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MSD v. Mylan: conflicting views

by Jan Pot and Ruprecht Hermans

MSD’s European Patent for treating baldness, EP 0 724 444 (‘EP 444’), has been the subject of a number of (in)validity decisions throughout Europe, with differing outcomes. The Dutch chapter in this saga is a decision of the District Court The Hague, which holds that – contrary to the German, French and Italian courts –the patent is valid and infringed.

Claim 1 of EP 444 is a Swiss-type claim for the use of finasteride for the preparation of a medicament for oral administration useful for the treatment of androgenic alopecia in a person and wherein the dosage amount is about 0.05 to 1.0 mg. Androgenic alopecia is a type of baldness occurring in men a [...]

Can the validity presumption in Danish PI proceedings be weakened due to lacking prosecution steps?

Since July 2013 when the Danish Maritime & Commercial Court (MCC) took over as IPR specialty court in Denmark for PI cases also, the technical judges have taken part in the adjudication of PI patent cases also. Although the MCC has no legal basis to render judgement declaring patents in the course of PI proceedings, the fact that the bench is now made up of one legal judge and two technical judges in practice means that a well-documented invalidity defence may prove fruitful, whereas the invalidity defences in the past were almost invariably turned down by the bailiff’s who presided over patent PI cases due to the court’s lack of technical insight.
In a recent case (F&H A/S v. Bodum (Skandin [...]

To suspend or not to suspend – Bundesgerichtshof on bifurcation

by Hetti Hilge

In two recent and surprising decisions the Bundesgerichtshof (German Federal Court of Justice) clarified the effects of a first instance decision nullifying the patent in suit on the enforcement of a parallel infringement finding (including an injunction) and, upon second review, remedied what it considers an unintended oversight by the legislator (“Planwidrige Regelungslücke”) in the specific circumstances of patent litigation and bifurcation. Effectively “overruling” its own previous decision in the very same case (Microsoft vs Motorola), the court now ordered the temporary suspension of the enforcement of an appeal court judgment finding for infringement, against t [...]

Is paying for a licensed but later invalidated patent contrary to Article 101 of the TFEU?

Pierre Véron and Amandine Métier, Véron & Associés

On 23 September 2014, the cour d’appel de Paris, in Genentech v. Hoechst and Sanofi Aventis Deutschland, Docket № 12/21810, decided to refer to the Court of Justice of the European Union the following question:

“Should the provisions of Article 81 of the Treaty, now Article 101 of the Treaty on the Functioning of the European Union, be interpreted as an obstacle to giving effect, in case of invalidation of the patents, to a licence agreement which imposes on the licensee royalties for the sole use of the rights attached to the patents under licence?”

Through this referral the court questions the compatibility [...]

“Self-adhesive tape” – You better limit your Swiss patents in good time

The juxtapositon of patent limitations in national nullity proceedings and before national patent offices on the one hand and according to article 105a EPC on the other hand is a hotly debated issue not only in Switzerland.

In a recently published decision of 2 June 2014 (4A_541/2013), the Swiss Federal Supreme Court had to decide – inter alia – whether the limitation of the European Patent 1 508 436 according to article 105a EPC which only took place after the revocation of the Swiss portion of the patent by the Federal Patent Court must still be taken into account.

In brief, claimant requested the nullity of EP 1 508 436 before the Swiss Federal Patent Court.

The patent relates [...]

Important change in Belgian patent litigation (2): Belgian Judges must take into account foreign judgments and cannot merely rely upon the suspensive effect of an appeal against an invalidity decision

As already described in a previous blog entry the Belgian Supreme Court nullified a decision of the Antwerp Court of Appeal granting a descriptive seizure (“beschrijvend beslag”; “saisie-description”) on the presumption of validity of (European) patents.  The written decision of the Supreme Court is now available (link).  The Supreme Court has followed the advice of the Advocate-General in his Opinion of 6 June 2014, although its judgment does not deal with all arguments developed by the Advocate-General (link). 

To understand the reasoning of the Supreme Court, it should be noted that the descriptive seizure was based on a European patent and a related French patent.  The UK pa [...]

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