Plans For Generic Latisse Product Put Allergan, Apotex at Odds

U.S. pharmaceutical giant and Botox and Juvéderm manufacturer Allergan recently filed a patent infringement lawsuit against Apotex, Canada’s biggest drug maker specializing in generic drugs.

According to the lawsuit, Apotex’s plans to make and sell a generic version of Latisse eyelash enhancer would infringe Latisse patents.

The lawsuit argues that not only would the proposed Latisse copycat drug violate Latisse patents if it entered the marketplace, the mere act of submitting an application to the FDA infringed on three patents. 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 can be attributed to Botox sales, but Allergan stands to lose twice as much if a generic Latisse product catches on.