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8 June 2017Americas

LSPN North America: Method of treatment claims often challenged

Two thirds of biotech claims challenged in inter partes reviews are directed to methods of treatment, said Brendan O’Malley, partner at Fitzpatrick Cella Harper & Scinto, at a recent industry conference.

His comments came in a panel discussion at Life Sciences Patent Network North America, which was held by Life Sciences IP Review in Boston on July 1.

O’Malley said: “At a preliminary basis, it appears that method of treatment claims seem to be the most popular claims to challenge.”

As well as the 65% mentioned, 25% of the challenged claims have been formulation-related, while the remainder have been related to other types of claims.

“These are some early trends, although there’s still a lot of pending petitions where an institution’s decision has not been rendered,” said O’Malley.

O’Malley discussed other petitions which have been filed, including post-grant reviews.

He said: “The main point I’d like to get across is that there are 52 petitions that are concentrated among just nine products.

“When you look at these products, five out of nine products are in the top ten best-selling biologics worldwide. So these are proven ways to challenge patents.”

Other topics also discussed in the panel session were how to ensure effective patent protection for antibodies, and the question of whether to choose trade secrets over patents.

Another point raised was whether biosimilar applicants are required to join the patent dance, a subject currently under review in the US Supreme Court case of Amgen v Sandoz.

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