In his parable titled “the milkmaid and her pail”, Aesop warns against counting chickens before they have hatched. There is another well-known story about a broody hen, who, because of her clucking, alerts the farmer’s wife that she’s laid an egg. The farmer’s wife makes omelettes, and the hen remains without the fluffy chicks she’s dreamed of.
I was reminded of both stories by a press-release sent across the Internet by Nexmed who announced that:
The Israel Patent Office has issued an allowance notice for NexMed’s patent application entitled, “Topical Compositions for Prostaglandin E1 Delivery.”
They go on to state that:
the patent, when issued, will provide coverage to May 13, 2019, and expand the protection of NexMed’s Prostaglandin E1 (alprostadil)-based products in Israel to seven granted patents.
I think this announcement is a little premature. The patent may or may not issue since Israel has an opposition procedure that allows third parties to argue that an allowed patent application is invalid, typically as lacking novelty and/or inventive step.
Although there has been a first reading of an amendment to conform Israel’s system to that of other jurisdictions, Currently, Israel patent applications only publish for opposition purposes once granted. If no oppositions are filed within a three-month period, then a patent certificate issues. Until that time, there is no a priori case of validity. One cannot sue infringers.
Israel has a thriving generic drug industry including players such as Unipharm, Teva and Perrigo who have an interest in opposing patent applications for pharmaceuticals. There are also other ethical players who have an interest in Prostaglandin based drugs.
It should be noted that a successful opposition in Israel could undermine the validity of issued patents elsewhere.
In this instance, as there are corresponding patents elsewhere, the applicant could have obtained allowance by modified examination under Section 17c of the Law,by conforming the claims to the US or European patent without substantive examination in Israel.
From publication of the patent journal, it generally takes time for patent attorneys monitoring the publication to report to clients that are potentially interested in opposing. Often decisions to oppose require committee meetings and internal debate. Three months isn’t very long. there is a backlog of about six months in publication of the patent journal. Thus we can expect publication in March 2011. With Pesach and Easter, sickness, maternity leave, reserve army duty and the like, it is not inconceivable that interested parties would miss the three-month opposition period. Now they have been given six month’s advanced notice.
We have at least two pharmaceutical clients that we have reason to believe might have a commercial interest in opposing this patent. Nexmed have tipped them off now, so that they can prepare in advance by reviewing the file wrappers in corresponding cases and start looking for prior art.