Intellectual Property Management: Stories of Successful Strategies Srividhya Ragavan Professor of Law University of Oklahoma Law Center

Schering Corp – owned the ‘233 patent for loratadine – marketed as Claritin. 3 years later - ‘716 patent filed and issued for the DCL metabolite formed in the patient’s body upon ingestion of loratadine. Loratidine/ claritin patent expired. Schering Corp. v. Geneva Pharmaceuticals, 339 F.3d 1373 (Fed. Cir. 2003) (c) Srividhya Ragavan

Geneva Pharmaceuticals wanted to market a generic version of claritin/loratidine. Schering sued for infringement - when patients take generic loratadine – they are making DCL in body & hence infringing Schering’s ‘716 patent. Schering Corp. v. Geneva Pharmaceuticals, 339 F.3d 1373 (Fed. Cir. 2003)

Several instances of IP Management - only showcases the consciousness required by counsels. E.g., Reverse payments settlements: In Re Tamoxifen Citrate (11 th Circuit): AstraZeneca (tamoxifen patent) & Barr Labs (ANDA filer). AZ paid $21 million payment in exchange for Barr’s withdrawal of its Paragraph IV certification and pat. challenge. (c) Srividhya Ragavan

Schering-Plough Corp. v. FTC, 402 F. 3d 1056 SP - patent holder of Klor Con (kcl). Sued Upsher Pharma (ANDA filer). Ag/mt between SP and Upsher license Upsher’s Niacor. $60 million initial licensing fee $10 million in milestone royalty payments 10-15% running royalties on five drugs owned by the generic company Upsher agreed to a compromise date for market entry of it generic potassium product. (c) Srividhya Ragavan

Innovator Gilead in novel generics deal - DNA (Hyd), July 13 th Hyd Gilead tying up with generics (Hetreo, Ranbaxy and Matrix) Launching branded product at the same time Products under Phase III testing

Strategizes the publicity rights (part of TM rights) of celebrities after posthumously Strategizes the publicity rights (part of TM rights) of celebrities after posthumously Mark Roesler CMG World Wide Mark Roesler CMG World Wide Marlyn Monreo LLC- Sued Shaw brothers, the photographers of subway grate. - $ 7 million worth of merchandise Marlyn Monreo LLC- Sued Shaw brothers, the photographers of subway grate. - $ 7 million worth of merchandise Posthumous IP Management

The Kellog Wheat Biscuits Shredded doormat Henry Perky – patented the biscuit and the machine in 1895 Henry Perky – patented the biscuit and the machine in 1895 Shredded Wheat Co acquired by Nabisco NABISCO sued: -Shape of biscuits - Term Shredded Wheat NABISCO sued: -Shape of biscuits - Term Shredded Wheat Kellogg v. National Biscuit Co., 305 U.S. 111 (1938)

Private & Government Management of IP? Disney started lobbying efforts – Disney paid $ 6.3 million in campaign donations CTEA – 1998 (105 th Congress) Steamboat Willie Due to expire Date to expire

The Mouse that Ate the Public Domain Walt Disney Inc’s IP Management Note that Mickey Mouse and other characters are protected by: 1.Copyright 2.Trademarks Note that Mickey Mouse and other characters are protected by: 1.Copyright 2.Trademarks (c) Srividhya Ragavan

Continued economic benefits of a healthy balance of trade surplus in the exploitation of copyrighted works.balance of trade Adequate CR protection for American works in foreign nations Incentive to digitize and preserve works. What is the legislative justification? (c) Srividhya Ragavan

Public Domain Term of Protection original renewal term 1976 Act (19 years) 1998 Sonny Bono © Extension Act (20 years) Renewal Registration

Kingfisher and Spice Jet clothes Following trademarks: Trade dresses: Examples from India (c) Srividhya Ragavan

Why should IP be managed? Maximization of returns Co-relation between IP and market objectives Hence, corporate counsels work with different departments for different IP management For e.g.,: with marketing department for branding With scientists for patents, etc. (c) Srividhya Ragavan

IP management is not patent management It is not getting minor patents and stacking them up US statistics that only 8% of the issued patents are renewed Governments and judiciary manage IP rights too Diamond v. Chakraborthy Novartis; Roche v. Cipla etc., in India IP Strategy is not just engaging a good IP law firm - it is a corporate exercise. (c) Srividhya Ragavan

Thank you