Actavis Group PTC EHF v. AstraZeneca AB, District Court The Hague, The Netherlands, 25 July 2012, Case no. 405170 / HA ZA 11-2545, with thanks to Willem Hoyng, Hoyng Monegier, for sending in the judgment
Actavis had claimed invalidation of two European Patents, EP 1 124 539 and EP 0 984 773, both relating to a formulation of omeprazole or either of its enantiomers (including esomeprazole). However, Actavis had not sent a notification letter before initiating proceedings, setting out the reasons why it considered the patents to be invalid and requesting AstraZeneca to voluntarily abandon the patents.
After Actavis had commenced proceedings, AstraZeneca abandoned the (Dutch parts of) these European Patents. Actavis had nevertheless continued the proceedings, maintaining its claim for invalidation of the patents. It argued that it still had interest in this claim, as the abandonment of patent rights did not have retrospective effect. Furthermore, it maintained its claim for a full cost award, arguing that it was necessary to make these costs, because AstraZeneca had only abandoned the patents after Actavis had served its writ of summons.
The District Court ruled that Actavis no longer had any interest in its invalidation claim, because, contrary to what Actavis had argued, the abandonment did have retrospective effect. This is explicitly set out in Article 63 Dutch Patent Act, which article was amended in 2008. In the version of Article 63 that was in force until 2008, an abandonment did not have retrospective effect. Furthermore, the Court did not agree that Actavis was be entitled to a full cost award, even though AstraZeneca has only abandoned the Dutch parts of the two patents after commencement of proceedings. The Court ruled that Actavis should have sent AstraZeneca a letter before initiating proceedings, requesting AstraZeneca to voluntarily abandon the patents, to avoid unnecessary proceedings.
In light of this, the Court denied Actavis’ claims and ruled in favour of AstraZeneca.
Read the judgment (in Dutch) here.
Head note: Jaap Bremer
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