Allergan, the U.S. pharmaceutical giant that makes Botox, Juvederm and Latisse, recently filed a lawsuit against Apotex, Canada’s biggest drug maker, claiming that its plans to make and sell a generic version of Latisse eyelash enhancer would constitute patent infringement.
The lawsuit argues that in submitting an application to the FDA seeking approval for a generic Latisse competitor, Apotex infringed three Latisse patents.
The suit also argues that should Apotex’s proposed Latisse copycat actually enter the market, it would further violate the patents currently held by Allergan for Latisse. Allergan has marketing exclusivity for Latisse until late 2011 and is further protected by patents that expire as far out as mid-2024.
Apotex maintains that while two Latisse-related patents are valid and enforceable, the third patent is irrelevant and would not prevent Apotex from forging ahead with a Latisse knock-off. Apotex also alleges to have sent Allergan a letter in July 2010 explaining the company’s stance.
After Latisse launched its massive advertising campaign featuring Brooke Shields and now, Claire Danes, it didn’t take long for consumers to figure out that instead of using one Latisse applicator per upper eyelid each day as directed, they could get double the treatments (and spend half the money) by using one Latisse applicator on both upper eyelids each day.
Considering consumers’ conservative use of Latisse and the resulting lower-than-expected sales figures, Allergan’s move to protect its eyelash enhancement market share by suing Apotex over its plans to promote a Latisse copycat is no surprise.
In June 2010, Allergan lowered its full-year Latisse sales forecast to a range of $90 million to $100 million, down from a prior $140 million goal. A $40 million to $50 million profit decrease may not seem like much for a company that pulled in over $4.5 billion last year, $600 million of which came from Botox sales, but Allergan stands to lose twice as much if a generic Latisse product catches on.