In a recent case at the Makati Regional Trial Court of the Philippines, the world’s largest pharmaceutical company, Pfizer Inc., lost a court action to obtain an injunction preventing a Filipino generic drug manufacturing company, United Laboratories Inc. (Unilab) from producing and selling its version of Atorvastatin Calcium which is the subject matter of Philippine Patent No. 29149. Judge Joselito Villarosa ruled in favour of Unilab in what was considered a classic David and Goliath case.
This epic patent war represents a huge step forward for both parties since battling it out in a string of legal lawsuits recently. In 2009, Unilab had filed a patent invalidation action against Patent No. 29149 at the Patent Office alleging that the patent was invalid as the subject matter of the patent was not novel and inventive at the priority date of the patent. Pfizer Inc. and its co-plaintiff Warner Lambert Co. LLC had then filed a patent infringement action together with a request for a preliminary injunction against Unilab. The patent invalidation action filed at the Patent Office remains pending.
The plaintiffs had requested for a preliminary injunction that would stop Unilab from selling its version of Atorvastatin Calcium, which is alleged to have infringed Patent No. 29149. Pfizer sells its Atorvastatin Calcium under the brand name Lipitor whereas Unilab sells it under the brand name Avamax.
During the hearing of the request for a preliminary injunction, Pfizer was unable to prove that it had a locus standi in this case as it was appointed as a licensee by the co-plaintiff Warner Lambert LLC, which – dubiously – appeared to be different from the registered patentee, Warner Lambert Co. of New Jersey. This led to Pfizer’s doubtful status as a licensee and party to this suit.
Another significant factor that contributed to the ruling of this case was the admissions of Pfizer’s own witnesses which put the validity of the patent in jeopardy. Witnesses Millette Asuncion and Maureen Gallagher admitted that Atorvastatin Calcium was already disclosed in the expired Philippine Patent No. 26330. Another witness, Dr. Nikko Quevada, acknowledged that Atorvastatin Calcium was already disclosed in US Patent No. 4861893.
With Unilab’s patent invalidation case against Pfizer, this case illustrates how IP jurisprudence in the Philippines has advanced in acknowledging inventions which are deemed frivolous, as such Pfizer’s in this case. It highlights the significance of claims in patent drafting, which is fundamental to distinguish between a strong or a weak patent, and in protecting the patent itself. This case also emphasizes the importance of assignment of rights of a patentee, and finally, that in any case, before an injunction may be issued, the validity of the patent must first be established.
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