INDIA: Roche-Cipla Patent Saga continues: Cipla Appeals before the Supreme Court of India

February 1, 2016

The patent infringement dispute between Cipla Ltd. (“Cipla”) and F. Hoffmann-La Roche Ltd. (“Roche”) and Ors. took a new turn when Cipla filed an appeal by way of a Special Leave Petition before the Supreme Court of India (SLP Nos. 1677-1678/2016).

The highly anticipated appeal is against the judgment dated November 27, 2015 (as modified on December 08, 2015) of the Division Bench of the Delhi High Court in RFA OS Nos. 103/2012 and 92/2012, which had ruled that Cipla had infringed Roche’s patent in the cancer drug ‘Tarceva’ (erlotinib) by marketing a generic version of the drug under the name ‘Erlocip’. The said judgment of the Delhi High Court was earlier covered in Issue No.49 of IP Connect which can be accessed

The Division Bench of the Supreme Court of India comprising of Hon’ble Mr. Justice Ranjan Gogoi and Hon’ble Mr. Justice Prafulla C. Pant has admitted Cipla’s appeal and granted leave, and fixed the case for final disposal on March 16, 2016. The Apex Court also directed the parties to the case to file their written arguments and exchange further pleadings, if any, in the meantime. The written arguments in the case have been directed to be filed on or before March 2, 2016, on perusal of which the Court would decide as to whether in the facts of the case it is necessary to appoint an independent Scientific Adviser under Section 115 of the Patents Act, 1970.

Indian Patents Act

With regard to interim relief, the Apex Court directed that the proceedings pursuant to the impugned order passed by the Division Bench of the High Court shall continue, however, no final orders shall be passed without leave of the Supreme Court.

Interestingly, while the final disposal of Cipla’s SLP has been fixed in March as aforesaid, Roche’s patent in its Erlotinib Hydrochloride molecule / Tarceva drug also expires in March 2016 due to which Roche’s prayer of injunction against Cipla was not granted by the Delhi High Court and only a rendition of accounts alongwith a cost of INR 500,000/- was imposed on Cipla.

The present case between Roche and Cipla has received wide attention and spurred debates over the extent of applicability of Section 3(d) of the Patents Act, 1970 dealing with patent eligibility, and the final outcome of Cipla’s appeal is surely going to be one of the most anticipated.

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