some conditions but can be very expensive.  It is difficult to develop inexpensive generic-type versions for biological drugs.  Whereas a generic copy of a small-molecule can be synthesized as an exact copy of the FDA-approved active ingredient, it turns out to be extremely difficult or impossible to exactly copy the active ingredient of biological drugs due to their complexity and the many biological and chemical processes that are needed to make them.  Therefore, the Biologics Price Competition and Innovation Act allows the FDA to approve “biosimilars.”  A biosimilar is a biological product that is “highly similar” to and has no clinically meaningful differences from an existing FDA-approved reference biological product.  It should not be surprising that most of the companies developing biosimilars are not generic drug companies, but rather sophisticated large companies that also develop their own novel biological drugs.

Some critics complain about the relatively large number of patents that cover some biological drugs, which may stand in the way of biosimilars.  However, the number of patents stems from the nature of biological drugs.  Biologics exhibit great molecular complexity and may be quite sensitive to changes in manufacturing processes.  They may be difficult to administer to patients and may have surprising effects in the body.  This great complexity often creates substantial scientific and manufacturing challenges and can greatly increase the costs and risks associated with developing and producing biologics.  Overcoming these problems may result in multiple discoveries that are patentable.  There is no reason to assume that low-quality patents are retarding the introduction of biosimilars into the market.  The complexity and cost of developing biosimilars contributes to the slow pace of their introduction.

The Author

David Forman

David Forman is Senior Counsel with Osha Liang. Dr. Forman practices patent prosecution and litigation in a wide range of technologies, including biotechnology, immunology, pharmaceuticals, diagnostic devices and methods, and medical devices. He has extensive experience in writing and prosecuting patent applications and in interference proceedings before the U.S. Patent and Trademark Office. He has prepared appellate briefs, both for parties and amicus briefs, for the U.S. Court of Appeals for the Federal Circuit and the U.S. Supreme Court.

For more information or to contact David, please visit his Firm Profile Page.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 6 Comments comments. Join the discussion.

  1. Lost In Norway May 31, 2018 7:12 am

    It was a good article. I think you have a very good point when you said:
    “These improvements necessarily come after the first discovery of the chemical entity that becomes a new drug, so they necessarily will have patent applications that are filed later and thus will usually expire later than the original drug patent.”

    But you also have to acknowledge that there has been some distinct jockeying of the system. Where there was no improvement or innovation, but a blatant cash grab. I understand the motivation to try and extend the life of a blockbuster drug as long as possible; even with trivial improvements. A company would be stupid to not get as much patent term as possible. However, some of these patents should have been rejected under obviousness or obvious type double patenting.

    Maybe it is those cases that grab the headlines. Things that should have been stopped during examination. I don’t think that most of these patents fall into that category, but enough to get people even more angry at drug patents.

  2. Anon May 31, 2018 10:19 am

    Lost In Norway,

    But you also have to acknowledge that there has been some distinct jockeying of the system. Where there was no improvement or innovation, but a blatant cash grab.

    Hmm, I kind of see that statement as a direct talking past one another.

    It is the express point of the article to rely on the grant as indicating that there was none of what you want to assert as “must be there.”

    You both cannot have your views – they directly clash; and clash on the very point of which this article rests upon.

  3. CP in DC June 1, 2018 11:05 am

    As always the truth is somewhere in the middle. The author proposes the following:

    “This argument perpetuates common myths and misunderstandings that fail on several levels. It derives from a view that the only meritorious patents on drugs should be the initial ‘marvelous and heroic innovations.’”

    Do you mean like the patent on Tadalafil discussed in Icos Corp. v. Actelion, Fed. Cir. April 18, 2018?

    Tadalafil was patented in 1994. The Icos case was about micronizing tadalafil so it would dissolve better. Yes, the patent was found invalid over references dated 1997 and 1998.

    We all know that innovative compounds and treatments have strong patents, and some follow ups are truly worthy of patents. It’s the follow-up secondary patents that drive people crazy with “incremental” gains that are minuscule.

    It’s not a “myth” if it’s true.

  4. Savva June 1, 2018 11:58 am

    In my view, arguments about “trivial” drug patents miss the broader danger of relying on patents to incentivise drug development.

    In particular, policy supporting a patentability threshold assumes that non-novel or obvious innovations are in the public domain and do not require incentives (i.e. patents) for their development. But this is theoretically flawed in the context of drug development. A published or obvious drug may have extremely high medical value, but unless someone pays for clinical trials, it will never get to patients. And nobody will pay for clinical trials (which can cost $100s of millions) without a patent to ensure they have exclusivity to recover their costs.

    Therefore, patents are not suited to incentivise pharmaceutical innovation because the unique regulatory environment still requires the funding of expensive clinical trials (even for “obvious” drugs).

    Who knows how many medical breakthroughs could not get funding because of uncertainty about their patentability (e.g. because of a published academic article)? Nobody is collecting data. How many of these obvious drugs could have been the next AZT, Gleevec or Sovaldi?

    We need to look seriously at non-patent incentives for drug development and actually paying for clinical trials such as data exclusivity/market exclusivity and incentive prizes (e.g. X-prize for drug development).

  5. Anon June 1, 2018 1:45 pm

    Good points Savva.

  6. Viswaprasad June 3, 2018 10:07 pm

    There are many cases wherein follow on patent or the so called improvement are nothing but obvious variations of existing technology. In many cases there is huge lobbying between drug companies – patent offices – courts thereby many frivolous patent remain “valid” thereby extending the market monopoly of innovators. Some of the cases Ive encountered are lacosamide, dronederone, asenapine. There are plenty more examples…

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