Biosimilar Litigation in the United States: Redefining the Patent Dance

By Simi Grewal, MHS, PhD Student

In recent years, the U.S. pharmaceutical world has been abuzz with the emergence of biosimilars—products that are very similar, but not identical, to a reference biologic product. To date, twelve biosimilars have received FDA approval under the Biologic Price Competition and Innovation Act (BCPIA), which was passed by Congress in 2010. However, among those biosimilars that have been licensed by the FDA, only two have been marketed. While many factors influence the time lag between FDA approval and biosimilar marketing, complex patent litigation may well contribute to delays in market launch. So, let’s explore the intricate information exchange surrounding FDA biosimilar application reviews and key litigation decisions in the biosimilar landscape.

biologics
Image credit: Promega

What makes biosimilars different from generics?

First, it’s important to understand what makes biosimilars and their reference biologic products so unique. Unlike a generic for a small molecule drug, a biologic is manufactured in a living system—a complex process which is extremely challenging to exactly replicate and thus yields products that are similar to, but not exact copies of, a reference biologic. The process is also expensive. On average, R&D estimated costs for biosimilar range from $40 to $300 million and can take up to five years, whereas small molecule generics cost $2 to $5 million in R&D and can take up to three years.

What is the biosimilar “patent dance?”

With the BCPIA, Congress has made a strong effort to help improve affordability and accessibility of clinically powerful biologics. In a sense, they have sought to improve upon the Hatch-Waxman Act used for generics, by considering the unique issues that may arise as biologics reach the expiration of their 12-year patent life. Part of this intricate vetting structure is termed the “patent dance.” Indeed, the act specifies several steps to follow. 1.) After the FDA accepts an abbreviated Biologics License Application (aBLA), the BCPIA stipulates that the biosimilar maker “shall” provide its aBLA and manufacturing information to the reference biologic maker. 2) The reference biologic maker sends a list of patents that may be infringed by the biosimilar maker. 3) The biosimilar maker provides its responses. The steps continue until contentions are resolved.

Additional components of the dance are also in play. For example, the BCPIA indicates that biosimilar makers must provider 180 day notice prior to marketing their product. The guidance may have been intended to aid in resolving disputes before biosimilar market launch and assessment of damages (i.e. losses to either party from potential revenue of marketed products) complicated litigation. However, it has been criticized that if the biosimilar makers are only allowed to provide notice after FDA approval of their biosimilar, the provision essentially extends the reference biologic patent and delays market availability for a competitor. Several biosimilar makers are now providing their notice prior to FDA approval and the notice has been a component of law suits brought against biosimilar makers.

It may seem confusing that a patent dispute surrounding a single biosimilar product can become so complicated. But it’s important to consider how patents function with biologics. The patent for a new chemical entity is well-understood, but many other aspects surrounding the manufacturing process and product use can be patented—and ultimately disputed—for a biologic. The expansive landscape can lead to tens of patents surrounding a single product. AbbVie’s Humira®, for example, has recently received a great deal of attention for its protection with over 100 patents related to the product.

How have information disclosure and patent litigation for biosimilars played out so far?

Experience to date has revealed that while some biologic manufacturers follow patent dispute guidance, others seems to be setting new steps or circling around those laid out in the BCPIA altogether. In the Amgen v Sandoz case, which began in 2014 and was ultimately resolved in 2017, Sandoz refused to provide its aBLA for Zarxio®—a biosimilar to Amgen’s Neupogen®. Amgen then sued under both federal and California state law. The case ultimately landed in the Supreme Court and led to a key decision—compliance with the BCPIA’s information disclosure (i.e. the “patent dance”) cannot be enforced under both federal and state law. Instead, if a biosimilar maker does not follow the patent dance, a reference biologic maker can then sue the biosimilar maker for patent infringement. One of the more recent cases Amgen v. Adello again involves a biosimilar for Amgen’s Neupogen®. The suit by Amgen, submitted in March 2018, is essentially blind (i.e. does not specify all patent infringements by Adello) due to minimal information disclosure by Adello. In addition, Adello addresses another flex point of the BCPIA: the 180 day notice for marketing. Adello has provided this notice prior to the FDA’s approval of the biosimilar. Whether or not this marketing notice can only be provided before or after FDA approval remains a further point of contention in interpreting the Act.

What’s next in biosimilar patent litigation?

With the BCPIA in its nascent stages, we are prone to see its application become re-defined in years to come, just at Hatch-Waxman evolved in the generics market. Currently, biosimilar and reference biologic makers engage with the act’s provisions after careful consideration of how it will impact their products’ time on market and future products’ regulatory and marketing success. In the meantime, legislators are also assessing whether or not the structure of the BCPIA adequately provides a framework for achieving Congress’s goal of increasing biologic affordability and accessibility in the U.S.

Looking ahead, at least eight additional potential patent disputes are anticipated in 2018. Actions taken by private parties and stakeholders in the U.S. government will continue to define how the BCPIA is interpreted and applied in the important biologics space.

Published by

Nathaniel Hendrix

Nathaniel Hendrix is a third year student at the CHOICE Institute. His dissertation is on the application of machine learning to cancer screening.

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