Beijing court hears wrangle on Viagra patent
By Liu Li (China Daily)
Updated: 2005-03-31 06:37

The legal battle over the legitimacy of the patent rights for impotency drug Viagra began yesterday at a Beijing court.

Drug maker Pfizer is suing China's Patent Re-examination Board (PRB) of the State Intellectual Property Office for wrongfully invalidating its China patent over the use of sildenafil, the active ingredient in Viagra, a drug taken by patients suffering male erectile dysfunction (MED).

The lawsuit is being heard at the Beijing No 1 Intermediate People's Court.

During the first hearing yesterday, Pfizer called on the court to withdraw the PRB's decision passed in July 2004.

The defendant, PRB, insisted in court its conclusion was "right and legal with correct application of laws and regulations."

No results were given yesterday.

Under Chinese law, Pfizer's patent on Viagra remains valid and enforceable, pending a final decision of the Beijing High People's Court if either of the two sides disagree with the ruling to be reached by the current court. However, if no side objects, the current court's ruling will be final.

Pfizer filed a patent application in May 1994 for the use of sildenafil citrate in MED treatment in China.

The State Intellectual Property Office granted the patent after seven years of examination.

However, 12 domestic medicine companies and a Beijinger challenged the validity the decision.

The PRB, after investigation, invalidated the patent on the ground of insufficient disclosure of the claimed invention.

The board claimed the patent manual failed to provide convincing technical content.

But Tai Hong, Pfizer's attorney, argued the patent directions were sufficient.

"The decision made by the PRB had errors in facts and [was an] erroneous application of the law," she said.

Tai claimed the decision made by the PRB violated the Trade-Related Aspects of Intellectual Property Rights (TRIPS) agreements.

She also stated that since the attorney of application for invalidity of the patent, Xu Guowen, was a retired official with the PRB, the decision procedure was inappropriate.

Jin Zejian, for the defendant, told the court its decision in 2004 was a correct implication of the Patent Law and a relevant examination guidance.

Jin said relevant prescriptions in the Patent Law and the TRIPS agreement were totally consistent with each other.

"To invalidate a patent which does not accord with the Patent Law was also to execute the TRIPS agreement," he said.

As for the qualifications of Xu, the defendant argued there was no law or regulation prohibiting PRB retired staff to act as a patent attorney.

The case over the patent right of Viagra has caused widespread concern over intellectual property rights (IPR) protection for overseas enterprises in China.

The American Chamber of Commerce-China said in July last year the decision made by the PRB was a step backward for IPR protection.

However, Li Shunde, an IPR scholar with the Chinese Academy of Social Sciences was quoted by China Economic Times as saying the decision was "legal."

(China Daily 03/31/2005 page1)

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