Israel Patent Application Number IL 195087 to Novartis titled “ANHYDROUS LACTATE SALTS OF NHYDROXY-3-[4-[[[2-(2-METHYL-1HINDOL-3-YL)ETHYL]AMINO]METHYL] PHENYL]-2E-2-PROPENAMIDE AND PHARMACEUTICAL COMPOSITIONS COMPRISING THE SAME” was allowed and published on 31 October 2012 for opposition purposes. On 3 January 2013, Unipharm opposed the patent.
After managing to prevent the submission of new evidence, Novartis (represented by Luzzatto et Luzzatto) applied for the opposition to be thrown out claiming that the the opposition had misused the system by submitting new evidence in the guise of responding to applicant’s response to the original opposition.
In his ruling, Commissioner Kling quoting former Deputy Commissioner Axelrod in Oppositions to IL 122118, 122162, 122161 to Warner Lambert Company (also opposed by Unipharm):
If in civil legislation the courts are very reluctant to throw cases out without a proper hearing, how much more so when dealing with a patent opposition [due to the public interest in preventing patents to wrongfully issue]
He went on to quote opposition 121052 Raytheon vs. EL-OP tot he effect that oppositions should only be thrown out if it is clear that they have no chance of succeeding.
Finally, the Commissioner went on to state that the applicant had not made a strong case that the behavior was inequitable and the additional material was mentioned in the original Statement of Claims.
The attempt to have the case thrown out was thrown out, and costs of 5000 Shekels were awarded against Novartis.
The decision is correct. In oppositions, both sides typically sail close to the wind with regard to tactics. Unipharm and their representative, Adv. Adi Levit, have a high success rate in opposing pharmaceutical patents that have been subsequently endorsed by the courts.
It will be interesting to see how this case develops.