ILPTO upholds its practice in cases of multiple PTE applications based on the same drug product – a single PTE application must be elected before publication of the notice of intention to grant

In a recent decision, the ILPTO reaffirmed its practice with respect to the filing of multiple PTE applications based on the same drug product. Multiple applications are admissible, but they will be examined concurrently and following examination, a single PTE application must be elected. A notice of intention to grant in respect of the elected PTE application will be published for possible oppositions and the other applications will be rejected.

Biogen MA Inc. challenged the ILPTO practice. It concurrently filed PTE applications for two different patents based on the IL Registration of Spinraza (nusinersen). Following the conclusion of the examination, Biogen elected to pursue one of the PTE applications, but it was subsequently refused following publication of the notice of intention to grant because Biogen failed to comply with mandatory ILPTO reporting requirements. Biogen then attempted to retrospectively revive the PTE application for the patent it did not elect – it asserted that where multiple PTE applications are filed, all of them should remain pending and be published for possible oppositions, to the effect that the election stage should be deferred until after publication of the notices of intention to grant of all PTE applications and after the conclusion of any oppositions (if filed).

Not surprisingly, the Deputy Commissioner rejected Biogen’s arguments and upheld the ILPTO practice. The Deputy Commissioner held that publishing several notices of intention to grant a PTE order based on the same API would compel third parties to file multiple oppositions simultaneously, despite the fact that only one of the PTE applications could ultimately result in the grant of a PTE order. According to the Deputy Commissioner, such a situation is burdensome to the public, creates uncertainty and results in a waste of legal resources. The Deputy Commissioner further held that the ILPTO practice requiring the election of a single patent for PTE prior to publication is consistent with the language of the statutory PTE provisions and serves the public interest in knowing, at the earliest possible stage, which patent will ultimately be elected for a PTE.

The bottom line is that the ILPTO practice remains unchanged and Applicants filing multiple PTE applications based on the same drug product must choose carefully the preferable PTE application because the non-elected application cannot later serve as a fallback.

[Decision dated August 4, 2026, in PTE Application for IL Patent No. 245096, filed in the name of Biogen MA Inc.]

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