Israel Patent 178249 to ASTELLAS PHARMA INC. titled “Pharmaceutical Composition for Use in Solid Formulation Crystalline Solifenacin or Salt Thereof and a Process for its Preparation” was allowed, and on publication, TEVA filed an opposition. Astellas amended the claims three times and eventually Teva withdrew the Opposition. Astellas then filed for costs, claiming that as the Opposition was withdrawn, they had technically won!
The Deputy Commissioner Ms Jacqueline Bracha took a dim view of this, and noted that although she had awarded costs to Teva for their successfully opposing some of the first set of amendments, the Applicant had been allowed to narrow the claim set and make clarifications under Sections 65 and 66 and the resulting claims were significantly different from those originally allowed.
Astellas and Teva were allowed three sides without appendices for their costs requests but although Teva fulfilled this condition, Astellas submitted reams of paper. Furthermore, even with the opposition withdrawn, Ms Bracha had notified Applicant on 21 February 2016 that she intended exercising her authority under Section 34 and to disallow the patent from issuing as it appeared that a case had been made that there was no novelty or at least no inventive step. That as may be, Astellas could not be considered as having won the Opposition, and she saw no reason to award them (or Teva) costs.
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