Hatch waxman act

HATCH-WAXMANACT
BY
V.DEEPIKA
M.PHARM IYR
(PHARMACEUTICS)

CONTENT
 Introduction
 Objectives of the act
 Provisions of the act
 Orange book
 Types of patent certification
 Para IV- patent challenge
 Incentives and protection
 Para IV deadline
 Delay in generic entry

INTRODUCTION
 It is Also known as “THE DRUG PRICE COMPETITION
AND PATENT TERM RESTORATION ACT”
 Enacted in 1984 .
 Amended the patent laws
 Before 1962- new drug approval based on safety alone
 In 1962-proof of efficacy made compulsory for marketing
approval of a new drug (Kefauver-Harris Amendments)
 There was no provision for patent term extension prior to
enactment of the Hatch Waxman Act, to make up for the time
lost out of the total patent term during the marketing approval
process

CONT…
 Generic companies required to submit their own comprehensive
NDA
Costly
Time consuming
 If drug was covered by patent ,Testing could not begin until
patent expired.
 To overcome the above problems an act was needed to promote
generic companies

OBJECTIVES
 Reducing the cost associated with the approval of a generic
drug
 Allowing Early-Experimental-Use
 Compensating the branded drugs manufacturers for the
time lost from the patent term because of the regulatory
approval formality
 Motivating the generic drug manufacturers

PROVISIONS
 Creation of section 505(j)
 Section 505(j) established the ANDA approval process
 The timing of an ANDA approval depends in part on patent
protections for the innovator drug
 NDA must include any patent that claims the "drug" or a
"method of using [the] drug" for which a claim of patent
infringement could reasonably be asserted
 On approval of NDA, FDA publishes patent information for
drug in Orange Book (“Approved Drug Products with
Therapeutic Equivalence Evaluations”)

ORANGE BOOK
 FDA publishes patent information on approved drug products in
the Orange Book
 An NDA applicant must submit the following information for
each patent:
Patent no and date on which the patent will expire
Type of patent, i.e. drug, drug product, or method of use
Name of patent owner
The name of an agent of the patent owner or applicant
 Brand drugs listed for generics to compare with their proposed
products

TYPES OF
PATENT
CERTIFICATION
 When an applicant submits an ANDA to the FDA, the applicant
must certify one of four things under section 505(j)(2)(A)(vii):
That the required patent information relating to such patent has
not been filed (Para I) ;
That such patent has expired (Para II) ;
That the patent will expire on a particular date (Para III);
That such patent is invalid or will not be infringed by the drug,
for which approval is being sought (Para IV – Patent
Challenge)

PARAIV- PATENT
CHALLENGE
GENERIC- para IV filing
GENERIC- provide notice to brand within 20 days of
acceptance
BRAND- must bring lawsuit within 45 days
GENERIC- if sued, automatic 30 month stay granted to
BRAND

INCENTIVES
AND
PROTECTION
 180 day market exclusivity:
 First applicant to submit a substantially complete ANDA (first
to file)
 30month stay of FDA approval:
 If patent owner or NDA holder sues the ANDA applicant for
patent infringement within 45 days of receiving notice of the
Paragraph IV certification
 Runs from date of notification or expiration of NCE exclusivity
 May be lengthened or shortened by the court

PARA- IV
DEADLINES
NOTIFICATION LETTER : 20 DAYS
 Upon ANDA acceptance for filing, the applicant must notify the
NDA holder and patent owner of the ANDA within 20 days.
The notice must include a detailed statement of the factual and
legal basis of the opinion of the applicant that the patent is
invalid or will not be infringed
LAWSUIT: 45 DAYS
 Upon notification, the NDA holder and patent owners have 45
days in which to initiate an action for patent infringement. If
such an action is brought within 45 days, the ANDA is subject
to a 30-month stay of FDA approval beginning on the date the
notification letter was received

BENEFITSFOR
BRANDED
MANUFACTURER
 Orange Book provides public notice of patents
 Allows for resolution of patent disputes prior to generic entry
 30-month stay of FDA approval of generic drugs
 Patent Term Restoration
 Allows for Several Market Exclusivities:
 Data Exclusivity
 5 years for New Chemical Entity (NCE) Drug
 3 years for non-NCE Drug
 Orphan Drug (7 years)
 Pediatric (PEDS) (6 months)

BENEFICTSFOR
GENERIC
MANUFACTURES
 180-day market exclusivity for first successful challenger to
Orange Book patent
 Allows generics to challenge Orange Book patents without risk
of damages
 “Safe Harbor” rule allows generics to perform bioequivalence
and other testing relating to regulatory approval without risk of
patent infringement

DELAY IN
GENERIC ENTRY
 Reverse payment agreements
 Sham litigations
 Sham citizens petitions
 Walker process
 Product hopping

REVERSE
PAYMENT
AGREEMENTS
 Both parties decide it is in their mutual best interests to settle
via a significant payment from the patent owner/branded to
the generic to keep the generic drug off the market
 The generic may make more money than by rushing to
market the drug
 The branded may also make more money by paying the
generic to defer marketing the drug for a certain period of time

SHAM
LITIGATIONS
 Brand sues generic for patent infringement
 Court finds for generic, often on SJ, and holds patent invalid or
unenforceable
 Hatch-Waxman 30-month stay allows brand to win even if they
lose
 Plaintiffs must prove brand’s infringement suit is objectively
and subjectively baseless

SHAM CITIZEN
PETITIONS
 Companies can petition FDA to not approve an ANDA
Should be based on safety or formulation concerns
 Citizen’s Petitions delay approval of ANDAs
Ripe for abuse, and often abused
 Delay itself is the goal
 Same standard as Sham Litigation

WALKER
PROCESS
 Antitrust violation premised on fraud on the PTO
 Patent applicants have a duty of candor to PTO because
applications are ex part
 Elements track fraud claims
 Often coupled with Sham Litigation and other theories

PRODUCT
HOPPING
 Delay sometimes allows brands to introduce new versions of
the product
 Changes are often minimal but can defeat generic competition
 Brands actively convert the market
– Free samples
– Pulling the “old” product from the market

Hatch waxman act

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