Kevin D. McDonald
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Sometimes, the only prospect more chilling than the unintended consequences of Congressional legislation is the intended consequence.
To make the point, the US Congress may soon enact a law designed to ban reverse payments or pay-for-delay patent settlements.
These settlements fall under the Hatch–Waxman Act and involve the allegedly infringing generic-drug applicant dropping its
challenge in exchange for money, a license, or both. The Federal Trade Commission (FTC) has mounted a crusade against such
settlements for 10 years—a crusade which has thus far failed spectacularly in the courts. The courts have rejected FTC's attempt
to brand these settlements as anticompetitive without accounting for the fact that, "if settlement negotiations fell through
and the patentee went on to win his suit, competition would be prevented to the same extent" (1). Beginning in 2006, FTC turned
to Congress, ghost-writing a statute that would declare such settlements presumptively illegal.
Congress seems poised to act. The full US House of Representatives has passed the measure twice. The first measure was included
in the 2010 omnibus healthcare bill, but the settlements provision had to be stripped before final passage to match the Senate
version (thus keeping the bill filibuster-proof). More recently, the measure was added to the House's war funding bill for
Afghanistan, but dropped again. At the time of this writing, the US Senate Appropriations Committee has inserted the measure
into its Fiscal Year 2011 spending bill. If the House follows suit, the bill could be passed shortly after Congress returns
from its summer recess. As these stealthy tactics suggest, however, it is not clear whether the members of Congress understand
what the bill provides. Senator Herb Kohl (D-WI), a primary sponsor, said that, "our bill will not ban any settlement which
does not involve an exchange of money" (2), a statement the bill itself expressly contradicts.
But this much is clear: if enacted, this law will fundamentally change the behavior of every company, branded or generic, that engages in
the Hatch–Waxman approval process for generic drugs. Why? First, the statute's reach may extend far beyond settlement agreements
and include everyday licenses given to generic-drug filers outside of litigation. Second, the statute grants nearly unfettered
authority to FTC to condemn agreements based on any "factor" that FTC, "in its discretion, deems relevant" (3).
The statute's scope
The bill would allow FTC to challenge "any agreement resolving or settling .... a patent infringement claim" involving a drug
product (4). Such an agreement would be "presumed" unlawful if a generic filer (a) "receives anything of value," and (b) agrees
to limit its sale of the generic drug in any way (e.g., splitting the remaining patent life). The term "anything of value"
is as broad as it sounds—every rational settlement gives value to the generic-drug filer.
The real breadth of the bill lies in its definition of a "patent infringement claim." No lawsuit is required; the definition
includes "any allegation..., whether or not included in a complaint [in] court," that the generic drug "may infringe any patent"
(5). Thus, FTC may argue that, when a branded company discusses the possibility of a license with a generic-drug filer, even
one who has not challenged the patent, it is "alleging" that the patent would otherwise be infringed (why else would a license
be needed?), and the statute thus applies.
I can see FTC making the argument, and a presumption of illegality against any resulting license would follow by definition.
The statute purports to allow a safe harbor for settlements that grant a license that is limited, in essence, to a single
term: the generic-drug's entry date. Adding any other term such as charging a royalty or making the license exclusive, would
trigger the presumption of illegality. I have seen dozens of Hatch–Waxman settlements, and not one would satisfy this bill.
The statute's scope will discourage potential litigants at all stages of the Hach–Waxman process. The statute looms not only
over the brand's decision to file a lawsuit, but also over the generic applicant's prior decision to file an application challenging
the patent. The generic firm would then know that it may not be permitted to settle on terms that the parties select, and
there will be fewer challenges as a result. Indeed, even the brand company's original decision to list the relevant patent
in the Orange Book—which FDA law mandates if a generic could infringe the patent—is newly portentous. Under the proposed statute,
any of these decisions could trigger a process that ends only in one of two ways: in a fully litigated patent judgment, or
a private contract that must be approved by FTC.
