Maxim Ali has commented on the patent dispute of pharmaceutical manufacturers for the DP

St Petersburg-based company BIOCAD and Israeli Yeda Research and Development reached during the Court an agreement on the joint use of a patent for the drug to treat multiple sclerosis.

In 2018 after registering the generic of its own production, BIOCAD challenged the know-how of the Israeli company at Rospatent. In response, in 2019, Yeda challenged this decision in the Intellectual Property Court, where BIOCAD was prosecuted as a third party. The outcome of the proceedings was an agreement between the parties that BIOCAD would withdraw the objection from Rospatent, but would be entitled to use the patent of an Israeli competitor.

Maxim Ali, Head of IP/IT practice at Maxima Legal told the Delovoy Peterburg newspaper that the parties have found a successful compromise: “On the one hand, Yeda will be able to keep the patent. On the other hand, the patent is no longer a hindrance to BIOCAD, it gets the rights to use it. The rest of the market is still unable to use the patent, which protects both Yeda and BIOCAD from excessive competition,” he said. However, according to the expert opinion this will not prevent other companies from raising objections to Yeda’s patent in the Chamber of Patent Disputes, including citing BIOCAD’s experience.

The motivational part of the decision does not include the details of the agreement: ways and territory of use. But it is likely that BIOCAD had an advantageous negotiating position and achieved wide rights of use, Maxim Ali suggested.

To read the full article (in Russian), please see the Delovoy Peterburg website >>>