Sanofi, Apricus, WIPO, Nestle: Intellectual Property

Sanofi-Aventis SA and Abbott Laboratories won a U.S. trial seeking to halt Glenmark Pharmaceuticals Ltd.’s sales of a generic version of their Tarka hypertension drug. Abbott was awarded $16 million in damages.

A federal jury in Newark, New Jersey, on Jan. 14 rejected Glenmark’s challenge to the validity of Sanofi’s patent 5,721,244, which expires in February 2015. Glenmark argued that the patent covered an invention protected by an expired patent.

Abbott, which paid $290 million for an exclusive license to Tarka, was seeking $25 million as compensation for profit it lost by Glenmark’s sale of copies. Paris-based Sanofi owns the patent on Tarka, first approved by drug regulators in 1996.

Glenmark had received U.S. Food and Drug Administration approval to market the copy, and notified Sanofi and Abbott that it wouldn’t wait for the results of the trial. Mumbai-based Glenmark began sales in June after U.S. District Judge Dennis Cavanaugh in Newark rejected a request by Sanofi and Abbott to stop sales. As the first to challenge the patent, Glenmark had exclusive rights to the generic market for Tarka for six months.

Glenmark reported in October a 26 percent jump in sales of generics in the U.S., a market that accounts for 68 percent of the company’s generic-drug revenue. The introduction of the Tarka copy helped boost sales, the company said.

The patent is for an angiotensin-converting enzyme, or ACE, inhibitor with a calcium channel blocker. Tarka combines the ACE inhibitor trandolapril with verapamil hydrochloride. Glenmark said the patent was little different from ones covering other ACE inhibitors, including the compounds quinapril and ramipril.

Abbott argued that Tarka was different from the earlier combinations, and pointed to the success of the drug as evidence that it was unique. The Abbott Park, Illinois-based company doesn’t break out sales of the drug

Abbott has said a competing generic version of Tarka would cost the company $150 million to $270 million in business over the remaining life of the patent, according to court records. Abbott reported $30.8 billion in sales in 2009.

The case is Sanofi-Aventis Deutschland GmBh v. Glenmark Pharmaceuticals Inc. USA, 07-cv-5855, U.S. District Court, District of New Jersey (Newark).

Apricus to Get Japanese Patent for Erectile-Dysfunction Cream

Apricus Biosciences Inc., a biotech company that develops products to treat sexual dysfunction, said it will receive a Japanese patent for a topical cream that helps prevent premature ejaculation.

The San Diego-based company said in a statement that it got notice from the Japanese Patent Office that it’s decided to issue the patent.

The cream contains prostaglandin E, a lipid molecule that has been used in other forms to treat sexual dysfunction. Previously, the drug has been administered by an injection into the penis or through penile suppositories.

Vitaros, the product covered by the patent, has been approved for sale in Canada, according to the company statement. Unlike other products used to treat erectile dysfunction, the cream can be used by patients with diabetes or heart conditions, the company said.

The product for the Canadian market will be made by a unit of Milan’s Bracco SpA, Apricus said in a Dec. 1 statement. Bracco will also have the exclusive right to market Vitaros in Italy.

WIPO Website Look-Alike Seeks Registration Fees for Patents

A Prague-based organization that solicits fees for registering trademarks and patents operates through a website that is a lookalike to that of the World Intellectual Property Organization.

Geneva-based WIPO is a United Nations agency with the responsibility to promote the protection of intellectual property worldwide through the cooperation among states and collaboration with other international organizations, according to its website.

The World Intellectual Property Database of Prague says on its website that it’s “an organization whose task it is to manage the world database falling within the area of intellectual property, in particular patents and trademarks.”

The websites of both organizations have the same blue and gray color scheme and similar-looking logos of swirling blue parallel lines. The logo on the Czech website swirls around the letters WIPD while the U.N. agency’s logo swirls around the letters WIPO.

According to its website, the Czech organization charges fees of $2,329 for registration in it database of U.S. patents and $2,327 to register a trademark in its U.S. trademark database. Other fees apply for registration in its European and world databases.

The Czech group’s website lists 28 of what it calls “Top Registered Patents” and 29 “Top Registered Trademarks.” The company does not say whether these are listed in its database or if it has collected fees from any of the entities.

One of the trademarks it listed is “Style Uncorked,” registered to Planned Parenthood Pasadena and San Gabriel Valley. One of its listed patents is an application from a Dutch inventor for a device used in the assembly of masonry walls.

The WIPD website doesn’t give a telephone number or e-mail address for contact information. According to the WhoIs domain- name lookup service, it is registered to a David Cabal of Prague. A request for comment e-mailed to Cabal didn’t receive an immediate response.

WIPO, the U.N. agency, listed a warning on its website that a variety of organizations are inviting applicants to pay fees that are unrelated to its work. It appended an application form from WIPD that requests payment of 1,386 British pounds ($2,200) to list the application in its database.

For more patent news, click here.

Copyright

Telstra Seeks High Court Review of Yellow Pages Ruling

Telstra Corp., the Melbourne-based telecommunications company, will ask Australia’s high court to review a lower-court ruling that its Yellow Pages and White Pages directories are no longer covered by copyright, the Sydney Morning Herald reported.

In 2010, judges in Australia’s Federal Court said copyright no longer applied to the directories because their compilation and publication are computerized, the newspaper reported.

Telstra is arguing that work done by the staff at its Sensis unit is enough for copyright to apply, the Herald said.

Scott Buchanan of Melbourne’s DLA Phillips Fox told the newspaper Telstra’s appeal may fail because the high court “has recently expressed a level of disdain towards allowing copyright to be used to protect informational work such as databases.”

For more copyright news, click here.

Trademark

Nespresso Didn’t Copy French Cup Design, Court Says

Nestle SA’s Nespresso didn’t copy French tableware designer Silodesign SARL’s handle-less, glass coffee cup, a Paris court ruled Jan. 14.

Nespresso’s Citiz line of glass coffee and espresso cups have enough visible differences that a customer wouldn’t confuse them with Silodesign’s cup design, the court said.

“The incriminated glasses or cups don’t give an impression that’s on the whole identical to the claimant models,” Judge Veronique Renard wrote in the 11-page decision issued by the three-judge panel.

Nespresso is the fastest-growing major brand for Vevey, Switzerland-based Nestle, the world’s largest food company. Nespresso’s single-serve coffee and accessories, sold in more than 50 countries around the world, account for almost 3 percent of Nestle’s sales and are expected to have topped 3 billion Swiss francs ($3.1 billion) in 2010.

Silodesign said Nespresso copied its design after a production problem prevented it from fulfilling an order to supply them directly. The court agreed that Silodesign’s model is protected, and dismissed Nespresso’s countersuit, alleging the case was abusive.

Claire Bertheux Scotte, a Silodesign lawyer, declined to comment on the ruling.

Wilzig’s Erotic Art Museum Sues Photographer Who Posted Images

The owner of the World Erotic Art Museum in Miami Beach, Florida, is seeking $2 million in damages from a photographer who posted pictures he shot at the museum on Yahoo! Inc.’s Flickr photo-sharing site.

Andrew Peterson, who does business as Thomas Hawk, is accused of posting 350 photos he shot inside the museum on Flickr. Ms. Naomi International Inc., the museum’s owner, said that the display included the museum’s trademark without authorization and that it has a notice at the doorway barring professional and flash photography.

Ms. Naomi “at no time” gave Peterson permission or authorization to take the pictures, the company said in its complaint filed Jan. 10 in federal court in Miami.

Peterson, in a posting on his Thomas Hawk’s Digital Connection website, said he saw no sign barring professional photographers and that Flickr is “strictly defined as a non- commercial photosharing site.” He said he hasn’t sold any of the photos.

“I have not profited one cent on any of the images I posted,” he said. He also disputes the museum’s contention that there was no permission to take photos.

Peterson said he was approached by a museum employee while shooting. After responding negatively to a query about whether he was making a book, Peterson was told what he was doing was “fine,” he said.

He said the museum filed a request under the Digital Millennium Copyright Act even though it doesn’t own the copyrights to the images on Flickr.

In court papers, the museum said it’s the owner of the copyrights to 28 items that it listed in the complaint and Peterson allegedly photographed. These included an 8-foot (2.4- meter) fiberglass phallus, an erotic devil jug with a phallic spout and a wall plaque with 100 vulva sculptures, according to the complaint.

The museum was created in 2005 to house the 5,000-piece collection of Naomi Sisselman Wilzig. She is the widow of Siggi B. Wilzig, a Holocaust survivor who led Wilshire Oil Co. --today Wilshire Enterprises Inc. -- and the Trust Company of New Jersey.

According to the complaint, a number of the pieces Peterson photographed were commissioned by Naomi Wilzig, including a statue of her.

In addition to $2 million in damages, Ms. Naomi asked for an order barring future use of the images by Peterson, plus attorney fees and litigation costs.

Ms. Naomi is represented by Richard Charles Wolfe of Ehrenstein Charbonneu Calderin of Miami, and Ivan Jose Parron of Parron & Associates PL of Miami Beach.

The case is Ms. Naomi International Inc., v. Peterson, 1:11-cv-20098-AJ, U.S. District Court, Southern District of Florida (Miami).

Red Cross on Scotland Pantomime Costume Draws Aid Group’s Ire

Producers of the annual holiday pantomime at Glasgow, Scotland’s Pavilion Theatre were told by the British Red Cross that they violated the Geneva Convention, the U.K.’s Independent reported.

The aid group objected to red crosses on the costume of a nurse character, according to the newspaper.

A representative of the Red Cross told the Independent that while the group had no desire “to be the villains of the pantomime or to appear heavy handed,” its logo is “a special sign of neutrality and protection.”

Misusing the emblem “could dilute its neutrality and ability to protect,” the newspaper reported.

For more trademark news, click here.

To contact the reporter on this story: Victoria Slind-Flor in Oakland, California, at vslindflor@bloomberg.net.

To contact the editor responsible for this story: David E. Rovella at drovella@bloomberg.net.

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