Local Pharmaceutical Companies Win Temporary Relief From Pfizer

Author:Ms Dianne Daley and Nicole Foga
Profession:Foga Daley
 
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Through a long-awaited ruling under Jamaica's archaic Patent Law of 1857, local pharmaceutical companies Medimpex Jamaica Limited and Lasco Distributors Limited emerged victors over pharmaceutical giant Pfizer Limited when judgment was handed down in their favour on July 29 2009.

What started out in 2002 as a simple quest by Pfizer to enforce its local patent in salts of amlodipine (amlodipine besylate) against Jamaican importers/ distributors of the generic form of the drug turned into a major issue about the validity of Pfizer's Jamaican patent.

Medimpex and Lasco import and distribute the drugs Normodipine and Las Amlodipine, respectively, both of which contain amlodipine besylate and which compete against Pfizer's drug Norvasc, also containing amlodipine besylate. In March 2005 Pfizer was successful in its application for an interim injunction restraining these companies and another local distributor, Mac's Pharmaceuticals, from importing, selling, supplying and distributing Normodipine and Las Amlodipine in Jamaica. While Mac's Pharmaceuticals did not contest Pfizer's claim, Medimpex and Lasco challenged the claim and applied for a stay of the injunction, which was dismissed. This did not end the matter, as the substantive issues which would determine whether the court would grant a permanent injunction and award damages to Pfizer for infringement of its patent had to be fully aired at trial.

The central issue was whether the Jamaican patent in respect of which Pfizer was the assignee was valid based on the fact that Pfizer held a number of patented inventions for amlodipine besylate in different countries and at least one of those patents had expired before the Jamaican patent was granted.

Facts

Back in August 1992, further to instructions from Pfizer its Jamaican attorney at law filed a patent application for amlodipine besylate on its behalf. The attorney proceeded to file the application in his own name, which is permissible under Section 3 of the Patent Act. This states that any person, being the true and first inventor of patentable subject matter in Jamaica, can - whether by himself or in absentia through his attorney - apply for a grant of letters patent in Jamaica. According to settled practice in Jamaica, the attorney, upon submitting the documents for filing, made a declaration pursuant to Section 7 of the Patent Act to the effect that the invention was communicated to him from abroad. Pfizer's local attorney also declared himself to be "the true and first inventor thereof" pursuant to Section 7 of the Patent Act, which states that "[b]efore any person shall obtain or receive any Letters Patent under this Act, such person, or if he be an absentee...

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