Patents and Pharmaceutical Marketing

By: Maryam Shehadeh
Patent Marketing Officer/ AGIP Jordan

Could patents be used as a marketing tool for a pharmaceutical product? 
A lot of inventors in the pharmaceutical industry, pharmacists for instance, wonder about how to register patents for their pharmaceutical products, and they ask questions about the importance of such registration and how to use it as a marketing tool. Read the following to find answers for these questions:
A patent is considered a safe tool in the hands of its owner. It gives its owner an exclusive right on its inventive product against reproduction, imitation, or identification. A pharmaceutical product is patented if it is produced through a novel manufacturing method, introduced in a new manner, accomplished a new achievement, or provided a technical solution for a certain problem. 

What do patents provide for their owners?
Patents granted to the creators of new pharmaceutical products provide protection to such products for 20 years, provided that annual renewal fees are paid. Patents protect their owners against reproduction in many ways.

Is it permissible to grant a license to use an inventive pharmaceutical product?
The owners of patents, pharmacists who invented the products for instance, may give others a license to use such products. Licensing is based on terms agreed upon by both parties. Patents’ owners may also sell all of their rights to third parties, so the patent will be, pursuant to the deed of assignment, owned by the new owner. 

What is the legal procedure that follows the expiration of the patent protection period of a pharmaceutical product?
After the expiration of the protection period, which is specified pursuant to the international law for patents and differs from a country to another, the patent owner loses his/her exclusive rights in using such a patent  and the invention falls into the public domain, and it becomes available for use by anyone according to the legally commercial methods. 
Patents give their owners, whether individuals or entities, crucial weight regarding the commercial investment of patents. Moreover, the patents system gives the owners a strong position that qualifies them for competitiveness and gives them edge over other competitors in the market. 

Patents for pharmaceutical products contribute to increasing the return on investment by making use of the exclusive marketing of the invention during the patent protection period, in addition to the possibility of licensing specific entities to use the invention. Owners of patents may also waiver or sell their patents to manufacturing companies, which have the ability to commercially invest in the product. Moreover, if the patent is owned by a company with a trademark, the patent will give added value to this trademark. 

Why patents are important for pharmaceutical products?
-Patents prevent competitors from imitating the products.
-Patents prevent competitors from dealing with the products by any means, such as by using, selling, offering to sell, or importing it, unless with a prior license.
-Patents allow their owners to sell their products or transfer their ownership, so the license will be treated as a contract by which the owner of the patent allows others to use the invention, whether for a consideration, or free of charge, for a specified usage in specific regions (the license may be granted throughout the lifetime of the patent). Licenses may also be used to allow individuals/entities working in R&D of following the recent technological advances in the patents field. Such technologies are required in the production of new pharmaceutical products, in accordance with agreed conditions.

Thus, patents and licenses in the field of pharmaceutical marketing are two separate issues. Granting a patent to a new medicine in a certain country does not give the owner of the patent the right to sell the medicine in that country without the permission of the regulatory authority (FDA for instance). Moreover, there is no relation between granting a patent and the approval of the regulatory authority, although some countries require the applicants to obtain patents as an initial condition of obtaining the approval of the regulatory authorities (FDA, for instance). Patents’ owners should also provide information about whether they obtained patents or not, in addition to information about the granted patents. Some countries prevent its regulatory authorities (the FDA for instance) of granting a marketing license unless a relevant patent is obtained.

Two common examples of the licenses granted in the pharmaceutical industry are as follows:
-A license that allows third parties to use patents during the protection period, which is known as “research exception,” by which such parties are allowed to use inventions for research purposes during the validity period of the patent. 

-“Regulatory review exception,” an exception that allows competitors who produce generic medicines of a limited use of the invention that obtained a patent before the expiration of such a patent for the purpose of obtaining a license to market a competitor’s product, this exception is known as “Bolar exception” 

In cases where the competition is based on the quality of the pharmaceutical product and the service provided along with the invention, it will be appropriate, in addition to protecting the invention as a patent, to protect the trademark in order to prevent others from trading by exploiting the name of the manufacturing company and its goodwill.
For the aforementioned reasons, patents are effective tools that help in marketing pharmaceutical products, though the commercial success of the invention cannot be ensured once the patent is granted, because such success depends on the market needs, customer satisfaction, targeted segments, and their need for the pharmaceutical product. 

Abu-Ghazaleh Intellectual Property (AGIP) is one of the pioneers in the field of intellectual property in general. AGIP provides comprehensive services to meet the requirements of its beneficiaries; such services include, patents registration, patents anti-infringement and related legal actions, licensing, and consultation services relevant to patents, trademarks, industrial designs, copyrights and domain names.
AGIP provide its services through a team of specialized experts in these fields as the top company in the world in the field of IP registration and protection. AGIP guarantees the speedy completion of its transactions and follow up and success of such transactions, through its more than 100 offices around the world and through a network of more than 180 liaison offices.

References:  WIPO
For more information about the services provided by AGIP, click on the following link:
www.agip.com