On June 1, 2018, the Moscow Arbitration Court satisfied the claim to issue a license for the use of a Celgene Corporation’s patent in respect of dependent invention, which Nativa LLC plans to use in the manufacturing of medicinal product (INN: lenalidomide).
This was the first court decision in favor of a Russian participant in the pharmaceutical market. Previously, no Russian pharmaceutical manufacturer ever attempted to obtain such license in Russia from originators. Nativa will be paying the license fees for the use of patent.
“This is the first court decision to issue a license in respect of a dependent invention, despite the fact that the relevant norms on the procedure for granting such licenses have long been introduced in the Civil Code of the Russian Federation,” said Yulia Gerasimova, Deputy General Director of Nativa LLC. “Its conclusions will certainly have a strong impact on further development of licensing practices in the manufacturing of medicinal products in Russia. According to the FAS of Russia, right holders often abuse their position, and this greatly hinders the development of manufacturing and supplies of socially important drugs in the Russian Federation.”
Nativa proved in the court that the patent holder and exclusive licensee of dependent patent have every ground to obtain the license, as the invention of the company is an important technical achievement, and it also has significant economic benefits compared to the product of the first patent holder.