Dong-A Forxiga loses the patent dispute

Supreme Court rules to dismiss Dong-A ST appeal

Dapapro may have patent infringement

A new method of avoiding material patents virtually fails the 'prodrug' strategy, which was drawing attention.

 

Dong-A ST lost the Forxiga patent dispute alone.

 

Dong-A ST pushed ahead with the release of Forxiga's late drug, Dapapro, on the basis of its victory in the first trial, but the ruling put considerable pressure on sales.

 

◆ Dong-A ST loses patent dispute alone, Dapapro sales variable The Supreme Court's special second division ruled in the morning of the 2nd that Dong-A ST would dismiss the appeal in an appeal filed against AstraZeneca.

 

Forxiga is protected by two substance patents.

 

The first substance patent (10-0728085) expires on April 7, 2023, and the second substance patent (10-1021752) expires on January 8, 2024.

 

Dong-A ST alone challenged the first substance patent, which expires first.

 

In April 2018, Dong-A ST requested a passive judgment on the scope of rights for the first substance patent.

 

In the first trial, Dong-A ST won.

 

The Korean Intellectual Property Trial and Appeal Board made a trial decision on the establishment of the claim in August 2020.

 

AstraZeneca objected, and the ruling was overturned in the second trial.

 

The patent court ruled in favor of AstraZeneca.

 

This time, Dong-A ST filed an appeal with the Supreme Court in protest.

 

However, the Supreme Court finally sided with the original company.

 

Dong-A ST has already released Posh's generic Dapapro exclusively based on the first trial victory trial in December last year.

 

However, the Supreme Court ruling put a burden on Dapapro's sales.

 

However, Dong-A ST won the nullification lawsuit for the second substance patent issued on the same day, so there is no problem with sales after April this year when the second substance patent expires.

 

Patent infringement related to the forced sale of Dapapro is treated separately as a lawsuit.

 

Currently, Dong-A ST is proceeding with a separate lawsuit against AstraZeneca and Prodrug and a patent infringement lawsuit.

 

◆New method of avoiding material patents The 'Prodrug' strategy, which was drawing attention, has virtually failed Dong-A ST's challenge to avoid material patents has received considerable attention from the pharmaceutical industry.

 

This is because Dong-A ST has come up with a new material patent avoidance strategy called "Prodrug." A prodrug is a drug in the pro stage of the drug.

 

Until just before taking the drug after it is produced, the chemical structure of the original drug is partially different in the substituent part.

 

When you take a drug, it acts like an original drug in your body.

 

In the pharmaceutical industry, if Dong-A ST wins, it is predicted that the challenge of material patents using the Prodrug strategy will continue.

 

However, Dong-A ST's prodrug strategy has virtually failed to see the light as it lost consecutive second and third trials.

 

"The strategy of avoiding material patents by Prodrug has been put on hold by the Supreme Court for now," a pharmaceutical industry official said.

 

"However, we have to wait and see the results because Dong-A ST is filing a separate lawsuit using Prodrug."