Hatch-Waxman & Biologics

Recent News:

Q&A: Shouvik Biswas, Aaron Lukas and Blake Coblentz on the America Invents Act

Blake Coblentz and Aaron Lukas spoke with World Intellectual Property Review to discuss the 10-year anniversary of the America Invents Act (AIA).

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Cozen O’Connor is an Am Law 100 firm with a nationally recognized Hatch-Waxman and Biologics/Biosimilars practice. We provide strategic counsel to companies seeking to enter the U.S. small molecule and biologics/biosimilars markets.

Our dedicated team includes licensed patent attorneys with advanced degrees in organic chemistry, molecular cell biology, immunology, and biophysics; former research scientists in industry and academia; and intellectual property litigators with decades of first-chair trial experience.

The Hatch-Waxman Amendments to the Food, Drug & Cosmetic Act in 1984 created a new marketplace for generic pharmaceuticals by lowering barriers to FDA approval and establishing a period of exclusivity through the Abbreviated New Drug Application (ANDA) process. Cozen O’Connor has high-level experience representing both branded and generic drug companies from the earliest stages of drug development through regulatory review, and, in some cases, litigation. Our team has successfully partnered with clients on more than 60 drug products, including for Apotex Inc.; ApoPharma, Inc.; Amneal Pharmaceuticals, Inc; Sandoz Inc., Dr. Reddy’s Labs, Mylan, Kyowa Kirin, Inc.; and Endo Pharmaceuticals Inc.

The firm also has a cutting-edge Biologics Price Competition and Innovation Act (BPCIA) practice. In September 2016, Cozen O’Connor attorneys won the first-ever patent trial under the BPCIA, which set the precedent that informs the “patent dance” and notice requirements under the BPCIA.  As the market for biologic/biosimilar products continues to grow, so will the need for legal counsel with a sophisticated understanding of the unique legal questions arising from the development, approval, sales, and marketing of biologic/biosimilar drugs.

Cozen O’Connor’s Hatch-Waxman and Biologics attorneys continue to distinguish themselves by providing comprehensive legal services. Our attorneys work closely with clients to monitor competitors, clear obstacles to the development and launch of new products, advise on the regulatory review process, and negotiate and draft settlement agreements between market competitors. When settlement is not possible or not advisable, Cozen O’Connor is fully prepared to go to trial — and win.

Services

  • Competitive intelligence concerning patent strategy, patentability, and freedom-to-operate
  • Assist with regulatory submissions, responses, and approvals
  • Advise on regulatory requirements concerning patent listing, exclusivity, and forfeiture
  • Guide strategic decisions around validity and/or infringement challenges to competitors’ IP
  • Counsel on market entry and expansion
  • Respond to government investigations
  • Lead counsel for litigation and settlement negotiations under Hatch-Waxman and the BPCIA 

Experience

Publications

Hatch-Waxman and BPCIA Cases and Trends to Watch in 2021 [IPWatchdog]

January 25, 2021

Blake Coblentz and Aaron Lukas co-authored an article about two major cases in 2021 that could have long-lasting effects on where and how Hatch-Waxman and Biologics Price Competition and Innovation Act (BPCIA) cases are litigated.

The PTAB Puts Hatch-Waxman Defendants on Notice: File IPRs Early or Risk Fintiv Discretionary Denial [IPWatchdog]

October 29, 2020

Blake Coblentz, Aaron Lukas, and Keri Schaubert wrote about the Patent Trial and Appeal Board (PTAB) denying the institution of Mylan Labs Ltd.’s petition for IPR of U.S. Patent No. 9,439,906 (“the ’906 patent”) in IPR2020-00440.

Maybe Biosimilar Applicants Should Dance After All [Biosimilar Development]

June 30, 2020

Blake Coblentz and Aaron Lukas wrote an article about the Biologics Price Competition and Innovation Act and the issues applicants face whether to go through the patent dance.

First Circuit Permits Antitrust Claims for Improperly Listing a Device Patent on the FDA’s Orange Book to Move Forward [Alert]

February 25, 2020

In a holding that could significantly broaden the antitrust inquiry in the context of the Hatch-Waxman regulatory scheme, on February 13, 2020, the U.S. Court of Appeals for the First Circuit issued an opinion that may have wide-ranging implications for both branded companies that own, and generic companies that challenge, patents listed on FDA’s Orange Book that claim drug delivery devices.

Breathing New Life Into The “Tangential” Exception to Prosecution History Estoppel [Alert]

August 26, 2019

Martin B. Pavane and Darren S. Mogil discuss the importance of carefully analyzing the prosecutorial history of a patent to determine the reason for the narrowing amendment. If the reason was only tangential to the equivalent at issue, estoppel will not apply.

FDA Issues Final Guidance on “Labeling for Biosimilar Products” [Alert]

October 18, 2018

The guidance emphasizes biosimilarity while recognizing key differences between biosimilar and reference products.

Sham Litigation in a Hatch-Waxman Action [Intellectual Property Alert]

July 09, 2018

Marilyn Neiman and Martin B. Pavane discuss the largest award in a litigated FTC antitrust case and what it means for brand pharma and their Hatch-Waxman case filings.

The Trans-Pacific Partnership and Its Effect On Biosimilars [Inside Counsel]

November 23, 2015

Aaron Lukas and Keri Schaubert, associates of Cozen O’Connor’s IP group, discuss the effect that the Trans-Pacific Partnership will have on the biopharmaceutical and biosimilar industry.

Supreme Court: Reverse Payment Settlements Subject to Antitrust Scrutiny [Intellectual Property Alert]

June 25, 2013

On June 17, 2013, the U.S. Supreme Court handed down a decision that addressed a “reverse payment” settlement agreement between a brand-name pharmaceutical company and multiple generic drug companies. The Supreme Court held that a settlement agreement in which a patentee pays an accused infringer not to enter the market – even if the agreement allows market entry before the patent term expires – is not presumptively lawful and is still subject to antitrust scrutiny.

Supreme Court Revisits Pre-emption Pertaining to Pharmaceuticals [The Legal Intelligencer]

June 13, 2013

The U.S. Supreme Court is presently considering whether federal law pre-empts state design-defect claims targeting generic pharmaceutical products. Just two years ago, the court insulated generic-drug manufacturers from state-law failure-to-warn claims. It seems doubtful that any of the justices in that majority will treat this case differently, and, thus, generic drugmakers may soon enjoy a new immunity.

Events & Seminars

Upcoming Events

Exploring the Link between the FDA Approval Process and the Patenting of Drugs and Biologics

October 07, 2021 - Webinar

Aaron Lukas will be presenting at the Hatch-Waxman and BPCIA Essentials program.

Past Events

8th Annual Pharma IPR Conference

March 06, 2019 - Mumbai, Maharashtra

8th Annual Summit on Biosimilars

June 12, 2017 - New York, NY

6th Annual Summit on Biosimilars

June 01, 2015 - New York, NY

9th Annual Paragraph IV Disputes Conference

April 27, 2015 - New York, NY

In The News

Q&A: Shouvik Biswas, Aaron Lukas and Blake Coblentz on the America Invents Act

September 16, 2021

Blake Coblentz and Aaron Lukas spoke with World Intellectual Property Review to discuss the 10-year anniversary of the America Invents Act (AIA).

How the rise of PTAB discretionary denials impacts Hatch-Waxman strategies

February 11, 2021

Blake Coblentz was quoted in IAM discussing how the recent denial of a Mylan IPR petition suggests that some pharma patents may be insulated from controversial administrative challenges, with serious implications for generic litigation strategies.

Virus Delays, Few Approvals Dry Up Generic Drug Lawsuits in 2020

September 09, 2020

Keri Schaubert was quoted in Bloomberg Law discussing drug patent lawsuits that took a 21% dive from this time last year, a “perfect storm” that traces back to 2016 when the FDA only approved a handful of new drugs.

Rush for Generic Go-Ahead on Novel Drugs Roils Pharma Industry

June 19, 2020

Blake Coblentz was quoted in Bloomberg Law discussing how generic drugmakers are increasingly lining up to bring competing versions of brand-name products to the market at the earliest possible date.

Lawyering Through Covid-19: What We’ve Heard From the Practices

May 28, 2020

Blake Coblentz was quoted in Bloomberg Law about how the COVID-19 pandemic is impacting a cross-section of practice groups and industries.

Contacts

W. Blake Coblentz

Chair, Hatch-Waxman & Biologics Litigation

wcoblentz@cozen.com

(202) 912-4837

Barry P. Golob

Co-Chair, Intellectual Property Litigation

bgolob@cozen.com

(202) 912-4815

People

Related Practice Areas

Upcoming Event:

Exploring the Link between the FDA Approval Process and the Patenting of Drugs and Biologics

Webinar 10/07/2021

Aaron Lukas will be presenting at the Hatch-Waxman and BPCIA Essentials program.

Event Details

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