Zuykov and partners defended Rospatent's decision to annul Pfizer's Eurasian patent in Russia
Zuykov and partners won case No. SIP-730/2022 at the request of a foreign entity Pfizer Products Inc. (USA) to invalidate the decision of Rospatent dated May 14, 2021 No. 0200200506. Earlier, based on the results of consideration of the objection to the validity of the Eurasian patent for invention No. 0200200506 (6227) in the territory of the Russian Federation, with the participation in the case as third parties - PSK Pharma LLC and the Eurasian Patent Organization, which do not declare independent claims regarding the subject of the dispute, Rospatent recognized the invention of Pfizer under the disputed patent as inappropriate for the conditions of patentability "novelty" and "inventive step", due to with which his action was completely invalidated.
In this case, Zuykov and Partners represented the interests of PSK Pharma LLC.
Previously, based on the evidence provided by PSK Pharma, the board of the Chamber for Patent Disputes noted that it is obvious to a specialist in the art that it is possible to modify the disubstituted amino group in the composition of the drug while maintaining the possibility of treating cancer, psoriasis and diabetes complications. It is also obvious the possibility of obtaining a pharmaceutical composition based on the compound according to the contested patent.
The PSK Pharma LLC believes that Rospatent's conclusion that the information contained in the submitted documents testifies to the usual combination of known substituents to obtain compounds of the general structural formula according to the disputed patent is legitimate.
Among other things, objecting to the applicant's argument that the amended claims under the disputed patent correspond to the patentability condition "inventive step", the society drew attention to the fact that the indication of the properties of the claimed compounds according to the disputed patent as JAK3 inhibitors can be considered as a technical result, however, this technical result is not confirmed in the description of the disputed patent; in the description of the contested invention, both the method of preparation and activity indicators for the specified individual compound (tofacitinib) are missing. It should be noted that, according to paragraph 4.6 of the EAPO Rules, the condition of inventive step corresponds, in particular, to an individual compound that falls under the general structural formula of a group of known compounds, but is not described as specially obtained and studied, and at the same time exhibiting new properties unknown to the group in qualitative and quantitative terms.
With regard to the revised claims of the disputed invention, Rospatent rightly drew attention to the fact that the limitation to a specific individual compound cannot lead to a change in the results of assessing the compliance of the claimed compound under the disputed patent with the patentability condition “inventive step”, since a compound is indicated that has not been specially studied and not described in the application materials as of the date of its filing.
Based on the results of the analysis of the claims of the disputed invention, the panel of judges came to the conclusion that the group of inventions under the disputed patent does not meet the conditions of patentability "novelty" and "inventive step". Thus, the Intellectual Property Court considered that the decision of Rospatent dated May 14, 2021 is lawful and justified, since the applicant’s arguments only indicate his disagreement with the contested decision, but do not refute the conclusions contained in the contested decision of Rospatent, and do not find their confirmation in the studied norms of law.
Accordingly, by the decision of the Intellectual Property Court dated July 11, 2023, the application of the foreign entity Pfizer Products Inc. was left without satisfaction, and the decision of Rospatent dated May 14, 2021, in connection with which the validity of the Eurasian patent No. 6227 on the territory of the Russian Federation was fully invalidated, was upheld.