United States: 180-Day Notice Period For Biosimilar Approval Is Always Mandatory And Enforceable By Injunction

A year after analyzing the patent dance and notice requirements of the Biologics Price Competition and Innovation Act (BPCIA) in Amgen Inc. v. Sandoz Inc., the US Court of Appeals for the Federal Circuit has ruled that a follow-on biologic or biosimilar applicant is always required to provide a 180-day notice of marketing to the reference product sponsor (RPS) after the biosimilar product is licensed by the US Food and Drug Administration (FDA). Amgen Inc., v. Apotex Inc., Case No. 2016-1308 (Fed. Cir. July 5, 2016), (Taranto, C.J.).

BPCIA Background

The BPCIA allows biosimilar applicants to gain approval for a drug that is biosimilar to a reference product without repeating all of the testing done by the original RPS. Instead the biosimilar applicant can use publicly available information about the reference product's safety, purity and potency in support of the application. In order to balance innovation with consumer interests, the BPCIA prohibits a biosimilar application from being submitted until four years after the reference product was licensed, and prohibits biosimilar approval until 12 years after the reference product was licensed.

The most heavily litigated part of the BPCIA is 42 USC § 262(l), which established a patent-dispute-resolution regime related to biosimilars. Section 262(l) includes provisions related to what has been called the "patent dance"—the exchange of patent information between the biosimilar applicant and the RPS that potentially culminates in a patent infringement lawsuit brought by the RPS. The BPCIA also describes a scenario in which the biosimilar applicant is required to give a 180-day notice prior to the first marketing of the biosimilar, to allow the RPS to seek a preliminary injunction based on patents not subject to an infringement suit pursuant to the "patent dance."

In Amgen Inc. v. Sandoz Inc., the Federal Circuit first dealt with the dispute resolution provisions, ultimately ruling that a biosimilar applicant could opt out of the "patent dance." However, even if the applicant chose not to be involved in the "patent dance" it was still required to give a 180-day notice to the RPS after the biosimilar had been licensed by the FDA and prior to the marketing of the biosimilar.

180-Day Notice Is Required Even if the Biosimilar Applicant Engages in the Patent Dance

In 2014, Apotex filed a biosimilar application for pegfilgrastim, identifying Amgen's Neulasta® product as the reference product. Apotex initiated the patent dance by providing Amgen with a copy of the Apotex application on December 15, 2014. After completing the statutorily required steps, Apotex identified one Amgen patent that it believed was invalid and not infringed by its biosimilar product. Apotex also sent a letter stating that it was providing 180-day notice of future marketing—even though Apotex's product had not yet been licensed by the FDA.

In August 2015, Amgen brought an infringement suit against Apotex. As part of that lawsuit, Amgen filed a preliminary injunction, asking the court to require Apotex to provide notice after the FDA licensed its pegfilgrastim biosimilar and preventing Apotex from marketing its product for 180 days following that notice. Apotex argued that its participation in the patent dance rendered the 180-day notice not mandatory and unenforceable by an injunction. The US District Court for the Southern District of Florida disagreed and granted the injunction. Apotex appealed.

The Federal Circuit reviewed the district court's interpretation of the BPCIA de novo, and affirmed the granting of the preliminary injunction.

The Federal Circuit focused on the statutory language of the notice provision, and relied on its prior interpretation of the section in Amgen Inc. v. Sandoz Inc. The court pointed out that the relevant language of the statute:  the "applicant shall provide notice to the reference product sponsor not later than 180 days before the date of the first commercial marketing of the biologic product licensed under subsection (k)" includes the word "shall" which indicates that the notice period is mandatory. The court also emphasized that none of the statutory language suggested any connection between the "patent dance" and the 180-day notice requirement. Instead, the 180-day notice requirement is a standalone provision not dependent on the "patent dance."

The Federal Circuit also dismissed Apotex's policy arguments. While the court acknowledged that in some cases the 180-day notice period would extend RPS exclusivity past the 12 year mark, it reasoned: (1) many RPS products get more than 12 years of exclusivity because of delays in biosimilar application or FDA licensing, so the additional 180-day notice is consistent with the statutory regime as a whole; and (2) the FDA can license a biosimilar product before 12 years have passed and simply make the license effective at the 12-year mark—which would allow the 180-day notice to overlap with the end of the 12-year period. The court also noted that the 180-day notice period was consistent with the overall goals of the statute—permitting the parties to conduct patent litigation without time pressure that would impair its fairness and outcome.

Finally, the Federal Circuit addressed Apotex's argument that the exclusive remedy for violating the 180-day notice provision is a declaratory judgment action. While the BPCIA does include a section authorizing a RPS to bring a declaratory judgment action for patent infringement if the biosimilar applicant fails to complete either the "patent dance" or the 180-day notice requirement, the court rejected Apotex's argument that a declaratory judgment action was the only possible remedy. The court emphasized that none of the statutory language suggested that the declaratory judgment remedy was exclusive, and pointed out that a declaratory judgment action would serve no purpose as a remedy for violating the 180-day notice requirement.

Ultimately, the court ruled that the BPCIA's 180-day notice requirement is always mandatory and can be enforced by a preliminary injunction. 

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.

In association with
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
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement

Mondaq.com (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of www.mondaq.com

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). 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 & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about Mondaq.com’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd 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 or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to unsubscribe@mondaq.com with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to webmaster@mondaq.com.

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to EditorialAdvisor@mondaq.com.

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at enquiries@mondaq.com.

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at problems@mondaq.com and we will use commercially reasonable efforts to determine and correct the problem promptly.