Neptune Technologies & Bioressources Inc. and Acasti Pharma Inc. announced that on March 23, 2015 the Patent Trial and Appeal Board (PTAB) of the US Patent and Trademark Office (USPTO) issued a favourable decision, confirming the validity of certain claims in Neptune’s ‘351 patent
(U.S. Patent: 8,278,351) and impelling royalty payments to Neptune.
“This is a significant milestone that triggers the payment of ongoing royalties to Neptune by Aker and Enzymotec, based on their sales of licensed krill oil products in the US,” highlighted Jim Hamilton, President and CEO of Neptune. “The decision clearly supports the validity and enforceability of Neptune’s ‘351 composition of matter patent. Now that the positive decision has been rendered, we can turn our attention to building the industry and growing the krill oil market.”
“Our intellectual property (IP) is a fundamental and valuable asset,” highlighted Benoit Huart, Director Legal Affairs at Neptune. “The positive decision preserves strong IP protection for both our nutraceutical and pharmaceutical businesses and substantiates our IP procurement and enforcement strategy. Aker and Enzymotec may appeal the decision. Regardless, the strength of our patent estate has once again been recognized. We will continue to enforce and build upon it to ensure we have long lasting and comprehensive protection, while preventing others from importing into and selling infringing products wherever we have valid patents.”
On December 17, 2013, Neptune announced that it had successfully concluded a settlement and license agreement with Aker and on April 27, 2014, they completed one with Enzymotec. Neptune granted a world-wide, non-exclusive, royalty-bearing license to both parties to market and sell nutraceutical products in the licensed countries. Pursuant to the terms of these settlements, royalty levels in the US depended on the outcome of an inter parties review at the PTAB of certain claims from Neptune’s ‘351 patent. In light of the PTAB’s decision, Aker and Enzymotec will be obligated to make royalty payments to Neptune based on their sales of licensed krill oil products in the US. Under the terms of the settlement agreement with Enzymotec, their royalty obligations in Australia were similarly dependent on the outcome of a potential request with the Australian Patent Office for a review of certain claims. A patent reexamination recently commenced.
On March 24th, Neptune announced that the Chinese Patent Office has granted Acasti a composition and use patent – valid until 2030 – relating to concentrated therapeutic phospholipid omega-3 compositions and covering methods for treating or preventing diseases associated with cardiovascular diseases, metabolic syndrome, inflammation, neurodevelopmental diseases, and neurodegenerative diseases. “To date, Acasti has received patents in the United States, Australia, Panama and South Africa for its phospholipid composition,” highlighted Benoit Huart, Director Legal Affairs at Acasti. “As well, similar patent applications are pending in more than 40 jurisdictions worldwide and are actively being pursued. This is yet another example of our commitment to build and extend our patent estate.”
“Today’s announcement further enhances the value of our intellectual property, by protecting a vast market and providing potential expansion opportunities for Acasti’s products going forward,” said Pierre Lemieux, PhD, Acasti’s Chief Operating Officer. “There is a large unmet need for high-quality, well-studied and differentiated krill products in China. It is the third largest pharmaceutical market in the world, with an average compound annual sales growth rate of approximately 20% over the past ten years.”
