Pfizer’s patent on pregabalin — an anti-epilepsy med — expires this year, but there’s another patent on using the public domain drug to treat neuropathic pain; in a shocking letter to UK doctors, the pharma giant warns of dire consequences should medical professionals dare to prescribe the generic for the patented use.
This is a weird circumstance: Pfizer’s secondary patent is on a specific use of a drug that’s in the public domain. They want doctors writing neuropathic pain scrips to specify that the patient must take Lyrica, their name-brand version of pregabalin, even though it costs much more than generic pregabalin, and even though the two drugs are identical.
Weirder still is that Pfizer wants to make their stupid problem into everyone else’s stupid problem. The fact that it’s hard to enforce this kind of secondary patent is Pfizer’s business, not doctors’. Doctors’ duty is to science and health, not Pfizer’s profit-margins. Scientifically, there’s no difference between the two compounds. Doctors who prescribe generics leave their patients (or possibly the NHS) with more money to pursue their other health goals.
If your dumb government monopoly is hard to enforce, maybe you shouldn’t be banking on it. But in the world of corporatist sociopathy, where externalising your costs on others isn’t just a good idea, it’s your fiduciary duty to your shareholders, Pfizer’s actions are practically inevitable.
(Thanks, Ben!)
[Date]
[CCG Address]
Dear [NAME]
Re. Lyrica (R) (pregabalin) pain patent
I am writing to you to ensure you are informed about the relatively unusual issues surrounding the loss of exclusivity situation for the Pfizer product Lyrica (pregabalin) and so that you can take necessary action to prevent patent infringement by your organisation.
An appendix is attached describing the factual aspects of the situation in detail to ensure that you have the full information available. You will see that, whilst the basic patent for pregabalin has expired and regulatory data protection for Lyrica expired in July 2014, Pfizer has a second medical use patent protecting pregabalin’s use in pain which extends to July 2017. Pfizer conducted further research and development on pregabalin leading to the invention of its use in pain and hence was granted a second medical use patent for this indication. This patent does not extend to pregabalin’s other indications for generalized anxiety disorder (GAD) or epilepsy.
As a result of the pain patent, we expect that generic manufacturers will only seek authorisation of their pregabalin products for use in epilepsy and generalised anxiety disorder and not for pain, whilst Pfizer’s pain patent is in place. Generic pregabalin products therefore are expected not to have the relevant information regarding the use of the product in pain in the PIL (Patient Information Leaflet) and SmPC (Summary of Product Characteristics). In other words, the generic pregabalin products are expected to carry so-called “skinny labels†and will not be licensed for use in pain. In the circumstances described above, Pfizer believes the supply of generic pregabalin for use in the treatment of pain whilst the pain patent remains in force in the UK would infringe Pfizer’s patent rights. This would not be the case with supply or dispensing of generic pregabalin for the non-pain indications, but we believe it is incumbent on those involved to ensure that skinny labeled generic products are not dispensed and used for pain.
In this regard, we believe the patent may be infringed, even potentially unwittingly, by pharmacists and others in the supply chain, if they supply generic pregabalin for the pain indication. Without information, guidance and practical solutions from the authorities, Pfizer believes that multiple stakeholders, possibly without realizing, may contribute to patent infringement which would be an unlawful act. This runs contrary to the government’s established policy of rewarding additional research by the granting of a second medical use patent.
We also note that, by issuing guidance, your CCG is able to influence patterns of prescribing and dispensing in your area. We believe these powers must be exercised responsibly and with a view to avoiding the infringement of Pfizer’s pain patent.
In view of the above, Pfizer requests that you issue appropriate guidance to prescribing clinicians within your CCG to help to ensure that our pain patent is respected and that all prescribing clinicians are aware of the pain patent situation.There are a number of ways in which this might be achieved, but the simplest solution, we believe, is for clinicians to be advised to prescribe Lyrica (R) by brand when prescribing pregabalin to treat neuropathic pain. Pharmacists will then be able to dispense Lyrica (R) against such prescriptions and this will ensure that they do not infringe the pain patent. In addition this will mean that patients with pain will be provided with a PIL that describes the use of pregabalin in pain.
Your CCG may also consider reviewing patient records retrospectively (in advance of the availability of generic drugs) and use prescribing decision support mechanisms such as Scriptswitch to support appropriate ongoing prescribing. We are willing to discuss, or assist CCGs with, the development of other solutions.
We should also note that, in our view, (i) CCG guidance instructing or encouraging the usage of generic pregabalin in pain would amount to procurement of patent infringement (an unlawful act); and (ii) your CCG is under an obligation to address the risk of wide scale infringement of Pfizer’s patent rights. Pfizer therefore formally reserves all of its legal rights in this regard. If you have any questions in relation to the above please contact Pfizer Ltd on 01304 616161.
Yours sincerely
Ruth Coles
Legal Director
APPENDIX
Lyrica (R) (pregabalin) Pain Patent: Statement of Facts
A. Background
1. Regulatory data protection (data exclusivity) for Lyrica (R) expired in July 2014 across the European Union. Therefore, generic companies may now submit their applications for marketing authorisations for generic versions of pregabalin.
2. The composition of matter (basic) patent for pregabalin has also expired and the Supplementary Protection Certificate (SPC) relating to this patent has lapsed. There may be inaccuracies in some publicly available records — but as far as we are concerned the basic patent and the SPC are no longer relevant.
3. A patent protecting pregabalin’s use in pain is in force for the product until July 2017. This patent (sometimes called a ‘second medical use’ patent) arises from further research and development on pregabalin leading to the invention of its use in pain, after the original invention of the compound for other uses.
4. As you may be aware, Lyrica (R) is authorised for treating neuropathic pain, epilepsy, and generalised anxiety disorder. Pfizer’s pain patent only provides patent protection in respect of the use of pregabalin to treat pain.
B. Pain patent facts
Broadly speaking, a ‘second medical use’ patent is one that relates to a new medical use for a known pharmaceutical or biological compound. The use in question may consist of a new condition that can be treated with the compound (i.e. a new indication). Provided the new use meets the usual tests for patentability (i.e. novelty, an inventive step, etc.) then a patent can be granted to protect it. In fact, the use in question does not have to be the second medical use, since it could be the third, fourth, etc, and the same rules would apply.
This has been the case in Europe for many years. Second medical use patents are recognised in Art 54(5) of the European Patent Convention 2000, provided that the specific use is novel (i.e. not comprised in the state of the art). Art 54(5) of the European Patent Convention 2000 is implemented by primary legislation in the UK through section 4A of the Patents Act 1977 (as amended by the Patents Act 2004).
Pfizer’s Lyrica pain patent in Europe is number EP 0 934 061. Details can be found on the European Patent Office online register here:
https://register.epo.org/application?number=EP97932617&tab=main
Pfizer believes the patent is valid and that it prevents the sale of pregabalin for use in pain, which is the largest indication for which Lyrica is prescribed (pain comprises the majority of all prescriptions in the UK).
Accordingly, Pfizer believes that appropriate safeguards should be put in place to ensure that the generic product is not dispensed in situations where pregabalin has been prescribed for pain. Pfizer has no issue with generic supply / dispensing of generic pregabalin for the non-pain indications. Both Generics (UK) Limited (trading as Mylan) and Actavis Group PTC ehf have sought to challenge the validity of the pain patent in the English Patents Court. The two sets of proceedings will be heard together at a trial commencing in June 2015. Pfizer believes the pain patent is valid and will be contesting the case vigorously.
C. Generic pregabalin
Whilst Pfizer’s pain patent remains in effect, we expect that generic manufacturers will generally only seek authorisation of their pregabalin products for use in epilepsy and generalised anxiety disorder, i.e. the two indications for which Pfizer has no patent protection. This would mean that generic pregabalin products will not have relevant information regarding neuropathic pain in the PIL (Patient Information Leaflets) and Summary of Product Characteristics. Pregabalin generics will contain the same active substance as the originator branded medicine, Lyrica (R) and (as mentioned above) are generally expected to obtain a licence which will only cover the epilepsy and generalised anxiety disorder indications, based on their ability to demonstrate bioequivalence with Lyrica (R) . There will be no clinical superiority of the originator branded medicine Lyrica (R) over generic pregabalin.
Pfizer is not involved in the regulatory procedures of generic competitors. However, we have been notified by one generic company (Actavis Group PTC ehf) that it intends to launch generic pregabalin in the UK in December 2014 or January 2015, with an authorisation and label that will only cover the epilepsy and generalised anxiety disorder indications. Other generic companies may be operating to a similar — or even a faster – timeframe.
On 8 December 2014, Pfizer issued infringement proceedings against Actavis Group PTC ehf, Actavis UK Limited, and Caduceus Pharma Limited concerning the proposed launch of their generic pregabalin product. Pfizer also issued an application for interim relief on this date, seeking appropriate precautions to minimise the risk of the Actavis generic pregabalin product being prescribed or dispensed for pain. The interim relief sought by Pfizer does not interfere with Actavis’ ability to sell its generic pregabalin product for the epilepsy and generalised anxiety disorder indications for which it is authorised. Pfizer has no issue with Actavis selling its generic pregabalin product for non-patented indications. Indeed, Pfizer proposed to Actavis to engage in a collaborative effort to ensure that its generic pregabalin is not supplied or dispensed for pain and could accordingly be launched without the need for a court dispute.
D. What it means The Lyrica (R) pain patent situation is a legal issue rather than a clinical one. Pfizer believes the supply of generic pregabalin for use in the treatment of pain, whilst the pain patent remains in force in the UK, would be infringing Pfizer’s patent protection and would constitute an unlawful act. The patent may also be infringed, even unwittingly, by pharmacists and others in the supply chain. This may occur if either the pain indication or the brand Lyrica is not stated on the prescription and generic pregabalin is dispensed and used to treat pain — as opposed to epilepsy or GAD. Without information, guidance and a practical solution, Pfizer believes that multiple stakeholders may contribute to IP infringement, an unlawful act, which also runs contrary to the established policy of rewarding additional research by the granting of a second medical use patent.