On August 17, 2022, the Federal Court, per Justice Fothergill,
dismissed AbbVie's applications for judicial review of the
Minister of Health's decisions that (1) JAMP was not a
"second person" and therefore it was not required to
address the patents listed on the Patent Register and (2) notices
of compliance (NOCs) could issue for JAMP's
SIMLANDI, a biosimilar of AbbVie's
HUMIRA (adalimumab): AbbVie v
Canada (Health) and JAMP, 2022 FC
1209. The Federal Court found that the Minister of Health's
interpretation of s. 5(1) of the Patented Medicines (Notice of
Compliance) Regulations (PMNOC Regulations) as
applying only to the drug identification number (DIN)-specific
version of the innovator's drug that is marketed in Canada was
AbbVie has NOCs for HUMIRA in two different concentrations: a
low concentration of 50 mg/mL and a high concentration of 100
mg/mL. AbbVie has NOCs for one strength of the low concentration
HUMIRA, 40 mg/0.8 mL, which AbbVie markets. AbbVie also has NOCs
for four strengths of high concentration HUMIRA: 10 mg/0.1 mL, 20
mg/0.2 mL, 40 mg/0.4 mL and 80 mg/0.8 mL. Of these, however, AbbVie
only markets the 20 mg/0.2 mL strength in Canada.
JAMP filed a new drug submission (NDS) for its high
concentration biosimilar SIMLANDI in three presentations: 40 mg/0.4
mL (pre-filled syringe and auto-injector pen) and 80 mg/0.8 mL
(pre-filled syringe). During the screening process, Health Canada
considered JAMP's NDS incomplete because it did not include
Form V declarations, as required by s. 5(1) of the PMNOC
5 (1) If a second person files a
submission for a notice of compliance in respect of a drug and the
submission directly or indirectly compares the drug with, or makes
reference to, another drug marketed in Canada under a notice of
compliance issued to a first person and in respect of which a
patent list has been submitted, the second person shall include in
the submission the required statements or allegations set out in
JAMP therefore submitted the Form Vs, listing the non-marketed
40 mg/0.4 mL and 80 mg/0.8 mL high concentration HUMIRA as the
reference drugs. However, JAMP maintained its position it was not
required to comply with s. 5(1) of the PMNOC Regulations
because the HUMIRA reference products were not marketed. JAMP also
served notices of allegations on AbbVie, "without
prejudice" to JAMP's position that it was not required to
comply with the PMNOC Regulations.
The Minister of Health's decision
Following submissions from both AbbVie and JAMP, the Minister of
Health concluded that JAMP was not a second person under the
PMNOC Regulations. The obligations under the PMNOC
Regulations did not arise unless JAMP's NDS "directly
or indirectly compares the drug with, or reference" to
"another drug [marketed in Canada]". The Minister
interpreted "another drug" as the Canadian reference
product (CRP) for small molecule drugs or the reference biologic
drug (RBD) for biologics, and specifically the strength, dosage
form, and route of administration of the reference drug, i.e.,
"another drug" is specific to the DIN. According to the
Minister, the marketing requirement for "another drug" is
therefore likewise DIN-specific.
As AbbVie was not marketing the 40 mg/0.4 mL and 80 mg/0.8 mL
HUMIRA presentations when JAMP filed its NDS, the Minister issued
NOCs to JAMP for its three presentations of SIMLANDI. JAMP launched
SIMLANDI in April 2022.
The Federal Court's decision
AbbVie applied for judicial review of the Minister's
decisions (1) that JAMP was not a "second person" and (2)
issuing the SIMLANDI NOCs.
The Federal Court found that the Minister's decision that
JAMP was not a "second person" was reasonable and
dismissed the judicial review application.
In finding the Minister's decision reasonable, the Court
addressed the Minister's "lengthy and careful
reasoning," including the following:
- Sections 4 and 5 of the PMNOC Regulations are reciprocal, and product specificity is key: Section 4 of the PMNOC Regulations establishes the requirements for listing patents on the Patent Register. The Minister interpreted subsection 4(4) as requiring the patent list contain a description of the drug at a DIN-specific level, and product specificity is a key consideration. Sections 4 and 5 of the PMNOC Regulations are reciprocal: Section 4 establishes the patent list a second person must circumnavigate under section 5.
- Appropriate HUMIRA RBDs for SIMLANDI: AbbVie
argued that the three non-marketed HUMIRA DINs identified by the
Biologic and Radiopharmaceutical Drugs Directorate (BRDD)
can serve as the RBDs for JAMP's SIMLANDI submission,
not that they must and the marketed 20 mg/0.2 mL high
concentration HUMIRA product could also serve as the RBD. The Court
disagreed with AbbVie, holding that there was no basis upon which
the Minister could have expanded the RBDs to encompass
presentations beyond those identified by the BRDD, particularly as
the BRDD had confirmed that the dosage form(s), strength(s), and
route(s) of administration of SIMLANDI should be the same as that
of the HUMIRA RBD.
- RBDs and CRPs are functionally equivalent: The approval of generic drugs via the ANDS pathway is legislated in the Food and Drug Regulations, which requires that the CRP for a generic drug "contain identical amounts of the identical medicinal ingredients, in a comparable dosage form." No such corresponding requirements exist for an RBD for a biosimilar. The Court held that the lack of a legislative definition for an RBD does not preclude the Minister from recognizing a functional equivalence between RBDs and CRPs. Further, the Minister cannot be faulted for following the recommendation in the biosimilar guidance document that the dosage form, strength and routes of administration of a biosimilar "should be the same" as the RBD. The Court concluded that AbbVie had not demonstrated that the Minister's decision to treat RBDs and CRPs as performing an "equivalent role" is unreasonable.
- Marketing condition supports a narrow interpretation of subsection 5(1): AbbVie conceded that the three HUMIRA RBDs were not marketed when JAMP filed its NDS. The Minister concluded that a drug that is not marketed is not eligible for the protections under the PMNOC Regulations, and the Court agreed, stating that "[t]he general policy behind the marketing condition is that a patent holder who obtains an NOC, but does not use it, should not be entitled to rely on that NOC to obtain collateral advantages because of the PM(NOC) Regulations."
The Court concluded that the Minister's interpretation of
subsection 5(1) as "applying only to a DIN-specific version of
a drug that is marketed in Canada was reasonable, particularly
considering the statutory objective of providing a patent
enforcement mechanism only in relation to products that are in fact
available to Canadians."
AbbVie can appeal as of right. In response to JAMP's notices of allegations in 2021, AbbVie commenced patent infringement actions pursuant to the PMNOC Regulations. Shortly thereafter, JAMP commenced actions to invalidate the same patents and following JAMP's launch of SIMLANDI, AbbVie counterclaimed for infringement. The trial of all the actions is scheduled to commence on November 14, 2022.
Should you have any questions, please do not hesitate to contact a member of the Pharmaceutical Litigation Group.
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