Roche patent survives NGO challenge

On 30 January, the Chennai Patent Office dismissed a pre-grant opposition representation that had been filed by two NGOs opposing the patent for Roche’s drug Valcyte.

Valcyte is the brand name of an antiviral drug that is used to treat cytomegalovirus retinitis infection in HIV/AIDS patients and in patients who contract this infection during organ transplants. It was developed in 1994 by US-based Syntex, now a subsidiary of Roche, and first patented in Switzerland in 1994.

The two opponent NGOs, the Indian Network for People Living with HIV/AIDS and the Tamil Nadu Networking People with HIV/AIDS, had originally filed the pre-grant opposition in 2006. The grounds raised by the opponents were: (i) The subject matter claimed was not patentable under the Patents Act and (ii) There was delay on the part of the applicants for filing information regarding corresponding foreign patent filings to the controller – a violation of section 8 of the Patents Act. However, the Chennai Patent Office dismissed the NGOs’ representation without informing them of its decision. A patent was subsequently granted to Roche and news of the approval was reported in the patent office’s official journal.

The legislative and regulatory update is compiled by Nishith Desai Associates, a Mumbai-based law firm. The authors can be contacted at nishith@nishithdesai.com. Readers should not act on the basis of this information without seeking professional legal advice.