In what may indicate a policy change, the IP Arbitrator at the Israel Patent Office, Noach Shmulovich, has awarded 120,000 NIS ( $33,000) in legal expenses to Teva Pharmaceuticals who successfully opposed a Pfizer patent allowance.
The case, IL 133957 titled “COMBINATION THERAPY COMPRISING AMLODIPINE AND A STATIN COMPOUND” is equivalent to WO9911263and relates to pharmaceutical combinations of amlodipine or a pharmaceutically acceptable acid addition salt thereof and statins or pharmaceutically acceptable salts thereof, kits containing such combinations and methods of using such combinations to treat subjects suffering from angina pectoris, atherosclerosis, combined hypertension and hyperlipidemia and to treat subjects presenting with symptoms of cardiac risk, including humans. It also relates to additive and synergistic combinations of amlodipine or a pharmaceutically acceptable acid addition salt thereof and statins or pharmaceutically acceptable salt thereof whereby those additive and synergistic combinations are useful in treating subjects suffering from angina pectoris, atherosclerosis, combined hypertension and hyperlipidemia and those subjects presenting with symptoms of cardiac risk, including humans.
Teva, represented by Adv. Tal Band (Shin Horowitz) opposed issuance and Pfizer, represented by Luzzatto, abandoned the patent.
From a cursory reading of the ruling, it appears that a large proportion of the real fees relates to an expert opinion drafted by Richard Fisher (MD, Patent Attorney), which, from the extensions taken prior to its filing, presumably took him several months.
Richard is an old mate of mine from the UK. I first met him when we were students prior to emigrating to Israel. It is nice to see that he’s having fun.
What’s important about the decision, is that traditionally, the Israel Patent Office awards token expenses of a few thousand Shequels. Now in the case of pharmaceuticals, the market potential is considerable, and even tens of thousands of dollars are pin money. Still, this is an important precedence, since, in many cases, oppositions, though a public service when based on proper grounds, leave the opponent out-of-pocket.
I believe the decision to award realistic expenses is in line with the general practise as of 2005 in Israeli law courts. Discussions of award of expenses may be found in the Israeli Patent Office decisions, for example in the opposition of Rafael to Hughes’ application 118449
http://www.justice.gov.il/NR/rdonlyres/96F584B3-1B9F-4C09-9882-33362173631D/0/Patent118449costs.pdf, the award was 40,000 NIS, about half of Rafael’s stated expenses.