[Ip-health] Aharonian: Gene Patents, MTAs, Generics; Zoloft; Taxol; Canada TRIPS

[James Love]

-------- Original Message --------
Subject: PATNEWS: BIO IP jobs; MTAs; generics; Zoloft; Taxol; Canada TRIPS
Date: Sun, 8 Apr 2001 17:54:37 -0700
From: clients@bustpatents.com
To: srctran@bustpatents.com


    --  WASHINGTON MONTHLY ARTICLE ON THE POLITICS OF GENE PATENTS

Washington Monthly magazine recently published an article on the politics
of gene patents.  You can see it at:

     http://www.washingtonmonthly.com/features/2001/0104.thompson.html

                              ====================

    --  UNIVERSITY COMPLAINS ABOUT CORPORATE MTA REQUEST

Material transfer agreements (MTAs) are a big source of controversy
between universities and corporations collaboration on biotech.  Anyone
who complains about the problems of software patents will get little
sympathy from the MTA people.  Here is one such posting:

     I've come upon an interesting MTA with Company Z.  Their definition
     of materials is such that it could possibly claim a royalty-free,
     irrevocable, sublicensable license to inventions which our university
     has already been issued patents.  When asked to explain their
     position, the response I got was "we will not negotiate that further".
     Now, I'm all for being flexible with MTAs on a case-by-case basis.
     But as far as I can tell Company Z wrote this agreement is written
     to purposefully have reach-through on issued patents (since they
     won't explain their position).  I get the feeling that MTAs are
     getting totally out of hand...

     Has anyone else seen this Company Z agreement who can provide some
     insight?  Maybe I'm looking at this all wrong, but the position
     being taken is very scary.  It goes beyond the now "normal" requests
     for a non-exclusive royalty-free license.

                              ====================

  [snip]

    --  GENERIC DRUG GAMES IN CANADA WITH ZOLOFT

Greg,

In Canada the following unusual situation has developed: Pfizer has a patent
on the anti-depressant, Zoloft. The patent expired in 1999, giving Apotex
the right to sell its generic. In the interim, Pfizer obtained extensions
on the patent for the indications of Obsessive Compulsive Disorder and
Panic Disorder. These will last until 2010.

A situation has developed where, because the doctor does not write the
diagnosis on the prescription, the pharmacist doesn't know for what
indication the doctor is prescribing the compound (sertraline HCL). For fear
of patent violation, the dispensers have just been doling out the expensive
brand name, Zoloft. Apotex is incurring a huge loss, of course, and so is
the state-run system which has to pay 70% more for the brand name. This
is all because limited interchangeability due to patent rights.

                              ====================

    --  CONSUMER GROUPS SUE OVER GENERICS

    Last Friday, consumer groups filed four lawsuits against Bristol-Myers
Squibb, with lawsuits against other drug companies in the future.  The
lawsuits were filed in the US District Court in Manhattan and in state
courts in New York, Florida and Maine.  The suits contend that BMS
illegally stopped generic drug maker Mylan Pharmaceuticals from selling
a cheaper version of anti-anxiety medicine Buspar.  The groups filing the
lawsuits include Community Catalyst, and Citizan Action of New York.
The groups represent elderly Americans who use the drug but are being
prevented from paying less money for the generics.

                              ====================

    --  APPROVAL OF A GENERIC FORM OF TAXOL IS CHALLENGED

Bloomberg News reports a few weeks ago that the U.S. Court of Appeals for
the D.C. Circuit ruled that U.S. District Judge Colleen Kollar-Kotelly
lacked adequate information when she rejected American BioScience's claim
that the FDA shouldn't have approved the Ivax generic version of Taxol.
American BioScience has a patented method to reduce the drug's side
effect.

                              ====================

    --  CANADIAN BILL TO EXTEND SOME PATENT DURATION TO COMPLY WITH TRIPS

15 March 2001 issue of Genetic Engineering News reports that the Canadian
government has proposed a bill to extend the term of certain "Old Act"
patent (those filed before October 1989) to 20 years from the date of
filing.  Post-September 1989 filings already fall under the 20 year term.
About 53,000 patents will be affected, including 30 "commercially
significant drugs" which will get an average of six more months of
protection.