Brinckerhoff Comments on Supreme Court’s Decision Not to Review Enbrel Patent Ruling

Partner Courtenay Brinckerhoff was quoted in an IAM article, “Supreme Court double patenting decision worth $40 billion to Amgen,” about the Supreme Court’s decision to let stand a Federal Circuit ruling that Amgen Inc.’s patents for its blockbuster autoimmune drug Enbrel weren’t invalid for double-patenting, effectively blocking Sandoz Inc. from selling a biosimilar version of the drug until 2029.

Brinckerhoff said it may be the case that the Federal Circuit majority’s support for the “all substantial rights” test creates additional validity risks for in-licensed patents, which are no longer automatically exempt from double patenting challenges.

“If this creates double patenting issues, the way to resolve them is to issue a terminal disclaimer limiting the term to expire with the earlier patents,” she said. “In principle, the decision could actually end up shortening patent terms where exclusive licensees have other patents that raise these issues.”

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