On May 23, 2023, the China National Intellectual Property Administration (CNIPA) issued the decision on the examination of the invalidation request against Patent No. 560975, maintaining the validity of the Chinese patent No. 200680042417.8 which is directed to formulation of Alogliptin. So far, in a series of patent invalidation requests raised by the same petitioner against three different patents of the listed drug "Alogliptin", WU, FENG & ZHANG, on behalf of the patentee, won all three cases.
During the above-mentioned invalidation procedure, the petitioner requested that the patent at issue shall be declared all invalid on the grounds that said patent does not comply with the provisions of Article 26, paragraphs 3 and 4 of the Patent Law, as well as Article 22, paragraph 3 of the Patent Law. The team of lawyer/patent attorney from WU, FENG & ZHANG, based on the facts of the case, strongly controverted the grounds and reasoning submitted by the petitioner one by one, and the observation presented by WU, FENG & ZHANG also received support from the collegial panel. The collegial panel believed that regarding the issues of Article 26, paragraphs 3 and 4 of the Patent Law, the purpose of the invention of the instant patent is to discover new compounds and their inhibition of DPP-IV activity. However, how to prepare compounds with higher yields and fewer isomers is not a technical problem at which the instant patent aimed. Therefore, the purity and other issues alleged by the petitioner are not sufficient to prevent the enablement of the instant patent; For the issue of Article 22, paragraph 3 of the Patent Law, the prior art does not provide the motivation for introducing the distinguishing features between the claimed technical solution and the closest prior art to solve the existing technical problems. Moreover, the introduction of the distinguishing technical features brings about beneficial effects for the claimed technical solution, thus the claimed technical solution process inventiveness.
Previously, the Patentee has sought administrative and judicial remedy because the petitioner of the invalidation request was suspected of infringing the "Alogliptin" patent right of the patentee. WU, FENG & ZHANG consecutively won 3 cases in a series of invalidation on Alogliptin-related patents, which strongly supports the patentee's right protection actions in the relevant cases of patent infringement.
The WU, FENG & ZHANG team responsible for handling this series of cases includes lawyer Amy FENG, patent attorney Guo Jie, and lawyer Guan Xiangyu. In addition to the aforementioned patent invalidation cases related to the patent of the formulation of Alogliptin, this series of cases also include patent invalidation against Alogliptin compound patents and pharmaceutical composition patents containing Alogliptin. The Patent Reexamination and Invalidation Department of CNIPA issued the invalidation decisions (with the invalidation decision case number of 560328 and 560194, respectively) in March 2023, supporting the validity of the patent rights of the two patents.