Roche loses yet another Cipla battle

Swiss pharma firm, Hoffman-La Roche have been dealt a major blow, with the Chennai Patent Office deciding against its patent relating to anti-viral drug Valcyte. In the post-grant opposition filed by various Indian pharma companies, the patent office ruled against Roche stating that Valcyte lacked inventive step.

Swiss pharma firm, Hoffman-La Roche represented by IP lawyers Anand and Anand, have been dealt a major blow with the Chennai Patent Office deciding against its patent relating to anti-viral drug Valcyte. In the post-grant opposition filed by various Indian pharma companies, patent controller S.P. Balasubramanium ruled against Roche stating that Valcyte lacked inventive step.

Roche had developed an ester of a pre-existing intravenous anti-viral drug, Gancyclvoir, administered mostly to HIV patients, called L Valinate. In an attempt to make the consumption of the drug easier, mainly through oral administration of the drug, Roche developed the ester of gancyclvoir which resulted in the production and sale of ‘Valcyte’. A detailed background of the case can be found on IP blog, Spicy IP.

Cipla promptly manufactured the generic alternative naming it ‘Valcept’ Roche filed a patent and trademark infringement suit in the Bombay High Court, which ruled in favour of Roche with regard to the trademark, and directed Cipla to change the name of its generic drug.

Roche then approached the Supreme Court, but the Bench dismissed the petition stating that it the petition was too early and asked Roche to await the decision of the Chennai patent office on the post-grant opposition filed by NGOs Indian Network for People Living with HIV/AIDS and Tamil Nadu Networking People with HIV/AIDS, both represented by Anand Grover.

This isn’t the first time that these two majors have sparred with each other. Petitions filed by Roche are pending across various courts in the country. Earlier this year, Cipla scored a victory over Roche when the Supreme Court ruled in favour of Cipla over selling Erlocip, the generic version of Roche’s lung and pancreatic cancer drug, Tarceva.

With the recent Chennai patent office’s decision, it appears that the Indian patent authorities favour cheaper drugs. This comes as good news to the general public and bad news for multinational drug companies.

Senior Counsel Virag Tulzapurkar, instructed by Crawford Bayley’s Mumbai offices has been consistently representing Roche in the Bombay High Court. M&M Legal Ventures represented Cipla while Senior Counsel Anand Grover with counsel Prakash Mahadik represented Indian Network for People Living with HIV/AIDS in the Bombay High Court.

Senior Counsels Anil Divan and Rohinton Nariman appeared on behalf of Roche in the Supreme Court with counsels K.V. Vishwanathan, Manish Kumar, Jayant Kumar Mehta, Aditya Kant and Rakesh Sharma. Indian Network for people living with HIV/AIDS were represented by Senior Counsel Anand Grover with counsel Rukhsana Choudhury.

Cipla and Bakul Pharma, who are the prime contenders in the post-grant opposition in the Patent Office, were represented by Majmudar & Co. Ramesh Kumar of R.K. Legal also represented Cipla while Ranbaxy were represented by Lakshmikumaran & Sridharan and Matrix Labs were represented by Feroz Ali of Ali Associates.