United States: Federal Circuit Confirms Both New Biosimilar Bring-To-Market Procedural Option And Additional Six-Month Exclusivity Period For Brand-Name Biologics

On July 21, 2015, brand-name biologics companies and companies developing biosimilars received a split in a significant decision with industry-wide ramifications in the high-stakes battle about how and when biosimilar products may be brought to market. In Amgen Inc. v. Sandoz Inc. (Appeal No. 2015-1499), a divided panel of the Court of Appeals for the Federal Circuit confirmed that some – but not all – of the elaborate "patent dance" procedures set out in the Biologics Price Competition and Innovation Act ("BPCIA") for those filing abbreviated biologics license applications ("aBLAs") with the Food and Drug Administration are optional, providing its stamp of approval for such biosimilar applicants to follow an alternate path to potential market. The decision means that an aBLA applicant will have a more complicated calculus to perform – one that weighs and compares the potential benefits and harms of following two different approval paths. At the same time, the appellate court mandated that an aBLA applicant that opts out of the patent dance path must provide notice of commercialization 180-days in advance, but only after having received FDA license approval – potentially giving the brand-name biologic companies an additional 180 days of exclusivity beyond the 12 years already allotted under the law.

The Federal Circuit's decision is the first appellate decision to address the BPCIA's provisions concerning the interaction of aBLA applicants with brand-name biologic companies during the FDA approval process. The two main issues on appeal were whether or not (1) a subsection (k) applicant (a "biosimilar applicant") is required to disclose to the reference product sponsor ("RPS") its aBLA and manufacturing information under 42 U.S.C. § 262(l)(2)(A); and (2) a biosimilar applicant must wait for the FDA to approve its aBLA before providing the required statutory notice to the RPS of the biosimilar applicant's first commercial marketing under § 262(l)(8)(A). The court's decision on each of these issues came down to the meaning of the word "shall," and it interpreted that term differently under each of the two mentioned sub-sections.

The first issue centered on provisions in the BPCIA pathway that call for biosimilars makers to supply their aBLAs and manufacturing information to brand-name counterparts shortly after applying for FDA approval. Forty-two U.S.C. § 262(l)(2)(A) states that the aBLA applicant "shall provide to the reference product sponsor a copy of the application . . . and such other information that describes the process or processes used to manufacture the biological product" within 20 days after the applicant has been notified that the aBLA is accepted for review. This exchange of information begins a complicated, detailed process between the two companies of identifying patents and negotiating about them to determine which potentially infringed patents should be the subject of a patent infringement suit even before the biosimilar has come to market. Two of the three judges on the Federal Circuit panel, however, found that "the 'shall' provision in [this paragraph] cannot be read in isolation"; that the "latter provisions [of the section] indicate that 'shall' in (l)(2)(A) does not mean 'must"'; and thus, a biosimilar applicant need not comply with the provisions of (l)(2)(A) – i.e., that the provisions were optional, not mandatory. Choosing not to comply subjects the applicant to certain consequences. Chief among them is that the RPS can immediately sue the applicant for patent infringement on as many patents as it deems assertable.

The divided panel, however, went on to interpret the "shall" provision in the notice-of-commercial-marketing paragraph of § 262(l)(8)(A) to be mandatory, at least where the biosimilar applicant has opted out of the "patent dance" procedures. Forty-two U.S.C. § (l)(8)(A) states that the biosimilar applicant "shall provide notice to the [RPS] not later than 180 days before the date of the first commercial marketing of the biological product licensed under subsection (k)". According to the court, "where . . . a subsection (k) applicant completely fails to provide its aBLA and the required manufacturing information . . . the requirement of paragraph (l)(8)(A) is mandatory." Of key significance is the court's conclusion that this mandatory notice cannot be given until the biosimilar applicant has obtained its applied-for license. Since the BPCIA says that approval of a biosimilar may not be made effective by the FDA until after a mandatory 12-year exclusivity period ends, it would appear that the mandatory notice in such a situation effectively guarantees the brand-name biologic company an additional 180 days of exclusivity, at least for that particular biosimilar (although it is arguable that the 180-day period could begin to run as soon as the FDA issues a tentative approval).

Given the particular facts of the Amgen v. Sandoz appeal, a still-open question is whether or not the 180-day notice is mandatory if a biosimilar applicant chooses to undergo the BPCIA's patent dance procedures. It may be that no such notice is required in that situation, as Judge Chen contended in his dissent.

In sum, biosimilars applicants now have an approved alternative path that they may follow if they are concerned about the delay in the filing of any patent infringement action by the relevant brand-name biologic company that might be caused by undertaking the patent dance. That path, however, comes with its own obligations and risks that may not be present otherwise, including a requirement to provide 180 days' notice of commercialization. While an en banc rehearing that could dramatically change the rules cannot be ruled out, for the moment the decision tree for biologics companies on both sides of the brand-name/biosimilars fence is increasingly complicated. Given the dollars at stake, making a less-than-ideal choice can indeed be costly.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Similar Articles
Relevancy Powered by MondaqAI
In association with
Related Topics
Similar Articles
Relevancy Powered by MondaqAI
Related Articles
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions