Novartis Patent Revived Years After Lapsing

comedy of errorsConcerning 158020 to Novartis, for N-HALOMETHYLENECARBONYL-2-1 CYANOPYRROLIDINES, the patent in question lapsed in November 2007.  The application lapsed since the third renewal wasn’t paid. Novartis were late in instructing their renewal service and didn’t notice the error. Neither the renewal company, Novartis, nor the agent of record monitored the case, which was indicated as lapsed in the database.

In March 2012, four years and four months after it lapsed and four months after learning that it had lapsed, an attempt to revive the patent was filed without paying the appropriate fee. On 7 February 2013, the request was refiled with the fee. On 11 February 2013, the adjudicator refused to allow the patent to be revived since the day when the request was properly filed together with fees was a considerable period after the patentee became aware of the events. On 12 March 2013, the applicant filed an affidavit and a hearing was set up for 29 April 2013.  At the hearing, it was ruled that the application of 12 March 2013 fulfilled all the requirements for reviving the patent. Applicant managed to convince the adjudicator that in this case, the lack of payment should be rectified, but the process of revival may be seen as having been initiated in March 2012, and both the patent office and the applicant were jointly responsible for the revival not to have been considered over an eleven month period.

It seems that both sides have to review their procedures, but the adjudicator accepted that in large companies, wheels turn slowly. The patentees managed to revive the long abandoned patent, but not retroactively, so generic competitors may continue to manufacture competing goods. However, it was only reported as lapsed in the journal in November 2011. In the circumstances, the adjudicator allowed the patent to be revived, but not to be effective retroactively on competitors who had taken action to manufacture the patented drug in the interim.

What is noteworthy is that the patentee himself, the renewal service, the agent of record and the patent office all made mistakes. The patent was lapsed for over 5 years, nevertheless, based on an understanding of the patentee’s true intent, the patent was published for revival purposes.

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