Grand Panel of Japan IP High Court to decide Scope of Extended Patent Right under Patent Term Extension (PTE)

On November 17, 2016, the Japan IP High Court announced they had selected Debiopharm International vs Towa Pharmaceutical as the 11th Grand Panel case to clarify the scope of the extended patent right under the PTE*.
* http://www.ip.courts.go.jp/eng/hanrei/g_panel/index.html

The first litigation pertaining to infringement of an extended patent right under the PTE system was judged by Tokyo District Court (Debiopharm International vs Towa Pharmaceutical, Tokyo District Court, No. 2015(wa)12414, March 30, 2016) , which was reported by our website:
/www.sakamotopat.com/eng/topics/detail.html?nid=155.
The Tokyo District Court construed the scope of the extended patent right extremely narrowly, and decided that the extended patent right covering the brand-name version of oxaliplatinum was not infringed by its generic version. Debiopharm appealed this judgment to the IP High Court, which now determined that this case would be decided by its Grand Panel.

The scope construed by the Tokyo District Court was too narrow for innovative pharmaceutical companies to recover the huge amount of development costs by exclusive sales of their drugs without generic invasion. Since this case is quite important, the IP High Court selected this case as a Grand Panel case. Satisfactory judicial settlement is awaited. On the other hand, the Japan Patent Office is currently thinking about revision of the Patent Law to clarify the regulation in registration and scope of the PTE.

(Reported by Toshio Nakamura, Ph.D.)