Double Patenting And Where It Stands As Per Delhi High Court

• Published date: 03 August 2021
• Subject Matter: Intellectual Property, Patent
• Law Firm: Khurana and Khurana
• Author: Mr Suvangana Agarwal

In a recent Judgement by Delhi High Court on 02.11.2020 (CS (Comm) 410/2020 AstraZeneca Ab & Anr v Alkem Laboratories), AstraZeneca (Plaintiff), a reputed British-Swedish multinational Pharmacy & Biotechnology company, was denied an Application under Order 39 Rule 1 &2 under the CPC for grant of Temporary Injunction against Alkem Laboratories (Defendants).

It was contended by Plaintiff that the Defendants had infringed two of their patents- IN 205147 (Patent 1) and IN 235625 (Patent 2) that relate to the manufacturing of an anti-diabetic drug called Dapagliflozin, which is marketed as Farxiga.

Both the patents were initially registered by Mr. Bristol Myer Squibb, who had then assigned the rights to the same to Plaintiff in 2014. Patent1 was the genus patent that expired in 2020 and Patent 2 was its species, which expired in 2023.

Issue:

" The Plaintiffs claimed that the compound structure of the drug was covered in Patent 1, it was disclosed and marketed only in Patent 2. Plaintiff further argued that there were several more factors in favor of Patent 2, i.e. great commercial success, a number of attempts by various third parties to infringe the said mark, resulting in several injunctions granted by the court. They also argued that the IPO examined the patent for 7 years before actually granting it, and it operated for 15+ years without any opposition, and hence, there had to be some form of presumption over its validity owing to its age.

" The Defendants in return claimed that a single compound cannot be protected by two different patents and the expiry of Patent 1 in 2020 ended the Plaintiff's monopoly over it. They also...