shutterstock_1335808664_nitpicker
nitpicker / Shutterstock.com
21 September 2020BiotechnologySarah Morgan

Boehringer Ingelheim loses parasite control patent appeal

The Federal Court of Australia has rejected Boehringer Ingelheim’s animal health unit's attempt to stop the registration of a patent owned by Intervet International on various grounds.

In 2011, veterinary medicines company Intervet—a subsidiary of MSD—applied for a standard patent called “Injectable formulation of a macrocyclic lactone and levamisole”.

The patent application (AU 2011268899 C1) covers “injectable formulations comprising a macrocyclic lactone and levamisole for controlling parasites in animals, and the use of such formulations in the preparation of a medicament for controlling parasites”.

Five years later, in 2016, Boehringer opposed the application but, following the filing of evidence and a hearing in August 2018, a delegate of the Commissioner of Patents decided to dismiss the opposition and directed the patent application proceed to grant.

Boehringer appealed against the decision, relying on nine grounds which the court summed up into the three issues of lack of novelty, lack of inventive step, and lack of utility.

On Thursday, September 18, Justice Mark Moshinsky rejected all of the arguments and allowed the patent application to proceed to grant.

Boehringer argued that the alleged invention claimed in Intervet’s patent application isn’t novel in light of Chinese patent application CN 1375291A, which it claimed discloses a formulation with macrocyclic lactone in solution and levamisole HCl in particulate form.

But, according to the court, “Boehringer’s experimental evidence does not establish that a formulation containing levamisole HCl in particulate form was an inevitable result of making the formulation in example 3 of CN 291”.

Turning to the lack of inventive step, Boehringer argued that the alleged invention was obvious in light of the common general knowledge considered alone, or in combination with the Chinese patent.

Again, the court rejected the argument, noting that the fact that “by June 2010 no-one had suggested, let alone made, an oily injectable formulation with levamisole salt in particulate form provides some evidence that such an invention was not obvious”. The priority date of the patent application is June 24, 2010.

Finally, Boehringer contended that the alleged invention is not useful, as the claims include embodiments that don’t “achieve the promise of a physically and chemically stable suspension formulation of a macrocyclic lactone and levamisole”.

Moshinsky stated that Boehringer had not established that the formulations detailed in Intervet’s international patent application failed to meet the promise of stability in the patent application (that is, stability for three months under accelerated conditions).

“It follows that the lack of utility ground is not made out,” he concluded, before dismissing the appeal.

A spokesperson for MSD said: “As an innovative pharmaceutical company, MSD Animal Health obtains patents to protect its novel medicines for animals, and these patents provide MSD Animal Health with the necessary incentive to assume the tremendous monetary risks associated with research and development.

"Without appropriate patent protection, imitators can copy our innovative medicines and technologies and take unfair advantage of MSD Animal Health’s research and development investment.”

Did you enjoy reading this story?  Sign up to our free daily newsletters and get stories sent like this straight to your inbox.


More on this story

Americas
16 September 2020   Merck & Co is set to make a $1 billion investment in biotech company Seattle Genetics, as the companies collaborate to develop and sell Seattle Genetics’ cancer therapy, ladiratuzumab vedotin.
Big Pharma
17 March 2020   The US Court of Appeals for the Federal Circuit has rescued one Boehringer Ingelheim patent, covering a type 2 diabetes treatment, from invalidation but affirmed a New Jersey district court’s cancellation of two others.
Asia-Pacific
24 May 2022   The Federal Court of Australia has refused an appeal request in a decade-long case brought by Boehringer Ingelheim Animal Health against MSD subsidiary, Intervet International.

More on this story

Americas
16 September 2020   Merck & Co is set to make a $1 billion investment in biotech company Seattle Genetics, as the companies collaborate to develop and sell Seattle Genetics’ cancer therapy, ladiratuzumab vedotin.
Big Pharma
17 March 2020   The US Court of Appeals for the Federal Circuit has rescued one Boehringer Ingelheim patent, covering a type 2 diabetes treatment, from invalidation but affirmed a New Jersey district court’s cancellation of two others.
Asia-Pacific
24 May 2022   The Federal Court of Australia has refused an appeal request in a decade-long case brought by Boehringer Ingelheim Animal Health against MSD subsidiary, Intervet International.