The Netherlands: Ascertaining inventive step in a dosage of tadalafil

Managing IP is part of Legal Benchmarking Limited, 4 Bouverie Street, London, EC4Y 8AX

Copyright © Legal Benchmarking Limited and its affiliated companies 2025

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

The Netherlands: Ascertaining inventive step in a dosage of tadalafil

Cialis® is a pharmaceutical product for the treatment of erectile dysfunction developed by Lilly ICOS, a joint venture of ICOS Corporation and Eli Lilly and Company. The active pharmaceutical ingredient (API) of Cialis®, tadalafil, inhibits the PDE5 enzyme, just like sildenafil in the better-known Viagra®.

Recently, the District Court of The Hague had to decide whether a pharmaceutical unit dosage composition for a maximum daily dosage of 5mg of tadalafil for the treatment of a sexual dysfunction, as claimed in ICOS's patent EP1173181, involves an inventive step. Teva Pharmaceuticals Europe, claiming invalidity of the patent before the court, argued that this dosage composition is obvious in view of an earlier patent publication by ICOS (WO 97/03675).

Contrary to ICOS's submissions, by disclosing the use of tadalafil for sexual dysfunction, this earlier document incentivises the skilled person to develop a second in class drug for this indication and the skilled person would accordingly start clinical trials. As such, the court reasoned that the case comes down to the question of which dosages would be tested in a phase IIb clinical trial and whether 5mg would be part of this trial.

Following this reasoning, the court judged that the skilled person could then walk down two one-way streets, which would both inevitably lead to the dosage unit composition of 5 mg. Going down a first street, the skilled person would find pharmaceutical data in phase I clinical trial studies which would, together with known efficacy data for sildenafil in Viagra®, enable him to make the calculated estimation that a 5mg daily dosage should be included in phase IIb clinical trial tests. The court then further argued that, even if the skilled person would not take this street, but instead would turn into phase IIb clinical trial studies with daily dosages of 25, 50 and 100 mg, the skilled person would have found a constant efficacy of tadalafil at these dosages and would accordingly have lowered the dosage to reduce side effects. As such, either street would lead the skilled person to an effective daily dosage of 5mg with minimal side effects.

Therefore, in the court's decision, all roads obviously lead to Cialis®.

Henri van Kalkeren


V.O.Carnegieplein 5, 2517 KJThe HagueThe NetherlandsTel: +31 70 416 67 11Fax: +31 70 416 67 99info@vo.euwww.vo.eu

more from across site and SHARED ros bottom lb

More from across our site

OpenAI's latest arguments at the Delhi High Court and a victory for Under Armour were also among the top talking points this week
Andrea Stone explains how her in-house experience gives her a unique perspective, and why Ballard Spahr’s combination with Lane Powell made it an ideal time to join
The pair had been fighting in multiple jurisdictions but have agreed to settle all litigation
Law firms may try to relate PTAB briefs to broader economic concerns in response to the USPTO’s latest guidance
IP Inclusive’s 10-year celebration provides reasons to be positive in the face of troubling attacks against DEI initiatives
Microsoft allegedly uses the HEVC technology in a range of products and offers an extension as an add-on
A group of five lawyers who joined Cleary Gottlieb say they want to help expand the firm’s IP litigation practice
As we build up to another busy year for the IP STARS rankings and our Managing IP Awards, we assess some of the major IP firms and trends in Germany
Florina Firaru discusses making new connections, the art of flower arranging, and the biggest misconception about IP
The firm, which appointed three IP partners from A&O Shearman, wants to develop a tier one practice in Europe
Gift this article