Our client is a generic pharmaceutical manufacturer. It wanted to launch a generic alternative of a formulation of a drug that was patented in the UK and elsewhere. Its objectives were:
i. to do whatever was necessary to ensure that no interim injunction was awarded against it following the extensive marketing that it had done prior to launch;
ii. that if sued it would be in the best position possible to defend the action and ultimately “win”; and
iii. to know where it stood as quickly as possible.
Around three months before the expected launch of our client’s drug, we started work preparing evidence to defend a possible interim injunction application by the patentee. We knew that if that application was going to be made, there would be very little time to put the evidence together – hence our advice to prepare for it well in advance.
In fact, when the application to the Court for an interim injunction came, we had less than 2 working days before the hearing to put together all the evidence – and that would have been almost impossible in such a short time. Having had sufficient time to prepare the evidence, it was detailed, thorough and, most importantly, extremely convincing. As a result, we not only were able to get our evidence to the judge before the patentee was able to submit its evidence which is remarkable given that our client was the defendant, supposedly unaware of the claimant’s possible action – but, critically, we had done enough to persuade the judge not to grant an interim injunction. None was awarded. The first goal of our client was therefore achieved.
Working in parallel with preparing the evidence required to defend a possible interim injunction application, we were working on preparing the evidence we would need to defend a patent action at trial. Initially, this focussed on finding an appropriate expert witness who could describe both what the state of the common general knowledge was at the date of the priority date of the patent, and what he would have done, and why, to develop this particular formulation of the drug in suit. This was a particularly time-consuming but vitally important aspect of the case. We knew that the patentee would be looking to provide evidence of how their formulation was not obvious and we needed strong evidence to rebut that to win the argument that it was. Our clients gave us a few names, but these people were either unwilling or unable to assist. Through the network of contacts and experts that we have used in the past, we were able to find a number of potential candidates whom we interviewed to create a short list of scientists for us, our counsel and our client to see. We put forward a recommended choice and it was our choice that both counsel and our client went with.
Being concerned to have a decision quickly so that if our client were ultimately to lose, so that the damages awarded against it would be kept to a minimum, we were able to move this on for trial in less than four months. The trial lasted 4 days, we won and the patent was revoked. Our client received a good proportion of its costs back from the patentee and an interim payment of costs within 28 days.
We know that the costs that we incurred were (roughly) one third less than the costs incurred by the patentee.